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Patent Prosecution Highway (PPH)

Patents of invention, on dealing with novel creations resulting from arduous research in a particular technical field, have always been characterized by a very detailed and complex registration process, especially at the stage of the substantial examination, or patentability examination, which is precisely where it will be determined whether the invention meets the three basic requirements: novelty, inventive step and industrial application. In Peru, obtaining a patent of invention can take up to 5 years, of which three correspond only to the patentability examination.

The Patent Prosecution Highway, better known as PPH, is a filing system for patent applications, whereby an application filed with a Patent Office of a country signing a PPH agreement (first filing office) which has already passed the patentability examination and has obtained a report that determines that at least one claim is patentable or can be granted, will allow the applicant to request the office of another signatory country (second filing office), wherein an application for the same patent is pending, make use of said report at the time of the patentability examination.

The Japanese Patent Office (JPO) proposed the PPH and put it into practice for the first time in the world with the United States Patent and Trademark Office (USPTO) in 2006, becoming permanent from 2008, working since then in the expansion and improvement of this network.

The National Institute for the Defense of Competition and Protection of Intellectual Property of Peru (INDECOPI) signed its first pilot program to implement PPH with the Spanish Patent and Trademark Office (OEPM) on October 5, 2015, during the sessions of the 55th General Assemblies of the World Intellectual Property Organization (WIPO) in Geneva. This PPH program came into force on January 1, 2016 and is valid for 2 years, which will be automatically renewable and for equal periods according to the will of the parties. Currently, Peru has signed agreements for the implementation of the PPH with the Intellectual Property Offices of the States that are part of the Pacific Alliance (Chile, Colombia and Mexico) and PROSUR (Argentina, Brazil, Chile, Colombia, Ecuador, Uruguay and Paraguay).

While it is true that each PPH agreement has its own norms and guidelines, there are general requirements such as:

- The application must be national, application in national phase via PCT, or divisional application of any of the above.

- The application must have one or more claims that have been considered patentable in the first filing office.

- The claims of both applications must have sufficient correspondence, in addition to not infringing any provisions with respect to the particular legislation of each country.

- The second filing office should not have initiated the patentability examination of the application.

The main advantages of the PPH is that when the patentability reports of the first filing offices are reused, there will no longer be duplication of effort on the part of the second filing office when examining the application, which will allow greater certainty and speed in obtaining the registration, without jeopardizing the quality of the patents, less workload for the public administration, and less costs for the applicant, since this system does not involve additional expenses at the official rates of a regular patent procedure.

On December 29, 2016, the firm Comercial TCPAVEMENTS Ltda., from Chile, became the first company to apply for the PPH before the Direction of Inventions and New Technologies of INDECOPI (DIN).

Through the resolution N°566-2017/DIN-INDECOPI dated March 28, 2017, the DIN granted the invention patent for “Method for producing a fibre concrete slab for paving low-traffic roads, concrete slab, and method for paving low-traffic roads”, thus being the first patent granted under the PPH program in Peru.

Consequently, national companies will be able to achieve accelerated protection of their technology in countries where PPH agreements have been signed, which will likely have a favorable impact on our industry abroad, facilitating trade in technology products and, above all, encouraging the innovation.

Author: Kelly Sanchez – IP Lawyer

Law firm: OMC Abogados & Consultores

Published on February 12 2020 by OMC Abogados & Consultores.