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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Better Options than PPH

When the EPO entered a "Patent Prosecution Highway" pilot program in conjunction with the US Patent and Trademark Office (USPTO), we pondered whether we may be entering a brave new world in which the EPO will "rubber stamp" the US claims for grant in Europe, or whether the EPO might be content to see the pilot fail so as to justify separate examination in the different offices (see Patent issues Spring 2009). To no-one's surprise, neither our wild optimism nor deep cynicism was justified. The EPO extended the program to include ex-PCT applications and it is now several years old and well established, but we regret it amounts to little more than a request for accelerated prosecution (a rarely-used procedure in itself).

With the benefit of some experience of PPH with the EPO as well as with some other national offices, we conclude that there is little in it for the applicant. Due to the respective systemic differences between US, UK, European, German and Chinese practices, Examiners still examine according to national guidelines regardless of any PPH request.

However, many of the PPH participating offices offer their own accelerated examination procedures, some with quite simple requirements. Since these procedures do not require voluntary amendment of claims in line with those allowed in a parallel application, a granted patent may be possible in short order with claims broader than might be possible under PPH. The success rate of all these requests is in each case subject to the workload of the relevant Examiners, which varies within each office from field to field.

We list some of these programs here.

European Patent Office
The EPO's PACE program is not heavily utilized and is, from experience, just as fast as PPH, and is not subject to a fee.

UK Intellectual Property Office
The UKIPO has always been and remains open to acceleration of patent applications. Grant in under a year is possible. 

  • Combined search and examination is available.

  • A request for accelerated search and/or examination may be allowed based on adequate reasoning as to why the acceleration is important.

  • Accelerated examination is also available for an international application entering the UK national phase where there is a positive IPRP or where the claims on file in the UK national phase sufficiently correspond to one or more claims indicated as acceptable in the IPRP or WO-ISA.

  • There is also a "green channel" available upon proof that the invention relates to a "green" or environmentally-friendly technology.

Deutsche Patent- und Markenamt (DPMA)
The German patent system permits a request for accelerated search and/or examination when accompanied by suitable reasoning. Although the DPMA is not obliged to grant such requests, it is also possible to contact the Examiner informally by telephone, which often improves the chances of acceleration. As in the UK, grant in under a year is possible.

Chinese Intellectual Property Office (SIPO)

In China, a fast track system has been offered since August 2012 for:

  • applications covering "green" technologies;

  • C hinese first filings that have also been filed abroad; and

  • other applications which materially affect national or public interests and require prioritized examination.