HOW TO FAST TRACK YOUR PHILIPPINE PATENT APPLICATION THROUGH THE PATENT PROSECUTION HIGHWAY OR THE ASEAN PATENT EXAMINATION CO-OPERATION

November 29, 2021

patent prosecution hiway

HOW TO FAST TRACK YOUR PHILIPPINE PATENT APPLICATION THROUGH THE PATENT PROSECUTION HIGHWAY OR THE ASEAN PATENT EXAMINATION CO-OPERATION

We all know that examination and prosecution of a patent application is a long and tedious process that may take years to complete.  Typically, the first Office Action reporting the findings of the merit examination of a patent application in the Philippines issues three (3) years from the filing or national phase entry date. The prosecution of the patent application may then take about one (1) to (2) years from the firs Office Action.  Given this long period before the patent is granted, patent applicants should consider availing of the Patent Prosecution Highway or the Asean Patent Examination Co-operation Program to fast track their patent.

The Philippine Intellectual Property Office has existing Patent Prosecution Highway (PPH) program/agreement with the United States Patent and Trademark Office, Japan Patent Office, Korean Intellectual Property Office and the European Union Patent Office which may be availed of by patent applications. An applicant may request for accelerated examination under the PPH if the corresponding foreign applications in said countries/jurisdictions are indicated to be patentable/allowable.

An applicant may also opt to file a request for accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) Program in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Philippines, Singapore, Thailand, and Viet Nam are participating countries. ASPEC is a program for IP Offices from participating ASEAN member states (AMS) to utilize the search and examination (S&E) results from another participating AMS IP Office as reference in its own S&E work. A patent applicant may therefore, request for accelerated examination under the ASPEC if the corresponding foreign applications in said countries are indicated to be patentable/allowable.

Patent Prosecution Highway (PPH) Requirements

A request for PPH may be filed anytime from filing of the application up to the substantive examination stage, provided that, examination on the merits of the application has not been made yet, i.e. a substantive examination report has not been issued yet.

The documents to be submitted for filing a PPH request are the following:

a.) PPH request form;

b.) The latest international work product which indicated the claims to be patentable/allowable and their English translations if they are not in English;

c.) Set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable;

d.) References cited in the latest international work product of the international application corresponding to the application; and

e.) Claim correspondence table.

ASEAN Patent Examination Co-operation (ASPEC) Program Requirements

Another option to fast track the application is availing of the ASEAN Patent Examination Co-operation (ASPEC) Program in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Singapore, Thailand, and Vietnam are also participating countries. A request for ASPEC may be filed on the same day as the request for substantive examination is filed or at any time after filing the request for substantive examination but before the final decision of grant or refusal.

The documents to be submitted for filing an ASPEC request are the following:

a.)  completed ASPEC request form;

b.) search and examination report of a corresponding application from the participating ASEAN member state first IP Office; and

c.) claims referred to in (b) with at least one claim determined by the first IP Office to be allowable/patentable.

The ASPEC Request Form may be accompanied by a claim correspondence table  showing relatedness of the claims examined in the corresponding application to the claims in the current application and copy of the written opinion(s) and the list of prior art, if available.

Currently, applicant may expect to receive the first office action six (6) months after filing the PPH /ASPEC request.

The above-mentioned options significantly shorten the patent application process.

Request For Examination Based On Granted Or Allowed Claims of Corresponding Foreign Patent Application/Patent

An applicant may miss the opportunity to avail of the PPH or ASPEC PROGRAM. A possible remedy is to file a request for voluntary amendment adapting the allowed/granted claims of a corresponding foreign application in lieu of those on file. This is also an effective way of accelerating the prosecution of the corresponding application in the Philippines. Majority of cases with such requests are automatically recommended for allowance.

To know more about Patent Prosecution Hi-way in the Philippines, contact J. Ponce Law. You may also visit our Facebook Page by clicking this link.https://www.facebook.com/JPonceIPLaw.

You may also read our other materials related to patent and intellectual property here.