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Patent Prosecution Highway (PPH) in Colombia

The Patent Prosecution Highway (PPH) was adapted in Colombia, with the aim to facilitate the procedure to local applicants, in their practice to obtain international protection of their inventions.

In this order of ideas, this treaty firstly started with the US Patent and Trademark Office (USPTO) in 2012, later on with the Spanish Patent and Trademark Office (OEPM) in 2013, afterwards with the Japanese Patent Office (JPO) in 2014 and finally, since February, 2016, started the pilot program with the South Korean Patent Office (KIPO). Under this scenario is important to highlight, that not only applicants are benefit from this treaty, also the patent offices, given that these are able to take advantage of the state of the art already recovered and studied, in order to reduce examination time and improve the quality thereof.

Analyzing each of these sides, applicants that initially submitted their patent application in Colombia and obtained the granting decision, they are able to request to any of the patent offices mentioned above, to apply the PPH based on the patentability examination performed by the Colombian Examiner and the result obtained from it. By this action, the patentability prosecution term is reduced in each of these countries and the probability of obtaining the same positive result, is increased, which at the end means, greater probability of extending the invention’s protection.

Likewise happens to those international applicants that may want the protection of their inventions in Colombia. In order to apply this PPH treatment at the COPTO, applicants should request it exclusively at the time they request the patentability examination of their patent application. This request should be supported by: the granting decision certificate of the foreign patent office (either the USPTO, OEPM, JPO or KIPO), the set of claims that was granted and translated to spanish, the substantive official action that contains the state of the art cited by the local examiner, under which was determined the patentability of the application and finally, a comparison of the set of claims, the one granted and the one submitted before the COPTO, to appreciate absolutely correspondence between them.

Even though, it is important to point out that the application of this PPH in Colombia, does not mean that the applicant would immediately obtain the granting decision, given that besides the grating decision already taken by the foreign patent office, the Colombian examiner does also verify some issues like: both claim chapters must have the same scope and, the claim chapter submitted before the COPTO, should comply with the local IP legislation, which mainly consists in checking that there is not any non-patentable matter and the clarity-conciseness requirement, is not affected. In case, there is any infringement related to these issues, the COPTO will issue a non-substantive official action, in a term around 2 to 3 months after the PPH has been requested, in order to give an opportunity to the applicant, to adapt the claim set to the local IP legislation.

Anyhow, the application of this procedure in Colombia, has significantly shorten the patentability prosecution, given that through the conventional pathway, this prosecution could take around 34 months counting down since the application’s filing date, but through this alternative, it takes around 7 to 8 months, which represents 75% of saving time in this diligence.

In summary, it is concluded that the Patent Prosecution Highway (PPH), is a tool that benefits both applicants and patent offices, given that significantly accelerates the whole patentability prosecution of any patent application that has already been granted by any patent office that participates of this treaty, thus, encourages the protection scope of any new creation and on the other side, the quality of this examination is enhanced, given that by having access to more information related to the state of the art and also to other technical and patentability criteria, the final concept results to be more objective and robust.

Finally, taking into account this important advantages that the application of the PPH provides, patent offices all around the world are working daily on the establishment of new agreements of this treaty among them, in order to keep contributing to the continue advance of the IP practice, which every time is more tangible and closer to the final user, who is being motivated as well, to keep developing the creative and inventive capacities and/or abilities, given that these are being compensated.

Carmen Sánchez-Puelles