Patent examination in the Philippines can be an excruciatingly tedious process. Depending on the technology of the invention sought for protection, it may take three to five years from filing or national-phase entry of the application to the patent being granted.
But what if the applicant eagerly needs the patent application to be granted faster? For example, the applicant wants to take action against a potential infringer but cannot commence for the sole reason that the application is still pending. In such circumstances, applicants can accelerate the examination of the application with the Intellectual Property Office of the Philippines (IPOPHL).
There are two recommended ways to accelerate examinations with the IPOPHL: (1) file a request for accelerated examination under the Patent Prosecution Highway (PPH) programme; or (2) file a request for accelerated examination under the ASEAN Patent Examination Co-operation (ASPEC) programme.
Patent Prosecution Highway
The PPH is a work-sharing programme between intellectual property offices that accelerates the processing of patent applications where claims were determined to be patentable in a corresponding Office of Earlier Examination (OEE), by filing a request in the Office of Later Examination (OLE).
The IPOPHL has several existing PPH programmes and agreements with other IP offices, the most recent being with the European Patent Office (EPO). On 1 July 2017, the IPOPHL commenced its bilateral PPH pilot programme with the EPO.
Both offices indicated that the programme would end after three years, or on 30 June 2020, but may be extended. On 1 July 2020, the IPOPHL and EPO agreed to continue its existing PPH bilateral programme indefinitely. Besides the EPO, the IPOPHL also has existing PPH programmes with the US Patent and Trademark Office (USPTO), Japan Patent Office (JPO), and Korean Intellectual Property Office (KIPO).
A request for the 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 yet been issued.
The documents to be submitted for filing a PPH request are as follows: (1) a PPH request form; (2) a copy of the latest international work product issued by the OEE, which indicates the claims to be patentable/allowable, and their English translations if they are not in English; (3) a copy of a set of claims that the latest international work product of the corresponding application indicates to be patentable/allowable, and their English translations if they are not in English; (4) a copy of references cited in the latest international work product of the international application corresponding to the application; and (5) a claim correspondence table.
The ASPEC programme
The IPOPHL also participates in the ASPEC programme in which Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, Singapore, Thailand and Vietnam are also participating. Similar to the PPH, ASPEC is a programme 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 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 as follows: (1) a completed ASPEC request form; (2) a copy of the search and examination report (minimum documents) of a corresponding application from the participating AMS’s first IP office; and (3) a copy of the claims referred to, 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 a copy of the written opinions and the list of prior arts, if available (additional documents).
A copy of each of the documents cited in the minimum documents is not required at the time of filing the ASPEC request form. The IPOPHL may, however, require the applicant to furnish a copy of any document cited in the minimum documents, subsequently. All documents for the purposes of ASPEC must be in English.
Without requesting an acceleration, an office action directed to merit examination issues takes two to three years from filing, or national-phase entry date. In contrast, an applicant may expect to receive the first office action (substantive examination report) within eight to 12 months after filing the PPH/ASPEC request. It can therefore be said that the IPOPHL is committed to substantially shortening the examination time where the PPH or ASPEC have been requested.
Ramon Emil T Olea is a patent specialist at Federis & Associates
FEDERIS & ASSOCIATES LAW OFFICES
Suites 2004 and 2005, 88 Corporate Centre
141 Valero St, Salcedo Village
Makati City 1227, Philippines
Tel: +63 2 8889 6197-98
Email: [email protected]