Thursday, 29 September 2016

Taking the highway: A Speedy procedure is here!

This month the patent national offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay have started a Patent Prosecution Highway (PPH) pilot program.

What is PPH?
As part of protecting and managing an IP portfolio internationally, we usually advise on a cost effective and friendly process i.e. international registration (which is not really ‘international’ but a bundle of patent registrations facilitated by the Patent Cooperation Treaty (PCT) run by WIPO. The PCT allows to ‘simultaneously’ seek patent protection for an invention in a number of countries. This is done by filing a ‘single’ international patent application – no need to file ‘national’ patent applications per se. More than 20 Latin America countries are part of the PCT.

Image result for speedy gonzalesHowever, the granting of patents do remain under the control of the national patent office (which is known as the ‘national phase’). The positive of this is that once your PCT application fulfil the criteria required by the PCT, it cannot be rejected on ‘formal’ grounds by a national patent office. Still, this is a lengthy process.

So, when applying to foreign jurisdiction we also look at whether a national office has a PPH, meaning a ‘fast-track examination procedure’. This PPH will usually be an agreement that 2 states/jurisdiction may have; in Latin America, Mexico is the only country that has a PPH with the European Patent Office (EPO), and Brazil has one with the USPTO for example the same as with mexico and USPTO (which has recently extended until June 30, 2018).

A PPH, as in the case brought by this news, could cover a region. It also could happen that the national office will have a general PPH (regardless of a determined agreement with a specific jurisdiction or region). For example, Argentina has recently got one of these. Resolution P-56/2016 speeds up the granting procedure of Argentinian patent applications if an equal patent has been granted by another foreign patent office. This means that the ‘prior art’ search would be run only nationally. The PPH will apply if the said equal foreign patent has been granted with a similar patentability criteria to those applicable by the Argentinian Patent Office (INPI).

The PPH run by PROSUR will have a duration of three years, which can be extended to four years if the parties so agree.

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