The patent prosecution highway (PPH) pilot programme between the United States Patent and Trademark Office (USPTO) and the Intellectual Property Office of Singapore (IPOS) was implemented on February 2 2009 to allow applicants to obtain corresponding patents in the United States and Singapore more quickly and efficiently. Under the PPH, when at least one claim in an application in either one of these countries has been found to be patentable, the applicant can apply for fast track examination of the corresponding claim(s) in the US and Singapore patent applications, respectively.
There are two main requirements to fulfil to request accelerated prosecution of a Singapore application under the PPH at IPOS. First, the Singapore application, be it a national phase entry of a PCT international application or a non-convention/convention application, including a divisional application, must validly claim priority to a PCT application or an application filed with IPOS or the USPTO, from which the same priority has been validly claimed in the corresponding US application. Secondly, the applicant(s) must not have validly filed a notice of intention to rely on the international preliminary report on patentability for national phase entry cases, or have received an examination report or a search and examination report that issued from IPOS.
The provisions presently available under the Singapore patent system for proceeding to grant based on the final examination results of a corresponding application or corresponding granted patent may seem similar to the PPH programme. However, the PPH can be implemented only when at least one claim in the US application has been found to be patentable. On the other hand, under Singapore patent law, grant of a patent will occur regardless of whether or not the claims of the patent meet the requirements for patentability (e.g. novelty, inventive step and industrial applicability) unless there are outstanding unity of invention objections. It is up to the applicant to ensure that the claims meet the patentability requirements.
Advantageously, the PPH allows for accelerated prosecution. That is, the grant of a Singapore patent application under the PPH will be expedited. This will be advantageous to patent applicants who wish to obtain a granted Singapore patent promptly with the minimum fees, and whose US application has been found to be patentable in good time before the statutory deadline. The above scenario might occur when:
- The Singapore patent application is a non-convention/convention Singapore patent application having a filing date on or after July 1 2004, since the statutory deadline for grant under the default fast track is 42 months from the earliest priority date or filing date (if no priority is claimed);
- The Singapore patent application is a divisional application, since the statutory deadline for grant under the default fast track is 42 months from the date of filing the divisional application; or
- The Singapore patent application is a PCT national phase entry proceeding under the slow track, since the statutory deadline for grant is 60 months from the earliest priority date. Although the slow track has to be invoked within 39 months of the earliest priority date, no official fee is payable for invoking the slow track in this regard.
When proceeding under the PPH, it is a requirement to conform the claims of the Singapore patent application to those found patentable in the corresponding US patent application. Note that it is not permissible to add matter that extends beyond the application as filed when amending either a US or a Singapore patent application.
However, what constitutes added matter under Singapore law may not be considered as added matter under US law. Therefore, when intending to proceed under the PPH, and where amendments are necessary to conform the claims of the Singapore patent application to those found patentable in the US, extra care should be taken to ensure that the amendments are allowable under Singapore law. The making of an unallowable amendment is a ground for revocation of a Singapore patent.
The PPH may prove beneficial to applicants who have an allowed application in the US, by expediting the grant process in Singapore.
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| Joseph Krupa and Lee Chai Lian |
Ella Cheong Spruson & Ferguson (Singapore) Pte Ltd
152 Beach Road, #30-00 Gateway East
Singapore 189721
Tel: +65 6333 7200
Fax: +65 6333 7222
mail@ecsf-asia.com
www.ecsf-asia.com
