< Back to all publications

Patent Prosecution Highway (PPH) programme between US and Singapore

An applicant which aims to protect his invention in multiple countries has to seek patent protection in each of the desired country. This means having his application searched and/or examined independently in each of the country. The timeline to obtain a patent differs in each country, which mostly depends on the speed of prosecution of the application. If a patent office has a huge backlog, it could take much longer before an application is examined or for the examination to progress. Hence, an alternative where the search and/or examination results can be shared among the patent offices to reduce duplication of effort and accelerate the examination is such a benefit to an applicant.

John M Carson, Alan Kessler and Hugh Dunlop explain the existence of Patent Prosecution Highway (PPH). PPH is a set of initiatives for providing accelerated patent prosecution procedures by sharing information between some patent offices. It also 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 US PPH programme has already started its trial segments with Japan, which has recently fully implemented the programme, United Kingdom, Korea, Canada, Australia, Europe and Denmark. On 2 February 2009, the PPH pilot between Singapore and US was launched. The pilot is expected to last for a year ending on 2 February 2010. Depending on the volume of participation and other factors, the one-year time frame may be extended for an additional year or terminated earlier. The United States Patent and Trademark Office (USPTO) and Intellectual Property Office of Singapore (IPOS) will evaluate the results of the pilot programme to determine how the programme should be fully implemented after the pilot period. Both USPTO and IPOS will publish notices if there are any adjustments to the pilot programme.

With PPH, the applicant may request accelerated prosecution of the Singapore application filed with IPOS by furnishing “prescribed information” of the corresponding application filed with USPTO. 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 application; or (ii) other documents setting out the final results of the search and substantive examination of the corresponding US application (even if the results are adverse), and a copy of the patent claims referred to in the final result.

The requirements for requesting accelerated prosecution of a Singapore patent application as spelled out by IPOS are as follows:

1. The Singapore application has not yet relied on an IPRP to proceed to grant, or has not been issued an examination or a search and examination report.

2. Accelerated prosecution of a Singapore application under the PPH pilot programme at IPOS can be made in one of the following scenarios:

a) The Singapore application validly claims priority under section 17 of the Singapore Patents Act (Cap. 221) from the US application being relied upon for the PPH request.

pph2a

b) The Singapore application is a divisional application of the Singapore application referred to in a) above, and the said divisional application validly claims priority under section 17 of the Singapore Patent Act (Cap. 221) from the US application being relied upon for the PPH request.

pph2b

c) The Singapore application validly claims priority under section 17 of the Singapore Patent Act (Cap. 221) from the US application, and the US application being relied upon for the PPH request also validly claims priority under US law from the said earlier US application.

pph2c

d) The Singapore application is a divisional application of the Singapore application referred to in c) above, and the said divisional application validly claims priority under section 17 of the Singapore Patent Act (Cap. 221) from a US application, and the US application being relied upon for the PPH request also validly claims priority under US law from the said earlier US application.

pph2d

e) The Singapore application is a national phase entry of a PCT application, and the Singapore application validly claims priority under section 17 and section 87 of the Singapore Patent Act (Cap. 221) from a US national application, and it is this US national application that is being relied on for the PPH request.

pph2e

f) The Singapore application is a national phase entry of a PCT application, and the Singapore application validly claims priority under section 17 and section 87 of the Singapore Patent Act (Cap. 221) from a US national application. The US application being relied upon for the PPH request is a national phase entry of the same PCT application, and the US application being relied upon for the PPH request validly claims priority under US law from said US national application.

pph2f

g) There is a first PCT application. There is a second PCT application validly claiming priority from the first PCT application. The Singapore application is a national phase entry of the second PCT application, and the Singapore application validly claims priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) form the first PCT application. The US application being relied upon for the PPH request is a national phase entry of the second PCT application, and the US application validly claims priority under US law from the first PCT application.

pph2g

Before PPH came into existence, IPOS already provides an option to the applicant to rely on a corresponding application to proceed to grant. Here, the “prescribed information” must be lodged together with the payment of grant fees and the application will proceed straight to grant.

Now with PPH, corresponding application specifically refers to a US application. The procedures are basically the same except that the phrase “USPTO-IPOS PPH acceleration requested” must be inserted in the submission forms. Consequently, grant of a Singapore patent through PPH is expected to be sooner than without PPH.

コメントを残す

メールアドレスが公開されることはありません。 * が付いている欄は必須項目です