Accelerated Examination of Patent Applications in Russia – PPH/GPPH/PPH-MOTTAINAI/PCT-PPH

During the application process of Russian invention patent, the applicant can request PPH accelerated examination from ROSPATENT to speed up the examination process. This accelerated examination process is not only reflected in the issuance time of the first examination opinion notice, but also in the subsequent examination opinions, which can significantly shorten the examination process.

GPPH Program:

• The Global Patent Prosecution Highway (Global PPH or GPPH) is a multilateral pilot program that includes three types of PPH: conventional PPH, PPH-MOTTAINAI and PCT-PPH, which are run between any two participating offices. The Global Patent Prosecution Highway (GPPH) program was launched on January 6, 2014. The program does not involve the signing of bilateral or multilateral memoranda or other documents between GPPH participants.
• The GPPH member countries are:
  • Australia: IP Australia (IP Australia)
  • Austrian Patent Office (APO)
  • United Kingdom Intellectual Property Office (UKIPO)
  • Hungarian Intellectual Property Office (HIPO)
  • GermanyGerman Patent and Trademark Office (DPMA)
  • Danish Patent and Trademark Office (DKPTO)
  • Israel Patent Office (ILPO)
  • Icelandic Intellectual Property Office (ISIPO)
  • Spanish Patent and Trademark Office (SPTO)
  • Canadian Intellectual Property Office (CIPO)
  • Superintendence of Industry and Commerce (SIC)
  • Korean Intellectual Property Office (KIPO)
  • Intellectual Property Office of New Zealand (IPONZ)
  • Norwegian Intellectual Property Office (NIPO)
  • National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI)
  • Patent Office of the Republic of Poland (PPO)
  • Portuguese Institute of Industrial Property (INPI)
  • Federal Service for Intellectual Property (Rospatent)
  • Intellectual Property Office of Singapore (IPOS)
  • United States Patent and Trademark Office (USPTO)
  • Finnish Patent and Registration Office (PRH)
  • National Institute of Industrial Property (INAPI)
  • Swedish Patent and Registration Office (PRV)
  • Estonian Patent Office (EPA)
  • Japan Patent Office (JPO)
  • Visegrad Patent Institute (VPI) [*The VPI Group (Czech Republic, Hungary, Poland, Slovakia) is a regional cooperation organization established in 1991 to strengthen cooperation among these four Central European countries in the fields of politics, economy, culture, etc.]
  • Nordic Patent Institute (NPI)
• Institutions wishing to join the GPPH pilot program can apply for membership on January 6 or July 6 of each year. To be eligible, institutions must declare their intention to join GPPH to the Secretariat at least two months before these two dates to allow existing members time to prepare for the expansion of the GPPH network. Applications to join GPPH must be accompanied by a standard letter on the institution's letterhead and signed by the head of the institution. The Secretariat will forward a copy of this letter to all GPPH member institutions.
• Offices wishing to participate in the pilot program should submit the requested information in an appropriate form to the GPPH Secretariat, including a brief description of patent application procedures, quality assurance procedures and examination practices, so that a comparative guide of the practices of all participating Offices can be compiled.
• The basic rules can be changed at any time with the agreement of all participating institutions.
• Institutions participating in the pilot program reserve the right to limit or terminate their participation in the GPPH pilot program at any stage by giving written notice at least one month prior to the termination date.
• program:
  • Accept any product related to patent search and substantive examination from another participating Office (national Office under the Paris Convention or ISA/IPEA Office under the Patent Cooperation Treaty) for any type of application, as long as it clearly indicates the patentability of the claims
  • Accept work from any participating office, whether or not it is a first-time filing office (OFF)
  • Applications with the same priority or filing date

PPH Program:

• Patent Prosecution Highway (PPH): Patent Prosecution Highway (PPH) is a bilateral cooperative examination procedure between two intellectual property offices, which allows applicants to request accelerated examination in the subsequent examination office LEO according to a simplified procedure if the first examination office EEO considers the relevant application to be allowable.
• A PPH request must be filed at the same time as a request for substantive examination.
• By recognizing that at least one of the claims of an invention meets the patentability conditions, the applicant has greater legal certainty and predictability in the outcome of the IPR/IPE examination.
• The application filed with the IPP/VRE and the application filed with the IPP/VPE (which is the basis for the application filed to participate in the PPH program) have the same earliest priority date or filing date.
• PPE/VPE will start substantive examination of applications for which PPH requests are received, and significantly shorten the examination time by reducing the number of examination opinions issued through searches between examination offices, without any official fees.
• When filing a PPH request with the Office of Second Examination (OSF) or the Office of Later Examination (OLE), the Office that has conducted substantive examination or issued a written opinion (WO/ISA) or international preliminary examination report (WO/IPEA) on the corresponding national application during the international phase of the corresponding PCT application, or the Office of First Filing (OFF) or the Office of Earlier Examination (OEE) may use the results obtained.
• An application submitted to the VVP/VPE has not undergone substantive examination, i.e. before the first office action has been issued.
• All claims in an application for which a request for examination has been filed under the PPH program, whether as originally filed or as amended, sufficiently correspond to one or more claims determined patentable in the IPO/VRE.
• Required documents:
  • Completed PPH application form
  • National or international work outputs issued by WFP/VRE
  • Translations of invention claims confirmed as patentable in VPP/VRE
  • Table confirming the correspondence between the claims of the application confirmed as patentable in the VPO/VRE and the invention claims of the corresponding application filed in the VPO/VPE
  • Copies of supplementary materials recording VPP/VRE review actions (decision, notification) and their translations
  • A copy of the decision to grant a patent (VPP/VRE) or patent and its translation
  • Copies of documents opposing the VPP/VRE, if necessary
• When submitting an application to Rospatent as a VVP/VPE to participate in any type of RRN, a request for substantive examination of the application and a document confirming payment of the relevant patent fees must also be submitted.

PPH-MOTAINNAI Program:

• The PPH-MOTTAINAI program is a type of PPH program. "MOTTAINAI" is a Japanese term meaning "regret for the cost paid when the actual value of an item or resource is not properly utilized."
• The PPH program allows the use of the PPH program for applications that are determined to be patentable, regardless of whether the office that conducts the examination and submits the examination results to the participating office is the Office of First Filing (OFF) or not, and applies to the following situations:
  • When the examination result appears earlier in the SFO
  • When the earliest application is filed at the IPO and a third office outside the IPO
• Therefore, when using the PPH-MOTTAINAI program, the concepts of LCE and EE are excluded, according to which the order of procedures is determined by the date of filing the application with the LCE, and the concepts of LEO and EEO are introduced.
• To participate in the PPH-MOTTAINAI program, it is also required that at least one claim of the invention possess novelty, inventive step and industrial applicability.
• Not all institutions that implement the PPH procedure also implement PPH-MOTTAINAI, such as CNIPA.

PCT-PPH Procedure:

• The PCT-PPH program allows applicants to apply for accelerated examination based on international work products (including written opinions of international search authorities, written opinions of international preliminary examination authorities or international preliminary examination reports) provided for in the Patent Cooperation Treaty (PCT).
• Although the PPH program also allows applicants to apply for accelerated examination of PCT applications in the national phase, the national office is required to evaluate the patentability of the application. The PCT-PPH program is based on the international work results of the PCT, and applicants can apply for accelerated examination immediately after the PCT application enters the national phase, thereby obtaining a patent faster.