1. 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

2. PPH: the EPO pilots - current status
Bilateral PPH pilot between the USPTO and the EPO
launch date 29 September 2008
Bilateral PPH pilot between the JPO and the EPO
launch date 29 January 2010
Trilateral PCT PPH pilot
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 pilot programme
Requests filed at the EPO
Eligible requests
Trilateral PCT - PPH
(launch )
209
199
Bilateral JPO – EPO
394
373
Bilateral USPTO - EPO
(launch , revised
from )
254
182
TOTAL
857
754
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
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.

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%
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

10. 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

11. PPH: File selection effect when filing for PPH
Population
(Date of entry to regional phase >= )
% 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%.

12. PPH: Pendency to first action
Population
(Date of entry to regional phase >= ).
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

13. Average Number of Claims by PPH Programme
Eligible PCT-PPH requests
All claims at the OFF:
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:
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:
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?
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