NBPR PPH Guidelines for DPMA filers

Transcription

1 Procedures to file a request to the National Board of Patents and Registration of Finland for the Patent Prosecution Highway Pilot Program between the German Patent and Trade Mark Office () and the National Board of Patents and Registration of Finland () The outline of the Patent Prosecution Highway Pilot Program The PPH pilot program enables an whose s have been determined to be by the German Patent and Trade Mark Office () as Office of Earlier Examination (OEE) to undergo an accelerated examination in the with a simple procedure according to a request from an applicant. to the [0001] An applicant should file a request for accelerated examination under the Patent Prosecution Highway (PPH) to the by submitting an requesting accelerated examination under the PPH accompanied by the relevant supporting documents. The requirements for an to the for accelerated examination under the PPH are given in the following sections. Relevant supporting documentation is discussed in a later section (paragraphs [0003] to [0005]) as is the general procedure envisaged at this time (paragraph [0006]). The request form is available online at the PPH website at Requirements for requesting accelerated examination under the PPH Pilot Program at the [0002] There are four requirements for requesting accelerated examination under the PPH pilot program at the. These are: a) Both the on which PPH is requested and the (s) forming the basis of the PPH request shall have the same earliest date (whether this be a priority date or a filing date). For example, the (including national phase ) may be either: Page 1 / 15

2 (Case I) an which validly s priority under the Paris Convention from the (s) (examples are provided in ANNEX 1, Figure A, B, C and D), or (Case II) an which provides the basis of a valid priority under the Paris Convention for the (s) (including national phase (s)) (examples are provided in ANNEX 1, Figure E, F and G), or (Case III) an which shares a common priority document with the (s) (including national phase (s)) (examples are provided in ANNEX 1, Figure H, I, J, K, L and M), or (Case IV) a national phase where both the and the (s) are derived from a common international having no priority (an example is provided in ANNEX 1, Figure N). The, which validly s priority to multiple or s, or which is the divisional validly based on the originally filed that is included in (I) to (IV) above, is also eligible. b) At least one corresponding has one or more s that are determined to be /allowable by. Claims clearly identified to be in the latest office action at examination stage are able to function as the basis for a request for accelerated examination under the PPH pilot program. This is the case even though the, which includes those s, is not granted for patent yet. office actions include "Prüfungsbescheid" and "Erteilungsbeschluss". c) All s in the (for which an accelerated examination under the PPH pilot program is requested) must sufficiently correspond to one or more of those s determined to be /allowable in the. Claims are considered to "sufficiently correspond" where, accounting for differences due to translations and format, the s in the are of the same or similar scope as the s in the, or the s in the are narrower in scope than the s in the. In this regard, a that is narrower in scope occurs when a is amended to be further limited by an additional feature that is supported in the specification (description and/or s). A in the which introduces a new/different category of s to those s indicated as allowable in the is not considered to sufficiently correspond. For example, if the s only contain s to a process of manufacturing a product, then the s in the are Page 2 / 15

3 not considered to sufficiently correspond if the s introduce product s that are dependent on the corresponding process s Any s amended or added after the grant of the request for participation in the PPH Pilot Program do not need to sufficiently correspond to the s indicated as /allowable in the. d) The has not yet issued a Communication of Acceptance. (The heading of the communication in Finnish is Hyväksyvä välipäätös. ) Required documents for accelerated examination under the PPH Pilot Program at the [0003] The following documentation is needed to support a request for accelerated examination under the PPH pilot program at the : a) a copy of all office actions (which are relevant to the patentability) in the corresponding (s), and translations of them. Office actions are documents which relate to substantive examination and which were sent to the applicant by the examiner. The applicant can either provide the office actions together with the request for acceleration under the PPH or request that the obtain the documents from the document database. Both Finnish and English are acceptable as translation languages. Machine translations are admissible, but if it is impossible for the examiner to understand the outline of the translated office action or s due to insufficient translation, the examiner can request the applicant to resubmit translations. b) a copy of the s found to be /allowable by and translations of them. The applicant can either provide the s together with the request for acceleration under the PPH or request that the obtain the s from the document database. Both Finnish and English are acceptable as translation languages. The indications provided in the requirement [0003](a) above regarding machine translations also apply to this requirement [0003](b). c) a complete correspondence table showing the relationship between the s of the for accelerated examination under the PPH and the s of the corresponding considered /allowable by. When s are just literal translation, the applicant can just write down that they are same in the table. When s are not just literal translation, it is necessary to explain the sufficient correspondence of each based on the criteria in [0002](c). The correspondence table must be written in Finnish or English. Page 3 / 15

4 d) copies of the references cited by the examiner. If the references are patent documents, it will not be necessary to submit these documents, as they will usually be available to the. If the does not have access to relevant patent documents, the applicant must submit these documents at the request of the. Non-patent literature must always be submitted. Translations of cited references are unnecessary. e) In those rare situations where the has not been published, and therefore the file wrapper is not available via the document database, the applicant will be responsible for providing the necessary documents to the. [0004] The relevant information is provided by the applicant by filling out the form for requesting accelerated examination under the PPH Pilot Program (see Annex 2) which is available on the PPH-webpage. The relevant supporting documentation should be attached. [0005] The applicant need not provide further copies of documentation if they have already been submitted to the through simultaneous or past procedures. Procedure for accelerated examination under the PPH Pilot Program at the [0006] The applicant files a request form for accelerated examination under the PPH Pilot Program and includes all the relevant supporting documents. The PPH Administrator, who will be an patent examiner, will consider the request. If the requirements for accelerated examination under the PPH are not met, the PPH Administrator will notify the applicant that the has not been allowed entry to the PPH and will provide an explanation as to why entry to the PPH was denied. The applicant is free to take any possible correcting action necessary and again request acceleration under the PPH. If all requirements for accelerated examination under the PPH are met, the PPH Administrator will notify the applicant that the has been allowed entry to the PPH. The PPH Administrator will notify the relevant examining group that the has qualified for entry to the PPH and the relevant examiner will then conduct an accelerated examination of the. If the request for accelerated examination is not granted, the applicant will be notified that the will await action in its regular turn. Page 4 / 15

5 ANNEX 1 Page 5 / 15

6 Examples of s eligible Figure A: (s) or Figure B: (s) or DO / * DO Designated Office Page 6 / 15

7 Figure C: (s) or any office Figure D: (s) or 1 Divisional 2 Page 7 / 15

8 Figure E: (s) or Figure F: DO / (s) or Page 8 / 15

9 Figure G: --- (s) or --- any office Figure H: Domestic priority (s) or Page 9 / 15

10 Figure I: --- (s) or Figure J: --- any office --- (s) or DO / --- any office Page 10 / 15

11 Figure K: --- DO / (s) or --- any office Figure L: --- DO/ DO/ (s) or --- any office Page 11 / 15

12 Figure M: DO/ DO/ Indication of (s) or Figure N: DO/ DO/ Indication of (s) or Page 12 / 15

13 ANNEX 2 Page 13 / 15

14 Example form Page 14 / 15

15 Page 15 / 15