Streghtening the PPH

October 16, 2014

by Georgina Flores

Since March 1 2011, when the Mexican Institute of the Industrial Property (IMPI) established with the United States Patent and Trademark Office (USPTO) a pilot programme for the Patent Prosecution Highway, the trend has continued with different offices. The Spanish Office of Patents and Trademarks (OEPM) joined a three year pilot programme which concluded on October 1 2014; the Korean Intellectual Property Office (KIPO) began a two-year pilot programme on July 1 2012 and extended it up to June 30 2017; the Japanese Patent Office (JPO) initiated a programme on October 18 2012 and made it permanent on February 29 2012; China signed through its office a pilot programme in February 2013 and extended this to an indefinite term; Singapore signed a pilot programme for two years which expired on June 10 2015; and the most recent partner has been with Canada, which began a two-year pilot programme on January 6 2014. All these countries tend to extend their programmes permanently as they are convinced of the benefits of an expeditious, inexpensive and high-quality examination, avoiding duplicative work and reducing the examination workload in patent prosecution.

Thus, the number of cases under this means of prosecution continues to increase; there were 84 applications in 2012 when the USPTO, JPO and OEPM participated and this number  increased to 213 in 2013, when the KIPO, SIPO and IPOS signed this programme with Mexico. This year, an important increase in this means of prosecution is expected considering the signature with Canada.

The benefits have to be evaluated regarding the urgency for grant, the documents available, and cost for translation, and in some cases the PPH might be extremely convenient.