Getting your IP rights faster
Rospatent and the Eurasian Patent Office (EAPO) both offer a number of accelerated prosecution options including Global Patent Prosecution Highway (GPPH), PPH/Patent Cooperation Treaty (PCT-PPH), accelerated search and prosecution. Unfortunately, there is no single source of information available online to track these options, while the information is mostly available in Russian only. The aim of this article is to provide a summary of accelerated prosecution options currently available at both offices, while giving some insight on the prosecution timeline based on Patentica’s recent practice.
1. Accelerated prosecution at Rospatent
Rospatent has been party to some bilateral PPH agreements since 2009 and part of the GPPH framework since 2014, thus offering accelerated prosecution based on examination of over 25 patent offices worldwide.
1.1. GPPH
Patent applications benefiting from a positive examination in any of the 25 GPPH participating offices (as of August 2018) can be accelerated at Rospatent, while general GPPH provisions apply. A current list of GPPH participating offices is generally available at the PPH portal ( http://www.jpo.go.jp/ppph-portal/globalpph.htm) and the World Intellectual Property Organization (WIPO) website.
1.2. PPH based on work products of EPO and SIPO
Rospatent also provides accelerated prosecution for applications based on bilateral PPH agreements with the European Patent Office (EPO) and China’s State Intellectual Property Office (SIPO) using national and international examination of both offices (PPH/PCT-PPH).
A PPH/GPPH request can be filed with Rospatent two months prior to or within seven to eight months after an examination request. Filing a PPH request is free.
Once a PPH request is approved, the first office action or a decision to grant is issued within three to four months (vs. eight to12 months for regular procedure); next office actions (if any) are usually issued in one to two months (vs. three to four months for regular procedure).
The total number of PPH requests filed with Rospatent was 771 in 2017, which is a 60% growth vs. 2016, and keeps growing.
Based on about 70 PPH requests filed by Patentica with Rospatent in 2017, a decision to grant was issued within two to four months, while the first office action (if any) was received within four to five months after filing a PPH request.
