In the modern global economy, many companies, as well as individual applicants, have a growing interest in acquiring patent protection for the same invention in multiple countries. This requires separate patent applications to be filed with the corresponding IP offices (based on the Patent Cooperation Treaty (PCT) procedure or claiming a priority according to the Paris Convention), with each considering the patent application independently of the others.

Investigations into the possibility of international collaboration have resulted in Russia using the Patent Prosecution Highway (PPH), linking it to other countries that also signed up to the PPH.(1)

The PPH is an initiative which provides applicants with the means for accelerated patent prosecution procedures by sharing information between contracting patent offices that are party to the PPH agreement– namely, it allows participating patent offices to benefit from the work previously done by the office of first filing (OFF), with the goal of reducing examination workloads and improving patent quality by using the results of the OFF's performed substantive examination for the same invention.

The PPH puts in place a procedure whereby patent offices may consider the results of the OFF's substantive examination where a grant decision has been issued based on the results and pending claims of the relevant second filing with the office of second filing (OSF), which correspond to the granted claims issued by the OFF.

In the ordinary course of action, if an applicant files patent applications for the same invention in multiple countries, the relevant national or regional patent offices will conduct substantive examinations independently and based on their own means (in case of PCT applications, the examiner may also use the results of the international search report and the relevant written opinion if it has been duly requested). The PPH explores the extent to which search and examination results can be mutually applied in order to speed up the processing of patent applications by exchanging findings.

At present, Russia has mutual cooperation agreements in respect of the PPH with the patent offices of:

  • Japan;
  • South Korea;
  • the United States;
  • Denmark;
  • Finland;
  • China; and
  • Spain.

Participation in the PPH enables applicants to request accelerated examination of their applications in the OSF provided that the OFF has already issued a grant decision. In this case, the pending application with the OSF can be processed under the PPH when a request for substantive examination is filed, generally allowing the applicant to obtain patents more quickly.

There have been several cases in which a grant decision was issued by Rospatent (the Russian patent office) within two to three months after the request for substantive examination was filed along with the amended claims corresponding to the US-granted claims.

In order to use the PPH in Russia, applicants are required to submit to Rospatent the following additional documents when requesting substantive examination:

  • the grant decision and granted claims issued by the OFF and their Russian translations;
  • a table confirming that the granted claims correspond to the pending Russian claims filed with Rospatent. It is possible to replace the Russian pending claims with the amended claims corresponding to the OFF's granted claims; in this case, it will be sufficient to pay an official fee for amendments and confirm that the amended claims are a Russian translation of the granted claims;
  • copies of all additional materials (with their Russian translation) that reflect examination decisions (eg, office actions and official notifications); and
  • a Russian translation of the search results provided by the OFF.

This list of documents can be extended or even narrowed depending on the situation.

Using the PPH in Russia offers the following advantages:

  • The initiative greatly improves Rospatent's efficiency and can also improve the quality of the patents granted.
  • Enforcing patents with similar claims can simplify patent disputes and possible invalidation actions against granted patents.
  • For applicants, the PPH is a valuable mechanism for reducing the costs and delays associated with multinational patent prosecution. The applicant has the advantage of receiving a grant decision regarding its patent application within a few months of the date on which the substantive examination was initiated. The total costs for patent prosecution can be reduced by half, as the number of office actions would be reduced accordingly.

For further information on this topic please contact Yuri Pylnev or Natalya Bespalova at Baker & McKenzie - CIS Limited by telephone (+7 495 787 2700), fax (+7 495 787 2701) or email (yuri.pylnev@bakermckenzie.com or natalya.bespalova@bakermckenzie.com).

Endnotes

(1) For more information on the PPH please see www.jpo.go.jp/ppph-portal/index.htm.

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