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November 26, 2021

Updates to PPH agreements and the Madrid Protocol Regulations

France and US

The French National Institute of Industrial Property (INPI) has entered into a new bilateral Patent Prosecution Highway (PPH) Agreement with the United States Patent and Trademark Office (USPTO). The Agreement was signed on November 8, 2021, and will enter into force for applicants to utilise as of December 1, 2021 in both jurisdictions.

A PPH agreement aims to expedite the processing of patent applications by allowing the examination of the subject matter to occur on a fast-track basis between cooperating IP offices. As such, the PPH agreement signed between the French INPI and the USPTO will allow for an accelerated examination time for applications filed with these offices for either conventional filings or national phases of PCT applications, provided the same is requested by the applicant and the appropriate requirements are fulfilled.

The expedited nature of the PPH is facilitated through a collaborative work share setup, whereby a decision on patent examination made by the office of first filing is shared with the patent office of second filing. This, in turn, decreases and eliminates certain steps of the examination procedure for the latter e.g. by conducting an informational search, thus speeding up the overall process.

This PPH agreement is the second one signed by the French INPI, following the commencement of the bilateral PPH agreement between France and Japan at the beginning of this year.

Japan and Brazil

The Japanese Patent Office (JPO) has the largest number of PPH agreements shared with partner IP offices across the globe, and has recently renewed its PPH agreement with the Brazilian Institute of Industrial Property (INPI).

The renewal of the PPH between Brazil and Japan was facilitated by the signing of a Memorandum of Cooperation between the two offices on November 9, 2021, entering into force on December 1, 2021. The renewed PPH agreement between the two offices will be effective for a period of 5 years.

The introduction of a new PPH agreement between France and the US, and the renewal of the PPH between Japan and Brazil, demonstrates a continued endeavour to further develop intellectual property cooperation internationally, at the benefit of both applicants and the wider economy.

Madrid

In October of this year, the World Intellectual Property Office (WIPO) held a General Assembly whereby a unanimous decision to amend the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks was adopted. The newly introduced changes were enforced as of November 1, 2021.

Amongst other alterations to the Regulations, one of the most notable is the amendment to rule 5, which outlines the regulations in relation to missed deadlines before the WIPO. As such, the missing of a deadline is considered to be excused so long as the party can demonstrate to the International Bureau (IB) that it occured due to a force majeure situation, such as war, revolution, riots, strikes, natural disasters, as well as other circumstances beyond the control of the party.

The above must be demonstrated by the applicant to the WIPO within a 6-month period from the expiry of the time limit of the missed deadline, alongside any relevant evidence of circumstance owing to the missed deadline.

The amended rule of the Regulations will undoubtedly assist many impacted by Covid-19, both individual applicants and businesses alike. In turn, the alleviation of the risk of being penalised for missed deadlines due to unforeseen circumstances may encourage applicants to restore applications being withdrawn in the wake of the Coronavirus, and aid in the upturn of the global IP market and economic growth.

Author: Danielle Carvey
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