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Milena Lonati Principal Director Quality Management European Patent Office

Patent Prosecution Highway Status Report and PPH metrics PCT MIA Canberra, February 2012. Eugen Stohr Director International Legal Affairs, PCT European Patent Office. Milena Lonati Principal Director Quality Management European Patent Office. PPH: the EPO pilots - current status.

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Milena Lonati Principal Director Quality Management European Patent Office

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  1. Patent Prosecution Highway Status Report and PPH metrics PCT MIACanberra, February 2012 Eugen Stohr Director International Legal Affairs, PCT European Patent Office Milena Lonati Principal Director Quality Management European Patent Office

  2. PPH: the EPO pilots - current status • Bilateral PPH pilot between the USPTO and the EPO • launch date 29 September 2008 • http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120118.html • Bilateral PPH pilot between the JPO and the EPO • launch date 29 January 2010 • http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120118a.html • Trilateral PCT PPH pilot • launch date 29 January 2010 • http://www.epo.org/law-practice/legal-texts/official-journal/information-epo/archive/20120119.html • Extension and revision of EPO PPH pilot programmes • effective 29 January 2012 • all pilot programmes operational until 28 January 2014 • expansion of eligibility scope: implementation of MOTTAINAI • promotion of efficiency: implementation of self-certification of claims

  3. PPH: latest developments and future plans • JPO proposal "MOTTAINAI": relaxation of priority requirements • so far PPH schemes based on OFF - OSF workflow • shift to OEE - OLE workflow, de-linking priority • eligibility of PPH request would depend on availability of work from a participating office on a patent family member, regardless of • order of filing • of whether the office which provides work results is the OFF • TIMING of EXAMINATION is crucial • USPTO proposal "PPH 2.0": next-generation PPH framework aiming at streamlining/liberalising PPH requirements • Builds on MOTTAINAI and simplifies requirements • relaxation of the applicable PPH documentation requirements involving inter alia the increased use of DAS and machine translation, • harmonisation of claim correspondence concept, self-certification of claims • establishment of a common framework to replace bilateral PPH arrangements

  4. PPH: latest developments and future plans • Trend: harmonisation/simplification of participation/eligibility requirements → development of a uniform, all-inclusive PPH scheme • Issue of Quality and the potential development of a Quality Management System for PPH offices now explicitly being addressed in international discussions • Increased use of the PCT PPH • in particular as regards work products issued by the EPO: JPO received 286 requests where EPO = ISA//IPEA; USPTO received 621 requests where EPO = ISA/IPEA (status: January 2012) • makes PCT international phase work products (i.e. WO/ISA, IPER) a key element of global work sharing • underlines the philosophy behind the PCT • EPO is exploring conclusion of PCT PPH arrangements with further ISAs, in particular KIPO/SIPO

  5. Envisaged implementation PPH: the EPO pilots - participation figures PPH filing at the EPO has been at a moderate level

  6. PPH filings in the global context (at end June 2011) [1] (a) OSF percentage share of worldwide PPH filings (b) OFF percentage share of worldwide PPH filings [1]Data from the PPH portal statistics site, 4 November 2011. http://www.jpo.go.jp/cgi/cgi-bin/ppph-portal/statistics/statistics.cgi

  7. Envisaged implementation PPH: the EPO pilots - participation figures 16% 82%

  8. Envisaged implementation PPH: the EPO pilots - number of PPH requests per month 16% 82%

  9. Envisaged implementation PPH: the EPO pilots - technology area distribution 16% 82%

  10. PPH: the EPO pilots - outcome of first action

  11. PPH: File selection effect when filing for PPH

  12. PPH: Pendency to first action

  13. Average Number of Claims by PPH Programme • Eligible PCT-PPH requests • All claims at the OFF: 14.2 • Patentable claims at the OFF: 12.8 • Claims in the PPH filing at the EPO: 11.8 • Eligible JPO-EPO bilateral PPH programme requests • All claims at the JPO: 8.9 • Patentable claims at the JPO: 8.8 • Claims in the PPH filing at the EPO: 8.7 • Eligible USPTO-EPO bilateral PPH programme requests • All claims at the USPTO: 16.4 • Patentable claims at the USPTO: 16.4 • Claims in the PPH filing at the EPO: 11.8

  14. PPH Evaluation: preliminary examiners' feedback • 44% of responding examiners have cited at least some of the art or a family member listed by OFF • 23% state that the work provided by the OFF was useful or very useful (38% PCT-PPH and 19% bilateral PPH files) • In 13% of all responses, examiners state that having OFF work results made processing of the application efficient or very efficient: (24% PCT-PPH and 10% bilateral PPH files). • 56% of users of the JP-EN machine translation found it to be at least 'usable'.

  15. Need more information? www.epo.org Thank you for your attention

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