Singapore: Patent prosecution highway

"Patent Prosecution Highway" – Just a different name for an existing prosecution option in Singapore

Intellectual Property Office of Singapore (IPOS) launched the Patent Prosecution Highway (PPH) programme with the United States Patent and Trademark Office (USPTO) and Japanese Patent Office (JPO) in the year 2009. The PPH programme is aimed to share search and examination results between the respective patent offices to expedite grant of corresponding patents.

USPTO/JPO-IPOS PPH programme

Under the PPH programme executed between IPOS and USPTO/JPO, during substantive examination of a Singapore or US patent application, if one of the respective patent offices considers that at least one claim of the patent application is patentable, the results of the substantive examination report can be used by the other patent office to request for accelerated examination in order to expedite allowance and grant.

For a Singapore patent application relying on the substantive examination of a corresponding US/JP patent application, one of the requirements to qualify under the PPH programme is that both the Singapore and US/JP application must be related by way of a common priority claim. The other requirement is that the applicant should not previously have filed a request for examination under any of the other search and examination options available in Singapore.

In Singapore, under the PPH programme, Patents Form 11B (2004) is filed together with a certified copy of the corresponding US/JP patent or the Notice of Allowance issued by the USPTO/JPO (with the claims). In order for the IPOS to identify the request, PF 11B (2004) should be clearly marked with the phrase "USPTO-IPOS PPH acceleration requested" / "JPO-IPOS PPH acceleration requested".

Similar procedure can be availed in the USPTO/JPO for reliance on the substantive examination results of a corresponding Singapore patent application. For more details, please refer to the links:

www.uspto.gov/web/patents/pph/pph_ipos.html or

www.ipos.gov.sg/leftNav/pat/PPH+%28IPOS-JPO%29.htm

The PPH programme between the USPTO and IPOS commenced on 3 February 2009 and was extended till 3 February 2011. This may be extended for another year.

The PPH programme between the JPO and IPOS commenced on 1 July 2009 and is extended till 1 July 2011.

Other than the need to indicate in the form "USPTO-IPOS PPH acceleration requested" / "JPO-IPOS PPH acceleration requested", procedurally, there is no significant difference between the PPH programme and the normal programme when relying on the final results of a US or Japan patent application for completing examination and grant in Singapore. i.e. the same forms are filed for the PPH programme and the normal programme. Also, the time taken to grant based on PPH programme and the normal programme is substantially the same (~3-6 months).

Importantly, therefore, regardless of whether IPOS extends the PPH programme with USPTO/JPO or not, applicants can still expedite grant under the normal programme by relying on the grant or final examination result of a corresponding US/JP application.

Kristian Robinson
krobinson@ecsf-asia.com

RN Gnanapragasam
rnsam@ecsf-asia.com

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