Monday, May 4, 2009

Patent Prosecution Highway : A One-Way Street?

The United States Patent and Trademark Office (USPTO) and the Intellectual Property Office of Singapore (IPOS) have begun testing the feasibility of sharing the results of their patent search and/or examination results with each other, under what has been called the Patent Prosecution Highway Pilot Programme (Programme).  It is hoped that the shared results would lead to reduced work done, faster prosecution and better search and examination.  The initiative will last for one year from 2 February 2009, and may be extended for another year if necessary.    

Under the Programme, where a patent application has been first filed at the USPTO, and a corresponding application filed at IPOS, the Singapore patent application may in certain circumstances benefit from accelerated prosecution where :-

1. the final results of the search and examination or the patent grant of the US application are available; and

2. the applicant furnishes certain prescribed information of the US application to IPOS.

For instance, a request for accelerated prosecution may be made where the Singapore application validly claims priority from the US application, or where the Singapore application is a national phase entry of a PCT application and which validly claims priority from a US national application.  More scenarios under which accelerated prosecution may be requested in Singapore are found here.   Details on applying for the Programme at the USPTO may be found here.

Our primary concern was how much more the Programme can accelerate the prosecution of Singapore applications, as under Singapore’s current prosecution system, applicants may already rely upon final examination reports of US corresponding applications.   At a discussion with IPOS on Thursday 30 April 2009, IPOS addressed this and other enquiries raised by IP practitioners on the Programme.  

The takeaway from the discussion was that the Programme would benefit applications first filed in Singapore, and then later filed in the US, as that would potentially shave 2 to 3 years off the US application by jump-starting the examination process.  However, as IPOS informed us, in view of our prosecution system, applications first filed in the US (and later filed in Singapore) and where the latter relies on the US examination results, would only be shortened during the grant stage.   The amount of time saved seems insignificant given that it currently only takes about 2 to 4 months from the filing of the grant request to the issuance of the certificate of grant.

Clearly, the Programme is geared towards accelerating applications in the US.  However, considerations such as the documentary requirements for making the US application "special" (i.e.  signing it up for the Programme)  are notoriously heavy and may potentially incur hefty US patent attorney costs.  Then again, this may be a worthwhile exercise depending on the technology involved, such as software patents which by nature have a short shelf-life given the speed of advancement in the area.

The USPTO currently has similar pilot programmes with the German, Danish, Australian, Canadian, UK and European patent offices.  The programme has been made permanent with the Japanese and Korean patent offices.

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