European and Eurasian Patent Agreement

Posted in European Patents on by Admin

The European Patent Office (EPO) and the Eurasian Patent Office (EAPO) have announced their intention to launch a bilateral Patent Prosecution Highway (PPH) program which should allow accelerated prosecution of certain patent applications in Europe and Eurasia.

PPH Programs

PPH programs generally allow one or more national or regional intellectual property offices to reuse the work product of another office in order to speed up patent examination. In particular, where the claims of an application have been found allowable in one jurisdiction, faster grant of a patent in relation to the same or similar claims in a corresponding application in another jurisdiction may be possible.

This new European-Eurasian PPH program will likely be attractive for applicants who find the standard patent examination procedure slow. In Europe, for example, it commonly takes around 3 to 5 years for a patent application to proceed to either grant or final refusal, with around 5% of applications taking up to 12 years until completion. Faster grant of a patent may be important if the applicant knows of an infringer and wishes to take legal action swiftly. Alternatively, a granted patent can be a useful tool for leveraging investment in a company.

Many applicants are, however, happy with the slow pace of examination, because it allows the costs of prosecution to be spread over many years and because it can also keep potentially weaker applications pending for longer, acting as a deterrent to competitors.

Europe and Eurasia

A European patent can lead to protection in up to 38 European Patent Organisation member states (including all EU member states), 2 extension states (Montenegro and Bosnia & Herzegovina) and 2 validates states (Moldova and Morocco). It will also be possible to validate a European patent in Cambodia from July 2017. A Eurasian patent can lead to protection in up to 8 Eurasian countries including Russia. Both systems provide for the centralised search and examination of patent applications. After grant, a European patent must be validated in each country in which it is intended to take effect, after which it converts into a bundle of national patents. A granted Eurasian patent can be maintained in each country in which it is intended to take effect.

The EPO and the EAPO have also recently collaborated on other joint projects, including the addition of the Russian language to the EPO’s Patent Translate service and an ongoing project to incorporate all of the EAPO’s collection of patent documents into the EPO’s searchable database, Espacenet.

By Michael Ford, Alistair Hindle Associates

For further information regarding the various ways to accelerate prosecution of patent applications, or for more information regarding patent protection in Europe or Eurasia, please contact your usual attorney at Alistair Hindle Associates.