Patent Prosecution Highway, a glance at its application in Colombia

Autor: Zulma Cepeda

Since the establishment of the Patent Prosecution Highway (PPH) pilot program with the United States Patent and Trademark Office (USPTO) in 2012, the Colombian Patent Office (CPO) opened the possibility for local and international applicants to benefit from this bilateral agreement. This program allowed accelerating the patentability examination of a patent application before one of these patent offices based on the favorable patentability results issued by the other patent office on corresponding patent applications.

The CPO has since implemented additional bilateral agreements with a large number of patent offices around the world, providing applicants the opportunity to benefit from accelerated prosecution.  Some of these patent offices include those from Spain, Japan, South Korea, the European Patent Office, countries of the Pacific Alliance, countries of Prosur, and countries members of the Global Patent Prosecution Highway (PPH Global). This last program is a plurilateral agreement extending the PPH benefits to 27 currently contracting states, among which, Colombia, Peru and Chile are the only Latin American countries. Likewise, the CPO, under the PCT-PPH scheme, accepts the accelerated procedure based on the results issued by the International Search Authority or International Examination Authority within a PCT international application, when said Authority is the European Patent Office, the Japanese Patent Office, the National Institute of Industrial Property of Brazil or the National Institute of Industrial Property of Chile.

Colombia is hence not an exception to the global trend of using the results of local examinations as well those obtained in other jurisdictions, in order to reduce efforts in conducting prior art searches, as well as processing times. This last benefit is considerable, taking into account that the results of a patentability examination is generally not seen before two years from filing date in Colombia. The reduction in processing times is of particular interest in technological fields that evolve at a relatively fast pace, such as ICT-related inventions, where obtaining the patent right quickly is important. Likewise, obtaining a patent in a shorter period of time is desirable when potential infringers have been identified, so that the owner can act quickly requesting precautionary measures, and initiating infringement proceedings. Likewise, shortening prosecution times opens up negotiation opportunities for owners interested in advancing commercial agreements or negotiating licenses. Applicants requesting accelerated prosecution may also benefit economically, depending on the particular analysis carried out by each patent office, as the number of office actions regarding patentability requirements, which imply processing costs for the applicant, may be eventually reduced.

The PPH seeks to speed up the prosecution of a patent application, taking advantage of the prior art search already carried out by another patent office; therefore, it is not a validation or automatic granting procedure. However, the prior art analysis carried out by the first examination office that  granted the patent may coincide with that carried out by the second examination office, thereby leading to obtaining a patent faster than with the conventional procedure. In the particular case of the CPO, based on the statistics provided by this office, the average granting rate of invention patent applications processed under the PPH between 2013 and 2019 was 87.5%. In 2020, 88 patent applications were prosecuted under the PPH proceedings, of which 58 have been granted and some of them are still pending a decision. If the statistics for years 2013 through 2019 remains, it would be expected that 19 more PPH patent applications filed in 2020, result in granting, for a total of 77. This information reveals that the PPH could, in some cases, not only be advantageous in speeding patentability examination, but also in obtaining a favorable patentability decision, after meeting requirements regarding patentable subject matter, clearness, concision and descriptive support required by local legislation.

The statistics provided by the CPO also show that the several PPH agreements entered into by Colombia with different Patent Offices around the world, have led to a growing interest of applicants in this procedure to prosecute their patent applications. Thus, since the implementation of the first agreement with the USPTO, the number of applications processed in Colombia under the PPH increased from 23 applications in 2013 to 88 in 2020. This trend is an indication of the popularity gained by these programs in recent years, motivated not only by the greater outreach obtained thanks to today's digital media, but likely also by the benefits obtained by applicants in terms of time, costs and favorable decisions.

Now, in order to benefit from an accelerated prosecution, the first office or earlier office examination should have at least one claim determined to be patentable/allowable. Likewise, certain additional requirements must be met, which are essentially the same for all countries. One minimum requirement is that the application for which the PPH is requested and that of the first office examination must be related to each other; this requirement  is met under any of the following scenarios, wherein the application for which PPH is requested is:  (i) an application that validly claims priority under the Paris Convention from the application of previous examination; or (ii) an application claiming priority under the Paris Convention of the earlier examination application (national phase of a PCT application); or (iii) an application that has a priority document in common with the earlier examination application (including national phase PCT application(s)); or (iv) a PCT national phase application, where both the application for which PPH is requested and the first examination office’s application derive from a common PCT application that does not claim priority.  On this basis, the PPH offers a wide range of possibilities for the eligible applications, so that the applicant has the option of requesting accelerated prosecution based on the result of the examination of any equivalent patent application. Additional requirements apply, including claim correspondence between those granted within the first examination office patent application and those submitted within the second examination office application, and providing a copy of the patentability opinions and allowance decisions issued by the first examination office in Spanish.

The moment in which the accelerated prosecution is requested is decisive in order to benefit from the program. A PPH application must be made before notification of the result of the patentability examination; therefore, it is imperative to identify the correct opportunity window in order to avoid losing the benefit.

In general, on the basis of the several PPH entered into by the CPO, local and international applicants can request, in Colombia or in any of the aforementioned countries, that their patent applications be processed under the PPH based on the favorable results on patentability issued in Colombia or in any of the countries having PPH agreements with Colombia.

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