Patent Prosecution Highway Pilot Programme between the Intellectual Property Officeof Singapore and the National Institute of Industrial Property of Brazil
1.

Background1.1

To obtain patent protection for an invention in several countries usually requires theinvention to be searched and examined in each of the countries. If the patentauthorities in these countries were to share the results of their search and/or
examination with each other, the opportunity for a patent office to refer to earlier work
done could have several potential benefits:(a)Reduced work – Reference to the earlier work done could reduce or eveneliminate the need for subsequent search and examination work.

(b)

Accelerated examination – The reduced work could generally lead to a fasterexamination of the patent application.

(c)

Better search and examination – Other patent offices might have access todatabases unavailable (e.g. specific technical databases, local databases,
databases in other languages) to the examiner, therefore the opportunity torefer to these search and examination results could provide the examiner withinformation on and assessment of prior art that he or she would otherwise nothave access to.

2.

Patent Prosecution Highway Programme

2.1

The Patent Prosecution Highway (PPH) programme between the Intellectual
Property Office of Singapore (IPOS) and the National Institute of Industrial Propertyof Brazil (INPI) allows the two offices to share their search and examination resultswith each other.

2.2

Where IPOS is the Office of Earlier Examination (OEE) and the IPOS application
contains claims that are determined to be allowable/patentable, the applicant may
request accelerated examination at the INPI for the corresponding application filedwith the INPI as the Office of Later Examination (OLE) (Mottainai model). The
requirements and procedures for filing a request with the INPI for participation in the
PPH pilot programme are available from the INPI website at the following links:•

https://www.gov.br/inpi/pt-br/central-de-conteudo/noticias/projeto-piloto-pph-dobrasil-com-singapura-esta-em-vigor•

https://www.gov.br/inpi/pt-br/backup/pph

2.3

Where the INPI is the OEE and the INPI application contains claims that are
determined to be allowable/patentable 1 , the applicant may request accelerated
examination of the corresponding application filed with IPOS as the OLE byfurnishing certain information of the IPOS application as set out in the requirements
and procedures below.

3.

PPH Pilot Programme Commencement

3.1

The PPH pilot programme commences on 1 May 2020 for a period of 5 years, endingon 30 April 2025.

1

Allowed claims from a utility model or a petty patent cannot be used to form the basis for requesting PPH in IPOS.

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3.2

IPOS will evaluate the results of the pilot programme to determine whether and how
the programme should be fully implemented. IPOS may terminate the PPH pilot
programme if the volume of participation exceeds manageable level, or for any otherreason. Notice will be published if the PPH pilot programme will be terminated.

4.

Requirements for requesting accelerated examination of an IPOS patentapplication under the PPH

4.1

The INPI application has at least one claim that is determined to beallowable/patentable by the INPI.

4.2

All claims in the IPOS application must sufficiently correspond or be amended to
sufficiently correspond to one or more of the claims found allowable/patentable by
the INPI. Claims will be considered to sufficiently correspond where, accounting fordifferences due to translations and claim format, the claims are of the same or similar
scope, or the claims are narrower in scope. In this regard, a claim that is narrower inscope occurs when a claim in the IPOS application is amended to be further limited
by an additional technical feature that is supported in the specification.

4.3

Examination has not begun on the IPOS application.

4.4

Diagrams depicting a list of scenarios in which a request for accelerated examinationof the IPOS application can be made under the PPH pilot programme are found in
Annex I.

5.

Procedures for requesting accelerated examination of an IPOS patentapplication under the PPH

5.1

File duly completed Patents Form 11 (Request for Search and Examination Report)
or Patents Form 12 (Request for Examination Report). These forms can be found at:https://digitalhub.ipos.gov.sg/ (electronic platform for online filing).

5.2

The Patents Form 11 or Patents Form 12 must be accompanied by:

5.3

(a)

a copy of all office actions of the INPI application being relied upon;(b)a copy of the allowable/patentable patent claims referred to in (a) above; and(c)a claims correspondence table showing the relatedness of theallowable/patentable claims referred to in (a) above to the claims in the current
IPOS application. The format of the Claims Correspondence Table is found in
Annex II.

The documents listed in 5.2 (a) can be either the:(a)national work product including (i) written opinion established by the INPI as thenational Office or (ii) examination report and decision of grant established by
the INPI as the national Office during the processing of a national application ora Patent Cooperation Treaty (PCT) application that has entered the national
phase before the INPI; or(b)

PCT work product including (i) written opinion established by the INPIInternational Searching Authority or International Preliminary Examining
Authority or (ii) the international preliminary examination report issued within
the framework of the PCT.

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5.4

If the documents listed in 5.2(a) and 5.2(b) above are available in the INPI Dossier
Access System or the World Intellectual Property Organisation’s PATENTSCOPE
system, they need not be filed with the Patents Form 11 or Patents Form 12. The
INPI Dossier Access System is accessible via http://www.inpi.gov.br/. The
PATENTSCOPE system is accessible via http://www.wipo.int/pctdb/en/index.jsp.

5.5

For avoidance of doubt, a copy of the patent grant without the documents listed in (a)and (b) in 5.2 above will not qualify for the PPH.

5.6

The checkbox for “ASPEC/PPH” must be selected in the Patents Form 11 or Patents
Form 12.

5.7

If the request for PPH is sought after the Patents Form 11 or Patents Form 12 is filed,
an email must also be sent to IPOS at PT_acceleration@ipos.gov.sg. The email must
contain in its subject, the title "PPH acceleration requested" and should also informwhether any amendments are required to conform the Singapore claims to theforeign allowed claims. Upon receipt of the email, IPOS will advise if examination has
started on the IPOS application, and if examination has not started, we will invite theapplicant to submit the relevant PPH documents in 5.2 via ad-hoc correspondence at
https://digitalhub.ipos.gov.sg/.

5.8

Any subsequent correspondences with IPOS must also be marked with the phrase“PPH acceleration requested”.

5.9

The documents in paragraph 5.2 must be accompanied by an English translation if
they are not originally in English, at the time of filing the PPH request2.

6.

Cited Documents

6.1

A copy of each of the documents cited in the documents submitted under paragraph
5.2 (a) is not required at the time of filing the PPH request. IPOS may, however,require the applicant to furnish a copy of any document cited subsequently.

6.2

The cited documents may be filed in their original language. However, IPOS may
subsequently request for an English translation of a document or a part of adocument if an English abstract of the cited document is not available.

7.

PPH Request

7.1

IPOS will treat a PPH request as a request for accelerated examination under the
PPH pilot programme. Where the PPH request is granted, the IPOS application will
be processed in an accelerated manner. In those instances, where the PPH request
does not meet all the requirements and procedures set forth above, the applicant will
be notified and the defects in the request will be identified. The applicant will be given
one opportunity to correct formal deficiencies identified in the request. If the request
is not corrected, the application will be taken out of the PPH programme and theapplicant will be notified.

8.

Examination of IPOS patent application under the PPH pilot

8.1

The IPOS application will be examined in accordance with the Singapore Patents Act(Cap. 221) and the Singapore Patents Rules. The legislations can be found at:https://www.ipos.gov.sg/resources/ip-legislation.

2

If it is not possible for IPOS to understand the English translation of any document, IPOS can request the applicant toresubmit the English translation of that document.

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8.2

Applicants should seek professional advice on patent matters in Singapore, inparticular, with reference to section 30 (Grant of patent) and section 69 (Restrictions
on relief for infringement) of the Singapore Patents Act (Cap. 221).

9.

Enquiries

9.1

For enquiries relating to the Patent Prosecution Highway pilot programme, please
send an email to PT_acceleration@ipos.gov.sg.

INTELLECTUAL PROPERTY OFFICE OF SINGAPOREDATE: 2 June 2022
Last updated: July 2023

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Annex I
Scenarios using the National Work Product
Scenario (1): The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from the INPI application being relied upon for the PPH request.

Indication ofallowable/patentableclaim(s)INPIapplication
Priority
claim

Requestfor PPH

IPOS
application

The request for PPH can also be made in the reverse scenario where the INPI
application claims priority from the IPOS application.

Scenario (2): The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from the INPI application being relied upon for the PPH request andapplications filed in any office other than the IPOS or the INPI.

Indication ofallowable/patentableclaim(s)INPIapplication

Application inanother officePriority
claim

Priority
claim

Request for
PPH

IPOS
application

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Scenario (3): The IPOS application is a divisional application of the IPOS applicationreferred to in (1) above, and said divisional application validly claims priority under section
17 of the Singapore Patents Act (Cap. 221) from the INPI application being relied upon for
the PPH request.

Indication ofallowable/patentableclaim(s)INPIapplication
Priority
claim

IPOS1
application
Divisional

Request for
PPH

IPOS2
application

Scenario 4: The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from an INPI application, and the INPI application being relied upon
for the PPH request also validly claims priority under Brazilian law from said earlier INPI
application.

INPI1
application

Priority
claim

Domestic Priority
claim

INPI2
application

Indication ofallowable/patentableclaim(s)Requestfor PPH

IPOS
application

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Scenario 5: The IPOS application is a divisional application of the IPOS application referred
to in (3) above, and said divisional application validly claims priority under section 17 of theSingapore Patents Act (Cap. 221) from the INPI application, and the INPI application being
relied upon for the PPH request also validly claims priority under the Brazilian Patent law
from said earlier INPI application.

INPI1
application

Priority
claim

Domestic Priority
claim

INPI2
application

Indication ofallowable/patentableclaim(s)IPOS application
Divisional

Requestfor PPH

IPOS2
application

Scenario 6: The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from a PCT application. The INPI application being relied upon for
the PPH request is a national phase entry of the PCT application.

INPI NPapplication
PCT
application

Indication ofallowable/patentableclaim(s)Priority
claim

Request for
PPH

IPOS
application

NP = National Phase

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Scenario (7): The IPOS application is a national phase entry of a PCT application (“IPOS
NP application”), and the IPOS application validly claims priority under section 17 andsection 87 of the Singapore Patents Act (Cap. 221) from the INPI application. The INPI
application is being relied on for the PPH request.

INPI
application

Indication ofallowable/patentableclaim(s)Priority
claim

IPOS NPapplication

PCT
application

Requestfor PPH

The request for PPH can also be made in the reverse scenario where the INPI
application claims priority from the PCT application.
NP = National Phase

Scenario (8): The IPOS application is a national phase entry of a PCT application (“IPOS
NP application”), and the IPOS application validly claims priority under section 17 andsection 87 of the Singapore Patents Act (Cap. 221) from the INPI application (“INPI1
application”). The INPI application being relied upon for the PPH request (“INPI2 NP
application”) is a national phase entry of the same PCT application, and INPI2 NP
application validly claims priority from INPI1 application.

INPI1
application
Priorityclaim

PCT
application

INPI2 NPapplication
IPOS NPapplication

Indication ofallowable/patentableclaim(s)Requestfor PPH

The request for PPH can also be made in the reverse scenario where the INPI1
application claims priority from the PCT application. The INPI1 application can also be
first filed in another office other than IPOS or the INPI.
NP = National Phase

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Scenario 9: There is a first PCT application. There is a second PCT application validly
claiming priority from the first PCT application. The IPOS application is a national phaseentry of the second PCT application, and the IPOS application validly claims priority under
section 17 and section 87 of the Singapore Patents Act (Cap. 221) from the first PCT
application. The INPI application being relied upon for the PPH request is a national phaseentry of the second PCT application, and the INPI application validly claims priority under theBrazilian Patent law from the first PCT application.

First PCT
application
Priority
claim

Indication ofallowable/patentableclaim(s)INPI NPapplication

Second PCTapplication

IPOS NPapplication

Requestfor PPH
NP = National Phase

Scenario 10: There is a first PCT application. There is a second PCT application validly
claiming priority from the first PCT application. The IPOS application (“IPOS NP application”)
is a national phase entry of the second PCT application. The INPI application (“INPI NP
application”) being relied upon for the PPH request is a national phase entry of the first PCT
application.

INPI NPapplication
First PCT
application
Priority
claim

Indication ofallowable/patentableclaim(s)IPOS NPapplication

Requestfor PPH

Second PCTapplication
NP = National Phase

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Scenario 11: The IPOS application (“IPOS NP application”) and the INPI application (“INPI
NP application”) being relied upon for the PPH request, are national phase entries of thesame PCT application.

INPI NPapplication
PCT
application

IPOS NPapplication

Indication ofallowable/patentable claim(s)Requestfor PPH
NP = National Phase

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Scenarios using the PCT Work Product
Scenario (12): The IPOS application (“IPOS NP application”) is a national phase entry of the
PCT application filed either at INPI as RO. The PCT application is being relied upon for the
PPH request and it is examined by the INPI as International Authority (IA) (“INPI/IA
application”).

WO/ISAWO/IPEA
IPER

PCTapplication

IPOS NPapplication

INPI/
IA

Requestfor PPHNP
application
NP = National Phase

Scenario 13: There are two PCT applications, the second application validly claiming priority
from the first application. The IPOS application is a national phase entry of the second PCTapplication (“IPOS NP application”). The second PCT Application is being relied upon for the
PPH request and it is examined by INPI as International Authority (IA) (“INPI/IA application”).

First PCT
application

WO/ISAWO/IPEA
IPER

Priority
claim

Second PCTapplication

IPOS NPapplication

INPI/
IA

Request for
PPH

NP
application
NP = National Phase

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Scenario 14: There is a first application filed in an office other than the IPOS or the INPI.
The PCT application validly claims priority from the first application. The IPOS application isa national phase entry of the PCT application (“IPOS NP application”). The PCT application
is being relied upon for the PPH request and it is examined by the INPI as International
Authority (IA) (“INPI/IA application”).

Application inanother office

WO/ISAWO/IPEA
IPER

Priorityclaim

PCT
application

IPOS NPapplication

INPI/
IA

Request for
PPH

NP
application
NP = National Phase

Scenario 15: The PCT application validly claims priority from an IPOS application. The PCT
application is being relied upon for the PPH request for the IPOS application and it isexamined by the INPI as International Authority (IA) (“INPI/IA application”).

Request for
PPH

IPOS
Application

WO/ISAWO/IPEA
IPER

Priorityclaim

PCT
application

INPI/
IA

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Scenario 16: There are two IPOS application. The PCT application validly claims priority
from the first IPOS application (“IPOS 1 Application”). The second IPOS application (“IPOS 2
Application”) is a divisional application of the first IPOS application. The PCT application,
examined by the INPI as International Authority (IA) (“INPI/IA application”), is being relied
upon for the PPH request for the second IPOS application.

IPOS 1
Application
Divisional

IPOS 2
Application

Priorityclaim

WO/ISAWO/IPEA
IPER

PCTapplication

INPI/
IA

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Request for
PPHScenario 17: There are two PCT applications, the second application validly claiming priority
from the first application. The IPOS application is a national phase entry of the second PCTapplication (“IPOS NP application”). The first PCT application is being relied upon for the
PPH request and it is examined by the INPI as International Authority (IA) (“INPI/IA
application”).

WO/ISAWO/IPEA
IPERFirst PCT
application

INPI/
IA

Priority
claim

Second PCTapplication

IPOS NPapplication

Requestfor PPH

NP application
NP = National Phase

Scenario (18): The IPOS application is a divisional application of another IPOS applicationthat is a national phase entry of a PCT application filed at INPI as RO. The PCT application
is being relied upon for the PPH request and it is examined by the INPI as International
Authority (IA) (“INPI/IA application”).

WO/ISAWO/IPEA
IPER

PCTapplication

INPI/
IA

IPOS NPapplicationNP
application

Divisional

IPOS
application
NP = National Phase

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Requestfor PPHScenario (19): The IPOS application (“IPOS2 application”) is a divisional application ofanother IPOS application (“IPOS1 application”). The PCT application validly claims priority
from IPOS1 application. The PCT application is being relied upon for the PPH request and it
is examined by the INPI as International Authority (IA) (“INPI/IA application”).

IPOS1
application

Divisional

WO/ISAWO/IPEA
IPER

Priority
Claim

PCT
application

IPOS2
application

INPI/
IA

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Requestfor PPHAnnex II
Claim Correspondence Table (Patent Prosecution Highway)

OFFICE OF EARLIER EXAMINATION(OEE)OEE APPLICATION NUMBER

CLAIMS IN IPOS
APPLICATION3

EXAMINED CLAIMSIN OEEAPPLICATION4

EXPLANATION REGARDING THE
CORRESPONDENCE

Sheet …./….
All the claims in the IPOS application sufficiently correspond to the patentable/allowableclaims in the OEE application.

3

Please indicate the claim number relating to a claim in the current application which corresponds to the allowable/patentableclaim in the OEE application.
4
Please indicate the claim number relating to a claim that has been determined to be allowable/patentable.

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