Patent Prosecution Highway Pilot Programme between IPOS and JPO Extended

The Intellectual Property Office of Singapore (IPOS) and the Japan Patent Office (JPO) announced on 1 July 2010 to extend the Patent Prosecution Highway (PPH) Pilot Programme between the two offices to 1 July 2011. This programme commenced on 1 July 2009 for a period of one year ending on 1 July 2010. IPOS expressed at the commencement that this period may be extended for up to an additional year or terminated earlier depending on the volume of participation and other factors. The extension of the programme is believed to reflect favorable feedback from its participants.

The PPH Pilot Programme between IPOS and JPO is the second PPH Pilot Programme between IPOS and foreign patent offices. The first such programme was launched between IPOS and United States Patent and Trademark Office.

To obtain patents in several countries usually requires the invention to be searched and examined in each of the countries. The PPH aims to accelerate processing of patent applications by one office when the other office has already conduced a search and examination. This approach reduces redundant search and examination work and leads to a faster prosecution of the patent application. For example, if the patent applicant has filed patent applications in both Japan and Singapore and the corresponding Japan application has been granted, there is no need for him to request for search and examination for the Singapore application. He may submit a certified copy of corresponding Japan patent and rely on the Japan patent for grant of the Singapore patent.

Under Singapore patent law, the corresponding patent is defined as one linked by a Paris Convention priority claim. However, the PPH allows that the Singapore application might be linked to a Japan corresponding application by Paris Convention priority claim and Japan domestic priority claim. For example, the applicant has a Japan application JP1, and a Japan application JP2 that claims domestic priority over JP1. He has also filed a Singapore application SG claiming priority over JP1. According to the Singapore Patent Act, JP2 may not be regarded as a corresponding application of SG as they are not directly linked by a Paris Convention priority claim. However, the applicant may now request for grant of SG relying on the grant of JP2 under PPH. Therefore, the PPH enlarges the pool of corresponding Japan applications that may be relied on and offers the applicants more flexibility in prosecuting their Singapore applications.

The extension of PPH Pilot Programme between IPOS and JPO may benefit patent applicants in both Japan and Singapore. It may be of particular interest to Japanese companies that seek patent protection in Singapore.

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