The Intellectual Property Office of the Philippines now accepts Patent Prosecution Highway requests under the IPOPHL-KIPO PPH Pilot Programme. Applicants with corresponding patent applications in IPOPHL and the Korea Intellectual Property Office can now ile a request for preferential examination under this Program in either offices following a prescribed procedure and with submission of relevant documents on the application.

“The programme will beneit patent applicants who use the KIPO as a search authority whether through the Paris route or the PCT,” says Bayani Loste, a partner at Fortun Narvasa & Salazar in Manila. “The programme also ensures that there is no duplication of work because the IPOPHL examiner can use the indings of the KIPO in the Philippine national phase application.”

Under the present procedure, the examiner still has discretion to send an ofice action to the applicant and require the latter to present relevant documents to support patentability. The applicant will then have to respond and notify the examiner the status of its pending application in a priority jurisdiction or whether it availed of any international search facility – in this case, KIPO – and give the status of the search. Using the PPH, the applicant has the initiative to notify the examiner about the status of any priority application or whether a search authority has completed its written opinion or report.

“While the examiner continues to have the authority to determine patentability under the Philippine laws, it is expected that there will be no more lag time in collating all the relevant documents for his consideration because the information is readily available using KIPO’s facilities,” Loste says.

When the applicant requests the use of the PPH and the IPOPHL grants the request, what the IPOPHL is doing is copying the homework of the priority patent ofice and using this as basis to grant the application on its desk. To protectionism advocates, this programme looks like an abdication of the authority of the IPOPHL to grant or refuse patents, Loste says.

“Under the Philippine patent rules, the Filipino examiner must ensure that only applications complying with the legal requirements of patentability are granted letters patent. He is in the frontline in the determination of whether to grant a monopoly to the applicant, and not his Korean counterpart. The opposing camp will argue that the issues of novelty and inventive step are universal in character. Prior art is everything made known to the public before the iling date or the priority date.”

On the other hand, Loste says, an invention has inventive step if, having regard to the prior art, it is not obvious to a person skilled in the art at the time of the iling date or the priority date. “So, if one patent ofice allows a patent to be granted, the other jurisdictions should follow suit. Science and technology should be immune to municipal concerns like territorial boundaries and paper certiicates.”