“The Patent Prosecution Highway is an instrument of great importance that Ecuador urgently needs to adopt.”
Ecuador has been participating in a pilot program of the Patent Prosecution Highway (PPH) since 2016 but has as of yet failed to implement the system for a number of reasons. However, with the announcement in July that Ecuador may join the Pacific Alliance next year under its new President, Lenin Moreno, and a general market-friendly shift in government, it is expected that the PPH could soon become effective.
The PPH is a system that enables an applicant who receives a positive ruling on patent claims from one PPH participating office to request accelerated prosecution of corresponding claims in another participating office. It is increasingly being implemented by national patent offices worldwide.
The process avoids the need for a new patentability examination in each national office, thus expediting administrative procedures. In practice, this is a fundamental contribution to improving patent application timeframes and reducing costs, which is always of critical importance to applicants.
Another advantage is that it saves national office resources associated with appointing an expert to conduct patentability examinations. Furthermore, it harmonizes results among offices, creating more consistency and less confusion.
The PPH is viable as long as each country adheres to the parameters and requirements established in the guidelines, which, among other considerations, include the need for a correlation between the subject matter and claims of the examination carried out by the source office and the examination to be carried out by the receiving office.
One of the objectives of this accelerated procedure is to share and incorporate the practices and guidelines of the signatory offices, thereby complementing the work of local examiners, as the scarcity of professionals that government entities can count on for this type of work in many countries creates a bottleneck for patentability decisions.
In 2016, the patent offices of the Pacific Alliance countries—that is, Colombia, Peru, Chile and Mexico—signed up to a three-year cooperation agreement on the PPH, as they felt it would help to strengthen the region and its economy. Following the three-year term and a possible one-year extension, the results will be evaluated with a view to its implementation.
Also in 2016, guidelines were established for the implementation of the PPH pilot program for several of the national offices of PROSUR-PROSUL countries—that is, Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Uruguay and Peru. For accelerated Patent Cooperation Treaty examinations, the examination results of the national offices of Brazil and Chile apply.
The guidelines follow the PPH format—that is, when the previous examining office has evaluated the patentability of an application, including national phases for PCT international applications, the subsequent examining office will ensure that the applicant can benefit from an accelerated examination process, so long as it complies with the requirements and guidelines of the program.
According to the pilot program guidelines, patent application claims that refer to unpatentable uses that are provided for in Articles 15, 20 and 21 of Andean Decision 486 and in the judgment 89-AI-2000 of the Andean Court of Justice, rendered on September 28, 2001, were excluded from this program, and therefore also from the accelerated program, as well as divisional applications (divisional applicants must file a new application in order to participate in the PPH, complying with all requirements of the case), and industrial designs.
Obstacles to Overcome
Despite having signed up to the respective international agreements, until now Ecuador has not implemented the PPH for a number of reasons, most notably: lack of implementation of the pilot program’s operational guidelines, structural changes at the Ecuadorian IP Office, and lack of approval for the requisite fees for this process by the various government entities involved.
With the possibility that Ecuador will join the Pacific Alliance, the government’s intention to negotiate free trade agreements with some of its main business partners, and the need for structural changes in several state institutions, including the IP office, it is expected that the PPH will soon become a reality in Ecuador, although the timeline is unknown.
The PPH would be indispensable for Ecuador, as it would save resources and lower costs for applicants and for the Patent Office, would speed up the lengthy patent prosecution process, and would harmonize practice in the region by creating unified criteria on the issues subject to these examination procedures.
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