The Andean Community has stood firm in the defence of its owns interests, says Jesús Cuba and Kelly Sánchez of OMC Abogados & Consultores

Patents of invention, on dealing with novel creations resulting from arduous research in a particular technical field, have always been characterised by a very detailed and complex registration process, especially at the stage of the substantial examination, or patentability examination. This is precisely where it will be determined whether the invention meets the three basic requirements: novelty, inventive step and industrial application. In Peru, obtaining a patent for an invention can take up to five years, of which three correspond only to the patentability examination.

The Patent Prosecution Highway (PPH) is a filing system for patent applications. Through the PPH, an application filed with a patent office of a country that has signed a PPH agreement (first filing office), which has already passed the patentability examination and has obtained a report that determines that at least one claim is patentable or can be granted, will allow the applicant to request the office of another signatory country (second filing office), where an application for the same patent is pending, to make use of the report at the time of the patentability examination. The Japanese Patent Office proposed the PPH and put it into practice for the first time with the US Patent and Trademark Office in 2006. This became permanent in 2008.

Peru’s INDECOPI signed its first pilot programme to implement PPH with the Spanish Patent and Trademark Office (OEPM) in 2015. This PPH programme came into force on 1 January 2016 and is valid for two years, which will be automatically renewable and for equal periods. Currently, Peru has signed agreements for the implementation of the PPH with the IP offices of the states that are part of the Pacific Alliance (Chile, Colombia and Mexico) and PROSUR (Argentina, Brazil, Chile, Colombia, Ecuador, Uruguay and Paraguay). While it is true that each PPH agreement has its own norms and guidelines, there are general requirements such as:

The application must be national, in the national phase via the Patent Cooperation Treaty, or a divisional application of either of these

The application must have one or more claims that have been considered patentable in the first filing office

The claims of both applications must have sufficient correspondence, in addition to not infringing any provisions with respect to the particular legislation of each country

The second filing office should not have initiated the patentability examination of the application

The main advantages of the PPH is that when the patentability reports of the first filing offices are reused, there will no longer be duplication of effort on the part of the second filing office when examining the application, which will allow greater certainty and speed in obtaining the registration, without jeopardising the quality of the patents. It will also lighten workloads for the public administration, and result in lower costs for the applicant, since this system does not involve additional expenses at the official rates of a regular patent procedure.

TCPavements of Chile became the first company to apply through the PPH before INDECOPI on 29 December 2016. Through resolution N°566-2017/DIN-INDECOPI of 28 March 2017, INDECOPI granted the invention patent, which covers a method for producing a fibre concrete slab for paving low-traffic roads, among other claims, making it the first patent to be granted under the PPH programme in Peru.

Consequently, national applicants will be able to achieve accelerated protection for their technology in countries where PPH agreements have been signed, which will likely have a favourable impact on our industry abroad, facilitating trade in technology products and, above all, encouraging innovation.

Country profiles
The latest country profiles from IPPro Patents
Bruno Nunes of BN IP explains how patent prosecution and licensing works in Macau, a market dominated by gaming and pharma
Tran Viet Phuong of Duong Tran offers a handy guide to patent prosecution
IPPro Connects

Visit our sister site
the worlds biggest and best IP directory
The Andean Community has stood firm in the defence of its owns interests, says Jesús Cuba and Kelly Sánchez of OMC Abogados & Consultores
The first preliminary injunction granted by a China IP court was awarded to Christian Louboutin. Dr Weili Ma of Chofn Intellectual Property explains
Patent prosecution in South Africa rarely favours the inventor, but recent reforms are aiming to change that, one little bit at a time
The Tanzania Patent Office is a useful partner in the prosecution process, says Sunday Godfrey Ndamugoba of ABC Attorneys
Dominic Ogega Mwale, managing partner at Mwale & Company, explains how to patent in Kenya
Patent owners looking for an attractive place to seek protection in Asia need look no further than Singapore, says Max Ng and Gerald Mursjid of Gateway Law Corporation
The latest features from IPPro Patents
As financial technology ascends to fresh highs with the prevalence of blockchain and cryptocurrencies, firms must innovate to win. Jon Calvert of ClearViewIP explains how invention and protection go hand in hand
The US Court of Appeals for the Federal Circuit’s decision in Aqua Products v the US Patent and Trademark Office has ruffled many feathers, as the burden of proof in an inter-partes review begins to shift to the petitioner
Join Our Newsletter

Sign up today and never
miss the latest news or an issue again

Subscribe now
Allergan’s recent patent deal with the Saint Regis Mohawk Tribe has drawn the ire of the industry, and the jury is still out on whether it will work
Unfavourable environments for business method patents in the US have led to an increase of filings in Asia. Benjamin Keim of Lee & Hayes explains
Doris Spielthenner of Practice Insight discusses Amazon’s now expired ‘1-Click’ purchase patent and the problems with owning such a broad “super-patent”
While uncertainty persists, plant breeders may need to double down to secure their rights, says Penny Maplestone of the British Society of Plant Breeders
Least developed countries can now more easily obtain compulsory licences during public health emergencies, but some have been slow to take advantage. Vítor Palmela Fidalgo of Inventa International explains why
Diana Portna of D&L IP Group explains how Ukraine’s compulsory licensing laws could be opened up for the public interest, and how rights owners could react
The latest interviews from IPPro Patents