As a result of the massive growth of patent applications in the last two decades, most of the offices in charge of their examination have to face important delays. The time required to obtain a patent before some of these offices can sometimes exceed five years.
Controlling the length of the examination procedure is an essential part of setting an efficient intellectual property strategy.
The applicant might sometimes have an interest in delaying the examination procedure. In that way, he can limit the legal costs until the economic value of the patent is established, while keeping open the possibility of changing the scope of the patent. For example, when the applicant is still choosing the best mode for carrying out his invention or when he wants to take into account the competing products entering the market.
In many circumstances, however, the applicant needs to diminish the duration of the examination procedure. This is particularly the case when the invention involves a short life cycle product which will rapidly be improved or substituted by a more efficient one. Moreover, since the courts cannot decide in infringement matters as long as the patent is not granted, the duration of the examination procedure may be critical when a counterfeiting product has been identified.
Eventually, obtaining a patent as soon as possible is also important when the applicant wishes to license his invention or to attract investors for the purpose of raising funds.
Patent offices offer applicants many options for expediting the examination of their patent applications.
a) Proceeding before the INPI (National Institute of Intellectual Property)
The INPI set up since 22nd December 2015 an accelerated granting proceeding for French patent applications which is free and has to be submitted by electronic means.
Patent applications for which an accelerated granting proceeding has been requested are granted within 20 months from the application, except in some cases in particular when the preliminary research report quotes relevant prior art or when the applicant amends his application. Therefore, this program’s exclusion clauses exclude a large part of French patent applications.
However, the accelerated treatment is combined with the early publication of the patent application within 10 months from the application, except when the application is asserted of an intern or foreign priority request.
b) Proceeding before the European Patent Office (E.P.O.)
Since 2014 the European Patent Office provides for a program called “Early Certainty” aiming to shorten the patent granting proceeding, with no exclusion.
Thanks to this initiative, since July 2016, research reports are presented to applicants within 6 months from the filling date of European patent applications. The next purpose is to shorten the average delay to 12 months between the examination request and the grant of the patent.
Furthermore, applicants who need a faster research or examination can request that their applications be treated in the PACE Program. PACE requests are submitted online for free and are excluded of public inspection.
However, a patent application will be removed from the program if the applicant requires an extension of the response delay to a communication from the European Patent Office.
c) The program PPH “Patent Prosecution highway”: an Enhanced international cooperation
Patent law is currently based, to a great extent, on national or regional patents which are granted by a State, or a group of Member States, and that provide a monopoly limited to the corresponding territory. As a result, each national and regional office conducts an independent examination. This generates higher costs due to the repeated examinations and gives rise to patents with potentially very different scopes.
Since 2006 and the signing of the first PPH bilateral agreement between the Japanese and the American offices, several bilateral and multilateral PPH programs have been created between the offices in charge of patent examination. The idea is to pool research and examination efforts. Since 2014, the European Patent Office (EPO) is involved in the PPH pilot program within the “IP5” group. It is the name given to a forum of the five largest intellectual property offices in the world (United States, Europe, Japan, Korea and China). More recently, the EPO has signed other bilateral agreements (with Canada, Israel, Mexico, Singapore, the Eurasian Office, Australia, Colombia, Malaysia, the Philippines and Russia).
The PPH programs enable the applicant to ask a patent office to take into account the results of the research and examination work that has been conducted on the invention by another office.
PPH programs also enable the applicant of patent whose claims have been found patentable by a first office to ask an accelerated procedure from a second office provided that it involves the same invention.
How to initiate an accelerated PPH procedure
Applicants who wish to initiate a PPH procedure must satisfy the following conditions:
- There must be a patent application to be examined whose examination has not yet started. The filing date of the application must be the same as the one of a patent that has already been examined for the invention at issue (because of a priority claim usually)
- The application that has already been examined must have one or several claims found valid by the first patent office.
- The claims of the application to be examined by the second patent office should correspond to the claims that were found valid.
- The procedural documents (official letters and responses) must be communicated, possibly with their translations, to the second office by the application or through communications between the offices.
What is a PPH examination procedure?
From the date of reception of a proper request for PPH examination, the second office starts an accelerated processing. The official letters are issued as soon as possible. The response time set for the applicant can also be tighter. Generally, the PPH examination does not involve any additional fee for the applicant.
The application that is examined by the first office can be a national or a PCT international filing1. In the latter case, the PCT system brings two advantages that can reduce the charges imposed on the applicant:
- The PCT procedural documents are put online by the WIPO (PATENTSCOPE service), and can be accessed by the second office.
- The opinion taken by the first office as part of the PCT procedure (international search or examination reports) is translated to English by the WIPO.
In concert with these guiding principles, slight differences can exist from a patent office to another.
How does the PPH examination procedure benefit the applicant?
PPH programs do not provide any guarantee for a fully unified substantive examination, in particular because of the potential differences regarding the assessment of the patentability criteria.
However, statistics show higher patenting rates and a better chance for the direct granting of a patent, with no official letters. It thus offers a faster procedure than the traditional one. Therefore, PPH examination is a useful option for the applicants wishing to accelerate the granting of their patents in a country where such an agreement has been made.
1 Patent Cooperation Treaty