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 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 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

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

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

Envisaged implementation PPH: the EPO pilots - participation figures PPH pilot programme Requests filed at the EPO Eligible requests Trilateral PCT - PPH (launch 29.01.2010) 209 199 Bilateral JPO – EPO 394 373 Bilateral USPTO - EPO (launch 29.09.2008, revised from 29.01.2010) 254 182 TOTAL 857 754 PPH filing at the EPO has been at a moderate level

PPH filings in the global context (at end June 2011) [1] (a) OSF percentage share of worldwide PPH filings PPH Scheme EPO JPO USPTO Other PCT-PPH 5.2% 27.8% 66.6% 0.4% Bilateral PPH 4.4% 14.0% 48.6% 33.0% (of which Canada=15.6%, KIPO=11.7%) (b) OFF percentage share of worldwide PPH filings PPH Scheme EPO JPO USPTO Other PCT-PPH 30.4% 36.8% 3.2% 29.6% (of which KIPO=25.6%) Bilateral PPH 1.6% 51.5% 33.1% 13.8% (of which KIPO=8.2%, UKIPO=1.8%) [1] Data from the PPH portal statistics site, 4 November 2011. http://www.jpo.go.jp/cgi/cgi-bin/ppph-portal/statistics/statistics.cgi

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

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

Envisaged implementation PPH: the EPO pilots - technology area distribution 16% 82% JC abbreviation Name of joint cluster (Berlin cluster assigned by technical area) AVM Audio Video Media BIO Biotechnology CET Civil Engineering and Thermodynamics COM Computers ELE Electronics EST Electricity and Semiconductor Technology HN Human Necessities HP Handling and Processing IC Industrial Chemistry MO Measuring and Optics PAOC Pure and Applied Organic Chemistry POL Polymers TEL Telecom VGT Vehicles and General Technology

PPH: the EPO pilots - outcome of first action PPH pilot programme Eligible requests Number of processed files at EPO to date % positive EPO written opinions Trilateral PCT-PPH 125 57 9% Bilateral JPO-EPO 296 190 7% Bilateral USPTO-EPO 104 55 4% Overall 525 302

PPH: File selection effect when filing for PPH Population (Date of entry to regional phase >= 29.01.2010) % with only A citations in ISR % of the EPO searches citing no additional X, Y or E documents PCT-PPH files with first action in European phase 75% 35% Non-PPH accelerated search reference population weighted by ISA to match the above PCT-PPH population 33% 26% The PCT-PPH ISR A-only rate of 75% in the File selection effect table are for the 57 applications with a completed European (supplementary) search. Among all eligible PCT-PPH requests the ISR A-only rate is very similar: 74%.

PPH: Pendency to first action Population (Date of entry to regional phase >= 29.01.2010). The start date of the pendency calculation is in brackets. Number of applications Average pendency to first action in days All PPH files with a first action (PPH request date) 302 143 Euro-PCT bis files with ISA JPO or USPTO from all PPH programmes with a first action (PPH request date) 199 156 Non-PPH Euro-PCT bis files with ISA JPO or USPTO and accelerated search requested and European supplementary search completed (date of request for accelerated search) 499 188

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

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'.

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