Patent prosecution highway pilot program launched

The Intellectual Property Office of Singapore (IPOS) and the United States Patent and Trademark Office (USPTO) have launched a Patent Prosecution Highway pilot program.  The purpose of the program is to share search and examination results between the offices to allow applicants in both countries to obtain corresponding patents faster and more efficiently. The pilot period commences on 2 February 2009, for a period of one year, with a one year extension if needed. 

Where the USPTO is the Office of First Filing and the final results of the search and examination or the patent grant of the US application are available, the applicant may request accelerated prosecution of the corresponding application filed with IPOS as the Office of Second Filing by furnishing certain prescribed information of the US application. 

Where IPOS is the Office of First Filing and the Singapore application contains claims that are determined by IPOS to be allowable/patentable in a substantive examination carried out in the name of IPOS (and not based on examination results adopted by IPOS from another office), the applicant may request accelerated examination at the USPTO for the corresponding US application filed with the USPTO as the Office of Second Filing.  However, the US application must be pending and that examination has not yet begun.

If the Singapore office action does not explicitly state that a particular claim is allowable or patentable, the applicant must declare that no rejection has been made in the Singapore Office Action regarding that claim, and therefore, the claim is deemed allowable or patentable by IPOS.  However, a word of caution, all claims in a US application relying on a corresponding Singapore application must sufficiently correspond or be amended to be of the same or similar scope to the claims in the Singapore application deemed allowable by IPOS.  

A strategic advantage of the program is that it provides applicants with an opportunity to expedite prosecution in the USPTO, thus obtaining an issued US patent faster.  The program may be of interest to companies in fast moving technologies, such as the computer and electronics industries where an issued patent may be critical to obtaining a greater market share or in dealing with competition. 
Notwithstanding the benefits outlined above, applicants may choose to file the first application in the US instead of Singapore for commercial reasons.  However, to take advantage of the program, applicants should at least consider the benefits of first filing in Singapore when deciding which jurisdictions to seek patent protection.

Heng Liling
Patent Engineer
Intellectual Property and Technology Group
ATMD Bird & Bird LLP

39 Robinson Road #07-01, Robinson Point,
Singapore 068911
Direct +65 6428 9813  |  Fax +65 6223 8762
Email liling.heng@twobirds.com