INTRODUCTION

The Intellectual Property Office of the Philippines (IPOPHL) and the Korean Intellectual Property Office (KIPO) have initiated the PPH & PCT-PPH Pilot Program for an initial period of two (2) years starting on 1 May 2015 subject to renewal as will be agreed upon by both IP Offices. The pilot program is in accordance with  the Memorandum of Understanding (MOU) signed by the Intellectual Property Office of the Philippines (IPOPHL) through its then Director General, Atty. Ricardo Blancaflor and Korean Intellectual Property Office (KIPO) Commissioner Kim Young-minin on 9 April 2014.

PATENT PROSECUTION HIGHWAY (PPH)

The Patent Prosecution Highway (PPH) is a global effort by patent offices to initiate work-sharing and minimize redundancy of work, and is gaining popularity in different patent offices as an alternative route to expedite the examination of patent applications. PPH is a mutual agreement between two patent offices allowing applicants to request a fast-track examination by using the examination conducted by another office or vice versa. Since the commencement of the PPH pilot program in July 2006, there are now thirty-three (33) participating countries that include modern IP Offices of more advanced countries like the United States Patent and Trademark Office (USPTO), European Patent Office (EPO) and the Japan Patent Office (JPO).  This is the 3rd PPH program for the Philippines following its agreement with Japan and USA.

IPOPHL AND KIPO PPH & PCT-PPH PILOT PROGRAM

From 1 May 2015, IPOPHL will accept PPH Requests under the IPOPHL-KIPO PPH Pilot Program. Similar to its agreement with Japan, IPOPHL-KIPO PPH follows the PPH Mottainai Program. Applicants with corresponding patent applications in IPOPHL and KIPO may now file a request for preferential examination under this Program in either offices following a prescribed procedure and submission of relevant documents. The PPH Request may be filed by using either the national work products or the PCT international work products from KIPO.

PPH REQUEST USING THE NATIONAL WORK PRODUCTS IN KIPO

In filing a PPH request using the national work products in KIPO, the requirements and documents needed are, as follows:

1. Requirements

  1. Both the IPOPHL application on which PPH is requested and the KIPO application(s) forming the basis of the PPH request shall have the same earliest date (whether this be a priority date or a filing date).
  2. At least one corresponding application exists in the KIPO and has one or more claims that are determined to be patentable/allowable by the KIPO.
  3. All claims on file, as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable in the KIPO.
  4. A request for PPH may be submitted even during the substantive examination stage, provided that, examination on the merits of the application has not been made or issued yet.

2. Documents Needed

  1. Copies of all office actions (which are relevant to substantial examination for patentability in the KIPO) which were issued for the corresponding application by the KIPO, and translations of them.
  2. Copies of all claims determined to be patentable/allowable by the KIPO, and translations of them.
  3. Copies of references cited by the KIPO examiner.
  4. Claim correspondence table.

PPH REQUEST THE PCT INTERNATIONAL WORK PRODUCTS FROM KIPO

On the other hand, in filing a PPH request using the PCT international work products from KIPO, the requirements and documents needed are, as follows:

1. Requirements

  1. The latest work product in the international phase of a PCT application corresponding to the application (“international work product”), namely the Written Opinion of International Search Authority (WO/ISA), the Written Opinion of International Preliminary Examination Authority (WO/IPEA) or the International Preliminary Examination Report (IPER), indicates at least one claim as patentable/allowable (from the aspect of novelty, inventive steps and industrial applicability).
  2. The relationship between the application and the corresponding international application satisfies one of the following requirements:
    1. The application is a national phase application of the corresponding international application.
    2. The application is a national application as a basis of the priority claim of the corresponding international application.
    3. The application is a national phase application of an international application claiming priority from the corresponding international application.
    4. The application is a national application claiming foreign/domestic priority from the corresponding international application.
    5. The application is the derivative application (divisional application and application claiming domestic priority etc.) of the application which satisfies one of the above requirements (i) – (iv).
  3. All claims on file, as originally filed or as amended, for examination under the PCT-PPH must sufficiently correspond to one or more of those claims indicated as allowable in the latest international work product of the corresponding international application.
  4. A request for PPH may be submitted even during the substantive examination stage, provided that, examination on the merits of the application has not been made or issued yet.

2. Documents Needed

  1. A copy of the latest international work product which indicated the claims to be patentable/allowable and their Filipino or English translations if they are not in English.
  2. A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable and their Filipino or English translations if they are not in English.
  3. A copy of references cited in the latest international work product of the international application corresponding to the application.
  4. A claim correspondence table which indicates how all claims in the application sufficiently correspond to the claims indicated to be patentable/allowable.

CONCLUSION

The new PPH program between IPOPHL and KIPO is another milestone in the improvement of patent examination in both two (2) IP Offices. In addition to serving as a catalyst to expedite the examination in these two (2) countries, PPH also offers a very cost effective route to prosecute a patent application as it minimizes the issuance of office actions and there is no filing fee involved in filing a PPH request. Indeed, this new PPH program between IPOPHL and KIPO will eventually reap its maximum benefits as the program progresses and will be extended just like other pilot PPH programs in the Philippines.