Regional PTOs to launch Patent Prosecution Highway program
by Marta Garcia
On May 6, 2016, a Memorandum of Understanding (MoU) was signed by the Argentinian, Brazilian, Chilean, Colombian, Ecuadorian, Paraguayan, Peruvian and Uruguayan PTOs, all members of the regional collaborative project on Industrial Property PROSUR, with the goal to start a Patent Prosecution Highway (PPH) pilot program within six months. The MoU was signed during a PROSUR Steering Committee Meeting held in Rio de Janeiro.
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).
However, the MoU signed by PROSUR members establishes an updated PPH pilot program based on the “Mottainai Model” (Mottainai is a Japanese term conveying a sense of regret concerning waste), which eliminates the Office of First Filing (OFF) to Office of Second Filing (OSF) directional requirement of the PPH model. This flexible approach will enable the examination results of any of the PROSUR PTOs to be used as the basis for a PPH request irrespective of which one was the office of first filing.
Therefore, when the Office of Earlier Examination (OEE) has assessed the patentability of a patent application, the applicant could benefit from an accelerated examination of the corresponding application by the Office of Later Examination (OLE), provided that the claims of both applications have enough correspondence and that the search and examination results of the OEE are made available to the OLE. Additionally, the pilot program will also consider as OEE search and exam results, those performed by the Brazilian and Chilean PTOs as International Searching and Preliminary Examining Authorities (ISA/IPEA) for PCT patent applications.
The MoU contains a declaration by the Brazilian and Ecuadorian PTOs stating that the fulfillment of the PPH pilot program by these countries will be subjected to the approval by the respective Ministries or Secretaries. Additionally, during the first year of the pilot program, only the patent applications with first filing in a PROSUR country member or patent applications filed in any PROSUR country member as PCT Receiving Office will be eligible in Brazil and Ecuador.
The guidelines of the pilot program will be made available by each patent office before its implementation, and the program will have a duration of three years, extendable to four years with previous agreement between the parties.