Brazilian IPO – weekly news roundup
Showing posts with label PPH. Show all posts
Showing posts with label PPH. Show all posts
Saturday, 26 December 2020
Mexico: the USPTO and IMPI launched the Parallel Patent Grant (PPG) initiative
On 7 December 2020, the Mexican Institute of Industrial Property (IMPI) and the United States Patent and Trademark Office (USPTO) announced the launch of the Parallel Patent Grant (PPG) initiative.
According to the press releases, the PPG results from the Memorandum of Understanding on Technical and Strategic Collaboration (MoU) signed by the USPTO and IMPI on 28 January 2020.
In accordance with the MoU, the two Offices would “implement a parallel patent grant framework that allows IMPI to leverage USPTO search and examination results when granting a counterpart Mexican patent”.
Thus, under the PPG, “IMPI will expedite the grant of a Mexican patent for businesses and individuals already granted a corresponding U.S. patent”. This worksharing arrangement will make “faster for U.S. patent holders to obtain corresponding patents in Mexico”.
As stated by IMPI, approximately 11,000 patent applications filed between 2015 and 2018 may benefit from the PPG.
The PPG is not the first worksharing collaboration between IMPI and the USPTO, given the Patent Prosecution Highway (PPH) program has been implemented since 2011.
Sources: press releases issued by the Mexican Institute of Industrial Property and the United States Patent and Trademark Office.
Wednesday, 11 November 2020
You reap what you sow: Brazil participation in the Patent Prosecution Highway
The Patent Prosecution Highway (PPH) program is a fast-track examination of a patent application; an applicant request this accelerated process in the national phase which originated on a foreign office and national patent examiners can use the opinion and preliminary examination from the foreign office. The program aims to promote sharing the work among patent offices but the decision of granting patents still remains under the national office. The program run among offices where they agree to share this practice (for more information see WIPO). Brazil does not form part of the Global PPH as its counterparts Chile, Colombia, and Peru; but since 2016, the office has had several bilateral PCT-PPH agreements: European Patent Office (EPO), PROSUR (pilot), Danish Patent and Trademark Office; United Kingdom Intellectual Property Office, Intellectual Property Office of Singapore, United States Patent and Trademark Office and Japan Patent Office.
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| Speedy 'Patent' Gonzales |
INPI also praised that the average time for assessing
priority processing requirements has decreased from an average time of 220 days
(2018) to 104 days (2020). This is due to ‘simplifying the process flow and
using new information technology tools ‘.
According to the Global
Innovation Index published by WIPO, in 2020, Brazil ranked 62nd
among 131 economies (innovation inputs 59; innovation outputs 64); ranking 4th
among Latin America and the Caribbean economies.
Thursday, 4 October 2018
Latin America keeps speeding...
Continuing with yesterdays report and PPHs in Latin America, here comes another one…INAPI (IPO in Chile) and the USPTO (the United States Patent and Trademark Office) had signed a memorandum of understanding for the implementation of the accelerated patent procedure called Patent Prosecution Highway (PPH). The pilot will come into effect from November 01, 2018.
As noticed in yesterday news, the program allows national patent applications, which have a favourable resolution issued by the national IPO, to expedite the processing of their corresponding applications, filed with the USPTO – and vice versa.
In Latin America, several bilateral agreements have been signed between national patent offices to promote this project and thus, enabling applications to request, if they wish, the accelerated process PPH. The process is faster because the national offices will share the ‘search’ and ‘examination’ results. Yet, the final decision, that is, the granting will be left to the corresponding IPO.
Source INAPI.
More info on PPH here.
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| Speeding the process... |
In Latin America, several bilateral agreements have been signed between national patent offices to promote this project and thus, enabling applications to request, if they wish, the accelerated process PPH. The process is faster because the national offices will share the ‘search’ and ‘examination’ results. Yet, the final decision, that is, the granting will be left to the corresponding IPO.
Source INAPI.
More info on PPH here.
Wednesday, 3 October 2018
Agreements among Intellectual Property Offices: do they work?
Reading the news from the national IPO in Peru (INDECOPI) countless times this blog has reported on agreements between IPOs. Specifically, I usually report on the accelerated patent procedure - Patent Prosecution Highway (PPH) [and posting a photo of ‘speedy Gonzalez’ next to the news]. This process accelerates the granting of a patent in a particular country, if the application for the ‘same patent’ has been made first in another IPO (the other party on the agreement) and has a favourable patentability examination.Peru has signed PPH with Spain, Japan; ‘the countries that make up the Pacific Alliance (Colombia, Mexico and Chile) and the PROSUR countries (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Uruguay and Costa Rica, eight of the 13 that recognize the PPH).’
Because of the agreements and the simplification of a PPH, the National Institute of Industrial Property of Chile (INAPI) became the first office that grants a patent to a Peruvian inventor.
The invention in question ‘allows preserving for a longer time the life of vegetables, such as fresh and precooked vegetables; as well as whole fruits and pulp.’ In 2017 Zucchetti Espinoza, the inventor, obtained a patent for his invention in Peru.
Good to see matters in practice.
More info on PPH here.
Source INDECOPI.
Thursday, 31 May 2018
Brazil in the Highway again!
The Patent Prosecution Highway (PPH) Pilot Project signed by the Brazilian National Institute of Industrial Property (INPI) and the US Patent and Trademark Office (USPTO) Phase I, was in force until May 10, 2018. The Pilot Project commenced on January 11, 2016, and was scheduled to end on January 10, 2018, but was later on extended until May 10, 2018.
Now the Pilot Project between these two offices have entered into Phase II, commencing on May 10 of this year and until April 30, 2020. By reading the Magazine of Industrial Property (RPI) nº 2470, published on 08 May, one can notice that another industry that will benefit from this project is the ‘information technology’ one – before, the Pilot Project Phase I was applicable to the ‘oil, gas and petrochemical industry’ only. Moreover, to be eligible, the invention needs to be classified with one of the symbols of the International Patent Classification - IPC.
According to INPI, 200 applications will be accepted among which up to 50 patent applications will obtain advantage from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT). Phase I was limited to the first 150 eligible applicants. INPI summarises the PPH stating that ‘Brazilians can use the result of the examination of the patent application in the INPI to accelerate the analysis in the United States and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average’. A PPH does not automatically grants a patent, since each national IPO will carry out its examination pursuant to their own legislation and procedures in force.
More information can be found in the Revista da Propriedade Industrial (RPI) nº 2470 (in Portuguese)
Now the Pilot Project between these two offices have entered into Phase II, commencing on May 10 of this year and until April 30, 2020. By reading the Magazine of Industrial Property (RPI) nº 2470, published on 08 May, one can notice that another industry that will benefit from this project is the ‘information technology’ one – before, the Pilot Project Phase I was applicable to the ‘oil, gas and petrochemical industry’ only. Moreover, to be eligible, the invention needs to be classified with one of the symbols of the International Patent Classification - IPC.According to INPI, 200 applications will be accepted among which up to 50 patent applications will obtain advantage from the preliminary opinion result obtained by the Patent Cooperation Treaty (PCT). Phase I was limited to the first 150 eligible applicants. INPI summarises the PPH stating that ‘Brazilians can use the result of the examination of the patent application in the INPI to accelerate the analysis in the United States and vice versa. Upon entering the program, INPI has issued a final decision in 180 days, on average’. A PPH does not automatically grants a patent, since each national IPO will carry out its examination pursuant to their own legislation and procedures in force.
More information can be found in the Revista da Propriedade Industrial (RPI) nº 2470 (in Portuguese)
Monday, 12 February 2018
China and Brazil: taking the highway?
February 1st saw the launch of the Instituto Nacional da Propiedad Industrial (INPI)'s Patent Prosecution Highway (PPH) pilot project with the State Intellectual Property Institute of China (SIPO). The project will last two years and the application are capped up to 200. The rules of this PPH are found in Resolution 209/2018.
Both parties will be able to use the result of the examination of the patent application and so, accelerating the assessment process in the other office. The PPH is a fast-track examination agreement; this is so, because the parties involved enable work-sharing. At first instance, the applicant whose claims have been found to be patentable by either the INPI or SIPO may ask for accelerated processing of their equivalent application that is pending before the other office.
Brazil also has a PPH with the European Patent Office signed back in November 2017. This project will run for two years and will start early 2018 (more information here and here). The EPO only had a PPH with one Latin America country i.e. Mexico. Brazil has three more PPH agreements: United States - until June, 2018 (reported here), Japan, and with the countries members of PROSUR - running from four years and with the probability to be extended (here).
Source INPI.
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| Speeding the process: cake in the staff common room. |
Brazil also has a PPH with the European Patent Office signed back in November 2017. This project will run for two years and will start early 2018 (more information here and here). The EPO only had a PPH with one Latin America country i.e. Mexico. Brazil has three more PPH agreements: United States - until June, 2018 (reported here), Japan, and with the countries members of PROSUR - running from four years and with the probability to be extended (here).
Source INPI.
Monday, 24 July 2017
Patent Prosecution Highway: The Justice ‘Speedy’ League
This month Colombia joined the network of the Global Patent Prosecution Highway (GPPH). This network has 22 members from Europe, North America, Asia, Oceania, and now Latin America. From that side of the pond United States and Canada are members [full list of members can be found here].
Patent applicants who have obtained protection in Colombia may request that the same application be reviewed in any of the other members that are part of the GPPH. This global pilot was launched back in January 2014 allowing ‘patent applicants to request accelerated examination at any of the offices involved in the pilot if their claims have been found to be acceptable by any of the other offices involved in the pilot’.
Upon the advantages published by the Superintendencia de Industria y Comercio (SIC) are:
Latin America is part of some PPH. For instance Mexico has a PPH with the European Patent Office (the only office in Latin America to have such agreement with the EPO), with Japan (JPO) and has another one with the USPTO. The National offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay have also launched a PPH pilot program among themselves (these countries are members of PROSUR). Brazil has one with Chile, and another one with the USPTO. Peru and Spain do have a PPH in place.
While superman is not involved, the league still flies!
Source SIC.
Upon the advantages published by the Superintendencia de Industria y Comercio (SIC) are:
- Offices involved in this type of agreement are recognized as their ‘peers’: this is so because they have a harmonious patent law (patentable subject matter, substantive and procedural law are similar).
- Rely on quality systems that guarantee the Seriousness of its acts (ISO 9001).
- For applicants there is a greater chance that the patent will be approved because it has already been approved under same procedures and techniques; and the procedure is run in less time and there would be less transaction costs.
Latin America is part of some PPH. For instance Mexico has a PPH with the European Patent Office (the only office in Latin America to have such agreement with the EPO), with Japan (JPO) and has another one with the USPTO. The National offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay have also launched a PPH pilot program among themselves (these countries are members of PROSUR). Brazil has one with Chile, and another one with the USPTO. Peru and Spain do have a PPH in place.
While superman is not involved, the league still flies!
Source SIC.
Thursday, 16 February 2017
Speeding the Patent Process: a first for Peru
This week the Peruvian National Institute for the Defense of Competition and Protection of Intellectual Property (Indecopi) reported its first request for the Patent Prosecution Highway (PPH).
The application came from a Chilean company which is seeking to accelerate the process of granting its patent for a ‘method of manufacture for a concrete slab’.
The accelerated process called PPH: when applying to a foreign jurisdiction a national office may have a PPH, meaning a ‘fast-track examination procedure’. This PPH will usually be an agreement that 2 states or a region may have.
In this particular case Peru has signed an agreement with the member countries of the Pacific Alliance (Chile, Colombia and Mexico). Therefore, when a patent application receives a “favourable opinion on the patentability of an invention in the patent offices of the member countries [in this case from Chile] … Indecopi will take into account the results of that examination”.
The PPH allows the “exchange of information between patent offices, avoids duplication of efforts and accelerates the granting procedures”. Peru recently signed a PPH with PROSUR - Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay and Uruguay (see previous post here) and has already signed another one with Spain.
Source INDECOPI.
The application came from a Chilean company which is seeking to accelerate the process of granting its patent for a ‘method of manufacture for a concrete slab’.
In this particular case Peru has signed an agreement with the member countries of the Pacific Alliance (Chile, Colombia and Mexico). Therefore, when a patent application receives a “favourable opinion on the patentability of an invention in the patent offices of the member countries [in this case from Chile] … Indecopi will take into account the results of that examination”.
The PPH allows the “exchange of information between patent offices, avoids duplication of efforts and accelerates the granting procedures”. Peru recently signed a PPH with PROSUR - Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay and Uruguay (see previous post here) and has already signed another one with Spain.
Source INDECOPI.
Tuesday, 10 January 2017
'it's a new day it's a new life' and I am feeling PROSUR
December 2016 saw the last weeks of the year with the eagerness of some Latin American countries to start cooperating more. Therefore, future plans were discussed by PROSUR Directorship Committee.Back in 2009, WIPO received a letter signed by nine Latin American countries which have agreed on a regional project “to develop a common platform that allows the integration, exchange of information and system compatibility for the nine participating countries.” – known as PROSUR due to involve South (SUR) American countries.
Besides the plans for the new year ahead, the extension of funding was also covered (by the Inter-American Development Bank (IDB)). The Latin American countries which are part of the PROSUR regional cooperation system of IP are: Brazil, Argentina, Chile, Colombia, Ecuador, Paraguay, Peru, Suriname and Uruguay, WIPO also participated. From Central America, Costa Rica also joined the group and there are talks for expansion of PROSUR. That said, PROSUR members “announced the entry of the Dominican Republic and Nicaragua from 2017.” [will this also see the change of the name to PROSURCENTRAL?]
The patent national offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay had already started a Patent Prosecution Highway (PPH) pilot program.
Source INPI.
Thursday, 29 September 2016
Chile da inicio a acuerdo que permitirá a solicitantes un Procedimiento Acelerado de Patentes (PPH)
A través de una declaración conjunta en Santa Marta, Colombia, se dio inicio al proceso de ejecución e implementación del Programa Piloto de Procedimiento Acelerado de Patentes (PPH) en sus versiones Mottainai y PCT. El acuerdo fue alcanzado por representantes de Argentina, Brasil, Colombia, Ecuador, Paraguay, Perú, Uruguay y Chile.
Este programa conocido como PPH (Patent Prosecution Highway, por sus siglas en inglés), permitirá que los solicitantes que hayan obtenido un pronunciamiento favorable de patentabilidad de parte de INAPI, como Oficina de Examen Anterior (OEA), puedan beneficiarse del trabajo realizado en Chile y solicitar que éste sea tenido en cuenta por las Oficinas Nacionales de Propiedad Industrial de los países involucrados como Oficinas de Examen Posterior (OEP).
Una de las novedades de este acuerdo, será la posibilidad de usar el producto del trabajo internacional PCT que elabore el INPI de Brasil y el INAPI de Chile, como oficinas ISA/IPEA, para beneficiarse del examen acelerado de patente en un país del PROSUR.
La mayor ventaja de este programa es que acelerará el procedimiento de examen de patentabilidad de las Oficinas y reducirá los costos asociados, evitando dobles esfuerzos en acciones administrativas, búsquedas y exámenes de patentes en paralelo por cada Oficina.
Participando del Procedimiento Acelerado de Patentes, los usuarios de solicitudes nacionales que cuenten con una resolución favorable podrán acelerar los tiempos de tramitación de sus solicitudes de patentes de invención o modelos de utilidad en un país miembro de PROSUR, lo que permitirá reducir los costos asociados.
La implementación se realizará conforme a las guías preparadas por parte de las Oficinas de Propiedad Industrial que establecen los requisitos, condiciones y procedimientos para participar en el Programa Piloto PPH, el cual estará a prueba por un periodo de tres años, pudiendo prorrogarse por uno adicional. Posteriormente, se evaluarán los resultados y su demanda para la implementación definitiva. Brasil y Ecuador implementarán PPH una vez que hayan obtenido la autorización interna competente.
Desde el 16 de septiembre de 2016, las guías que le dan operatividad al programa Piloto de Procedimiento Acelerado de Patentes (PPH) están disponibles en las Oficinas de Propiedad Industrial respectivas, junto con los instrumentos necesarios para su utilización.
Fuente: INAPI
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.
However, 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.
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.
However, 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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