by Marta Garcia
In September 2018, Maximiliano Santa Cruz, the former Director of the National Institute of Industrial Property of Chile (INAPI), and the Director of the United States Patent and Trademark Office (USPTO) signed a Memorandum of Understanding in Geneva to start a Patent Prosecution Highway (PPH) Pilot program between the two countries.
The PPH pilot program, which was launched on November 1, 2018, will last for three years and may be extended upon agreement between the parties.
Under the PPH program, participating patent offices agree that when an applicant receives a final decision from a first patent office concluding that at least one claim is allowed, the applicant may request expedited examination for the corresponding claim(s) in a corresponding patent application that is pending in a second patent office.
The PPH agreement between the INAPI and the USPTO includes the PPH-Mottainai and PCT-PPH modalities. The PPH-Mottainai modality eliminates the Office of First Filing (OFF) to Office of Second Filing (OSF) directional requirement of the PPH model. This flexible approach enables the examination results by the INAPI or the USPTO to be used as the basis for a PPH request irrespective of which one was the office of first filing.
According to the PCT-PPH modality, an applicant may request accelerated examination based on a written opinion or examination report for a corresponding PCT application prepared by an International Search Authority indicating that at least one claim has novelty, inventive step, and industrial applicability.
This is the most recent PPH pilot program that the INAPI has entered, after those with the Canadian Intellectual Property Office (CIPO), the Japanese Patent Office (JPO), the State Intellectual Property Office People’s Republic of China (SIPO) and the patent offices of the Pacific Alliance members (Colombia, Mexico and Peru), as well as PROSUR members (Argentina, Brazil, Colombia, Costa Rica, Ecuador, Paraguay, Peru and Uruguay), which are already up and running.