Peru


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.

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