Singapore Update: Patent Prosecution Highway Programmes With US and Japan

Patent Prosecution Highway (PPH) Programme

Singapore has signed on to a Patent Prosecution Highway (PPH) Programme with the United States of America and Japan. The idea behind this programme is for patent authorities to share their search and/or examination (SE) results with each other, thereby reducing the examination period significantly.

The PPH pilot programme with the United States commenced on 2 February 2009 and concludes on 1 July 2010, while in Japan, it commences on 1 July 2009 and lasts for a period of one year, ending on 1 July 2010. If necessary, this period may be extended for up to an additional year to adequately assess the feasibility of the PPH programme. The three countries involved will evaluate the results of the programme to determine whether and how it should be fully implemented after the pilot period. There is a chance that the PPH pilot programme may be terminated prematurely in these countries, if volume of participation exceeds manageable levels, or for other reasons. If such action needs to be taken, the countries will provide an advanced notice to all the stakeholders.

Requirements and Procedures of the PPH Programme

The Patent Office that receives the first application is called Office of First Filing (OFF) while the Patent Office that receives the corresponding application is referred as Office of Second Filing (OSF). If the Intellectual Property Office of Singapore (IPOS) is the Office of First Filing (OFF) and the Singapore application contains claims that are determined to be patentable, the applicant may request accelerated examination at the United States Patent and Trademark Office (USPTO) or at the Japanese Patent Office (JPO) for the corresponding application filed with in the USPTO or the JPO as the OSF.

On the other hand, if the JPO is the OFF and the final SE results of the Japanese application are available, then the applicant may request accelerated prosecution of the corresponding application filed with IPOS as the OSF by furnishing certain prescribed information of the Japanese application.

The following are the scenarios in which a request for accelerated prosecution of a Singapore application under the PPH pilot programme at IPOS can be made:

The Singapore application validly claims priority from a corresponding US or Japanese patent application which is being relied upon for the PPH request;
The Singapore application is a divisional application of the Singapore application referred to in (1) above, and said divisional application validly claims priority from the corresponding US or Japanese application which being relied upon for the PPH request;
The Singapore application validly claims priority from a corresponding US or Japanese application, and the US or Japanese application which is being relied upon for the PPH request also validly claims priority from the said earlier US or Japanese application.
The Singapore application is a divisional application of the Singapore application referred to in (3) above, and said divisional application validly claims priority from a corresponding US or Japanese application, and the US or Japanese application which is being relied upon for the PPH request also validly claims priority from the said earlier US or Japanese application.
The Singapore application is a national phase entry of a PCT application, and the Singapore application validly claims priority from a corresponding US or Japanese national application, and it is this US or Japanese national application that is being relied on for the PPH request.
The Singapore application is a national phase entry of a PCT application, and the Singapore application validly claims priority from a corresponding US or Japanese national application. The US or Japanese application relied upon for the PPH request is a national phase entry of the same PCT application, and the US or Japanese application relied upon for the PPH request validly claims priority from the said US or Japanese national phase application.
There is a first PCT application. There is a second PCT application validly claiming priority from the first PCT application. The Singapore application is a national phase entry of the second PCT application, and the Singapore application validly claims priority from the first PCT application. The US or Japanese application being relied upon for the PPH request is a national phase entry of the second PCT application, and the US or Japanese application validly claims priority from the first PCT application.

Conclusion

The PPH programme is hoped to substantially reduce work and backlog, as reference to earlier work done could cut or even eliminate the need for subsequent SE work. This will, in turn, lead to faster prosecution. This programme also provides better quality SE reports as some patent authorities may have access to databases unavailable to the examiner of a particular country. Therefore, the opportunity to refer to these SE results could provide the examiner with information on and assessment of prior art which he would otherwise not have access to.

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Communications at KASS International Sdn Bhd

KASS International is an established Intellectual Property Firm which offers a one-stop solution for IP matters in Malaysia, South East Asia, and worldwide.