ASEAN Members Benefit from PPH Membership
02 May 2013
The Patent Prosecution Highway (PPH) has been continuously gaining popularity worldwide as an alternative route to expedite the examination of patent applications. PPH is a mutual agreement between two offices allowing applicants to request a fast-track examination by using the examination conducted by the other office or vice versa. Since the commencement of the PPH pilot program between the Japan Patent Office (JPO) and the United States Patent & Trademark Office (USPTO) in July 2006, there are now 27 offices participating in the PPH. Two of them are ASEAN members, namely: Singapore and the Philippines.
History of the PPH in ASEAN
In ASEAN, Singapore was the first to take advantage of the PPH when the Intellectual Property Office of Singapore (IPOS) launched the PPH pilot program with the USPTO on February 2, 2009. In the same year, IPOS also launched a PPH pilot program with the JPO on July 1, 2009. Recently, IPOS launched its third PPH pilot program, this time with the Korean Intellectual Property Office (KIPO). The PPH pilot program with KIPO started on January 1, 2013, and will end on January 1, 2015.
In the Philippines, the PPH pilot program with the JPO started on March 12, 2012, and will end on March 11, 2015. Earlier this year, a second PPH pilot program with the USPTO was initiated.
The PPH program is a global effort by patent offices to initiate work-sharing and minimize redundancy of work. If a patent application contains claims that are determined to be allowable by the Office of the First Filing (OFF), the applicant may request an accelerated examination in the Office of Second Filing (OSF).
PPH in Singapore vs. PPH in the Philippines
In Singapore, there are three existing PPH programs namely: IPOS-USPTO, IPOS-JPO and IPOS-KIPO. On the other hand, Philippines has two existing PPH programs namely: IPOPHLJPO and IPOPHL USPTO. The requirements in filing a PPH request in Singapore and in the Philippines appear below.
If the applicant satisfies the requirements above, submission of the following documents is required in order to complete the PPH request in Singapore and in the Philippines.
Advantages and Disadvantages of PPH
After almost seven years since the PPH began in 2006, patent practitioners as well as applicants are now reaping the benefits from the program. The PPH provides faster examination of a patent application. If at least one of the claims of the corresponding application is allowable/patentable, the applicant may have the option to file a PPH request. Hence, the grant rate will increase since the OSF will utilize the examination conducted by the OFF.
Moreover, the PPH minimizes office actions that will be issued to the applicants. Besides this, there are no fees for filing a PPH request. Thus, PPH lowers the cost of prosecuting the application. Further, there is minimal effort in preparing and filing the PPH request since it only requires the submission of some forms and documents.
Meanwhile, if the claims of the corresponding application are not yet allowed, the PPH cannot be requested in Singapore or the Philippines. Aside from this, the PPH also requires certified translations of the office actions as well as claims of the corresponding application.
Conclusion
As patent filings worldwide are increasing, there is a need to provide an alternative route to expedite the examination of these applications. Indeed, the best route available at present is the PPH program, which not only speeds up the prosecution of patent cases but is also very cost-effective. There are some disadvantages of the PPH, but as the PPH network grows, its benefits will surely outweigh its shortcomings. There is no doubt that more ASEAN member countries will join the PPH network in the years to come.
PPH in Singapore
- Duly completed Patents Form 11B (Furnishing of Prescribed Information).
- Duly completed Patents Form 14/14(2004) (Payment of Fee for Grant of a Patent).
- A copy of the granted patent of the corresponding application duly certified by the patent office of the said corresponding application.
- Documents setting out the final results of the search and examination as to substance and a copy of the patent claims referred to in the final results of the corresponding application.
- The phrase “IPOSCorresponding Application PPH acceleration requested” must be inserted in the Remarks box of the forms and all subsequent correspondences.
PPH in the Philippines
- Duly accomplished PPH Request Form.
- Copies of all office actions issued for the corresponding applications and English translations (if not in English).
- Copies of all claims found to be patentable/allowable and English translations (if not in English).
- Copies of references cited by the Examiner of the corresponding application.
- Claim correspondence table.
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