EPO and JPO Suspend Patent Prosecution Highway program with both ROSPATENT and EAPO
Following Russia’s invasion of Ukraine, the Patent Prosecution Highway program between the European Patent Office (EPO) and the Russian Patent Office (ROSPATENT), between the EPO and the Eurasian Patent Organization (EAPO), and between the Japan Patent Office (JPO) and both ROSPATENT and EAPO, have been suspended indefinitely.
What is PPH?
PPH speeds up the examination process for corresponding applications filed in participating patent offices.
Requesting PPH Treatment
An applicant may request accelerated processing for a patent application if the invention of the patent application has been submitted to another patent office in a previous patent application. Requesting PPH is free of charge.
Requirements for Requesting PPH
- the first and second patent application must have the same earliest date, i.e. priority or filing date
- the first application must have at least one claim that is patentable/allowable,
- all claims in the first and second patent application need to correspond sufficiently with each other, claims are considered to fulfil this requirement if they have the same, a similar or a narrower scope,
- substantive examination of the second patent application must not have begun at the time the PPH request is filed.
Suspensions Following Russia’s Invasion of Ukraine
Effective April 25, 2022, the EPO will no longer grant PPH requests where such requests are based on examination performed by ROSPATENT. Furthermore, the EPO will remove the PPH status in pending cases and return those patent applications to the regular processing and examination queue. The EPO announcement may be viewed at https://www.epo.org/law-practice/legal-texts/official-journal/2022/04/a45.html .
Likewise, also effective April 25, 2022, the EPO will no longer grant PPH requests that are based on work performed by the EAPO. The EPO announcement may be viewed at https://www.epo.org/law-practice/legal-texts/official-journal/2022/04/a44.html.
The JPO has taken the same actions with respect to both ROSPATENT (see https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/japan_russia_highway.html) and EAPO (see https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/japan_eurasia_highway.html), both measures being effective as of May 10, 2022.
All of these actions follow identical measures previously taken by the United States Patent and Trademark Office (USPTO) effective March 11, 2022 (see https://www.uspto.gov/about-us/news-updates/uspto-statement-engagement-russia-and-eurasian-patent-organization). Of the announcements by the EPO, JPO, and USPTO, only the USPTO’s announcement specifically mentions the events in Ukraine.
Participating Patent Offices
As of March 11, 2022, the USPTO has PPH programs with Australia (IP Australia), Austria (APO), Canada (CIPO), Chile (INAPI), China (CNIPA), Colombia (SIC), Denmark (DKPTO), Europe (EPO), Estonia (EPA), Finland (NBPR), Germany (DPMA), Hungary (HPO), Iceland (IPO), Israel (ILPO), Japan (JPO), Korea (KIPO), New Zealand (IPONZ), Nordic Patent institute (NPI), Norway (NIPO), Peru (INDECOPI), Poland (PPO), Portugal (INPI), Singapore (IPOS), Spain (IPOS), Sweden (PRV), United Kingdom (UKIPO), and Visegrad Patent Institute (VP).
As of April 25, 2022, the EPO has PPH programs with Australia (IPA), Brazil (INPI), Canada (CIPO), China (CNIPA), Colombia (SIC), Israel (ILPO), Japan (JPO), Korea (KIPO), Malaysia (MyIPO), Mexico (IMPI), Peru (INDECOPI), the Philippines (IPOPHL), Singapore (IPOS), and United States (USPTO).
