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Procedures to file a request for PPH between ROSPATENT and the EPO based on PCT

 


Procedures to file a request for Patent Prosecution Highway pilot program (PPH) between the Federal Service for Intellectual Property (ROSPATENT) and the EPO based on PCT and national work products


Background


The Patent Prosecution Highway program (PPH) leverages fast-track patent examination procedures already available at the offices to allow applicants to obtain corresponding patents faster and more efficiently. It also permits each office to exploit the search and examination work previously done by the other office.

The Patent Prosecution Highway (PPH) program between the Russian Federal Service for Intellectual Property (Rospatent) and the European Patent Office (EPO) enables the two offices to share their search and examination results.

Where Rospatent is the Office of Earlier Examination (OEE) and the EPO applicationcontains claims that are determined to be allowable/patentable, the applicant mayrequest accelerated examination at the EPO for the corresponding application filedwith the EPO as the Office of Later Examination (OLE). The requirements andprocedures for filing a request with the EPO for participation in the PPH pilotprogram are available from the EPO website http://www.epo.org/.

Where the EPO is the OEE and the ROSPATENT application contains claims that aredetermined to be allowable/patentable by the EPO, the applicant may request acceleratedexamination of the corresponding application filed with Rospatent as the OLE byfurnishing certain information of the Rospatent application as set out in the requirementsand procedures below. An applicant must submit a PPH Request form. One can use the Global PPH form or any other PPH/PCT-PPH form available at the Rospatent web-site http://www.rupto.ru/activities/inter/bicoop/pph.


The PPH pilot program commences 01.02.2017 for a period of 3 years,ending on 31.01.2020.

Rospatent and the EPO will evaluate the results of the pilot program to determine whether and how the program should be fully implemented. The Offices may also terminate the PPH pilot program if the volume of participation exceeds manageable level, or for any other reason. Notice will be published if the PPH pilotprogram will be terminated before 31.01.2020.


Part I

PPH using the national work products


1. Requirements


(a) Both the Rospatent application on which PPH is requested and the EPO application(s) forming the basis ofthe PPH request shall have the same earliest date (whether this is apriority date or a filing date).

For example, the Rospatent application (including PCT national phaseapplication) is either:

(Case I) an application which validly claims priority under the ParisConvention to the application(s) (examples are provided in ANNEX I,Figure A, B, C and D), or

(Case II) an application which is the basis of valid priority claim under theParis Convention for the EPO application(s) (including PCT nationalphase application(s)) (examples are provided in ANNEX I, Figure E,F and G), or

(Case III) an application which shares the common priority document withthe EPO application(s) (including PCT national phase application(s))(examples are provided in ANNEX I, Figure H, I, J, K and L), or(Case IV) a PCT national phase application where both the Rospatent application and the EPO application(s) are derived from a PCTinternational application having no priority claim (an example isprovided in ANNEX I, Figure M).


(b) At least one corresponding application exists in the EPO and has one or more claims that are determined to be patentable/allowable by the EPO.

Claims clearly identified to be patentable/allowable in the latestoffice action at examination stage are able to be a base of a request for anexamination under the PPH pilot program, even if the application, whichincludes those claims is not granted for patent yet. The following case willfall within this interpretation: When an EPO examiner sends a notificationspecifying the EPO’s intention to grant listed in Annex F.


(c) All claims on file, as originally filed or as amended, for examinationunder the PPH must sufficiently correspond to one or more of thoseclaims indicated as allowable in the EPO.

Claims are considered to "sufficiently correspond" where,accounting for differences due to translations and claim format, the claimsin the Rospatent are of the same or similar scope as the claims in the EPO,or the claims in the Rospatent are narrower in scope than the claims in theEPO corresponding application(s). In this regard, a claim that is narrower in scope occurs when aEPOclaim is amended to be further limited by an additional feature that issupported in the specification (description and/or claims).

A claim in the Rospatent which introduces a new/different category of claims to those claims indicated as allowable in the EPO is not considered to sufficiently correspond. For example, the EPO claims only contain claims to a process of manufacturing a product, then the claims in the Rospatent are not considered to sufficiently correspond if the Rospatent claims introduce product claims that are dependent on the corresponding process claims.

A request on the amendment of the dossier of the application shallbe filed in case the claims of the initial application are not identical withthe claims of the invention considered patentable/allowable in the EPO,and a corresponding fee shall be paid, if necessary.

Any claims amended or added after the grant of the request forparticipation in the PPH pilot program need to sufficiently correspond tothe claims indicated as allowable in the EPO application.


(d) The Rospatent has not begun examination of the application (anexample is provided in ANNEX I, Figure N).


2. Documents to be submitted


(a) Copies of all office actions1 in the EPO, which were sent for thecorresponding application by the EPO, and translations of them2

Both Russian and English are acceptable as translation language.


(b) Copies of all claims determined to be patentable/allowable by the EPO, and translations of them.

Russian and English are acceptable as translation language3.


(c) Copies of references cited by EPO examiner

If the references are patent documents, the applicant doesn’t have tosubmit them because the Rospatent usually possess them. When the Rospatent does not possess the patent document, the applicant has tosubmit the patent document at the examiner’s request. Non-patentliterature must always be submitted.

The translations of the references are unnecessary.


(d) Claims correspondence table (if not included into PPH Request form)


(e) The applicant must file the request for substantive examination

It is required to file the request for substantive examination incompliance with paragraph 1 Article 1386 of the Civil Code of theRussian Federation and to pay the fee for filing of this request.

When the applicant has already submitted above documents 2.(a) to2.(d) to the Rospatent through simultaneous or past procedures, the applicantmay incorporate the documents by reference and does not have to attach them.

If any of the documents identified in points (a) and (b) above are available via the respective Dossier Access System, the applicant does not need to submit a copy thereof, but has to provide alist of the documents to be retrieved. In case of unavailability of these documents to be retrieved electronically, the examiner may request an applicant to submit necessary documents in paper.

When the application doesn’t fulfill the requirement mentioned above,the request of an examination under PPH is not accepted. In that case, the Rospatent will notify that and the reason for it to the applicant (or the representative).

Theapplicant will be given one opportunity to perfect the PPH request. If the PPH requestwill not perfected the application will await action in its regular turn.


Part II

PPH using the PCT international work products from the EPO


Applicants can request examination by a prescribed procedure includingsubmission of relevant documents on an application which is filed with the Rospatent and satisfies the following requirements under the Rospatent-EPO Patent Prosecution Highway pilot program based on PCT international work products (PCT-PPH pilot program).

When filing a request for the PCT-PPH pilot program, an applicant mustsubmit a request form. One can use the Global PPH form or any other PCT-PPH form available at the Rospatent web-site http://www.rupto.ru/activities/inter/bicoop/pph.

The Offices may terminate the PCT-PPH pilot program early if thevolume of participation exceeds manageable level, or for any other reason.

Notice will be published if the PCT-PPH pilot program is terminated before XX XXX 201X. .


1. Requirements


The application which is filed with the Rospatent and on which the applicantfiles a request under the PCT-PPH must satisfy the following requirements:

(1) The latest work product in the international phase of a PCTapplication corresponding to the application (“international work product”),namely the Written Opinion of International Search Authority (WO/ISA), theWritten Opinion of International Preliminary Examination Authority(WO/IPEA) or the International Preliminary Examination Report (IPER),indicates at least one claim as patentable/allowable (from the aspect ofnovelty, inventive steps and industrial applicability).

Note that the ISA and the IPEA which produced the WO/ISA,WO/IPEA and the IPER are limited to the EPO or Rospatent. The priority claim can be to an application in any Office, see example A’ inAnnex II (application ZZ can be any national application).

The applicant cannot file a request under PCT-PPH on the basis of anInternational Search Report (ISR) only.

In case any observation is described in Box VIII of WO/ISA,WO/IPEA or IPER which forms the basis of a PCT-PPH request, theapplicant must explain why the claim(s) is/are not subject to the observationwhether or not an amendment is submitted to correct the observation noted inBox VIII. The application will not be eligible for participating in PCT-PPHpilot program if the applicant does not explain why the claim(s) is/are notsubject to the observation. In this regard, however, it does not affect thedecision on the eligibility of the application whether the explanation isadequate and/or whether the amendment submitted overcomes theobservation noted in Box VIII.

(2) The relationship between the application and the correspondinginternational application satisfies one of the following requirements:

(A) The application is a national phase application of thecorresponding international application. (See Diagrams A, A’, and A’’ in Annex II)

(B) The application is a national application as a basis of thepriority claim of the corresponding international application. (SeeDiagram B in Annex II)

(C) The application is a national phase application of aninternational application claiming priority from the correspondinginternational application. (See Diagram C in Annex II)

(D) The application is a national application claimingforeign/domestic priority from the corresponding internationalapplication. (See Diagram D in Annex II)

(E) The application is the derivative application (divisionalapplication and application claiming domestic priority etc.) of theapplication which satisfies one of the above requirements (A) – (D). (SeeDiagrams E1 and E2 in Annex II)

(3) All claims on file, as originally filed or as amended, forexamination under the PCT-PPH must sufficiently correspond to one or moreof those claims indicated as allowable in the EPO as ISA/IPEA.

Claims are considered to "sufficiently correspond" where, accounting for differences due to translations and claim format, the claims in the Rospatent are of the same or similar scope as the claims in the EPO, or the claims in the Rospatent are narrower in scope than the claims in the EPO.

In this regard, a claim that is narrower in scope occurs when an OEEclaim is amended to be further limited by an additional feature that is supportedin the specification (description and/or claims).

A claim in the Rospatent which introduces a new/different category ofclaims to those claims indicated as allowable in the EPO is not considered to sufficiently correspond. For example, the EPO claims only contain claims to a process of manufacturing a product, then the claims in the Rospatent are not considered to sufficiently correspond if the Rospatent claims introduce product claims that are dependent on the corresponding process claims.

A request on the amendment of the dossier of the application shall be filedin case the claims of the initial application are not identical with the claims ofthe invention considered patentable/allowable in the EPO, and a correspondingfee shall be paid, if necessary.

Any claims amended or added after the grant of the request for participation in the PCT-PPH pilot program need to sufficiently correspond to the claims indicated as allowable in the latest international work product.

(4) The Rospatent has not begun examination of the application at thetime of request under PCT-PPH.


2. Documents to be submitted


The applicant must submit the following documents attached to the PCT-PPHrequest form in filing a request under PCT-PPH.

Some of the documents may not be required to be submitted in certain cases.

Please note that the name of the documents omitted to submit still have to belisted in “The Request forPCT-PPH Program”.

(1) A copy of the latest international work product which indicated theclaims to be patentable/allowable and their English or Russian translations.

In case the application satisfies the relationshipI.(2)(A), the applicantneed not submit a copy of the International Preliminary Report onPatentability (IPRP) and any English translations thereof because a copy ofthese documents is already contained in the file-wrapper of the application. Inaddition, if the copy of the latest international work product and the copy ofthe translation are available via PATENTSCOPE,an applicant need not submit these documents, unless otherwise requested by the Rospatent.

(WO/ISA and IPER are usually available as “IPRP Chapter I” and “IPRPChapter II” respectively in 30 months after the priority date.)

(2) A copy of a set of claims which the latest international workproduct of the corresponding international application indicated to bepatentable/allowable and their Russian orEnglish translations.

If the copy of the set of claims which are indicated to bepatentable/allowable is available via “PATENTSCOPE (registeredtrademark)” (e.g. the international Patent Gazette has been published), an applicant need not submit these documents unless otherwise requested by the Rospatent.

(3) A copy of references cited in the latest international work productof the international application corresponding to the application.

If the reference is a patent document, the applicant is not required tosubmit it. In case the Rospatent has difficulty in obtaining the document,however, the applicant may be asked to submit it. Non-patent literature mustalways be submitted. Translations of cited documents are unnecessary.

(4) It is required to file the request for substantive examination in compliance with paragraph 1 Article 1386 of the Civil Code of the Russian Federation and to pay the fee for filing of this request.

When an applicant has already submitted the above mentioned documents (1)-(4) to the Rospatent through simultaneous or past procedures, the applicant may incorporate the documents by reference and is thus not required to attach the documents.

Rospatent will treat a PPH request as a request for accelerated examination under thePPH pilot program. Where the PPH request is granted, the Rospatent application will be processed in an accelerated manner. In those instances where the PPH requestdoes not meet all the requirements and procedures set forth above, the applicant willbe notified and the defects in the request will be identified. The applicant will be givenone opportunity to correct formal deficiencies identified in the request. If the requestis not corrected, the application will be taken out of the PPH program and theapplicant will benotified.

When the application doesn’t fulfill the requirement of 1. and 2. above,the request of an examination under PPHis not accepted. In that case, the Rospatent will notify that and the reason for it to the applicant (or the representative).Theapplicant will be given one opportunity to perfect the request. If the requestwill not perfected the application will await action in its regular turn.




1  Office actions are documents which relate to substantive examination.

2  Machine translations will be admissible, but if it is impossible for the examiner to understand the outline of the translated office action or claims due to insufficient translation, theexaminer can request the applicant to resubmit translations.

3  Machine translations will not be admissible.




ANNEX I

ANNEX II



Дата последнего обновления: 30.06.2017 15:59
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