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Thursday, March 1, 2012

The Patent Prosecution Highway in ASEAN



PPH in ASEAN not
yet a Highway
The Patent Prosecution Highway (PPH) is a system to speed up examination, by allowing patent examiners in one country to rely on the examination conducted in another Patent Office. Several bilateral/multilateral agreements have linked some 24 patent offices since 2009, e.g. USPTO, EPO, various EU national offices, JPO, KIPO, China’s SIPO.

The way it works is that an applicant can request PPH handling in a second patent office where it has had a corresponding examination in a first office (provided the two offices have a PPH agreement in place). This fast tracks the examination, because the second office can rely on the examination by the first office, removing their need to examine that issue. The number of office actions and pendency are shown to reduce (so the US data shows).

Two South East Asian nations have signed up so far.

Singapore has signed up to agreements with US and Japan. However in Singapore IP Komodo understands from his friend Mike McLaughlin that there is already a modified examination system which enables accelerated prosecution to allow a Singapore patent on the basis of a grant in select other corresponding jurisdictions, including the US and Japan. Besides that IPOS are very efficient and can usually process patents quickly on request. So the PPH may not add much for inbound work in Singapore. But Singaporeans do file more than 1000 US patents a year so for outbound work, Singaporeans may find a great benefit from the PPH, when they file outside.

In February the Philippines signed on to the PPH system through an agreement with the Japan Patent Office. It plans to launch on March 12th.  In Philippines pendency is currently 3 to 4 years which is not too bad, but examination can be expedited if applicants volunteer to conform the Philippines application to corresponding US, EPO, Japan patents. So it is not clear how the PPH will improve examination for inbound work yet.

As for elsewhere, well some of the slower SE Asian countries like Indonesia really could us the PPH to speed up examination and reduce duplicated costs on work already done elsewhere.

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