The Highway opens up to more traffic, but where does it lead?

The evening before oral proceedings,
Jasper couldn't help worrying that
his profits would not be big enough
to sway the Examining Division.

Below are three of the many possible strategies available for arguing inventive step at the EPO, deliberately chosen to span the full range of advisability, ranging from rock solid (strategy 1) to "I wouldn't try this if I were you" (strategy 3):

1.    Follow the problem-and-solution approach to the letter

2.    Argue that the suggested prior art combination was the result of using impermissible hindsight

3.    Argue that the unexpected commercial success of the invention provides a more reliable indicator of inventive step than the problem-and-solution approach

In this continuum of possible strategies, where do you think the following argument belongs relative to numbers 1, 2 and 3?

        Argue that the EPO should allow the claims because they have been amended in line with those allowed by the USPTO.

This is a line of argument which is frequently advanced by clients and foreign associates (sometimes, alas, it is the only reason they provide in their instructions, despite there being no overlap whatsoever between the EPO objections and those which may have been encountered abroad). This Kat tends to rate the prospects of it succeeding considerably below strategy 2 above, and accordingly he tends not to argue based on USPTO allowance for fear that it will result in one of two reactions from the EPO examiner:

       "Yes, we're all very happy to hear about your success before the USPTO, but you see we have this big problem with D1 and D3 -- they render claim 1 obvious. And the US examiner never specifically considered the argument as I have set it out. So let's just see where the problem-and-solution analysis takes us, shall we?" 

or

       "Errm, the US claims were not just amended during prosecution, they were pretty much rewritten. Just look at all that underlining in claim 1! And claim 7 seems to have popped out of nowhere, fully formed like Botticelli's Venus. Is this one of those TV shows where a hidden camera somewhere is recording my reaction, or is this simply a cunning ploy to get me to issue an invitation to the Hague for oral proceedings?"

The IPKat's musings in this regard were triggered by the EPO announcing that has recently extended the life of the Patent Prosecution Highway (PPH) pilot programme, which it runs in co-operation with the USPTO and JPO (Japanese Patent Office). The trilateral programmes will run for a further two years, and they have liberalised the entry requirements, meaning that a greater number of EP applications will now qualify for entry onto the Highway.  Essentially, the new rules mean that it is no longer a requirement that the EP case claims priority from a JP or US counterpart or vice versa to qualify, or that they stem from the same PCT application; it is sufficient that they come from the same patent family, sharing a common priority claim. 

The announcements are carried in the most recent Official Journal (see the notices here, here and here) and contain a bewilderingly impressive range of examples of complex family relationships in the form of flowcharts showing how related cases qualify for PPH, one example of which is illustrated below. 

One of the thirteen examples provided showing how a pair of EP and US cases might be sufficiently related to benefit from PPH

(As an aside, the IPKat notes that the USPTO has taken to calling this revised system “PPH 2.0” - which surely signifies that the new incarnation of PPH must be infinitely better than that grubby old 1.x version. The JPO, in contrast, have gone with a lyrical and poetic style – they call it “PPH Mottainai”, the latter Japanese word meaning "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized".)

The PPH is essentially marketed (to EPO users, but it works reciprocally) as a way to get accelerated and more efficient prosecution at the EPO based on a positive indication of patentability in the US or Japanese offices.

Mottainai - so much better than "2.0"
Picture courtesy of 5chw4r7z.com

The system still works the same as it previously did at the EPO: upon getting a notice of allowance from, say, the USPTO, and provided that examination has not yet started in the EPO, you can ask to avail of PPH, leading the EP application to be "processed in an accelerated manner while at the same time allowing the offices involved to exploit available work results" (wouldn't it be great if the official EPO notices were written with a dose of the Japanese lyrical style? - Merpel). You can also request PPH even earlier, on the basis of a positive PCT search report or examination report prepared by the USPTO or JPO.

The acceleration part is easy to understand: a PPH application is fast-tracked using the EPO’s long-running PACE programme for accelerated search and examination. Pausing at this juncture, acceleration under PACE  is available for any EP application, any time based on a simple request with no qualification criteria like the PPH. So there's no extra acceleration gained by requesting PPH treatment.

Do PPH examiners follow one another's lead like this?Or is
the picture just included because these are cats?

What about the second benefit, the EPO can exploiting the USPTO’s “work results”? The IPKat does not believe that an EPO examining division can allow itself to be greatly influenced by what happened in another office. Articles 94(3) and 97 oblige the EPO examining division to make its own determination of whether or not the application meets the requirements of the EPC. There is no provision in the EPC or in the Guidelines for any shortcuts or for any delegation of decision-making based on the results of foreign prosecution, so it’s difficult to see how the views of the USPTO or JPO examiner can be taken into account to any meaningful extent. As a practical issue, probably 60-80% (this is a pure guesstimate) of allowed US cases have been amended during prosecution with amendments that will raise some objection under the EPO's Article 123 practice, so there's no hope of getting the same claims allowed anyway. 

True, using the other office's "work results" does suggest that the EPO examiner can streamline his or her search based on the work done abroad, but bear in mind that the EPO Examiner usually has access to those foreign search results regardless of whether the EP case has been marked for PPH treatment.

The IPKat therefore genuinely struggles to identify any benefits of PPH treatment at the EPO, when compared with the simple tactic of telling the EP examiner that the claims are the same as those allowed in another trilateral office at the same time as requesting PACE accelerated search and examination. The IPKat would genuinely be delighted to learn that PPH gave some proper advantage beyond what one gets by simply requesting PACE, if someone can enlighten him.

The network of PPH co-operation

What about in the USPTO or JPO – are the benefits easier to quantify? And what about readers' experiences before other patent offices (PPH may have started life as a bilateral transatlantic affair before blossoming into a trilateral ménage, but as of today there are no fewer than 24 patent offices participating in some form of PPH co-operation)?

The JPO keeps a portal website on the PPH with a surprising wealth of information, including statistics which show that usage has been relatively modest at the EPO - in the three-and-a-bit years since PPH began (from September 2008 to December 2011), there were 684 PPH requests filed at the EPO. In comparison, there were 6354 such requests filed at the USPTO and 1791 at the JPO. (The US and JP figures are largely based on co-operation between those two offices, rather than e.g. US and Japanese applicants requesting PPH treatment based on the granting of corresponding EP cases.)

Let's give everyone priority over the rest of the traffic

Maybe the issue with PPH at the EPO is that it is comparatively unattractive only because acceleration under the PACE programme is so readily available. The IPKat wonders if this universal availability is necessarily a good thing. After all, if every driver is given a police car with permanently flashing blue lights, nobody gets the priority needed to bypass rush-hour traffic in an emergency. Indeed the EPO's own PACE notice (linked to above) suggests that many applicants request acceleration of all of their cases, which inevitably gums up the system for everyone else. Is the PACE system over-used? Does the EPO exercise its power to require serial requesters of PACE to limit their selections? Would PACE work better for the truly urgent cases if there was some threshold to qualifying for this acceleration? If some restriction was introduced for PACE it would surely lead to an increased uptake for PPH processing.