Patent Prosecution Highway (PPH) agreements in Colombia
The Patent Prosecution Highway (PPH) is a set of initiatives for speeding up the examination process of patent applications filed in participating patent offices.
According to the PPH, when an applicant receives a final ruling from a first patent office (Office of First Filing – OFF) where at least one claim is allowed, the applicant may request fast-track examination of corresponding claims in a corresponding patent application that is pending in a second patent office (Office of Second Filing – OSF).
The Colombian PTO (SIC) has had PPH agreements with the United States Patent and Trademark Office (USPTO) since 2012, the Spanish Patent and Trademark Office (OEPM) since 2013, the Japan Patent Office (JPO) since 2014 and a PPH pilot program with the South Korean Patent Office (KIPO) since February 2016. Additionally, as we reported in January 2016, the SIC and the European Patent Office signed a Memorandum of Understanding (MoU) to implement a PPH Pilot Program.
The request for PPH in Colombia must be done when requesting the substantive examination, and a copy of the following documents must be filed: (a) the granting decision certificate of the OFF, (b) the granted set of claims together with its translation into Spanish, (c) the office actions regarding the substantive examination issued by the OFF together with their translation into Spanish, (d) non-patent prior art documents cited in said office actions, and (d) a claim correspondence table, comparing the set of claims granted by the OFF and the one pending at the SIC.
It should be pointed out that, when an applicant requests the PPH for a pending patent application before the SIC, the Colombian examiner not only checks the aforementioned claim equivalence, but also that the pending set of claims complies with the IP law regarding non-patentable subject matter, as well as with the clarity and conciseness requirements, which are very strict in Colombia.