Patent Prosecution Highway (PPH) is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between some patent offices. It permits each participating patent office to benefit from the work previously done by the other patent office, with the goal of reducing examination workload and improving patent quality.The patent office that receives the first application is called “Office of First Filing” (OFF) while the patent office that reviews the allowed claims from OFF is called “Office of Second Filing” (OSF). Duplication of effort will be reduced when offices of second filing are allowed to partially rely upon the work of offices of first filing, which is the purpose of the PPH.
The first PPH pilot programme that IPOS was involved in was launched on 2 February 2009 with the USPTO. On 1 July 2009, the second pilot PPH programme of Singapore was set to take effect with Japan. This is Japan’s first agreement with an ASEAN member country for PPH.
With PPH, the applicant may now request accelerated prosecution of the Singapore application filed with IPOS by furnishing “prescribed information” of the corresponding application filed with USPTO or JPO. The “prescribed information” consists of information which is sufficient to indicate the results of the corresponding application, and shall be in the form of: (i) certified copy of the grant of patent in the corresponding US or JP application; or (ii) other documents setting out the final results of the search and substantive examination of the corresponding US or JP application (even if the results are adverse), and a copy of the patent claims referred to in the final result.
With PPH, grant of a Singapore patent is expected to be sooner than without PPH.
Apart from PPH, IPOS also participated in the ASEAN Patent Examination Co-operation (ASPEC), which is the first regional co-operation project for IP Offices from participating ASEAN member states (AMS), namely, Singapore, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Thailand and Vietnam. This project started on 15 June 2009.
The search and examination results of one participating IP Office may be considered by the other participating member states. Hence, corresponding patents can be obtained faster and more efficiently. This project will potentially reduce duplication on the search and examination work done, thereby saving time and effort. Additionally, search and examination work done on corresponding application serves as a useful reference in producing quality reports.
The participating IP office considering the search and examination documents done by another participating IP office is not obliged to adapt any of its findings or conclusions. It will have to conclude its own search and examination and grant a patent in accordance with its national laws. However, with ASPEC, the Examiner will benefit from an earlier work done such that his search criteria will develop more quickly. The Examiner may also have the opportunity to refer to the search and examination results done by another participating IP office having access to certain databases to which the Examiner does not have access.
The participating IP office where the ASPEC Request Form is filed is called First IP Office. The patent application in the First IP Office has a corresponding patent application in another participating IP Office, which is called Second IP Office. The ASPEC Request (filed with First IP Office) relies on the search and examination documents of the corresponding application (filed with Second IP Office). A patent application in the Second Office Filing is a corresponding application if it is linked to the patent application in the First IP Office by a Paris Convention priority claim, and vice versa.
In view of the foregoing, Applicants can now obtain their grant faster either through PPH or ASPEC.