Accelerated Examination in the Philippines Through PPH Partnership with EPO

01 November 2017

Accelerated Examination in the Philippines Through PPH Partnership with EPO

In recent years, the European Patent Office (EPO) has partnered with several domestic patent offices in Patent Prosecution Highway (PPH) programmes, with the aim of speeding up examination processes for corresponding applications filed in participating intellectual property offices. Recently, the EPO has launched new a PPH pilot programme with the patent office of the Philippines (IPOPHL) to enable work-sharing and accelerated examination of patent applications from July 1, 2017. The EPO has other PPH pilot programmes currently in operation with China, Japan, South Korea, the US, Australia, Canada, Colombia, Israel, Mexico, Russia and Singapore. The signing of PPH agreements with the Philippines took place in October 2016 between the EPO president and the director general of IPOPHL.

 

The Patent Prosecution Highway (PPH) offers an accelerated route to grant for a patent application, whereby a favourable determination of patentability has already been issued by a PPH partner office. The PPH can foster increased efficiency in the patent application process by allowing the Examiner in the Office of Later Examination (OLE) to reuse search and examination results from the Office of Earlier Examination (OEE), thereby reducing workload and duplication of effort. The OEE can now be IPOPHL, the work product of which can be used as a basis for the PPH request, while the OLE refers to the EPO, as the office before which participation in the PPH pilot programme is being requested.

 

A PPH request can be based either on the latest PCT work product (written opinion of the International Searching Authority (ISA) or International Preliminary Examination Report established by the EPO as ISA or IPEA), or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before the EPO or IPOPHL, where this work product determines one or more claims to be patentable or allowable.

 

Where the EPO work product contains one or more claims that are determined to be patentable or allowable, the applicant may request participation in the PPH pilot programme at IPOPHL.

 

PPH offers many advantages for patent applicants. The accelerated examination lowers the number of examination reports received during prosecution, reducing overall prosecution time, thereby minimizing costs for patent applications undergoing examination.

 

To be eligible to participate in the PPH pilot programme at the EPO, the following requirements must be met:

 

1) The European patent application must have the same earliest date with the corresponding application, whether priority or filing date of a national application filed with IPOPHL, or a PCT application that has entered the national phase before IPOPHL;

 

2) The corresponding application must have at least one claim indicated by IPOPHL to be patentable or allowable;

 

3) All claims in the European patent application for which a request for participation in the PPH pilot programme is made must sufficiently correspond to the patentable or allowable claims in the OEE corresponding application; and

 

4) Substantive examination of the European patent application for which participation in the PPH pilot programme is requested must not have begun.

 

In order to participate in the PPH, the applicant must submit the following to the EPO:

 

1) A request for participation in the PPH pilot programme via the request form available at the EPO website;

 

2) A declaration of claims correspondence, included in the request form;

 

3) Copies of all the office actions for the OEE corresponding application containing the patentable or allowable claims that are the basis for the PPH request, with a translation thereof in one of the EPO official languages, if necessary;

 

4) Copies of the patentable or allowable claims from the OEE application, with a translation thereof in one of the EPO official languages, if necessary; and

 

5) Copies of all documents, other than patent documents, cited in the OEE office actions identified in point 3) above.

 

For items 3) and 4) above, the applicant needs to submit paper copies of the documents, unless these materials have already been filed in the European patent application prior to the request for participation in the PPH pilot programme.

 

The applicant will be given one opportunity to correct formal deficiencies identified in the request. If deficiencies are not corrected, the application will be rejected and the applicant will be notified accordingly.

 

The European patent application will be processed in an accelerated manner once the request for participation in the PPH pilot programme has been granted. EPO’s existing PACE programme, a popular free programme for accelerating prosecution of patent applications, can be applied by analogy.

 

Both parties to the pilot programme will assess its results to see whether it should be fully implemented after the trial period. The trial period may be extended, if necessary, to adequately assess the feasibility of the PPH programme.


About the author

 Denise Mirandah

Denise Mirandah

As a Director, Denise Mirandah has played a major role in the international promotion of the company, helping to share the family values of Mirandah Asia and its successful one-stop shop approach to IP with clients all over the world.

Denise has had a passion for IP from an early age and, as the daughter of Patrick and Gladys Mirandah, grew up in a household where IP was discussed regularly. She studied her Bachelor of Laws at the prestigious Cambridge University in the UK. There, she underwent rigorous academic training with the world’s most eminent legal minds, including Professor Bill Cornish, a renowned authority on IP law.

During her summer holidays, she attended Harvard University in the US to hone her drafting skills and familiarise herself with the American legal system, voluntarily working as part of Harvard’s pro bono programme in Boston.

Denise has been admitted to the Bar in Singapore since 2009, and in Brunei as of 2017.

 Rudina Ann Pescante

Rudina Ann Pescante

Rudina Ann Pescante is an IP specialist with mirandah asia (singapore). She is a registered chemist and a registered patent agent in the Philippines with extensive experience in patents, IP consultancy, IP management, and freedom to operate opinions.

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