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USPTO/EPO clogs up the prosecution highway with red tape

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The EPO has just announced that the Patent Prosecution Highway (their capitals) is due to begin on 29 September.  This scheme will allow patent applications that have been examined and allowed in either the USPTO or the EPO to be fast-tracked in the other office.  The programme will run for a trial period of 1 year, after which the offices will assess whether it is worth being fully implemented.  

(1) The EP application is a Paris Convention application validly claiming priority to one or more applications filed in the USPTO. [The IPKat presumes this rules out the majority of applications, which use the PCT system]

(2) The USPTO application(s) have at least one claim that was determined by the USPTO to be patentable/allowable. Applicant must submit a copy of the patentable/allowable claims from the USPTO application(s). [Why is this even necessary? Everyone knows how to use the EPO and USPTO register nowadays, don't they? Isn't this simply red tape for the sake of it?]

(3) All the claims in each EP application for which a request for participation in the PPH pilot programme is made must sufficiently correspond or be amended to sufficiently correspond to the patentable/allowable claims in the USPTO application(s) [This is very odd. Why not just allow applicants to say: "We want to go with the claims allowed in EPxxxxxxx/USxxxxxxx"?]. Claims will be considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claims are of the same or similar scope [If it is simply a matter of format, surely the US or EP examiner can easily suggest the required amendments?]. Applicant is also required to submit a claims correspondence table in English [Not French or German then?]. The claims correspondence table must indicate how all the claims in the EP application correspond to the allowable claims in the USPTO application(s). [Surely pointless: see above]

(4) Examination of the EP application for which participation in the PPH pilot programme is requested has not begun. [Doh.  What would be the point of doing it otherwise?]

(5) Applicant must file a request for participation in the PPH pilot programme programme. A request form (EPA/EPO/OEB 1009) will be available from the EPO website at http://www.epo.org on 29 September 2008. [Oh dear, more forms.  What is the problem with saying "We request that this application is entered into the PPH pilot programme? Is this not clear enough?]

(6) Applicant must submit a copy of all the Office actions (which are relevant to patentability) from each of the USPTO application(s) containing the allowable claims that are the basis for the request. [Yet again, more unnecessary paperwork.  All the prosecution history from each office is available online to each examiner, who can peruse it at their leisure.  Why the need for more photocopying?]

(7) Applicant must submit copies of all the documents cited in the USPTO Office action and translations thereof in one of the EPO official languages except EP patents or EP patent application publications. [Yet again, totally unnecessary, since everything is readily available online]

The IPKat can see how this sort of programme could ultimately be useful to the EPO and USPTO, and to a limited selection of applicants, but thinks that the whole thing is so unnecesarily bound up in red tape that there are distinct disincentives to use it.  Assuming it does not apply to ex-PCT applications, the number of applications that will fall within the criteria are in any case inevitably going to be quite small (but this is probably deliberate).  

Full post as published by IPKat on September 27, 2008 (boomark / email).