Patent Cooperation Treaty on Pilot between IPOS and INPI

1. Patent Cooperation Treaty on Pilot between IPOS and INPI A Patent Cooperation Treaty makes it possible to seek patent protection for an invention in various countries by filing an "international" patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. The ​Patent Prosecution Highway (PCT) is a work-sharing initiative that provides accelerated patent prosecution in the national stage and that too by sharing information between some of the patent offices. One of the new one-way PCT-PPH pilot programs has been initiated between the Intellectual Property Office of Singapore (IPOS) and the National Institute of Industrial Property of Brazil (INPI). This particular pilot program is effective from May 1, 2020, for a period of 5 years. The Applicant of Singapore National stage patent application can request PPH before the IPOS under the program based on a positive written opinion of International Searching Authority (ISA) or the International Preliminary Examining Authority (IPEA). Or a positive international preliminary report on patentability (IPRP), issued by INPI in its capacity as ISA/IPEA. The IPOS will handle the PPH request as a request for accelerated examination of a patent application and at the same time conduct the examination of the patent application according to the Singapore Patents Act and the Patents Rules. Image source: ​Google

2. Patent Prosecution Highway Pilot Programme between the Intellectual Property Office of Singapore and the National Institute of Industrial Property of Brazil 1.​​The Background of the case For obtaining patent protection for any invention in several countries usually the requirement is the invention to be searched and examined in each of the countries. And if the patent authorities in these countries have to share the results of their search with each other, then the opportunity for a patent office to refer to the previous work done should have these potential benefits: (a) ​Reduced work – With referring to the previous work done could reduce or even eliminate the need for subsequent search work. (b) ​Accelerated examination – The reduced work could lead to a much faster examination of the patent application. (c) ​Better search and examination – Some patent offices may have access to databases unavailable (e.g. specific technical databases, local databases, databases in other languages) to the examiner, hence the opportunity to refer to such search results could provide the examiner with all the information on and assessment of prior art that the particular person would otherwise not have access to. 2. Patent Prosecution Highway Programme The Patent Prosecution Highway (PPH) programme between the Intellectual Property Office of Singapore (IPOS) and the National Institute of Industrial Property of Brazil (INPI) has allowed the two offices to share their search results with one another. Where IPOS is the Office of Earlier Examination (OEE) and the IPOS application has claims which are determined to be patentable, the applicant might request accelerated examination at the INPI for the corresponding application filed with the INPI as the Office of Later Examination (OLE). Where the INPI is the OEE and the INPI application has the claims which are determined to be patentable, the applicant may request accelerated examination

3. of the corresponding application filed with IPOS as the OLE by furnishing some of the information of the IPOS application as given in the requirements and procedures below. 3.​​PPH Pilot Programme Commencement The PPH pilot programme begins on 1 May 2020 for a period of 5 years, and ends on 30 April 2025. IPOS will check the results of the pilot programme to know whether and how the programme should be completely implemented. IPOS might terminate the PPH pilot programme if the volume of participation goes beyond the manageable level, or for any other reason. And a notice shall be published if the PPH pilot programme will be terminated. Image source: ​Google

4. 4. Requirements for requesting accelerated examination of an IPOS patent application under the PPH The INPI application has at least one claim which is known to be patentable by the INPI. All claims in the IPOS application must adequately correspond to one or more of the claims found patentable by the INPI. Claims will be contemplated to sufficiently correspond where, accounting for differences due to translations and claim format, when the claims are of the same scope, or they are narrower in scope. In regard to this, a claim that is narrower in scope occurs when a claim in the IPOS application is amended to be further limited by an additional technical feature that is supported in any of the specifications. Examination has not begun on the IPOS application. 5. Procedures for requesting accelerated examination of an IPOS patent application under the PPH The Patents Form 11 or Patents Form 12 must be accompanied by: (a) A copy of all office actions of the INPI application that are relied upon; (b) A copy of the patentable patent claims referred to in (a); (c) A claims correspondence table depicting the relatedness of the patentable claims referred to in (a). The documents that are listed in 5.2 (a) can be either the: (a) national work product that includes (i) written opinion that is established by the INPI as the national Office (ii) examination report and decision of grant that is established by the INPI as the national Office while the processing of a national application or a Patent Cooperation Treaty (PCT) application that has entered the national phase before the INPI;

5. (b) PCT work product that includes (i) written opinion that is established by the INPI International Searching Authority or International Preliminary Examining Authority, (ii) the international preliminary examination report issued within the framework of the PCT. If the documents listed in the above are available in the INPI Dossier Access System or the World Intellectual Property Organization’s PATENTSCOPE system, there is no need to be filed with the Patents Form 11 or Patents Form 12. To avoid doubt, a copy of the patent grant without the documents listed in (a) and (b) in the above will not qualify for the PPH. If the request for PPH is taken after the Patents Form 11 or Patents Form 12 is filed, the request together with any supporting documents should be made in writing to IPOS. Also, an email must be sent to IPOS at pph@ipos.gov.sg on the same day the request is submitted to IPOS. The email must have in it its subject, the title "PPH acceleration requested". Any of the subsequent correspondences with IPOS must be marked with the phrase “PPH acceleration requested”. 6. Cited Documents A copy of all of the documents cited in the documents that are submitted under paragraph is not needed at the time of filing the PPH request. IPOS may require the applicant to furnish a copy of any document that is cited subsequently. The cited documents can be filed in their original language. IPOS may eventually request for an English translation of a document if in case an English abstract of the cited document is not available. 7. PPH Request IPOS will treat a PPH request the same as a request for accelerated examination under the PPH pilot programme. But where the PPH request is granted, the IPOS application shall be processed in an accelerated manner. And, where the PPH request does not meet all the requirements that are set forth above, the applicant will be notified and the defects in the request shall also be identified.

6. Also, the applicant shall be given one opportunity to correct formal deficiencies identified in the request. And if the request is not corrected, then the application will be taken out of the PPH programme and at the same time the applicant will be notified. 8. Examination of IPOS patent application under the PPH pilot The IPOS application will be inspected in accordance with the Singapore Patents Act (Cap. 221) and the Singapore Patents Rules. If in case this is not possible for IPOS to understand the English translation of any of the document, then IPOS can request the applicant to resubmit the English translation of that document. Applicants should take professional advice on patent matters in Singapore, in particular, with reference to section 30 (Grant of patent) and section 69 (Restrictions on relief for ​copyright infringement​) of the Singapore Patents Act (Cap. 221). So, this was the case of the Patent Prosecution Highway pilot programme. If you are going through any of such cases, then we, at 4A IP Solution, assure you ‘The Right Lawyers’ for all your claims or petitions. We bring to you a powerful team of experienced attorneys that make all the Intellectual Property Legal Solutions promising you the right guidance at every step. We’re uniquely positioned in 6 cities of India to help you bring out of any of the clashing deals. Give us a chance for the ​best corporate lawyers in India and you’ll be content to give your case in the best hands.