PPH AND ASPEC PROGRAMMES IN SINGAPORE JURISDICTION REPORT: SINGAPORE
Ameen Kalani Henry Goh (S) Pte Ltd
Tere are co-operative patent prosecution highway (PPH) programmes in place between the Intellectual Property Office of Singapore (IPOS) and the United States Patent and Trademark Office (USPTO), and between IPOS and the Japan Patent Office (JPO), that are intended to help hasten patent prosecution before these patent offices through the exchange of information on search results and substantive patent examination. Te PPH programme offers applicants flexibility in prosecuting their Singapore patent applications, whether they are filed under the Paris Convention or Patent Cooperation Treaty and can potentially shorten prosecution timeframes.
PPH aims to allow participating patent offices to share the search and examination results of patent applications. Te aim is to reduce duplication of work, enable faster prosecution of patent applications and, more importantly, produce higher-quality search and examination results.
One fundamental requisite of the programme is that the Singapore application must be linked by a priority claim with the corresponding US or JP application. Additionally, the Singapore application must not already have an examination report or a search and examination report. Also a copy of the granted JP or allowed US patent relied upon by the applicant, or its final search and examination results together with the set of claims that were examined, are required by IPOS to complete the formality requirements of PPH.
One possible scenario where PPH can be useful is when a Singapore divisional application validly claims priority from an earlier first US application that has a second US application claiming US domestic priority from the first US application. In this case, the allowed claims of the second US application may be relied upon for the purposes of requesting PPH in Singapore.
A second example would be where the Singapore application is a PCT national phase application that validly claims priority from an earlier US application. Assuming that the same PCT application has also entered the national phase in the US, the allowed claims of the US PCT national phase application may be relied upon for the purposes of requesting PPH in Singapore.
A third situation is where there is a first PCT international application and a second PCT application that validly claims priority from the first PCT application, assuming that the second PCT application then enters the national phase in the US and Singapore where it makes a valid claim of priority under US and Singapore laws respectively from the first PCT application. Te allowed claims of a US PCT national phase application may be relied upon for the purposes of requesting PPH in Singapore.
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“ PPH RUNS CONCURRENTLY WITH ANOTHER FRAMEWORK OF REGIONAL PATENT CO- OPERATION BETWEEN EIGHT ASSOCIATION OF SOUTH EAST ASIAN NATIONS (ASEAN) MEMBER COUNTRIES, INCLUDING MALAYSIA, SINGAPORE, INDONESIA AND THAILAND, CALLED THE ASEAN PATENT EXAMINATION COOPERATION (ASPEC).”
Te same scenarios as stated above may be applied mutatis mutandis for requesting PPH in Singapore when there are earlier applications filed in Japan.
PPH runs concurrently with another framework of regional patent co-operation between eight Association of South East Asian Nations (ASEAN) member countries, including Malaysia, Singapore, Indonesia and Tailand, called the ASEAN Patent Examination Cooperation (ASPEC). Under the ASPEC initiative, patent offices in participating ASEAN countries have been able to consider the other search and examination documents they receive under the programme. However, it is important to note that they will not be obliged to adopt any of the findings or conclusions reached by the other IP offices. Tey will each proceed with and conclude their own search and examination work as well as decide on whether to grant the patent in a manner that is consistent with their national laws. Like the PPH programme, ASPEC seeks to accelerate patent prosecution timelines through obviation of duplicative search and examination procedures.
Although the procedural requirements of PPH and ASPEC seem relatively easy and cost-effective, in the author’s experience, there has been a dearth of applicants electing to proceed under either route. Perhaps a reason for this could be that the programmes are still relatively ‘new’ and thus require more time for them to be accepted as mainstream prosecution options alongside the existing more established local search and examination options.
Ameen Kalani is a director at Henry Goh (S) Pte Ltd. He can be contacted at:
henryspl@singnet.com.sg or
hgoh_sg@henrygoh.com
World Intellectual Property Review May/June 2011 67
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