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Barreda Moller writes...

Procedures that can access the Patent Prosecution Highway (PPH) in Peru

Peru has recently reached agreements with other countries to apply accelerated examination through the Patent Prosecution Highway (PPH).  We will review below the procedures that can access the PPH in our country, according to each of the agreements reached:

Agreement with Spain

Procedures that can access the PPH by virtue of the agreement with Spain are not applicable to utility models.

Procedures that can access the PPH in Peru, based on a patentability examination performed by the Spanish Patent and Trademark Office, are the following:

1) National applications filed under the Paris Agreement or Decision 486 for one or more applications filed with the Spanish Patent and Trademark Office.

2) Peruvian national phase applications based on a PCT international application that claims priority of a national application filed with the Spanish Patent and Trademark Office under the Paris Agreement or Decision 486, for one or more applications filed with the Spanish Patent and Trademark Office.

3) Peruvian national phase applications based on a PCT international application, which do not claim priority.

4) National applications that claim priority of a PCT international application, which does not claim priority.

5) National applications, on which the Spain Patent and Trademark Office has conducted search and/or international examination processes under the PCT.

6) Peruvian national phase applications based on a PCT international application, which claim priority of a PCT application not claiming priority.

7) Divisional applications of any of the above applications.

Agreement with the Pacific Alliance

The Pacific Alliance comprises the following countries: Chile, Colombia, Mexico and Peru.

Procedures that can access the PPH by virtue of the agreement between the Pacific Alliance countries are applicable to patents and utility models.

Procedures that can access the PPH in Peru, based on a patentability examination performed by the Patent Office of one of the other Pacific Alliance countries (Chile, Colombia and Mexico), are the following:

1) Applications which claim priority, under the Paris Agreement, of at least one country of the Pacific Alliance.

2) Applications which priority is claimed, under the Paris Agreement, in at least one country of the Pacific Alliance (including PCT applications in national phase).

3) Applications which share priority in common with at least one application in a country of the Pacific Alliance (including PCT applications in national phase).

4) National phase applications, where both (the Peruvian application and the application of the other country of the Pacific Alliance) derive from a common PCT application which does not claim priority.

Agreement with PROSUR

The countries of the PROSUR group which are part of the PPH agreement are the following: Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay. There are countries of the PROSUR group which are still not part of the PPH agreement.

Unlike the PPH agreement between the countries of the Pacific Alliance, in this agreement utility models are not expressly mentioned, so we consider that the Peruvian Patent Office will probably not accept patentability examinations derived from utility model applications.

Procedures that can access the PPH in Peru, based on a patentability examination performed by the Patent Office of one of the other countries of the PROSUR group (Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay and Uruguay), are the following:

1) Applications which claim priority, under the Paris Agreement, of at least one country of the PROSUR group.

2) Applications which priority is claimed, under the Paris Agreement, in at least one country of the PROSUR group (including PCT applications in national phase).

3) Applications which share priority in common with at least one application in a country of the PROSUR group (including PCT applications in national phase).

4) National phase applications, where both (the Peruvian application and the application of the other country of the PROSUR group) derive from the common PCT application which does not claim priority.

Agreement with Japan

On October 3, 2017, Peru and Japan signed a declaration of intention but we are still waiting the issuance of the specific guidelines for its application.

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