Accelerated Examination of Patent Applications in Chile - PPH

When applying for invention patents in Chile, you can use the PPH route to speed up the examination process.

Patent Prosecution Highway (PPH) is a procedure that accelerates the examination process of patent applications based on favorable examination results obtained in foreign patent offices with which cooperation agreements have been concluded. The basic concept of PPH is that if at least one claim of a patent application has been determined to be patentable/allowable by the prior examining office, AEO, then accelerated examination of the corresponding application filed with the subsequent examining office, EPO, can be requested, provided that a bilateral agreement for PPH has been signed with the subsequent industrial property office. To participate in PPH, the claims of the application filed with the subsequent examining office, EPO, must sufficiently correspond to the claims considered patentable/allowable by the prior examining office, AEO. Notwithstanding the above, the decision on whether to grant a patent remains with the subsequent examining office to which the relevant application was filed. Favorable decisions issued by the prior examining office will be taken into account but are not binding.

• PPH Mottainai Project: INAPI has joined the Modalities PPH agreement. The PPH Mottainai model allows applicants to request accelerated examination of the corresponding application at the subsequent examination office EPO after obtaining a favorable result at the prior examination office AEO, regardless of the original patent office or the place of first filing. The PCT-PPH option allows applicants who have obtained a favorable result in the international phase of the PCT application to request accelerated examination of the corresponding application at the subsequent examination office EPO. For the PCT-PPH model, the international phase actions that serve as the basis for the request for accelerated examination include the following:
  • Favorable written opinion from the International Searching Authority
  • Favorable written opinion from the International Preliminary Examining Authority
  • Favorable results of the preliminary international patentability report
• Guidelines for participation in the PPH are developed, communicated and published by each country, outlining the requirements, documents and procedures for filing a request to participate in the PPH in its respective offices. These guidelines are developed by each country in accordance with its patent procedures. Therefore, they have certain specificities that PPH applicants must study and comply with when seeking to benefit from favorable official actions by patent offices that are part of the PPH cooperation agreement.
• There are no official fees for filing a PPH request in Chile.

INAPI's PPH only applies to patent applications at the administrative stage, i.e. those that can effectively accelerate the examination process. Patent applications involving contentious proceedings are not eligible for the PPH because their nature makes them unable to meet the accelerated examination standards required by the mechanism.

• To obtain accelerated examination under the PPH pilot program, applicants must meet the following five requirements:
  • The application filed with the Office of Prior Examination (OAS) as the basis and the application filed with INAPI (as the Office of Subsequent Examination, OEP) are corresponding applications and have the same priority or filing date
  • The corresponding OAS application has entered substantive examination and at least one claim has been determined to be patentable/acceptable
  • There is sufficient correspondence between the claims of the application submitted to INAPI and the claims determined to be patentable/acceptable in the OAS
  • Applications submitted to INAPI are now public
  • No examiner has been assigned to the application submitted to INAPI
  • You need to fill in Form 47 and attach the following materials:
    • A copy of the official examination notice issued by the OAS determining patentability
    • Copies of claims determined to be patentable/acceptable in the OAS
    • Claim correspondence table showing the correspondence between the claims of the OAS and INAPI (as EPO)
    • Copies of relevant literature cited in OAS

Effect of acceptance of a PPH request

• Once the PPH request is approved, the application will enjoy accelerated examination at the subsequent examination patent office (EPO). In the examination process of patent applications, legal time limits, administrative time limits and relevant time limits of the parties are involved. INAPI only gives priority to administrative time limits for applications that have been approved for PPH requests.
• In practice, INAPI has established a priority examination mechanism for applications that have obtained PPH, ensuring that such applications are given priority in entering substantive examination at the same procedural stage. Therefore, applicants can significantly shorten the patent examination cycle through the PPH mechanism.

Practical advice for filing a PPH request

• The specific requirements and conditions for PPH requests are determined by the operating guidelines issued by each country, which must be consistent with the patent application procedures of each country. The most important advice is to strictly follow the PPH guidelines of the country you apply to, because the procedures of each country are not exactly the same and there are differences in details.

Accelerated Patent Procedure (APP) encourages collaboration between patent offices of various countries and is committed to avoiding duplication of examination work. Therefore, when submitting a request for accelerated examination, some materials may no longer be submitted for the following reasons:

• The material has been submitted previously, or
• Examiners can obtain it through public databases
• If you have documents in a foreign language, you do not need to provide an official translation. You only need to submit an accurate translation that is consistent with the original content.

INAPI has currently signed cooperation agreements on multilateral and bilateral agreements with nine countries and has developed corresponding implementation guidelines for each agreement.

• Pacific Alliance PPH Agreement: covers Colombia, Mexico, Peru and Chile, effective as of July 1, 2016 in the form of Mottainai and PCT-PPH
• Signed a bilateral PPH agreement with China National Intellectual Property Administration (CNIPA) which came into effect on January 1, 2018 in the form of the original agreement and PCT-PPH agreement