The Patent Prosecution Highway GuideKR2, MX1, NO2, NZ2, PE2, PL2, PT2, RU2, SE2, SG2, TW1, US2, XN2,...
59
The Patent Prosecution Highway Guide Arranged after Office of Later Filing © Troels Peter Rørdam & AWA Denmark A/S, 2017-2020. Last update: January 2020 In the below Table of Contents, please click on the country in which you would wish to file a request for prosecution under the PPH. You will then be directed to a fact sheet for the country chosen. Reservation is taken for erroneous or missing information as not all agreements for all countries may have been studied as well as for dead internet links. See also point 15, Author’s Notes and Reservations, for each country. Table of Contents AR – ARGENTINA..........................................................................................................................3 AT – AUSTRIA................................................................................................................................4 AU – AUSTRALIA ..........................................................................................................................5 BR – BRAZIL ..................................................................................................................................6 CA – CANADA ................................................................................................................................8 CL – CHILE .....................................................................................................................................9 CN – CHINA.................................................................................................................................. 10 CO – COLOMBIA ......................................................................................................................... 12 CR – COSTA RICA ...................................................................................................................... 13 CZ – CZECHIA ............................................................................................................................. 14 DE – GERMANY ........................................................................................................................... 15 DK – DENMARK ........................................................................................................................... 16 EA – EURASIAN PATENT OFFICE ........................................................................................... 17 EC – ECUADOR............................................................................................................................ 18 EE – ESTONIA.............................................................................................................................. 19 EG – EGYPT .................................................................................................................................. 20 EP – EUROPEAN PATENT OFFICE .......................................................................................... 21 ES – SPAIN ................................................................................................................................... 23 FI – FINLAND ............................................................................................................................... 24 GB – UNITED KINGDOM........................................................................................................... 25 HU – HUNGARY ........................................................................................................................... 26 ID – INDONESIA ......................................................................................................................... 27 IL – ISRAEL .................................................................................................................................. 28
Transcript of The Patent Prosecution Highway GuideKR2, MX1, NO2, NZ2, PE2, PL2, PT2, RU2, SE2, SG2, TW1, US2, XN2,...
The Patent Prosecution Highway Guide
Arranged after Office of Later Filing
© Troels Peter Rørdam & AWA Denmark A/S, 2017-2020.
Last update: January 2020
In the below Table of Contents, please click on the country in which you would wish to file a
request for prosecution under the PPH. You will then be directed to a fact sheet for the
country chosen.
Reservation is taken for erroneous or missing information as not all agreements for all
countries may have been studied as well as for dead internet links. See also point 15,
Author’s Notes and Reservations, for each country.
Table of Contents AR – ARGENTINA ..........................................................................................................................3
AT – AUSTRIA ................................................................................................................................4
AU – AUSTRALIA ..........................................................................................................................5
BR – BRAZIL ..................................................................................................................................6
CA – CANADA ................................................................................................................................8
CL – CHILE .....................................................................................................................................9
CN – CHINA .................................................................................................................................. 10
CO – COLOMBIA ......................................................................................................................... 12
CR – COSTA RICA ...................................................................................................................... 13
CZ – CZECHIA ............................................................................................................................. 14
DE – GERMANY ........................................................................................................................... 15
DK – DENMARK ........................................................................................................................... 16
EA – EURASIAN PATENT OFFICE ........................................................................................... 17
EC – ECUADOR ............................................................................................................................ 18
EE – ESTONIA.............................................................................................................................. 19
EG – EGYPT .................................................................................................................................. 20
EP – EUROPEAN PATENT OFFICE .......................................................................................... 21
ES – SPAIN ................................................................................................................................... 23
FI – FINLAND ............................................................................................................................... 24
GB – UNITED KINGDOM ........................................................................................................... 25
HU – HUNGARY ........................................................................................................................... 26
ID – INDONESIA ......................................................................................................................... 27
IL – ISRAEL .................................................................................................................................. 28
2
IN – INDIA .................................................................................................................................... 29
IS – ICELAND .............................................................................................................................. 30
JP – JAPAN .................................................................................................................................... 31
KR – KOREA REPUBLIC ............................................................................................................. 32
MA – MOROCCO .......................................................................................................................... 33
MX – MEXICO .............................................................................................................................. 34
MY – MALAYSIA........................................................................................................................... 35
NI – NICARAGUA ........................................................................................................................ 36
NO – NORWAY ............................................................................................................................. 37
NZ – NEW ZEALAND .................................................................................................................. 38
PE – PERU ..................................................................................................................................... 39
PH – PHILIPPINES ...................................................................................................................... 41
PL – POLAND................................................................................................................................ 42
PT – PORTUGAL .......................................................................................................................... 43
PY – PARAGUAY .......................................................................................................................... 44
RO – ROMANIA ............................................................................................................................ 45
RU – RUSSIA................................................................................................................................ 46
SA – SAUDI ARABIA .................................................................................................................. 47
SE – SWEDEN .............................................................................................................................. 48
SG – SINGAPORE ....................................................................................................................... 49
TH – THAILAND ........................................................................................................................... 50
TR – TURKEY ................................................................................................................................ 51
TW – TAIWAN (Chinese Taipei) ............................................................................................. 52
US – UNITED STATES of AMERICA ....................................................................................... 53
UY – URUGUAY ............................................................................................................................ 55
VN – VIETNAM ............................................................................................................................. 56
XN – NORDIC PATENT INSTITUTE ........................................................................................ 57
XV – VISEGRAD PATENT INSTITUTE .................................................................................... 58
Appendix A - Internal Patent Prosecution Highways ....................................................... 59
3
Facts when filing a PPH request with:
AR – ARGENTINA Instituto Nacional de Propiedad Industrial, INPI
1. Participation in PPH co-operations
PROSUR with PPH MOTTAINAI principles applied (Participants marked P below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
BRP, CLP, CN, COP, CRP, DK, ECP, JP, PEP, PYP, US, UYP.
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes. For DK, utility model applications not allowed.
6. May substantial examination have begun when filing PPH request
No. But request for examination must have been filed and the AR application must be
published.
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Yes, but must still sufficiently correspond (see point 7 and 8)
10. May the request form be corrected
Yes. Even if the request is eventually refused, it is possible to file a new PPH-request.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Apparently only Spanish
13. Is a fee due for requesting PPH
No
14. Links
INPI’s PPH website: Link (Search the page for “PPH”)
Dossier Access System:
15. Author’s notes and reservations
Points 6-13 are based on information retrieved from the agreement between AR and DK.
4
Facts when filing a PPH request in:
AT – AUSTRIA Österreichisches Patentamt, ÖPA
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT (see point 3), AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, MX,
NO2, NZ2, PE2, PL2, PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s.
In the national phase, PCT WO’s from AT as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
If CN or MX is OEF, exclusively CN and MX, respectively. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes. When defect is compensated PPH request is granted
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and German
Machine translations are accepted, translation may be required at ÖPA’s discretion
13. Is a fee due for requesting PPH
No
14. Links
ÖPA’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Agreement with CN needs re-check & agreement with MX needs check.
5
Facts when filing a PPH request in:
AU – AUSTRALIA IP Australia, IPAU
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU (see point 3), CA2, CO2, DE2, DK2, EE2, EP, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2,
NZ2, PE2, PL2, PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from AU as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes. When defect is compensated PPH request is granted
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English
Machine translations are accepted, translation may be required at IPAU’s discretion
13. Is a fee due for requesting PPH
No
14. Links
IPAU’s PPH website: Link
Dossier Access System: AusPat
15. Author’s notes and reservations
6
Facts when filing a PPH request in:
BR – BRAZIL Instituto Nacional da Propriedade Industrial, INPI
1. Participation in PPH co-operations
PROSUR (Participants marked P below. No limitation on technical area)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, CLP, COP, CN (Applying only to IT, packaging and chemical and medico technology inventions, albeit pharma
inventions are excepted), CRP, DK (Applying only to technical areas within class F in the IPC; limited to 100 applications per
year and 200 in total), ECP, EP (Applying only to chemical and medico technology inventions within certain IPC classes listed
in an annex to the agreement; pharma inventions are excepted; limited to 200 applications in total), JP (Applying only to IT
inventions; limited to 200 applications in total), GB (Applying only to IT and Biotech inventions, albeit pharma inventions are
excepted; ; limited to 200 applications in total), PEP, PYP, US (Applying only to oil, gas & petrochemical as well as IT
inventions; limited to 200 applications in total), UYP.
Also, the intention of entering agreements with IL, KR, MX & RU have announced by the INPI
early 2018.
3. Type of work products from Office of Earlier Filing accepted
CN, EP, JP: Only national; PROSUR, US: Both national and, where available and Office of
Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
CN, DK, EP, GB, JP, US: Exclusively the OEF. For all other OEFs any Office.
5. May PPH be requested based on a divisional application
US, DK, GB: No; PROSUR: Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Yes, once. If still not OK, the PPH request will be refused.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
At least Portuguese, and at least for DK as OEE also English
Machine translations are accepted, translation may be required at INPI’s discretion
13. Is a fee due for requesting PPH
No (Possibly apart from when using the PROSUR agreement)
7
14. Links
INPI’s PPH website: Link (In Portuguese)
Dossier Access System:
15. Author’s notes and reservations
Points 7 through 13 need confirmation with respect to CN & JP, points 8-10 generally need
confirmation.
8
Facts when filing a PPH request in:
CA – CANADA Canadian IP Office, CIPO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA (See point 3), CL, CN1, CO2, DE2, DK2, EE2, EP1, ES2, FI2, GB2, HU2, IL2, IS2, JP2,
KR2, MX1, NO2, NZ2, PE2, PL2, PT2, RU2, SE2, SG2, TW1, US2, XN2, XV2 (1: PPH MOTTAINAI
principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from CA as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No – but the request for examination may have been filed
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Yes – but the request for PPH will cease to have effect if point 8 is not fulfilled.
10. May the request form and required documents other than claims be corrected
Yes. When defect is compensated PPH request is granted
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and French
Machine translations are accepted, translation may be required at CIPO’s discretion
13. Is a fee due for requesting PPH
No
14. Links
CIPO’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
9
Facts when filing a PPH request with:
CL – CHILE Instituto Nacional de Propiedad Industrial, INAPI
1. Participation in PPH co-operations
PROSUR with PPH MOTTAINAI principles applied (Participants marked P below); Alianza del
Pacifico (Participants marked A below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, BRP, CA, CN, CRP, ECP, COP,A, JP1, MXA,1, PEP,A, PYP, US, UYP (1: PPH MOTTAINAI
principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No. Plus the CL application must be published
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Yes, at least one time. If still rejected, a new PPH request may be filed.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
At least Spanish
13. Is a fee due for requesting PPH
Presently not known, but at least not within PROSUR
14. Links
INPI’s PPH website: Link (In Spanish)
Dossier Access System:
15. Author’s notes and reservations
All points 8-12 and 13 needs confirmation. The agreement with CN has not yet been studied.
10
Factsheet when filing a PPH request in:
CN – CHINA National Intellectual Property Administration of PRC, CNIPA
1. Participation in PPH co-operations
IP5 PPH (with EP, JP, KR & US)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AR, AT, BR, CA, CL, CZ, DE, DK, EA, EG, EP1, ES, FI, GB, HU, IL, IS, JP1, KR1, MX, MY, PL, PT,
RU, SE, SG, US1 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s. Note
that a formal allowance of the application (intention to grant) or equivalent is required.
4. Allowed application may have priority filed in
For all OEF’s except the IP5 exclusively the OEF. For IP5 Offices, any country, although
deviations may occur if using a PCT work product.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No – but the request for examination may have been filed. Plus, the CN application must be
1) published, 2) have entered the substantial examination stage and 3) if filed after 1 March
2012 be filed electronically
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
After receipt of the first Office Action, claims need not sufficiently correspond, but possibly
does not apply for all OEEs
9. May claims be amended after grant of PPH request
Yes, but possibly does not apply for all OEEs
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Chinese
Machine translations are accepted, translation may be required at CNIPA’s discretion
13. Is a fee due for requesting PPH
No
14. Links
CNIPA’s PPH website: Link (in English but seems inclomplete)
Dossier Access System: The China Patent Inquiry System
11
15. Author’s notes and reservations
All points 8-10 needs confirmation. The agreements with BR, CL, EA, HU have not yet been
studied
12
Facts when filing a PPH request in:
CO – COLOMBIA Superintendencia de Industria y Comercio, SIC
1. Participation in PPH co-operations
PROSUR with PPH MOTTAINAI principles applied (participants marked P below), GPPH
(participants marked 2 below), Alianza del Pacifico (Participants marked A below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, AT2, AU2, BRP, CA2, CLP,A, CRP, DE2, DK2, ECP, EE2, EP, ES2, FI2, GB2, HU2, IL2, IS2, JP2,
KR2, MXA, NO2, NZ2, PEP,A,2, PL2, PT2, PY P, RU2, SE2, SG2, US2, UY P, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
For PROSUR, and GPPH all. For others only national
4. Allowed application may have priority filed with
For EP exclusively the OEF. For PROSUR, Alianza del Pacifico and GPPH any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No.
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
At least Spanish
13. Is a fee due for requesting PPH
Presently not known, but at least not within PROSUR
14. Links
SIC’s PPH website (in Spanish, no English available): Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 & 12-14 needs confirmation as the info available is in Spanish only.
13
Facts when filing a PPH request with:
CR – COSTA RICA Register of Industrial Property, National Register, Ministry of Justice and Peace, RN
1. Participation in PPH co-operations
PROSUR (Participants marked P below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, BRP, CLP, COP, ECP, PEP, PYP, UYP.
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least Spanish)
13. Is a fee due for requesting PPH
Presently not known
14. Links
RN’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
All points 5, 8-10 and 12-14 needs confirmation.
14
Facts when filing a PPH request in:
CZ – CZECHIA Úřad Průmyslového Vlastnictví, UPV
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
CN, FI, JP1, US (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Only national, albeit for CN also PCT
4. Allowed application may have priority filed with
For FI & US exclusively the OEF. For JP & CN any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes – but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
Narrower claims must, at least for US, be set forth as dependent claims.
8. Claims requirement with respect to allowed claims after grant of PPH request
At least for CN, claims need not sufficiently correspond
9. May claims be amended after grant of PPH request
At least for CN, Yes
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Czech
13. Is a fee due for requesting PPH
No
14. Links
UPV’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 needs confirmation.
15
Facts when filing a PPH request in:
DE – GERMANY Deutsches Patent und Markenamt, DPMA
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN1, CO2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
No, request is not approved. Applicant may resubmit request in corrected form as many times
as necessary.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and German
Machine translations are accepted, translation may be required at DPMA’s discretion
13. Is a fee due for requesting PPH
No
14. Links
DPMA’s PPH website: Link
Dossier Access System: DPMA Register
15. Author’s notes and reservations
16
Facts when filing a PPH request in:
DK – DENMARK Patent- og Varemærkestyrelsen, PVS
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AR, AT2, AU2, BR, CA2, CN, CO2, DE2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2,
PL2, PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For CN and BR as OEF, exclusively the OEF. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
If not approved: When defect is compensated PPH request is granted
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes. When defect is compensated PPH request is granted
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Danish
Machine translations are accepted, translation may be required at PVS’s discretion
13. Is a fee due for requesting PPH
No
14. Links
PVS’s PPH website: Link
Dossier Access System: PVS Online
15. Author’s notes and reservations
17
Facts when filing a PPH request with:
EA – EURASIAN PATENT OFFICE EAPO
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
CN, EP, JP1, KR, US (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Only national, albeit for EP also PCT
4. Allowed application may have priority filed with
For EP: All; For CN, JP exclusively the OEF.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
For EP claims need not sufficiently correspond after receipt of first Office Action.
For CN claims must still sufficiently correspond or be narrower in scope.
9. May claims be amended after grant of PPH request
At least for EP, yes
10. May the request form be corrected
Yes, at least once
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Russian
13. Is a fee due for requesting PPH
No
14. Links
EAPO’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8, 9 and 10 needs confirmation for US and JP. Agreements with KR and US have not
yet been studied.
18
Facts when filing a PPH request with:
EC – ECUADOR Instituto Ecuatoriano de la Propiedad Industrial, IEPI
1. Participation in PPH co-operations
PROSUR (Participants marked P below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, BRP, CLP, COP, CRP, PEP, PYP, UYP.
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Presently not known
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least Spanish)
13. Is a fee due for requesting PPH
Presently not known
14. Links
IEPI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
All points 5, 6, 8-10 and 12-14 needs confirmation.
19
Facts when filing a PPH request in:
EE – ESTONIA Eesti Patendiamet, EPA
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CO2, DE2, DK2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2, PT2,
RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes. But no Decision to Grant may have been issued.
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Estonian
Machine translations are accepted, translation may be required at EPA’s discretion
13. Is a fee due for requesting PPH
No
14. Links
EPA’s PPH website: Link
Dossier Access System: Estonian Patent Register
15. Author’s notes and reservations
Points 8-10 needs confirmation.
20
Facts when filing a PPH request with:
EG – EGYPT Egyptian Patent Office, EGPA
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
CN, JP
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For CN and JP exclusively the OEF.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No. But the request for substantial examination must be filed before or with the PPH request
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Arabic
13. Is a fee due for requesting PPH
No
14. Links
EGPA’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 needs confirmation.
21
Facts when filing a PPH request with:
EP – EUROPEAN PATENT OFFICE EPO
1. Participation in PPH co-operations
IP5 PPH (with CN, JP, KR and US)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AU1, BR, CA1, CN1, CO, EA, IL1, JP1, KR1, MX1, MY, PE, PH, RU, SG1, US1 (1: PPH MOTTAINAI
principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s.
However, for BR only national work products
4. Allowed application may have priority filed with
For all OEF’s, any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No – closing date being the day marked in European Patent Register as start of substantial
examination
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Yes – but the request for PPH will cease to have effect if point 8 is not fulfilled.
10. May the request form be corrected
Yes, one time – upon correction of defect request will be approved.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English, German and French
13. Is a fee due for requesting PPH
No
14. Links
EPO’s PPH website: None, see links to relevant OJ’s below
Dossier Access System: European Patent Register
Links to agreement texts in the Official Journal of the EPO:
JP, US, Trilateral PPH: OJ no. 2, 2012
22
IP5 PPH (CN, JP, KR,
US): OJ no. 1, 2014
IL, MX, SG PPH: OJ no. 12, 2017
Request Form: OJ no. 5, 2016
CA PPH: OJ no. 12, 2017
AU PPH:
OJ no. 6, 2016
OJ no. 6, 2019
CO PPH: OJ no. 9, 2016
RU PPH: OJ no. 1, 2017
MY PPH: OJ no. 6, 2017
PH PPH: OJ no. 6, 2017
EA PPH: OJ no. 9, 2017
BR PPH: OJ no. 11, 2017
PE PPH: OJ no. 12, 2019
15. Author’s notes and reservations
N/A
23
Facts when filing a PPH request in:
ES – SPAIN Oficina Española de Patentes y Marcas, OEPM
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN1, CO2, DE2, DK2, EE2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, MA1, MX1, NO2, NZ2,
PE2, PL2, PT2, RU2, SE2, SG2, TR, TW1, US2, XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CO or PE or TR is OEF, exclusively the OEF. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Spanish
Machine translations are accepted, translation may be required at OEPM’s discretion
13. Is a fee due for requesting PPH
No
14. Links
OEPM’s PPH website: Link (En Español…)
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 need confirmation, as does point 4 for PE & TR.
24
Facts when filing a PPH request in:
FI – FINLAND Patentti- ja Rekisterihallitus, NBPR
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, CZ, DE2, DK2, EE2, ES2, FI (see point 3), GB2, HU2, IL2, IS2, JP2, KR2, NO2,
NZ2, PE2, PL2, PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from FI as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
If CN or CZ is OEF, exclusively CN or CZ, respectively. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
No, request is not approved. Applicant may resubmit request in corrected form as many times
as necessary.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Finnish
Machine translations are accepted, translation may be required at NBPR’s discretion
13. Is a fee due for requesting PPH
No
14. Links
NBPR’s PPH website: Link
Dossier Access System: PatInfo
15. Author’s notes and reservations
25
Facts when filing a PPH request in:
GB – UNITED KINGDOM UK Intellectual Property Office, UK-IPO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, BR, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CN is OEF, exclusively in China. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
For minor defects request is approved upon correction.
For serious defects, request is not approved. Applicant may resubmit request in corrected
form as many times as necessary.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English
Machine translations are accepted, translation may be required at UK-IPO’s discretion
13. Is a fee due for requesting PPH
No
14. Links
UK-IPO’s PPH website: Link
Dossier Access System: Ipsum
15. Author’s notes and reservations
Agreement with BR has not yet been studied
26
Facts when filing a PPH request in:
HU – HUNGARY Szellemi Tulajdon Nemzeti Hivalata, HIPO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CN is OEF, exclusively the OEF, apparently with the exception of where both applications
are national phases from a PCT. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes, at least one time. Request is approved upon correction.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Hungarian
Machine translations are accepted, translation may be required at HIPO’s discretion
13. Is a fee due for requesting PPH
No
14. Links
HIPO’s PPH website: Link
Dossier Access System: HIPO Register
15. Author’s notes and reservations
27
Facts when filing a PPH request with:
ID – INDONESIA Direktorat Jenderal Hak Kekayaan Intelektual, DJHKI
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
JP
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For JP exclusively the OEF.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Indonesian
13. Is a fee due for requesting PPH
Presently not known
14. Links
DJHKI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Points 8, 9, 10 and 13 needs confirmation.
28
Facts when filing a PPH request in:
IL – ISRAEL Reshut Hapatentim, RH
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, EP1, ES2, FI2, GB2, HU2, IL (see point 3), IS2, JP2, KR2,
NO2, NZ2, PE2, PL2, PT2, RU2, SE2, SG2, US2, XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from IL as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
If CN is OEF, exclusively CN. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
Information Disclosure Statement
12. Accepted languages
English and Hebrew
Machine translations are accepted, translation may be required at RH’s discretion
13. Is a fee due for requesting PPH
Yes
14. Links
RH’s PPH website: Link
Dossier Access System: ILPATSEARCH
15. Author’s notes and reservations
Points 8-10 needs confirmation.
29
Facts when filing a PPH request in:
IN – INDIA Intellectual Property India, IPI
1. Participation in PPH co-operations
None
2. PPH agreements with the following Offices of Earlier Filing (OEF)
JP
3. Type of work products from Office of Earlier Filing accepted
Presently not known
4. Allowed application may have priority filed in
Presently not known
5. May PPH be requested based on a divisional application
Presently not known
6. May substantial examination have begun when filing PPH request
Presently not known
7. Claims requirement with respect to allowed claims at filing of PPH request
Presently not known
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Presently not known
12. Accepted languages
Presently not known
13. Is a fee due for requesting PPH
Presently not known
14. Links
IPI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Agreement with JP not yet available.
30
Facts when filing a PPH request in:
IS – ICELAND Einkaleyfastofan, ELS
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CN is OEF only CN. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Icelandic
Machine translations are accepted, translation may be required at ELS’s discretion
13. Is a fee due for requesting PPH
No
14. Links
ELS’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 needs confirmation.
31
Facts when filing a PPH request in:
JP – JAPAN Japan Patent Office, JPO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below), IP5 PPH (with CN, EP, KR & US)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AR, BR, AT2, AU2, CA2, CL, CN1, CO2, CZ1, DE2, DK2, EA1, EE2, EG, EP1, ES2, FI2, GB2, HU2, ID,
IL2, IN, IS2, JP (see point 3), KR2, MX1, MY1, NO2, NZ2, PE2, PH1, PL2, PT2, RO1, RU2, SA, SE2,
SG2, TH, TR, TW1, US2, VN, XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from JP as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
If any of AR, BR, CL, EG, ID, TH or VN is OEF, exclusively the OEF. For all other OEF’s any
country.
5. May PPH be requested based on a divisional application
Yes. For PE utility models are expressly excluded.
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes, when defect is compensated request for PPH is granted. Applies even for the claims. If
still rejected, a new PPH request may even be filed.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Japanese
Machine translations are accepted, translation may be required at JPO’s discretion
13. Is a fee due for requesting PPH
No
14. Links
JPO’s PPH website: Link
Dossier Access System: AIPN (only accessable by authorized IP Offices)
15. Author’s notes and reservations
32
Facts when filing a PPH request in:
KR – KOREA REPUBLIC Korean IP Office, KIPO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below), IP5 PPH (with CN, EP, JP & US)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN1, CO2, DE2, DK2, EA, EE2, EP1, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR (see point
3), MX1, NO2, NZ2, PE2, PH1, PL2, PT2, RU2, SA, SE2, SG2, TW1, US2, VN, XN2, XV2 (1: PPH
MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from KR as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes, by resubmission of the request which may be done an unlimited number of times. When
defect is compensated request for PPH is granted. Applies even for the claims.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Korean
Machine translations are accepted, translation may be required at KIPO’s discretion
13. Is a fee due for requesting PPH
Yes
14. Links
KIPO’s PPH website: Link
Dossier Access System: K-PION (only accessable by authorized IP Offices)
15. Author’s notes and reservations
33
Facts when filing a PPH request with:
MA – MOROCCO Office Marocain de la Propriété Industrielle et Commerciale, OMPIC
1. Participation in PPH co-operations
None
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ES
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Presently not known
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least French and Arabic)
13. Is a fee due for requesting PPH
Presently not known
14. Links
OMPIC’s PPH website: Link (En Français)
Dossier Access System:
15. Author’s notes and reservations
Points 6, 8, 9, 10, 12 and 13 needs confirmation.
34
Facts when filing a PPH request with:
MX – MEXICO Instituto Mexicano de la Propriedad Industrial, IMPI
1. Participation in PPH co-operations
Alianza del Pacifico (Participants marked A below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT, CA1, CL1,A, CN, CO1,A, EP1, ES1, JP1, KR1, PE1,A, PT, SG, US (1: PPH MOTTAINAI principles
applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For PT, SG, US as well as for CN when using national work products exclusively that OEF, for
all other OEF’s, incl. CN when using PCT work products, any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No. Furthermore, the MX application must have been published & the six month period for
third party comments applicable under MX law must have expired.
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database.
Claims correspondence table and request form
12. Accepted languages
English and Spanish
Machine translations are accepted, translation may be required at IMPI’s discretion
13. Is a fee due for requesting PPH
No
14. Links
IMPI’s PPH website: Link (En Español)
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 needs confirmation.
35
Facts when filing a PPH request with:
MY – MALAYSIA Perbadanan Harta Intelek Malaysia, PHIM
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
CN, EP, JP1 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Bahasa Malaysia and English
13. Is a fee due for requesting PPH
Apparently, no
14. Links
PHIM’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 and 13 needs confirmation.
36
Facts when filing a PPH request with:
NI – NICARAGUA Registro de la Propriedad Intelectual, RPI
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
US1 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Presently not known
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least Spanish)
13. Is a fee due for requesting PPH
Presently not known
14. Links
RPI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Points 6, 8, 9, 10, 12 and 13 needs confirmation. Points 7 and 11 are presumed as PPH
MOTTAINAI principles applies.
37
Facts when filing a PPH request in:
NO – NORWAY Patentstyret, PS
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NZ2, PE2, PL2, PT2,
RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Norwegian
Machine translations are accepted, translation may be required at PS’s discretion
13. Is a fee due for requesting PPH
No
14. Links
PS’s PPH website: Link
Dossier Access System: NIPO
15. Author’s notes and reservations
Points 8-10 needs confirmation.
38
Facts when filing a PPH request in:
NZ – NEW ZEALAND IPO of New Zealand, IPONZ
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, PE2, PL2, PT2,
RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For all OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Yes. When defect is compensated PPH request is granted
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English
Machine translations are accepted, translation may be required at IPONZ’s discretion
13. Is a fee due for requesting PPH
No
14. Links
IPONZ’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
39
Facts when filing a PPH request with:
PE – PERU National Institute for the Defense of Competition and Intellectual Property
Protection, INDECOPI
1. Participation in PPH co-operations
Global PPH (participants marked 2 below), PROSUR with PPH MOTTAINAI principles applied
(Participants marked P below), Alianza del Pacifico (Participants marked A below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, AT2, AU2, BRP, CA2, CLP,A, CO2,P,A, CRP, DE2, DK2, ECP, EE2, EP, ES2, FI2, GB2, HU2, IL2, IS2,
JP2, KR2, MXA, NO2, NZ2, PL2, PT2, PYP, RU2, SE2, SG2, US2, UYP, XN2, XV2.
3. Type of work products from Office of Earlier Filing accepted
For PROSUR and Global PPH both national and, where available and Office of Earlier Filing was
ISA/IPEA, PCT WO
4. Allowed application may have priority filed with
For all OEEs any Office.
5. May PPH be requested based on a divisional application
Yes, for all OEEs
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
At least for JP: Claims must sufficiently correspond or be narrower in scope. No change in
claims category.
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
At least for JP: Yes, when defect is compensated request for PPH is granted. If still rejected, a
new PPH request may even be filed.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
At least Spanish
13. Is a fee due for requesting PPH
Apparently, No
14. Links
INDECOPI’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
40
Points 8-10 and 12-13 needs confirmation.
41
Facts when filing a PPH request in:
PH – PHILIPPINES IPOPHIL
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
EP, JP1, KR1, US1 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes – but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
Narrower claims must, at least for US, be set forth as dependent claims.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Yes, at least one opportunity will be given
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Philippino
13. Is a fee due for requesting PPH
Apparently, no
14. Links
IPOPHIL’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8, 9 and 13 needs confirmation.
42
Facts when filing a PPH request in:
PL – POLAND Urzad Patentowy Rzeczypospolitej Polskiej, UPRP
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2,
PT2, RU2, SE2, SG2, US2, TW1, XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For CN as OEF exclusively CN, for all other OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Polish
13. Is a fee due for requesting PPH
No
14. Links
UPRP’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 and 13 needs confirmation. Agreement with TW not yet studied.
43
Facts when filing a PPH request in:
PT – PORTUGAL Instituto Nacional da Propriedade Industrial, INPI
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, MX, NO2, NZ2,
PE2, PL2, RU2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CN or MX is OEF, exclusively the OEF. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
If not approved: When defect is compensated PPH request is granted
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Portuguese
Machine translations are accepted, translation may be required at INPI’s discretion
13. Is a fee due for requesting PPH
No
14. Links
INPI’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Point 10 needs confirmation, so does the agreement with MX
44
Facts when filing a PPH request with:
PY – PARAGUAY Dirección Nacional de Propiedad Industrial, DINAPI
1. Participation in PPH co-operations
PROSUR with PPH MOTTAINAI principles applied (Participants marked P below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, BRP, CLP, COP, CRP, ECP, PEP, UYP.
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least Spanish)
13. Is a fee due for requesting PPH
Presently not known, but apparently not within PROSUR
14. Links
DINAPI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
All points 8-10 and 12-13 needs confirmation.
45
Facts when filing a PPH request in:
RO – ROMANIA Oficiul de Stat Pentru Inventii Si Marci, OSPIM
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
JP1, US1 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Romanian
13. Is a fee due for requesting PPH
No
14. Links
OSPIM’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
All points 8-10 and 13 needs confirmation.
46
Facts when filing a PPH request in:
RU – RUSSIA ROSPATENT
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, EP, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2,
PE2, PL2, PT2, SE2, SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
If CN is OEF, exclusively China. For all other OEF’s any country. EP to be confirmed.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
If not approved: When defect is compensated PPH request is granted
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
No. But the request may be resubmitted in corrected form once.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Russian
Machine translations are accepted, translation may be required at ROSPATENT’s discretion
13. Is a fee due for requesting PPH
No
14. Links
ROSPATENT’s PPH website: Link (In Яussian…)
Dossier Access System:
15. Author’s notes and reservations
47
Facts when filing a PPH request with:
SA – SAUDI ARABIA Saudi Authority for Intellectual Property, SAIP
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
JP, KR, US
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
OEF only.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Arab and English
Machine translations are accepted, translation may be required at SAIP’s discretion
13. Is a fee due for requesting PPH
Presently not known
14. Links
SAIP’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
48
Facts when filing a PPH request in:
SE – SWEDEN Patent- och Registreringsverket, PRV
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2,
PL2, PT2, RU2, SE (see point 3), SG2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
In the national phase, PCT WO’s from SE as ISA/IPEA (internal PCT PPH) are also accepted.
4. Allowed application may have priority filed in
If CN is OEF, exclusively China. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
Yes, but no Decision to Grant may have issued
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
If not approved: When defect is compensated PPH request is granted
8. Claims requirement with respect to allowed claims after grant of PPH request
None
9. May claims be amended after grant of PPH request
Yes
10. May the request form and required documents other than claims be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Swedish
Machine translations are accepted, translation may be required at PRV’s discretion
13. Is a fee due for requesting PPH
No
14. Links
PRV’s PPH website: Link
Dossier Access System: File Inspection at PRV
15. Author’s notes and reservations
Point 10 needs confirmation.
49
Facts when filing a PPH request in:
SG – SINGAPORE IP Office of Singapore, IPOS
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CN, CO2, DE2, DK2, EE2, EP1, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, MX, NO2,
NZ2, PE2, PL2, PT2, RU2, SE2, US2, XN2, XV2
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed in
For CN and MX as OEF exclusively the OEF. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No. Furthermore, no "intention to rely on an IPRP" (Form 11C) must have been filed
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
9. May claims be amended after grant of PPH request
Yes – but the request for PPH will cease to have effect if point 8 is not fulfilled.
10. May the request form and required documents other than claims be corrected
If the defect is inadequate entry of information, Yes and when defect is compensated PPH
request is granted. If the defect is lack of documents to be submitted, No, and no
resubmission is possible either.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English
Machine translations are accepted, translation may be required at IPOS’s discretion
13. Is a fee due for requesting PPH
No
14. Links
IPOS’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
50
Facts when filing a PPH request with:
TH – THAILAND Department of IP, DIP
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
JP
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For JP exclusively the OEF.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Thai (presumably)
13. Is a fee due for requesting PPH
Presently not known
14. Links
DIP’s PPH website: Link (Partly in Thai)
Dossier Access System:
15. Author’s notes and reservations
Points 8, 9, 10, 12 and 13 needs confirmation.
51
Facts when filing a PPH request with:
TR – TURKEY Türk Patent, TP
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ES, JP
3. Type of work products from Office of Earlier Filing accepted
For ES, only national. For JP, national and PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
For JP national work products, claims need not sufficiently correspond. For ES and for JP PCT
work products, claims must sufficiently correspond or be narrower in scope, and no change in
claims category allowed.
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Yes, when defect is compensated request for PPH is granted. If still rejected, a new PPH
request may even be filed.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Turkish and English, Machine translations are accepted at TURKPATENT’s discretion
13. Is a fee due for requesting PPH
Apparently, No
14. Links
TP’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Points 9 and 13 needs confirmation.
52
Facts when filing a PPH request in:
TW – TAIWAN (Chinese Taipei) Taiwan IP Office, TIPO
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
CA, ES1, JP1, KR1, PL1, US (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For US exclusively the OEF. For all other OEFs any country.
5. May PPH be requested based on a divisional application
Yes. For CA & PL utility models & designs expressly excluded.
6. May substantial examination have begun when filing PPH request
No. More precisely, the 1st Examination Report must not be issued, but "Notification that
Examination will begin shortly" must be received
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Yes, one opportunity will be given.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Chinese
13. Is a fee due for requesting PPH
No
14. Links
TIPO’s PPH website: Link
Dossier Access System: TIPONet
15. Author’s notes and reservations
Points 8-9 and 13 needs confirmation.
53
Facts when filing a PPH request in:
US – UNITED STATES of AMERICA US Patent & Trademark Office, USPTO
1. Participation in PPH co-operations
Global PPH (participants marked 2 below), IP5 PPH (with CN, EP, JP & KR)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AR, AT2, AU2, BR1, CA2, CL, CN1, CO2, CZ, DE2, DK2, EA, EE2, EP1, ES2, FI2, GB2, HU2, IL2, IS2,
JP2, KR2, MX, NI1, NO2, NZ2, PE2, PH1, PL2, PT2, RO1, RU2, SA, SE2, SG2, TW, US (see point 3),
XN2, XV2 (1: PPH MOTTAINAI principles applied)
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s.
In the national phase, PCT WO’s from US as ISA/IPEA (internal PCT PPH) are also accepted.
Note that a formal allowance of the application (intention to grant) or equivalent may be
required, although experiences are not unequivocal.
4. Allowed application may have priority filed in
If any of AR, CO, CZ, MX or TW is OEF, exclusively the OEF. For all other OEF’s any country.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Amendments outside of sufficient correspondence at the Examiner’s discretion
9. May claims be amended after grant of PPH request
Yes – see point 8
10. May the request form and required documents other than claims be corrected
No. But the request may be resubmitted in corrected form once.
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
Information Disclosure Statement
12. Accepted languages
English
Machine translations are accepted, translation may be required at USPTO’s discretion
13. Is a fee due for requesting PPH
No
14. Links
USPTO’s PPH website: Link
Dossier Access System: US PAIR
54
15. Author’s notes and reservations
Agreements with EA and CL not yet studied.
55
Facts when filing a PPH request with:
UY – URUGUAY Departemento Nacional de Propiedad Industrial, DNPI
1. Participation in PPH co-operations
PROSUR with PPH MOTTAINAI principles applied (Participants marked P below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
ARP, BRP, CLP, COP, CRP, ECP, PEP, PYP.
3. Type of work products from Office of Earlier Filing accepted
Both national and, where available and Office of Earlier Filing was ISA/IPEA, PCT WO’s
4. Allowed application may have priority filed with
For all OEFs any Office.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Presently not known
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
Presently not known (At least Spanish)
13. Is a fee due for requesting PPH
Presently not known, but apparently not within PROSUR
14. Links
DNPI’s PPH website:
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 and 12-13 needs confirmation.
56
Facts when filing a PPH request with:
VN – VIETNAM Cuc So Huu Tri Tue Viet Nam, NOIP
1. Participation in PPH co-operations
N/A
2. PPH agreements with the following Offices of Earlier Filing (OEF)
KR, JP
3. Type of work products from Office of Earlier Filing accepted
Only national
4. Allowed application may have priority filed with
For JP exclusively the OEF.
5. May PPH be requested based on a divisional application
Yes
6. May substantial examination have begun when filing PPH request
No
7. Claims requirement with respect to allowed claims at filing of PPH request
Claims must sufficiently correspond or be narrower in scope. No change in claims category.
8. Claims requirement with respect to allowed claims after grant of PPH request
Presently not known
9. May claims be amended after grant of PPH request
Apparently no
10. May the request form be corrected
Presently not known
11. Required documents
Copies of a) all Office actions, b) allowed claims, c) cited documents, if not available from OEF
dossier access system or database
Claims correspondence table and request form
12. Accepted languages
English and Vietnamese
Machine translations are accepted, translation may be required at NOIP’s discretion
13. Is a fee due for requesting PPH
Presently not known
14. Links
NOIP’s PPH website: Link
Dossier Access System:
15. Author’s notes and reservations
Points 8-10 and 12-13 needs confirmation.
57
Facts when filing a PPH request in:
XN – NORDIC PATENT INSTITUTE NPI
The NPI only acts as a PCT authority and thus only as an Office of Earlier Filing
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XV2
3. Type of work products from Office of Earlier Filing accepted
N/A
4. Allowed application may have priority filed in
N/A
5. May PPH be requested based on a divisional application
N/A
6. May substantial examination have begun when filing PPH request
N/A
7. Claims requirement with respect to allowed claims at filing of PPH request
N/A
8. Claims requirement with respect to allowed claims after grant of PPH request
N/A
9. May claims be amended after grant of PPH request
N/A
10. May the request form and required documents other than claims be corrected
N/A
11. Required documents
N/A
12. Accepted languages
N/A
13. Is a fee due for requesting PPH
N/A
14. Links
NPI’s PPH website: Link
Dossier Access System: Patentscope
15. Author’s notes and reservations
58
Facts when filing a PPH request in:
XV – VISEGRAD PATENT INSTITUTE VPI
The VPI only acts as a PCT authority and thus only as an Office of Earlier Filing
1. Participation in PPH co-operations
Global PPH (participants marked 2 below)
2. PPH agreements with the following Offices of Earlier Filing (OEF)
AT2, AU2, CA2, CO2, DE2, DK2, EE2, ES2, FI2, GB2, HU2, IL2, IS2, JP2, KR2, NO2, NZ2, PE2, PL2,
PT2, RU2, SE2, SG2, US2, XN2
3. Type of work products from Office of Earlier Filing accepted
N/A
4. Allowed application may have priority filed in
N/A
5. May PPH be requested based on a divisional application
N/A
6. May substantial examination have begun when filing PPH request
N/A
7. Claims requirement with respect to allowed claims at filing of PPH request
N/A
8. Claims requirement with respect to allowed claims after grant of PPH request
N/A
9. May claims be amended after grant of PPH request
N/A
10. May the request form and required documents other than claims be corrected
N/A
11. Required documents
N/A
12. Accepted languages
N/A
13. Is a fee due for requesting PPH
N/A
14. Links
VPI’s PPH website: Link
Dossier Access System: Patentscope
15. Author’s notes and reservations
59
Appendix A - Internal Patent Prosecution Highways
A1. Offices acting as ISA and IPEA under the PCT participating in the PPH
AT, AU, BR, CA, CL, CN, EG, EP, ES, FI, IL, IN, JP, KR, PH, RU, SE, SG, TR, US, XN, XV
A2. Offices acting as ISA and IPEA under the PCT which offer internal PPH
When acting as the OLE in the national phase of a PCT-application, the following offices accept
PPH requests based on a WO-ISA or a WO-IPEA from themselves as the OEE in capacity of a
PCT-authority:
AT, AU, CA, FI, IL, JP, KR, SE, US
A3. Offices acting as ISA and IPEA under the PCT which do not offer internal PPH
BR, CL, CN, EG, EP, ES, IN, PH, RU, SG, TR, XN, XV
