PA 01/2017: PCT and PPH-PROSUR for efficient patent seeking in Latin America

WARNING: Although the information which follows was correct at the time of original publication in the PCT Newsletter, some information may no longer be applicable; for example, amendments may have been made to the PCT Regulations and Administrative Instructions, as well as to PCT Forms, since the PCT Newsletter concerned was published; changes to certain fees and references to certain publications may no longer be valid. Wherever there is a reference to a PCT Rule, please check carefully whether the Rule in force at the date of publication of the advice has since been amended.

Q:  It is important to my clients to seek patent protection for some of their inventions in Latin American countries, and for a number of their countries of interest the PCT is very helpful.  However, even once the national phase is entered, certain Latin American countries have significant patent examination backlogs which make it difficult for my clients to obtain patents in a timely manner. Is there any way in which the PCT can be used strategically to assist us in dealing with these backlogs?

A:  There are a number of scenarios in which the use of the PCT, in combination with bilateral and/or multilateral Patent Prosecution Highway (PPH) agreements, may be beneficial to your clients, including on the issue of addressing certain national backlogs.

One critical element in such scenarios which only recently came into existence is the “PPH‑PROSUR” agreement between the eight IP offices of Argentina, Brazil, Chile, Colombia, Ecuador, Paraguay, Peru and Uruguay (see, translation of 6 May, 2016 MOU http://www.wipo.int/scp/en/meetings/session_25/comments_received/Argenti...).  This multilateral agreement provides that a request for PPH processing submitted to an IP Office of one of the countries party to this agreement can be based on the national examination work previously carried out by the office of another PROSUR country, or on the PCT search or examination work carried out by the National Institute of Industrial Property (Brazil) and the National Institute of Industrial Property (Chile) in their capacities as PCT International Searching and Preliminary Examining Authorities.  So if your clients happen to have used either the Brazilian or Chilean International Searching Authority (ISA) to carry out their PCT International Search, that work can be leveraged directly into accelerated prosecution in the other PROSUR countries.

However, the work of other PCT ISAs may also be used as a basis for accelerated examination in these countries, if slightly less directly.  As one example, let’s say that your client used the European Patent Office as his ISA during the international phase.  The EPO currently has a PCT‑PPH agreement with the IP Office of Colombia (see https://www.epo.org/law-practice/legal-texts/official-journal/2016/09/a7...). Thus, on the basis of any positively assessed claims in your PCT application by the EPO, your client may request PCT‑PPH accelerated processing in the national phase before the Superintendence of Industry and Commerce of Colombia (SIC).  And if one or more claims were found to be patentable by SIC during its substantive examination in the national phase, examination will be accelerated in other PROSUR countries in accordance with the PPH Agreement.  Proceeding in this manner should significantly shorten the time to receive a final determination in relation to one’s patent application, even in countries with significant backlogs.  Of note is that this indirect strategy also allows your client to seek accelerated processing in countries which are not currently PCT Contracting States, such as Argentina, Paraguay and Uruguay. 

Additional information on PCT-PPH agreements can be found at:

http://www.wipo.int/pct/en/filing/pct_pph.html

More about other work‑sharing initiatives among Offices can be found at:

http://www.wipo.int/patents/en/topics/worksharing/