{"id":1194,"date":"2021-07-20T14:47:25","date_gmt":"2021-07-20T12:47:25","guid":{"rendered":"https:\/\/blog.shp.law\/?p=1194"},"modified":"2021-07-21T13:44:39","modified_gmt":"2021-07-21T11:44:39","slug":"accelerating-patent-grants-in-europe","status":"publish","type":"post","link":"https:\/\/blog.shp.law\/index.php\/2021\/07\/20\/accelerating-patent-grants-in-europe\/","title":{"rendered":"Accelerating Patent Grants in Europe"},"content":{"rendered":"\n

Accelerating Patent Grants in Europe through the Patent Prosecution Highway<\/strong><\/strong><\/p>\n\n\n\n

We\u2019re often being told that it takes too long for patents to be granted. Recently, we were asked to support a client that had received a favorable search report during the international phase of a patent filed under the Patent Cooperation Treaty and asked us to help them file a European Patent Application.<\/p>\n\n\n\n

We realized that it would be possible to request the European Patent Office (EPO) to treat the application under its so-called \u201cPatent Prosecution Highway\u201d procedure. This is a program agreed by most of the major patent offices around the globe<\/a>. In our case, it allowed us to file the patent application with the EPO and explain to the Examiner that the case had already been examined in the international phase. We amended the claims to bring them into accordance with European patent practice and filed an additional statement explaining the relationship between the PCT claims and the amended claims.<\/p>\n\n\n\n

We are currently waiting for the EPO to respond – let\u2019s see how quickly we can get through the patent office with this application.<\/p>\n\n\n\n

But what is the PPH?<\/strong><\/strong><\/p>\n\n\n\n

The Patent Prosecution Highway (PPH) program\u00a0has been around for a few years and is based on agreements between patent offices around the world. The agreements are between the Office of Earlier Examination (abbreviated to OEE) and the Office of Later Examination (abbreviated to OLE). The OEE carries out the initial search and examination of the application and another patent office (the OLE) is supposed to review only the findings of the OEE before deciding on the patent. In practice, the OLE normally carries out a top-up search in its own databases and sometimes finds additional relevant prior art which may require further changes in the claims.<\/p>\n\n\n\n

In general, however, participation in the PPH program allows the applicant to request accelerated examination in the OLE if the OEE has found the application to be allowable\/patentable.<\/p>\n\n\n\n

What are the benefits of PPH?<\/strong><\/p>\n\n\n\n

Use of the PPH program can significantly speed up a grant of a patent. The OLE will consider the prior art and the arguments made by the patent applicant in the initial proceedings at the OEE. The OLE therefore profits from the prior work done at the OEE leading to shorter times for carrying out the search and examination at the OLE and should result in a quicker grant of the patent. This is especially helpful for applicants seeking patent protection for their invention in multiple countries and regions.<\/p>\n\n\n\n

Studies by the participating offices have shown that PPH applications seem to have higher grant rates in the OLE than non-PPH applications in the same OLE. The PPH program also seems to lead to a reduced number of office actions since the OLE acknowledges the reasoned opinion of the OEE.  <\/p>\n\n\n\n

How did our client participate in the PPH program?<\/strong><\/p>\n\n\n\n

Our client’s international patent application benefitted from a detailed examination in the international phase. We then requested participation in the PPH by using the EPO form 1009<\/a> upon entry into the European Phase. \u00a0<\/p>\n\n\n\n

The EPO specifies that eligibility for participation in the PPH program depends on the following criteria (see here<\/a> for detailed list):<\/p>\n\n\n\n