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Saturday, 27 September 2008

USPTO/EPO clogs up the prosecution highway with red tape

The EPO has just announced that the Patent Prosecution Highway (their capitals) is due to begin on 29 September.  This scheme will allow patent applications that have been examined and allowed in either the USPTO or the EPO to be fast-tracked in the other office.  The programme will run for a trial period of 1 year, after which the offices will assess whether it is worth being fully implemented.  

For any European applicants who wish to take advantage of the programme, there will be a few requirements to meet:

(1) The EP application is a Paris Convention application validly claiming priority to one or more applications filed in the USPTO. [The IPKat presumes this rules out the majority of applications, which use the PCT system]

(2) The USPTO application(s) have at least one claim that was determined by the USPTO to be patentable/allowable. Applicant must submit a copy of the patentable/allowable claims from the USPTO application(s). [Why is this even necessary? Everyone knows how to use the EPO and USPTO register nowadays, don't they? Isn't this simply red tape for the sake of it?]

(3) All the claims in each EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond or be amended to sufficiently correspond to the patentable/allowable claims in the USPTO application(s) [This is very odd. Why not just allow applicants to say: "We want to go with the claims allowed in EPxxxxxxx/USxxxxxxx"?]. Claims will be considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or similar scope [If it is simply a matter of format, surely the US or EP examiner can easily suggest the required amendments?]. Applicant is also required to submit a claims correspondence table in English [Not French or German then?]. The claims correspondence table must indicate how all the claims in the EP application correspond to the allowable claims in the USPTO application(s). [Surely pointless: see above]

(4) Examination of the EP application for which participation in the PPH pilot programme is requested has not begun. [Doh.  What would be the point of doing it otherwise?]

(5) Applicant must file a request for participation in the PPH pilot programme programme. A request form (EPA/EPO/OEB 1009) will be available from the EPO website at on 29 September 2008. [Oh dear, more forms.  What is the problem with saying "We request that this application is entered into the PPH pilot programme? Is this not clear enough?]

(6) Applicant must submit a copy of all the Office actions (which are relevant to patentability) from each of the USPTO application(s) containing the allowable claims that are the basis for the request. [Yet again, more unnecessary paperwork.  All the prosecution history from each office is available online to each examiner, who can peruse it at their leisure.  Why the need for more photocopying?]

(7) Applicant must submit copies of all the documents cited in the USPTO Office action and translations thereof in one of the EPO official languages except EP patents or EP patent application publications. [Yet again, totally unnecessary, since everything is readily available online]
The IPKat can see how this sort of programme could ultimately be useful to the EPO and USPTO, and to a limited selection of applicants, but thinks that the whole thing is so unnecesarily bound up in red tape that there are distinct disincentives to use it.  Assuming it does not apply to ex-PCT applications, the number of applications that will fall within the criteria are in any case inevitably going to be quite small (but this is probably deliberate).  

The IPKat cannot see how a simple request to enter the programme, citing the corresponding application, would not be sufficient.  All the information needed to begin the process could be summarised in two lines at most, so why the need for all the extra paperwork?  Even if everything is carried out online, what is the point of duplicating all the material required, which is in any case already readily (and in most cases freely) available?  This seems to be a wasted opportunity for improvements to be made in how the system operates, and more like yet another way of making applicants jump through silly hoops to get the system to work for them. 


Anonymous said...

Does any reader remember the days when US Applicants used to file PCT apps at the USPTO Receiving Office, designating the EPO as their ISA and IPEA? The days when US attorneys would diligently prosecute Ch II amendments in direct dialogue with EPO Examiners. The EPO fax machines were never so hot as they were, back in those days. Frustration, even fury, was the almost inevitable result in most every case, despite goodwill on both sides. The cause was the complete incompatibility between US law and the PCT (that is, EPC Art 52-56, 84 and 123). Harmony and mutual respect between Europe and the USA requires that that awful period never be allowed to happen again, and the wise heads in the EPO know it very well. Anyway, no need to worry. Given the EPO's success (Exrs and management both take a bow please) in getting their EESRs out double quick, I can't imagine any Applicant driving to the EPO on the PPH, and asking for fast track on the basis of a claim already allowed in the USPTO. There won't be a case, and there wouldn't be any point. Why has Alison signed up to the PPH? Well, everybody else has, and I can well imagine that the AC has been under huge political pressure from Japan and the USA and Korea to sign the EPO up, to give credibility to the politicians' solution to pendency. The Asians saw no domestic harm in signing up to PPH, so they sign up for the usual reason, in order not to jeopardize their export market in the USA. Why did the EPO delay signature till now? Alison wanted first to get her EESR system well-established. So, actually, we have a lot to thank PPH for, if the PPH is what got the EPO's EESR system up and running so fast and so well. Why the red tape? To calm the wise heads at the EPO, who fear that, without enough tapes to tie the giant down, PPH will take them back to those dreadful days when US attorneys prosecuted cases at the EPO:

Anonymous said...

No need to complain. Just apply for PACE and tell the EPO your claims were granted by the USPTO so surely they must be new and inventive.

Is there any reason to expect that PPH will be faster?

Anonymous said...

Anonymous, I agree. There are still some others, who cling to the perceptions of an older era, that claims that had issued in the world's top economy are fit for the much less important territory of the EPC. We are entering a new phase, in which 1) the claims are first examined (EESR) in the 600 million inhabitant EPC-land, and only later get to be examined in the smaller USPTO jurisdiction, and 2) USPTO Examiners take a quick look at the EESR before they write their own exam report, and anyway 3) anybody interested in the A publication will be reading the files in both Patent Offices whereby 4) PPH EPO/USPTO, as such, is not of interest to anybody.

IP MOUSE said...

So does this also mean that the software and business methods found patentable in the US proceed to grant in the EPO “faster and more efficiently”?
Even considering less extreme differences between USPTO and EPO patenting requirements, examiners in the respective offices have to be trained first to fully appreciate the examining results of their colleagues (which is of course a different issue when compared to the present look at opinions). Where is the gain in efficiency?
Indeed, as it stands, this “improvement” appears nothing more than an attempt to “give credibility to the politicians' solution to pendency” as anonymous put it, rather than that it is based on a sound knowledge of examining practice.
Of course the idea of using results of work already done on an application is a sensible one, but quite some further development appears necessary to bring this idea to something having a chance to meet the objectives.

McLaughlin IP said...

Just sit back and watch an entire new body of EPO jurisprudence be borne out of what exactly "sufficiently correspond" and "or similar scope" noted in point (3) actually means.

Speaking from experience, Singapore (where I'm based) has a similar provision in that a claim must be "related" to another one in a foreign application which has been examined and deemed allowable. Although there is some definition in the Singapore Patents Act, basically, no-one actually knows what it *really* means. Unfortunately, there is no case law yet to help.

Given the prominence of the EPO in the grand scheme of things when it comes to patent offices of the world, I'd expect we'd start running in to problems sooner rather than later.

Anonymous said...

Valuable comment from McLaughlin, but I'm not sure there's going to be any EPO cases any time soon. As I understand it, "related" is a "must" under SG law, whereas PPH is not an Autobahn, not an A road, not even asphalted, but just a dirt track leading nowhere; a "highway" that no driver that is assisted by a properly functioning navi will be using, any time soon.

Anonymous said...

Does SG law have any substantive provisions that could get a claim allowed on the basis that it or a 'related' claim was allowed in another jurisdiction? Or is it just procedurally?

As far as I can tell, the EPO version of the PPH program is a special version of the PACE program with many many more conditions to be fulfilled and not a single advantage to be had. In fact, I now see that the EPO says so itself at the page the blogpost links to (under C). If you manage to unclog the red tape, you get into PACE. Alternatively, just file a one-line PACE request.

Am I missing something? Or is PPH just politics?

Anonymous said...

To the first poster, I am not sure Japan signed up so as 'not to jeopardize their export market in the US'. I think Japan sees it as a first step towards a worldwide patent system in which they can fill in a few forms to get their Japanese patent validated in US and EP, rather than have to pay expensive foreign attorneys to re-prosecute it.

I think the EPO's rules are pretty easy to understand if seen through the prism of minimizing the workload for the EP Examiner.

1) This is to reduce the number of cases which must be accelerated.

2) To make it easier and quicker for the EPO Examiner.

3) This gives flexibility, for example perhaps the applicant only wants some of the claims in EP (due to excess claim fees), or alternatively wants to combine the claims of two earlier US applications in one EP application. The EPO is possibly (optimistically) hoping that applicants will amend the granted US claims by adding reference numerals and putting in two-part form so they are in condition for immediate allowance.

4) I think PPH obliges the Examiner not only to start examination ASAP, but also to reply to all examination reports quickly. The EPO here is preventing all currently pending US originating cases being pushed into accelerated examination as soon as the US case is granted.

5)Because patent attorneys will phrase the request in a million different ways and many patent attorneys cannot communicate clearly. Plus the EPO admin staff are prone to make mistakes. A form standardizes things and makes it easier for everyone.

6)To save work for the EP Examiner.

7) Agreed this is a bit much.

Anonymous said...

Many many thanks, that last poster. The significance of (4) is now apparent. Makes good sense. No PPH for US Applicants; except when the EPO has STILL not started its examination at the time when the US app gets a Notice of Allowance. Wonder how often that will happen, going forward.

Anonymous said...

Can Tuesday's 8.22 poster tell us whether the Notice of Acceptance at the USPTO, that is the basis of PPH work at OSF EPO, must be in the file wrapper of "The" (Point 2 from the EPO) priority date-defining first ever application in the OFF. Or could it also be admissible to the OSF if it is in the USPTO file wrapper of a US application that is one that has "continued" from that "first" filing. It might make a difference to the EPO/USPTO PPH workload.

Mick McLaughlin said...

Just for info, as I can see the thread going in a different direction, but the related claim thing under Singapore law only applies when the patent is to grant on the basis of allowance of a corresponding (related by priority) case in one of a few select other countries. What the SG Act actually says is this:

"For the purposes of this Act -
(a) a claim is related to another claim if:
(i) the two claims are identical" (so far so good) "; or (not so good).
(ii) each limitation in the second claim -
(A) is identical to a limitation in the first claim; or
(B) differs from a limitation in the first claim only in expression but not in content".

I've seen advice from one of the bigger firms out here advising something along the lines of this:

is a first claim including a limitation to "an electrical signal" related to either of the following second claims:
a) a second claim which requires "an electrical digital signal" or
b) a second claim which requires "an electrical signal, the electrical signal being a digital signal"?

If I recall correctly (I don't have a copy of the advice to hand) the latter b)("an electrical signal, the electrical signal being a digital signal") was considered probably to be OK, but the former a) ("an electrical digital signal") was possibly not going to be OK, despite the fact the scope of wording of both options is, as far as I can tell, identical.

In this advice, it all came down to whether the limitation in the second claim was identical to a limitation in the first claim. Here, the opinion was the limitation a) in the second claim ("an electrical digital signal") was not identical to a limitation in the first claim of “an electrical signal” whereas b) (an electrical signal, the electrical signal being a digital signal) was at least partly worded identically requiring "an electrical signal" although that wording was further limited by ",the electrical signal being a digital signal".

(There is another argument that the option b) for the second claim does not contain a limitation which is identical to a limitation in the first claim; the net result is that the second claim b) does not have a limitation to an electrical signal, the net effect is that the limitation is to an electrical digital signal. It’s not my intention to start a debate on the rights and wrongs of the above analysis and I won’t be getting into that if anyone does want to. The point is, you can see the sort of problems which can arise even when there is some statutory guidance.

It seems from the comments posted above the consensus is this initiative is all about streamlining and making things easier for the EPO examiner. Well, it’s not immediately clear these things will be achieved given the difficulties which can arise any time anything is left open for interpretation and inevitable ensuing arguments about the manner in which things should be interpreted . I for one will be watching (a little bit from the outside) with interest.

Anonymous said...

Thanks Mr McLaughlin. I suspect you are confirming the prejudice of a great many people (including me) about the degree of usefulness of the PPH, namely, quite low. A bit like "Peer to Patent", as far as I am concerned. Shuffling the chairs on the deck of the speeding Titanic. That sort of thing. Regardless of events on Wall Street, I don't see the competing corporate titans filings dropping. To survive, they have to keep up their carpets of filing activity, don't they? THE EPO's EESR is the weapon of choice, to bring more world-wide efficiency. Funny, isn't it, how that historical separation of search from examn, when the EPO was set up, long seen as bad, might come belatedly to provide the best chance of bringing efficiency gains to world-wide patent prosecution.

Anonymous said...

I'm not sure how the separation of search from exam is helping here? The EESR became possible only after the abolishment of this separation. Or do you mean that it is thanks to the historical separation that search (and now EESR as well) is performed at an early stage?

@McLaughlin: as it is now there will probably not be too much fuss about the interpretation of things. Related claims in no way guarantee that your claims get granted (at least not for now!) and if somehow a PPH request is not allowed, the applicant can simply file a PACE request and achieve the same effect (with much less hassle).

Anonymous said...

Clarification needed. What's this "abolishment"? Distinction between search and examination remains, no? Like, when does Applicant pay the EPO exam fee; before or after the EESR? But, apart frrom that, I agree that the early issue of the EESR emerges only because of the fortuitous historical separation of search and examination.

Anonymous said...

Are any PPH usage statistics available online?

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