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Mechanisms to accelerate Patent Prosecution in Latin America

Several national IPOs worldwide have deployed mechanisms to expedite the processing of patent applications. The common goal of these mechanisms, namely PPH, strategic amendment filings or implementation of local programs is to reduce the time needed to obtain a patent; procedures that once could take years now could take months.

PPH: patent applications running on a highway.

The PPH (Patent Prosecution Highway) is an agreement between patent offices to enable a mechanism by which patent applications previously qualified as “patentable” by the office of first filing (OFF) may accelerate its substantive examination in the office of second filing (OSF), through a simplified procedure at the request of applicants. This mechanism consists in accelerating the prosecution of patent applications by using and applying, as far as possible, the results of substantive examinations previously carried out by the OFF, thus reducing prosecution times and simultaneously, avoiding duplication and excessive workload at the signatory patent offices.

Within Latin America, only Colombian and Mexican Offices have PPH programs in force. Although Colombia has signed PPH agreements with the United States of America, Japan and Spain, none of the PPH programs have been efficiently implemented; however, it is expected the three PPH programs are fully implemented and functional in 2015. Contrastingly, the Mexican Patent Office has efficiently implemented PPH pilot programs with five offices, and three permanent PPH programs with the offices of United States of America, Japan and China. According to the successful results of this program, the Director of the Mexican Patent Office stated that “PPH has been a successful and functional tool for users of the patent system in Mexico”, positioning this office as “a modern institution in line with international trends in the field of industrial property”.

Voluntary amendments: the classic fast track.

A widely used resource for accelerating the processing of a patent application in Latin America is the strategic filing of Voluntary Amendments. Invariably complying with local provisions, the claim set of an application can be modified at the discretion of the applicant in order to increase its chances of success upon local examination. For national phases of PCT applications, claims can be modified to overcome the deficiencies established in the International Search and/or International Preliminary Examination Report, if said procedure has not been performed at the moment of national phase filing. Moreover, the claim set can also be adapted in accordance with any of its favorable parallel applications; provided that laws, regulations and local practice are duly complied, strategic Voluntary Amendments increase the chances of (but do not guarantee) the allowance of an application, as this latter has proven to be novel and inventive before another jurisdiction.

Local programs of accelerated prosecution: new fast roads under construction.

As part of their local practice, national IPOs articulate instruments to expedite the prosecution of certain patent applications; for example in Uruguay, where Applicants can file a well-grounded request to speed up substantive examination of their applications; or in Argentina, where applications may expedite their substantive examination when Applicants confirm their interest in continuing the application prosecution.

With growing concerns about environmental and global climate change issues, in April 2012 the Brazilian Patent Office became the first emerging economy to launch a program to expedite the processing of “green” patents. The aim of the program is to reduce, to only two years, the processing of applications claiming technologies such as alternative energy, transportation, waste management and agriculture. Currently, this program is available for applications filed via Paris Convention and starting April 2015, applications filed via PCT will also be candidates to access this program.

Likewise, the Peruvian Patent Office runs the “Patente Rápida” (“Fast Patent”, in Spanish) program, which is applicable to national inventors. This advisory and processing program allows patenting in less time than the regular. Through the successful implementation of this program, utility model applications have been granted in twelve months while patent applications in only eighteen months.

Priority technologies may go through an accelerated path to its final goal.

Despite having a diversity of mechanisms to expedite patent prosecution, reality shows that these are not frequently used in Latin America. Considering local laws and displaying the corresponding expert skills, the mechanisms to accelerate patent prosecution represent fast ways to reduce the time for obtaining patents meaning particular value for Applicants or their potential partners. Key technologies that pose a solution to priority issues, for example environmental, could be launched anticipatedly, therefore the construction and implementation of these mechanisms, especially in countries with greater administrative backlog is a priority.

Carmen Sánchez-Puelles