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Jumping Into The PPH
21 September 2020
The COVID-19 pandemic has greatly impacted businesses and investors across the world. In this time of health crisis, accelerating examination via PPH or other ways may be helpful for patent applicants, especially those belonging to small and medium businesses to commercialize their inventions.
But what is PPH?
According to Ramon Emil T Olea, Patent specialist, Federis & Associates, Patent Prosecution Highway (PPH) is a work- sharing program between Patent Offices with an objective of accelerating examination of patent applications. He says that the process of requesting accelerated examination under PPH is quite simple.
“A patent applicant whose application has been determined allowable by a participating Patent Office (Office of Earlier
Examination) can request for accelerated examination of the corresponding application in another participating Patent Office (Office of Later Examination),” he says. “The Office of Later Examination will utilize the search and examination results of the allowable application in the Office of Earlier Examination thereby facilitating the prosecution of the patent application in the Office of Later Examination.”
He adds that this may be needed during this time for the reason of attracting and securing more potential investors once their patent application has been granted. Accordingly, he says that accelerating patent examination for these business has become more relevant now more than ever.
“Due to COVID-19, many Patent Offices provided extensions of time for deadlines in patent examination,” he says.
“Moreover, some Patent Offices, including the Intellectual Property Office of the Philippines (IPOPHL) needed adjustments, e.g. transitioning from manual to online system. Due to these disruptions brought about by COVID-19, there could be a backlog, momentarily, in Patent offices. Hence, accelerating examinations is needed especially during this time. So by requesting that an application be processed under PPH, applicants can generally obtain an Office Action directed to merit examination more quickly, thereby accelerating the examination.”
The main challenge with PPH, however, is that although the patent application in the Office of Earlier Examination has already been determined allowable, the decision about whether to grant a patent in the Office of Later Examination remains under the control of the said Office. That is, a patent application determined allowable by the Office of Earlier Examination may be regarded as non-patentable by the Office of Later Examination due to difference in IP laws.
“This is being resolved by amending the claims of the patent application in the Office of Later Examination in line with the IP laws of the said Office,” says Olea.
Will we see more of PPH in the Philippines, during this pandemic?
“In the Philippines, we can say that we will see more of this now and in the future considering that there has been an increase in usage of PPH annually based on IPOPHL statistics,” says Olea.
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