1.2 A list of the GPPH participating offices can be found in Annex I.

Transcription

1 Global Patent Prosecution Highway Pilot Programme Guidelines for Filing a at the Intellectual Property Office of Singapore Relying on the National Search & Examination Results from other Offices 1. Background 1.1 With effect from 1 November 2014, the Intellectual Property Office of Singapore (IPOS) has joined the Global Patent Prosecution Highway (GPPH) network and is a participating office of the GPPH pilot programme. Under the GPPH pilot, a request for accelerated examination of an IPOS patent (IPOS ) can be made by relying on the patent search and examination results (national work products) established by any of the other GPPH participating offices. These offices are known as Offices of Earlier Examination (OEE). 1.2 A list of the GPPH participating offices can be found in Annex I. 2. Requirements for requesting accelerated examination of an IPOS patent 2.1 Both the IPOS for which acceleration is requested and the OEE (s) forming the basis of the GPPH request shall have the same earliest date (whether this is a priority date or a filing date). 2.2 The OEE has at least one that is determined to be by the OEE. 2.3 All s in the IPOS must sufficiently correspond or be amended to sufficiently correspond to one or more of the s found by the OEE. Claims will be considered to sufficiently correspond where, accounting for differences due to translations and format, the s are of the same or similar scope, or the s are narrower in scope. In this regard, a that is narrower in scope occurs when a in the IPOS is amended to be further limited by an additional technical feature that is supported in the specification 2.4 Examination has not begun on the IPOS. 2.5 Diagrams depicting a list of scenarios in which a request for accelerated examination of the IPOS under the GPPH pilot programme can be made are found in Annex II. This list of scenarios is non-exhaustive. 3. Procedures for requesting accelerated examination of an IPOS patent 3.1 File duly completed Patents Form 11 ( for Search and Examination Report) or Patents Form 12 ( for Examination Report). These forms can be found at: (electronic versions for online filing) and (downloadable versions for paper filing). 3.2 The Patents Form 11 or Patents Form 12 must be accompanied by: (a) (b) a copy of all office actions of the OEE being relied upon; a copy of the patent s referred to in (a) above; and Page 1 of 11

2 (c) a s correspondence table showing the relatedness of the s referred to in (a) above to the s in the current IPOS. The format of the Claims Correspondence Table is found in Annex III. 3.3 If the documents listed in (a) and (b) above are available in the OEE Dossier Access System, they need not be filed with the Patents Form 11 or Patents Form 12. A list of the available Dossier Access Systems is found in Annex IV. 3.4 For avoidance of doubt, a copy of the patent grant without the documents listed in (a), (b) and (c) above will not qualify for the GPPH. 3.5 The checkbox for ASPEC/PPH must be selected in the Patents Form 11 or Patents Form If the request is sought after the Patents Form 11 or Patents Form 12 is filed, the request together with any supporting documents must be made in writing to IPOS. An must also be sent to IPOS at pph@ipos.gov.sg on the same day the request is submitted to IPOS. The must contain in its subject, the title "GPPH acceleration requested". 3.7 Any subsequent correspondences with IPOS must also be marked with the phrase GPPH acceleration requested. 4. Cited Documents A copy of each of the documents cited in the documents submitted under paragraph 3.2 (a) is not required at the time of filing the GPPH request. IPOS may, however, require the applicant to furnish a copy of any document cited subsequently. 5. Translations 5.1 The documents in paragraph 3.2 must be accompanied by an English translation if they are not originally in English, at the time of filing the GPPH request. 5.2 The documents in paragraph 4 may be filed in their original language. However, IPOS may subsequently request for an English translation of a document or a part of a document if an English abstract of the cited document is not available. 5.3 If it is not possible for IPOS to understand the English translation of any document, IPOS can request the applicant to resubmit the English translation of that document. 6. Examination of IPOS patent under the GPPH pilot 6.1 IPOS will treat a GPPH request as a request for accelerated examination under the GPPH pilot programme. The IPOS will be examined in accordance with the Singapore Patents Act (Cap. 221) and the Singapore Patents Rules. The legislations can be found at: Applicants should seek professional advice on patent matters in Singapore, in particular, with reference to section 30 (Grant of patent) and section 69 (Restrictions on relief for infringement) of the Singapore Patents Act (Cap. 221). Page 2 of 11

3 7. Enquiries For enquiries relating to the Global Patent Prosecution Highway pilot programme, please send an to INTELLECTUAL PROPERTY OFFICE OF SINGAPORE DATE: 1 November 2014 Page 3 of 11

4 Annex I Global Patent Prosecution Highway Participating Offices International Searching Authority and International Preliminary Examining Authority 1 IP Australia Yes 2 Austrian Patent Office Yes 3 Canadian Intellectual Property Office Yes 4 Danish Patent and Trademark Office No 5 Finnish Patent and Registration Office Yes 6 Hungarian Intellectual Property Office No 7 Icelandic Patent Office No 8 Israel Patent Office Yes 9 Japan Patent Office Yes 10 Korean Intellectual Property Office Yes 11 Nordic Patent Institute Yes 12 Norwegian Industrial Property Office No 13 Portuguese Institute of Industrial Property No 14 Russian Federal Service for Intellectual Property Yes 15 Intellectual Property Office of Singapore Yes 1 16 Spanish Patent and Trademark Office Yes 17 Swedish Patent and Registration Office Yes 18 United Kingdom Intellectual Property Office No 19 United States Patent and Trademark Office Yes 1 The effective date for the Intellectual Property Office of Singapore to act as International Searching Authority and International Preliminary Examining Authority is to be confirmed. Page 4 of 11

5 Annex II Scenario (1): The IPOS validly s priority under section 17 of the Singapore Patents Act (Cap. 221) from the OEE being relied upon for the GPPH request. OEE (s) IPOS The request can also be made in the reverse scenario where the OEE s priority from the IPOS. Scenario (2): The IPOS is a divisional of the IPOS referred to in (1) above, and said divisional validly s priority under section 17 of the Singapore Patents Act (Cap. 221) from the OEE being relied upon for the GPPH request. OEE IPOS1 (s) IPOS2 Divisional for GPPH The request can also be made in the reverse scenario where the OEE s priority from the IPOS. Page 5 of 11

6 Scenario (3): The IPOS validly s priority under section 17 of the Singapore Patents Act (Cap. 221) from the OEE ( OEE1 ), and the OEE being relied upon for the GPPH request ( OEE2 ) also validly s domestic priority from OEE1. OEE1 Domestic OEE2 (s) IPOS The request can also be made in the reverse scenario where the OEE1 s priority from the IPOS. Scenario (4): The IPOS is a divisional of the IPOS referred to in (3) above, and said divisional validly s priority under section 17 of the Singapore Patents Act (Cap. 221) from the OEE ( OEE1 ), and the OEE being relied upon for the GPPH request ( OEE2 ) also validly s domestic priority from OEE1. OEE1 Domestic OEE2 (s) IPOS Divisional IPOS The request can also be made in the reverse scenario where the OEE1 s priority from the IPOS. Page 6 of 11

7 Scenario (5): The IPOS is a national phase entry of a PCT ( IPOS NP ), and the IPOS validly s priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from the OEE. The OEE is being relied on for the GPPH request. OEE (s) PCT IPOS NP The request can also be made in the reverse scenario where the OEE s priority from the PCT. Scenario (6): The IPOS is a national phase entry of a PCT ( IPOS NP ), and the IPOS validly s priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from the OEE ( OEE1 ). The OEE being relied upon for the GPPH request ( OEE2 NP ) is a national phase entry of the same PCT, and OEE2 NP validly s priority from OEE1. OEE1 PCT OEE2 NP IPOS NP (s) The request can also be made in the reverse scenario where the OEE1 s priority from the PCT. The OEE1 can also be first filed in another office other than IPOS or the OEE. Page 7 of 11

8 Scenario (7): There are two PCT s, the second validly ing priority from the first. The IPOS ( IPOS NP ) is a national phase entry of the second PCT, and the IPOS NP validly s priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from the first PCT. The OEE ( OEE NP ) being relied upon for the GPPH request is a national phase entry of the second PCT, and the OEE NP validly s priority from the first PCT. First PCT Second PCT OEE NP IPOS NP (s) for GPPH Scenario (8): There is a first filed in an office other than the IPOS or the OEE. The IPOS validly s priority under section 17 of the Singapore Patents Act (Cap. 221) from the first. The OEE being relied upon for the GPPH request also validly s priority from the first. Application in another office OEE (s) IPOS for GPPH Page 8 of 11

9 Scenario (9): The IPOS ( IPOS NP ) is a national phase entry of a PCT, and the IPOS NP validly s priority under section 17 and section 87 of the Singapore Patents Act (Cap. 221) from an filed in another office. The OEE being relied upon for the GPPH request also validly s priority from the filed in another office. Application in another office OEE (s) PCT IPOS NP for GPPH Scenario (10): The IPOS ( IPOS NP ) and the OEE ( OEE NP ) being relied upon for the GPPH request, are national phase entries of the same PCT. PCT OEE NP IPOS NP (s) Page 9 of 11

10 Annex III Claim Correspondence Table (Global Patent Prosecution Highway) OFFICE OF EARLIER EXAMINATION (OEE) OEE APPLICATION NUMBER CLAIMS IN IPOS APPLICATION 2 EXAMINED CLAIMS IN OEE APPLICATION 3 EXPLANATION REGARDING THE CORRESPONDENCE Sheet./. All the s in the IPOS sufficiently correspond to the patentable/ s in the OEE. 2 Please indicate the number relating to a in the current which corresponds to the in the OEE. 3 Please indicate the number relating to a that has been determined to be. Page 10 of 11

11 Annex IV Office IP Australia Danish Patent and Trademark Office Hungarian Intellectual Property Office Israel Patent Office Japan Patent Office Korean Intellectual Property Office Norwegian Industrial Property Office Finnish Patent and Registration Office Swedish Patent and Registration Office United Kingdom Intellectual Property Office United States Patent and Trademark Office World Intellectual Property Organisation Dossier Access System AusPat ( PVS online ( ront&language=gb) ILPATSEARCH, Israel Patent Office Database AIPN ( K-PION ( y=patent PatInfo ( IPSUM ( public PAIR ( Patentscope ( WIPO CASE ( Page 11 of 11