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Barreda Moller writes...

Patent Prosecution Highway in Peru

The Patent Prosecution Highway (PPH) is a set of procedures intended to provide an accelerated patent prosecution. It involves speeding up the examination process for applications filed in a participating Patent Office by sharing information between the Office of Earlier Examination (OEE) and the Office of Latter Examination (OLE). It allows participating offices to benefit from previous examination work done by other patent offices, which would reduce the examination workload. Moreover, it is supposed to improve patent quality.

As the USPTO explains in its website “under PPH, participating patent offices have agreed that when an applicant receives a final ruling from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach final disposition of a patent application more quickly and efficiently than standard examination processing”.

The Peruvian Patent Office establishes that the PPH is an instrument by which an applicant that has been issued a positive Examination Report, or has been granted the respective patent registration by the Peruvian Patent Office may require acceleration of their application for the same invention before another Patent Office with which it has signed a PPH, provided that it meets the conditions mentioned in the respective guidelines. It also states that “the most important of these conditions will refer to the claims of both applications having sufficient correspondence (are equal), as this is the essence of this program, in addition to not contravening any provision regarding the particular legislation of each country”. Therefore, the Patent Office considers that Peruvian Applicants and/or inventors will be able to get a patent in a shorter time, in those countries in which Peru enters an agreement to provide the PPH instrument.

As of 14 April 2016, the Peruvian Patent Office and the OEPM (Spanish Patent Office) have signed a pilot program to implement the PPH between their offices. It is in vigor since 01 January 2016 and it will remain in vigor for two years, which will be renewable. Accordingly, at the time it is only possible to accelerate the prosecution of Peruvian applications with a positive report or granted patent in Spain, or accelerate the prosecution of Spanish applications with a positive report or granted patent in Peru.

There are specific guidelines for the acceleration of the prosecution of Peruvian applications with a positive report or granted patent in Spain, and for the acceleration of the prosecution of Spanish applications with a positive report or granted patent in Peru.

Guidelines for acceleration in Peru

When the Peruvian Patent Office is the Office of Later Examination (OLE) and the Spanish Patent Office has been the Office of Earlier Examination (OEE), the applicant must comply with the following 4 requirements:

1) The application before the Spanish Patent Office must be, either:

(a) a national application that claims one or several valid Peruvian priority(ies), or
(b) a PCT national phase application corresponding to a PCT international application that claims one or several valid Peruvian priority(ies), or
(c) a PCT national phase application corresponding to a PCT international application that claimed no priority, or
(d) a national application that claims one or several valid priority(ies) over a PCT international application that claimed no priority, or
(e) a PCT national phase application corresponding to a PCT international application that claims one or several valid priority(ies) over a PCT international application that claimed no priority, or
(f) a divisional application of any of the abovementioned applications.

2) The Peruvian application must have one or more claims that have been considered as complying with all the patenting requirements by the Peruvian Patent Office.

3) All the claims of the application that is submitted to the Spanish Patent Office must sufficiently correspond with one or more of the claims that have been considered by the Peruvian Patent Office as complying with all the patenting requirements.

4) The Spanish Patent Office must not have begun examination of the application.

Guidelines for acceleration in Spain

When the Spanish Patent Office is the Office of Later Examination (OLE) and the Peruvian Patent Office has been the Office of Earlier Examination (OEE), the application before the Peruvian Patent Office must be, either:

(a) a national application that claims one or several valid Spanish priority(ies), or
(b) a PCT national phase application corresponding to a PCT international application that claims one or several valid Spanish priority(ies), or
(c) a PCT national phase application corresponding to a PCT international application that claimed no priority, or
(d) a national application that claims one or several valid priority(ies) over a PCT international application that claimed no priority, or
(e) a national application wherein the Spanish Patent Office has performed search or examination activities as a PCT International Administrator, or
(f) a PCT national phase application corresponding to a PCT international application that claims one or several priority(ies) over a PCT international application that claimed no priority, or
(g) a divisional application of any of the abovementioned applications.

The Spanish Patent Office considers the possibility of not examining the application previous to the grant. Therefore, the rest of the Peruvian guidelines are directed to ensure that an actual examination occurred in Spain, as well as registering the reasons for not granting any of the claims that were rejected.

This is a pilot program and its success will depend on its correct implementation. We will keep you informed on any developments.

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