What is the PPH?
PPH in Peru
Particularities of PPH agreements
Advantages of PPH agreements
Comment
Invention patents, which protect novel creations resulting from arduous research in a particular technical field, have always been characterised by a detailed and complex registration process. This is particularly the case during the substantial examination stage, also known as the "patentability examination" stage, which is the point at which it is determined whether the invention meets the three basic requirements of novelty, inventive step and industrial application. In Peru, obtaining an invention patent can take up to five years, three of which correspond to the patentability examination alone.
The patent prosecution highway (PPH) is a filing system for patent applications. Under the PPH, where an application has been filed with a patent office of a signatory country (the first filing office) and has already passed the patentability examination and obtained a report which determines that at least one claim is patentable or can be granted, the applicant can request the office of another signatory country (the second filing office), with which an application for the same patent is pending, to make use of the first filing office's report at the time of the patentability examination.
The Japanese Patent Office proposed the idea of the PPH and put it into practice for the first time with the United States Patent and Trademark Office in 2006. This agreement became permanent in 2008, and since then the network has expanded and improved.
On 5 October 2015, during the sessions of the 55th General Assemblies of the World Intellectual Property Organization in Geneva, the Peruvian National Institute for the Defence of Competition and Protection of Intellectual Property (Indecopi) signed its first pilot programme to implement the PPH with the Spanish Patent and Trademark Office. This PPH program came into force on 1 January 2016 and was valid for two years, after which it became automatically renewable for equal periods according to the will of the parties.
Currently, Peru has signed agreements for the implementation of the PPH with the IP offices of the states that are part of the Pacific Alliance (ie, Chile, Colombia and Mexico) and the Forum for the Progress and Integration of South America (ie, Argentina, Brazil, Chile, Colombia, Ecuador, Uruguay and Paraguay).
Particularities of PPH agreements
While each PPH agreement has its own rules and guidelines, there are several general requirements:
- The application must be:
- a national application;
- an application in the national phase via the Patent Cooperation Treaty; or
- a divisional application of either of the above.
- The application must have one or more claims that have been considered patentable in the first filing office.
- The claims of both applications must have sufficient similarities. They must not infringe any provisions with respect to the particular legislation of either country.
- The second filing office should not have initiated the patentability examination of the application.
The main advantage of the PPH is that when the patentability report of the first filing office is reused, there is no duplication of effort on the part of the second filing office. This will enable:
- greater certainty and speed in obtaining the registration, without jeopardising the quality of the patents;
- less public administration workload; and
- lower costs for the applicant, since this system does not involve expenses on top of the official rates of a regular patent procedure.
On 29 December 2016, the firm Comercial TCPAVEMENTS Ltda, from Chile, became the first company to apply for the PPH before the Indecopi Directorate of Inventions and New Technologies (DIN). On 28 March 2017, the DIN granted the invention patent for "[m]ethod for producing a fibre concrete slab for paving low-traffic roads, concrete slab, and method for paving low-traffic roads", the first patent granted under the PPH programme in Peru.(1)
As a result of the PPH programme, Peruvian companies will be able to achieve accelerated protection of their technology in countries where PPH agreements have been signed. This will likely have a favourable impact on Peruvian industry abroad, facilitating trade in technology products and, above all, encouraging innovation.
For further information on this topic please contact Kelly Sánchez at OMC Abogados & Consultores by telephone (+51 502 6467 or +51 635 0641) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.
Endnotes