As of December 1, 2022, the II Patent Prosecution Highway (PPH) Program entered into force, for a period of 5 years.
This procedure is effective between the national Patent Offices of PROSUR-PROSUL countries.
Said offices of PROSUR-PROSUL are: the Dirección Nacional de la Propiedad Industrial of Uruguay (DNPI), Instituto Nacional de la Propiedad Industrial of Argentina (INPI), Instituto Nacional de la Propiedad Industrial of Brazil (INPI), Instituto Nacional de la Propiedad Intelectual of Chile (INAPI), Instituto Ecuatoriano de la Propiedad Industrial of Ecuador (IEPI), Dirección Nacional de Propiedad Intelectual of Paraguay (DINAPI), Instituto Nacional de Defensa de la Competencia y de la Protección de la Propiedad Intelectual of Perú (INDECOPI) and Superintendencia de Industria y Comercio of Colombia (SIC).
The PPH Program allows that when the Office of Earlier Examination (“OEE”) has assessed the patentability of a patent application, the Office of Later Examination (“OLE”) shall ensure that the applicant has the benefit of an accelerated examination of the corresponding application as long as it meets the requirements for participating in the Program.
Requirements.
In order to be able to participate in the accelerated examination of the PPH Program, the following requirements must be met:
1.1 The application pursued before the Uruguayan Patent Office (DNPI of Uruguay) for which PPH is requested and the application(s) of the Office of Earlier Examination of one of the member countries of PROSUR-PROSUL, which constitute the basis of the PPH request, must be “corresponding” patent applications, must have the same initial date (either the priority date or the filing date), where the application of the DNPI in Uruguay is:
a) an application which validly claims priority under the Paris Convention of at least one application of a member country of PROSUR, or
b) an application on which a priority claim under the Paris Convention is validly made for at least one application of a member country of PROSUR, or
c) an application which shares a common priority document with at least one application of a member country of PROSUR, or
d) an application on which a priority claim of the corresponding international application is based, in which the INAPI or the Brazilian INPI act as ISA/IPEA, or
e) an application claiming as a foreign/national priority the corresponding international application, in which the INAPI or the Brazilian INPI act as ISA/IPEA, or
f) an application that is an application derived from the corresponding international application, in which the INAPI or Brazilian INPI act as ISA/IPEA.
The Uruguayan Patent Office has provided the following clarification: that the expression “corresponding patent applications” should not necessarily be interpreted as being the application on which the priority claim is based, but may also be the application derived from the application on which the priority claim is based; for example, a divisional application of a patent application or an application claiming national priority on the application on which the priority claim is based.
1.2 That the corresponding application must have been examined substantively and have had one or more of its claims determined as being patentable/grantable by a member country of PROSUR or by the corresponding ISA/IPEA.
1.3 All the claims of the application being pursued before the DNPI, originally filed or subsequently amended, for examination under the PPH Program, must be sufficiently corresponding to one or more of the claims deemed patentable/grantable by the member country of PROSUR or by the corresponding ISA/IPEA.
1.4 The application being pursued before the DNPI must have been published, the term for the filing of third party objections must have already expired, and it must be in order and in position for substantial examination of patentability to be performed, in accordance with the provisions of articles 26 and 31 of Patent Law 17.164 dated September 2, 1999, and articles 10, 11 and 12 of Patent Law Implementing Regulation 11/000 of January 13, 2000.
1.5 At the time when the request to participate in the PPH Program is filed, the DNPI must not have notified the outcome of substantial examination of the application in accordance with the provisions of the article 32 of Law 17.164 and article 13 of Implementing Regulation.
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Our FISCHER Abogados patent team is gladly available to provide you with more information and details about the requirements and documentation needed to access the II Program for Accelerated Patent Procedure.