On July 1st, 2016 the Pilot Patent Prosecution
Highway agreement (PPH) executed by the member states of the
Pacific Alliance (Chile, Mexico, Colombia and Peru1) came into
The PPH Pilot Program is an agreement executed by the patent
offices of said countries, which allows applicants to request an
accelerated examination process of a patent application. In order
to do this, the applicant must request that the Office of Later
Examination (OLE) use and apply, as far as possible2, the
results of the substantive examinations previously conducted by the
Office of Earlier Examination (OEE) with regards to claims
considered by it to be allowable/patentable.
Thus, the PPH Pilot Program allows patent applicants in Chile,
whose patentability has already been examined by IMPI, SIC or
INDECOPI (OEEs), to request that INAPI (OLE) provide an accelerated
examination of the Chilean application.
In Chile, the requirements for requesting the benefit of
accelerated examination established by the PPH Pilot Program are
The Chilean application for which PPH
is requested and the foreign application are equivalent, this is,
that they must have the same earliest date, which can be the same
priority date or the same filing date.
The foreign application must have
been examined substantively by the OEE and have one or more claims
considered by it as patentable/allowable.
All claims presented for examination
under the PPH – as originally filed or as modified –
must correspond to one or more of the claims found
patentable/allowable by the OEE.
The national application filed before
INAPI has been published in the Official Gazette.
INAPI has not begun the substantive
examination of the application at the time the PPH request has been
filed. Substantive examination begins when an examiner is
In order to request the benefit of accelerated examination under
the PPH Pilot Program, the applicant must request it before INAPI
through the respective form and enclose the following
A copy of all official actions that
are relevant for determining patentability, issued by the
A copy of the claims that have been
considered by the OEE as patentable/allowable.
A claim correspondence table that
shows the relationship between the claims of the OLE application
and those of the OEE application that were considered
allowable/patentable by the latter.
Copies of all relevant documents
cited by the OEE examiner.
If the requirements set forth above are met, INAPI will grant
the request for the accelerated examination of the application. If
not, the applicant will be notified of the reasons for the denial.
The applicant will be given one opportunity to file a new request
correcting the formal deficiencies. There are no official fees
applicable to the PPH request.
The main benefits brought by the PPH Pilot Program are, for the
applicant, the savings on costs for the prosecution of patents, the
reduction in time for the prosecution of patent applications and a
greater certainty in obtaining registration; and for patent
offices, the non-duplication of efforts and a reduction in their
It is important to mention that the benefit granted by the PPH
Pilot Program does not relieve the applicant of its obligations
under the patent law of the country in which the accelerated
examination request is entered, and that the program is a system
which is compatible with the PCT.
PPH Pilot Program will run for a period of 3 years and may be
extended for another year. During this trial period, the countries
which are part of the agreement will evaluate its results in order
to determine when and how the program should be fully
1Instituto Nacional de Propiedad Industrial (INAPI) in
Chile, Instituto Mexicano de Propiedad Industrial (IMPI)
in Mexico, Superintendencia de Industria y Comercio (SIC)
in Colombia and Instituto Nacional para la Defensa de la
Competencia y la Protección de la Propiedad Intelectual
(INDECOPI) in Peru.
are exceptions to the application of the substantive examination
results in the country of the OLE, for example when the claims
presented for examination under PPH include or are referred to
matters which are not patentable in that country. Such would be the
case for treatment and diagnostic methods for humans and animals in
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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Decree Number 8,772 of May 11 2016 regulates Law Number 13,123 of May 20 2015, known as the Biodiversity Law, which provides for access to GH, protection and access to ATK...
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