Annex C

Global PPH Principles

As a result of the success of the PPH Program, the maintenance of the many individual bilateral agreements between countries has become challenging. With that in mind, both applicants and participating offices would benefit from a single set of principles that form a world-wide PPH system. In addition, a common framework provides a baseline to which new PPH offices can subscribe without varying from the guidelines established by long-standing PPH partners. The following principles set the foundation for a global PPH system:

  • Consistent with the "MOTTAINAI" concept, PPH eligibility will be based on work available from any participating office, regardless of OFF/OSF status, so long as the applications share the same effective date (priority or filing) and the disclosures support the claimed subject matter.
  • Participating offices will accept any substantive search and examination product that explicitly indicates the patentability of claims(i.e., those including a written opinion if other than an initial notice to grant) done by another participating office under any filing scenario (e.g. as a National Office under the Paris Convention or as an ISA/IPEA office under the PCT).
  • Claim correspondence will be interpreted and applied by participating offices as per the formulation agreed to in October 2012.
  • Participating offices may require copies of prior office actions and/or decisional notices from the OEE and copies of any prior art cited that it cannot otherwise obtain, and should utilize dossier access systems and its internal search databases, respectively, for such purposes to the maximum extent practicable.
  • Participating offices may require a copy of the allowed claims in the earlier office and/or a chart illustrating correspondence.
  • Participating offices will accept machine translations of office actions, decisional notices, or allowed claims (as locally required) to the maximum extent practicable, but may require manual translations upon request from the examiner where necessary, e.g., if the quality of the machine translation is deemed of insufficient quality to assess the acceptability of the PPH request.
  • Participating offices will allow at least one opportunity to correct a defect in the PPH request before finally refusing a PPH request.
  • Participating offices may or may not accelerate applications for which PPH is requested after initiation of prosecution before the examiner, depending upon the circumstances and needs of each office and its stakeholder community.
  • Participating offices will share basic statistical information and may conduct studies as appropriate-and resources allow-in order to monitor usage and improve the quality of the system as a whole by providing mutual feedback among them as to any gaps identified.
  • Finally, participating offices reserve the right to limit participation in cases where incoming PPH requests exceed resources.

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