Patent Prosecution Highway (PPH) at the DKPTO

Christina Klingenberg Director of Patents Danish Patent and Trademark Office What is PPH?

Country A (OEF)

Application Allowed Application OfficeOffice WrittenWritten AmendAmend XX ActionAction Claims mentment X

Explanation Country B (OLF) Allowed Claims Claims X X’ Corresponding RequestRequest Additional Application forfor PPHPPH Search and Accelerated Exam X’ Examination Background for DKPTO’s participation in the PPH program

Main challenge for users and society:

–Clotting in the global patent system => legal uncertainty + major impact on global economy

Objectives:

–Combatting backlogs of unprocessed applications at patent offices –Make better use of global patent office resources –Introduce a mechanism to learn from other patent offices work –Provide fast-track for DK users to foreign markets

DKPTO made its first PPH agreement with the Japan Patent Office in 2008. DKPTO’s PPH programs

As from January 1, 2013

As from January 6, 2014

Global PPH (21) : Denmark, USA, Japan, Korea, Canada, United Kingdom, Australia, Norway, Finland, Spain, Portugal, Russia, Sweden, Israel, Hungary, Iceland, Nordic Patent Institute, Austria, Germany, Estonia and Singapore Global PPH main principles

–The application before the Office of Earlier Examination (OEE) and the Office of Later Examination (OLE) have the same earliest date (priority/filing)

–The Office of Earlier Examination has found at least one claim to be allowable

–All claims presented for examination must sufficiently correspond to one or more claims found allowable by the Office of Earlier Examination

–The Office of Later Examination has not begun examination of the application ”Sufficiently corresponding claims”

Main requirement – similar or narrower scope: –Claims in applications must be of the same or similar scope, or the claims in the OLE application are narrower in scope

Narrower scope of claims: –Narrower claims (additional features) must preferably be presented in dependent form, and be supported in the description

Changing claim category: –Change of claim category is OK if the new claim would be dependent on the allowed patentability of old claim, e.g. – A OEE process claim changed to a product claim not OK – A OEE product claim changed to an OLE use claim/composition comprising product is OK

Other information: –Differences due to translation OK –Differences in claim format OK Global PPH – new possibility (the mottainai feature)

OLE Request application for PPH

Priority

claim

Indication of OEE patentable claim(s) or application Grant DKPTO PPH Statistics

Number of PPH requests received at DKPTO : 17 (of those 3 under GPPH)

– From US: 12 – From Japan: 4 – From PCT authority Nordic Patent Institute: 1 – Vast majority in IPC Class F03D (Wind Motors)

Processing times at the DKPTO : – From PPH request to First Office Action = 3,0 month (7 month) – From PPH request to Final Action = 20,8 month (25 month)

DKPTO is mainly used as an Office of First Filing for subsequent filings abroad:

–Total PPH requests abroad: 318 – Number of PPH request to the US: 180 – Number of PPH requests to Japan: 52 – Number of PPH request to Korea: 31 – Number of PPH requests to China: 48 Patent Process

PCT, EP, country Grant Priority year

0 6 12 18

Further processing Search report/ Written Opinion Refusal Publication Processing of a PPH request in the DKPTO

1. PPH request may be filed by any means to the DKPTO – either with the application or later (even after examination has begun) 2. The Formalities Unit will mark the application ”PPH” => will automatically be put on subsequent fast-track 3. The patent examiner receive application after clearing of formal deficiencies in Formalities Unit 4. The examiner will Search & Examine the application – including the information provided with the PPH request – Deficient PPH request may be corrected an unlimited number of times by applicant before the examiner process the application – Search & Examination report issued within 3 month from PPH request – Any subsequent Office Action issued within 1 month from applicants reply

5. PPH is free of charge at the DKPTO PPH Request Package at DKPTO

• A PPH request form

• A copy of the ”office actions” from OFE regarding the OFE-application - In either English or Danish

• A copy of the allowed patent claims in English or Danish language

• A ”Claim correspondence table”

• A copy of the documents cited by the OFE

Note: 1. If DKPTO has access to other offices file-inspection systems, ”office actions” may not be required filed by an applicant 2. If ”documents cited” are available through Epoque system applicant need not file these Further information

DKPTO’s PPH website: http://www.dkpto.org/ip-law--policy/international- patenting/patent-prosecution-highways--- pph.aspx

• About PPH • Applicant’s guide • Forms • Link to SIPO PPH-site

The global PPH website: http://www.jpo.go.jp/ppph-portal/index.htm