Assistant to Patent Attorney
Pilot Program of Accelerated Substantive Examination of International Applications is Now in Eurasia as Well!
Progress does not stand still and the intellectual property is undoubtedly developing. Statistics show that patent offices of developed countries note a significant increase in the number of applications filed; nevertheless, the problem of increasing the terms of consideration of applications arises. And it is not a secret to anyone that all applicants dream of obtaining a patent protection for their invention in the shortest possible terms, but they rarely manage to achieve this.
To solve this problem, the Eurasian Patent Office (EAPO) launched on July 1, 2016 the Pilot Program for the Accelerated Substantive Examination of International Applications (PCT-PPH) entered the regional phase in the EAPO. This Program was designed to shorten the terms of consideration of the EA-PCT applications at the stage of their substantive examination and to improve the efficiency of the substantive examination of the EA-PCT applications by using the results of the International Authorities’ work undertaken at the international stage of consideration of applications in accordance with the Patent Cooperation Treaty.
The Accelerated Substantive Examination of the EA-PCT applications under the Program shall be carried out at the petition of the applicant, subject to meeting the following requirements stipulated by the Program:
1. The written message of the International Search Authority (ISA) and/or the conclusion of the International Preliminary Examination Authority (IPEA) with respect to the relevant international application shall be prepared by one of the following ISA and/or IPEA
– The European Patent Office (EPO),
– The Japan Patent Office (JPO),
– The United States Patent and Trademark Office (USPTO),
– The Korean Intellectual Property Office (KIPO),
– The Federal Service for Intellectual Property of the Russian Federation (Rospatent),
2. The ISA and/or IPEA has recognized with respect to the relevant international application that the invention, characterized in at least one or more claims, satisfies the conditions for patentability, that is, it is deemed new, satisfying the inventive level and exploitable,
3. The claims presented in the EA-PCT application must satisfy the claims presented in the international application in the way, that all claims of the EA-PCT application shall satisfy sufficiently one and/or more claims of the international application, which have been deemed by the ISA and/or IPEA satisfying the conditions for patentability of the PCT.
4. The claims shall not include more than 20 claims and shall not contain more than two independent claims, except the claims of the applications in the field of chemistry and medicine,
5. The formal examination of the application shall be completed with a positive result; the petition for a substantive examination shall be filed and granted. However, the first EAPO notification based on the results of the substantive examination of the application shall not be sent.
If these requirements are met, the applicant can apply freely for the Pilot Program of the Accelerated Substantive Examination of International Applications, while the additional pleasant bonus, except the quick grant of a patent, is the absence of an additional fee for accelerating the procedure of the consideration of applications. The applicant should only file a petition for an accelerated substantive examination of the EA-PCT application, a table of sufficiency of the claims, a copy and translation into Russian of the document establishing the patentability of the invention with respect to the relevant international application, if such document or its translation is not available in search service PATENTSCOPE, as well as the copies of non-patent documents enclosed in the ISA written message and/or the IPEA conclusion. And the first EAPO notification on the results of the substantive examination shall be sent within three months from the date of granting the petition.
Our dynamically developing company has already had an opportunity to file an application and to obtain a notification on the readiness to grant a patent, which was received in the shortest possible terms, namely, two months after the date of granting the petition.
Therefore, we conclude that the implementation of the Pilot Program of the Accelerated Substantive Examination of International Applications (PCT-PPH) is an excellent opportunity to obtain a patent protection on the territory of Eurasia within the shortest possible terms.
This Program shall be implemented during one year as an experiment in the use for these purposes of the materials prepared by the results of the work of the International Authorities undertaken at the international stage of the consideration of applications according to the Patent Cooperation Treaty. Despite this fact, we are sure that its “experimental status” has already yielded its fruit, in a good way, and it will be converted into a permanent basis.