Patent granting procedures can be lengthy and costly, especially when the applicant has multiple territories to cover.
With this in mind, the international patent offices(USPTO, JPO, EPO, etc.) have agreed to speed up their examination procedures for granting patents, without compromising their quality.
Following the procedural changes accompanying the implementation of the PACTE law in May 2020, and in particular the consideration now given to the criterion of inventive step during the examination of patent applications, INPI has signed its first Patent Prosecution Highway (PPH) agreement with the Japanese office, which came into force on January 01, 2021.
What is a Patent Prosecution Highway agreement & what are the prerequisites?
This is a request to be filed by the applicant with a patent office:
- this request is for an acceleration of the patent procedure, based on the examination of the initial application by another partner office.
- the partner office must have indicated that at least one of the claims in the patent application is patentable.
- it is essential that these patentable claims (or claims of narrower scope) are included in the patent application for which a PPH is requested.
The office that receives this request can thus base its own examination on the examination carried out by the office in charge of the priority application (INPI or its partner, if applicable), without being obliged to rule in the same way.
At INPI, in the case of a priority application from a partner office such as Japan, for example, this PPH request can be filed:
- when the patent application is filed, or
- after filing, as long as the examination of the issue has not begun.
Why go through the Patent Prosecution Highway?
The aim of the PPH is to speed up the granting of extended patent applications under priority of a first national application. Depending on the office concerned, this could save several months’ processing time.
This enables both offices and applicants to limit the costs incurred by examination procedures. These costs can multiply depending on the number of countries chosen when entering the national phase at the end of the PCT procedure.
What’s more, faster granting also makes it possible to effectively attack a potential infringer earlier, on the basis of agranted patent.
INPI has recently signed 2 bilateral PPH agreements with :
- USPTO, United States Patent Office, December1, 2021
- CIPO, Canadian Patent Office, February1, 2022
- INPI Brasil, May 1, 2022
On May 1, 2022, a new PPH agreement will come into force between France and Brazil. This is the 3rd agreement signed since the Pact Law came into force. These PPH agreements highlight the value of French patent applications and strengthen links between INPI and foreign patent offices.
Who can use PPH?
Only applications filed with INPI from May 22, 2020, i.e. after the PACTE law comes into force in France, are concerned. These applications will be eligible for this accelerated grant procedure, PPH, at the Japanese, American and Canadian patent offices.
Conversely, for applications from Japanese, American and Canadian offices, the agreements apply reciprocally. Thus, applicants who filed a first Japanese, American or Canadian application that was examined by one of these two offices before the PACTE Act came into force, will be able to request an accelerated grant in France.
YesMyPatent will be happy to provide you with further information on the PPH procedure, to advise you on your company’s global IP strategy and to find out whether you are eligible for this examination acceleration procedure for the rapid grant of your patent application for the countries in which you wish to enter phase.
