June 07, 2018

The latest updates on the PPH

The Patent Prosecution Highway (PPH) initiative unites more national IP offices with the two newly signed agreements between the National Office of Intellectual Property of Vietnam (NOIP) and the Korean Intellectual Property Office (KIPO) as well as between the National Institute of Industrial Property of Brazil (INPI) and the Danish Patent and Trademark Office (DKPTO).

The NOIP-KIPO agreement will come into force next year on June 1, 2019. The offices are still discussing the examination requirements. It is still unknown whether the terms and conditions of the pilot program will be similar to the agreement between the NOIP and the Japan Patent Office (JPO), which entered into force on April 1, 2016. It is worth mentioning that under the agreement, the NOIP no longer accepts PPH requests with the JPO, as the annual limit of 100 applications was reached in April 2018. At the same time, the JPO continues accepting requests under this pilot program.

An exact date for the INPI-DKPTO agreement to be formalised is currently uncertain. However, it has already been announced that it has been concluded for two years, limiting the number of applications accepted under the program to a hundred a year in each country. The examination requirements are also being discussed; however, it is known that the DKPTO will accept the applications from any field, while the INPI will limit the fields to mechanical engineering, lighting, heating, weapons and explosives. Besides, one applicant will be able to file only one PPH request a month with the INPI, except for the last month of the pilot program.

In addition, the INPI has agreed with the United States Patent and Trademark Office (USPTO) to take the pilot program to its second phase, which takes effect from May 10, 2018, till April 30, 2020. During the first trial phase started on January 11, 2016, the applications associated only with oil, gas and petrochemical fields were admitted. Currently, the applications relating to the information technology field are also accepted for consideration. This phase is limited to 200 applications, and one applicant will be able to file only one PPH request a month with both IP offices, except for the last month of the program.

The PPH makes it possible to substantially expedite the examination of applications, as it allows using the examination results already obtained by the partnering IP office. This project is always in high demand by the applicants as it helps to reduce time and expenses for the prosecution of the applications in multiple countries.

Author: Jessica Chester