Patent Prosecution Highway Pilot Programme between the Intellectual Property Officeof Singapore and the Saudi Authority for Intellectual Property

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 make reference toearlier work done could have several potential benefits:•

Reduced work – Reference to the earlier work done could reduce or even eliminate
the need for subsequent search and examination work.

•

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

•

Better search and examination – The other patent authorities might have accessto databases unavailable (e.g. specific technical databases, local databases,
databases in other languages) to the examiner, therefore the opportunity to referto these search and examination results could provide the examiner withinformation on and assessment of prior art that he or she would otherwise not haveaccess to.

2.

Patent Prosecution Highway Pilot Programme

2.1

The Patent Prosecution Highway (PPH) pilot programme between the Intellectual
Property Office of Singapore (IPOS) and the Saudi Authority for Intellectual Property(SAIP) is one way for the two offices to share their search and examination results witheach 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 SAIP for the corresponding application filedwith the SAIP as the Office of Later Examination (OLE). The requirements andprocedures for filing a request with the SAIP for participation in the PPH pilot
programme are available from the SAIP website at: https://www.saip.gov.sa/patentshort-path/.

2.3

For PPH using national products from the SAIP as OEE, the earliest application mustbe filed with the SAIP or IPOS.

2.4

Where the SAIP is the OEE and the SAIP application contains claims that are
determined to be allowable/patentable1, the applicant may request accelerated
examination of the corresponding application or national phase application filed withIPOS as the OLE by furnishing certain information of the SAIP application as set out
in the requirements and procedures below. For the avoidance of doubt, the applicant
is required to provide all necessary documents to IPOS.

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.

PPH Pilot programme

3.1

The PPH pilot programme commenced on 12 September 2023 for a period of 2 years,
ending on 11 September 2025.

3.2

IPOS and the SAIP will evaluate the results of the pilot programme to determine
whether and how the programme should be fully implemented. The Offices may also
suspend or terminate the PPH pilot programme if the volume of participation exceeds
manageable level, or for any other reason, by providing 30 (thirty) days in advance ofthe date of suspension or termination in writing to the other Office. Notice will be
published if the PPH pilot programme will be suspended or terminated for any reason.

4.

Requirements and procedures for requesting accelerated examination of an
IPOS patent application under the PPH

4.1

Requirements(1) Both the IPOS application for which acceleration is requested and the SAIP
application(s) forming the basis of the PPH request shall have the same earliest
date (whether this is a priority date or a filing date).
(2) The SAIP application has at least one claim that is determined to beallowable/patentable by the SAIP.
(3) 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 SAIP. Claims will be considered to sufficiently correspond where, accounting
for differences due to translations and claim format requirements, the claims are of
the same or similar scope, or the claims are narrower in scope. In this regard, aclaim that is narrower in scope occurs when a claim in the IPOS application isamended to be further limited by an additional technical feature that is supported
in the specification.
(4) Examination has not begun on the IPOS application.
(5) Diagrams depicting a list of scenarios in which a request for accelerated
examination of the IPOS application can be made under the PPH pilot programme
are found in Annex I.

4.2

The Procedures(1)

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

(2)

The Patents Form 11 or Patents Form 12 must be accompanied by:(a) a copy of all office actions of the SAIP application being relied upon;(b) a copy of the allowable/patentable patent claims referred to in (2)(a) above;and(c) a claims correspondence table showing the relatedness of theallowable/patentable claims referred to in (2)(a) above to the claims in the

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current IPOS application. The format of the Claims Correspondence Table isfound in Annex II.
(3)

The documents listed in (2)(a) above can be either the:a) national work product including (i) Substantive Examination Report
established by the SAIP as the national Office or (ii) Decision of grant
established by the SAIP as the national Office during the processing of anational application or a Patent Cooperation Treaty (PCT) application thathas entered the national phase before the SAIP; orb) PCT work product including (i) written opinion established by the SAIP as
the International Searching Authority or International Preliminary
Examining Authority or (ii) the international preliminary examination
report issued within the framework of the PCT2.

4.3

(4)

For avoidance of doubt, a copy of the patent grant without the documents listedin (2)(a), (b) and (c) above will not qualify for the PPH.

(5)

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

(6)

If the request for PPH is sought after the Patents Form 11 or Patents Form 12 isfiled, 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" andshould also inform whether any amendments are required to conform theSingapore claims to the foreign 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 the applicant to submit the relevant PPH documents
in 4.2(2) via ad-hoc correspondence at https://digitalhub.ipos.gov.sg/.

(7)

All subsequent correspondences with IPOS must be similarly marked with thephrase “PPH acceleration requested”.

Cited Documents
A copy of each of the documents cited in the documents submitted under paragraph
4.2 (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.

4.4

2

Translations(1)

The documents in paragraph 4.2(2) must be accompanied by an English
translation if they are not originally in English, at the time of filing the PPH
request.

(2)

The documents in paragraph 4.3 may be filed in their original language.
However, IPOS may subsequently request for an English translation of adocument or a part of a document if an English abstract of the cited document is
not available.

(3)

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

SAIP expects to be operational as an ISA/IPEA in early 2024.

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4.5

PPH Request
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 beprocessed 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 deficiencies 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 pilot programme and theapplicant will be notified.

4.6

Examination of IPOS patent application under the PPH pilot
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.

4.7

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).

5.

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

INTELLECTUAL PROPERTY OFFICE OF SINGAPOREDATE: September 2023

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

Indication ofallowable/patentableclaim(s)SAIPapplication
Priority
claim

Requestfor PPH

IPOS
application

Scenario 1(b): The request for PPH can also be made where the SAIP application claims
priority from the IPOS application and the SAIP application is being relied upon for PPH
request.

Requestfor PPH

IPOS
application
Priority
claim

Indication ofallowable/patentableclaim(s)SAIPapplication

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

Indication ofallowable/patentableclaim(s)SAIPapplication

Application inanother officePriority
claim

Priority
claim

IPOS
application

Request for
PPH

Scenario 2(b): The SAIP application being relied upon for the PPH request validly claims
priority from the IPOS application and applications filed in any office other than the IPOS or
the SAIP.

Request for
PPH

IPOS
application

Application inanother officePriority
claim

Priority
claim
Indication ofallowable/patentableclaim(s)SAIPapplication

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

Indication ofallowable/patentableclaim(s)SAIPapplication
Priority
claim

IPOS1
application
Divisional

IPOS2
application

Request for
PPH

Scenario 3(b): The SAIP application is a divisional application of the SAIP application referred
to in (1) above, and said divisional application validly claims priority from the IPOS applicationand the divisional application from SAIP could be relied upon for the PPH request.

Request for
PPH

IPOS
application
Priority
claim

SAIP1
application
Divisional

SAIP2
application

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Indication ofallowable/patentableclaim(s)Scenario 4: The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from a SAIP application, and the SAIP application being relied upon
for the PPH request also validly claims priority from said earlier SAIP application.

SAIP1
application

Domestic Priority
claim

Priority
claim

SAIP2
application

Indication ofallowable/patentableclaim(s)Requestfor PPH

IPOS
application

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 a SAIP application, and the SAIP application being
relied upon for the PPH request also validly claims priority from said earlier SAIP application.

SAIP1
application

Priority
claim

Domestic Priority
claim

SAIP2
application

Indication ofallowable/patentableclaim(s)IPOS application
Divisional

IPOS2
application

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

SAIP NPapplication
PCT
application
filed at IPOS
or SAIP

Indication ofallowable/patentableclaim(s)Priority
claim

Request for
PPH

IPOS
application

Scenario 6(b): The SAIP application validly claims priority from a PCT application. The SAIP
application could be relied upon for the PPH request for a IPOS national phase entry of the
PCT application.

IPOS NPapplication

Request for
PPH

PCT
application
filed at IPOS
or SAIP
Priority
claim

Indication ofallowable/patentableclaim(s)SAIPapplication

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Scenario 7(a): 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 and section
87 of the Singapore Patents Act (Cap. 221) from a SAIP national application, and it is thisSAIP national application that is being relied on for the PPH request.

SAIP
application

Indication ofallowable/patentableclaim(s)Priority
claim

Requestfor PPH

IPOS NPapplication

PCT
application

NP = National Phase

Scenario 7(b): The SAIP application is a national phase entry of a PCT application (“SAIP NP
application”), and the SAIP application validly claims priority from a IPOS national application,and it is the SAIP NP application that is being relied on for the PPH request.

IPOS
application

Requestfor PPH

Priority
claim

SAIP NPapplication

PCT
application

Indication ofallowable/patentableclaim(s)NP = National Phase

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Scenario 8: The IPOS application is a national phase entry of a PCT application, and theIPOS application validly claims priority under section 17 and section 87 of the Singapore
Patents Act (Cap. 221) from a SAIP national application. The SAIP application being relied
upon for the PPH request is a national phase entry of the same PCT application, and the SAIP
application being relied upon for the PPH request validly claims priority from said SAIP national
application.

SAIP1
application
Priorityclaim

SAIP2 NPapplication

PCT
application

IPOS NPapplication

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

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 phase entryof 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
SAIP application being relied upon for the PPH request is a national phase entry of the second
PCT application, and the SAIP application validly claims priority from the first PCT application.

First PCT
application
filed at IPOS
or SAIP
Second PCTapplication

Priority
claim

SAIP NPapplication
IPOS NPapplication

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

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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 SAIP application (“SAIP NP
application”) being relied upon for the PPH request is a national phase entry of the first PCT
application.

SAIP NPapplication
First PCT
application
filed at IPOS
or SAIP
Priority
claim

Indication ofallowable/patentableclaim(s)IPOS NPapplication

Requestfor PPH

Second PCTapplication

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

SAIP NPapplication
PCT
application
filed at IPOS
or SAIP

IPOS NPapplication

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Indication ofallowable/patentable claim(s)Requestfor PPHScenarios using the PCT Work Product
Scenario 12: The IPOS application is a national phase entry of the PCT application (“IPOS
NP application”). The PCT application is being relied upon for the PPH request and it isexamined by the SAIP as International Authority (IA).

WO/ISAWO/IPEA
IPER

PCTapplication

IPOS NPapplication

SAIP/
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 the SAIP as International Authority (IA).

First PCT
application

WO/ISAWO/IPEA
IPER

Priority
claim

Second PCTapplication

IPOS NPapplication

SAIP/
IA

Request for
PPH

NP
application

NP = National Phase

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Scenario 14: There is a first application filed in any office. The PCT application validly claims
priority from the first application. The IPOS application is a 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 SAIP as International Authority (IA).

Application in
any officePriorityclaim

PCT
application

WO/ISAWO/IPEA
IPER
IPOS NPapplication

SAIP/
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 is examinedby the SAIP as International Authority (IA).

Request for
PPH

IPOS
Application

WO/ISAWO/IPEA
IPER

Priorityclaim

PCT
application

SAIP/
IA

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Scenario 16: There are two IPOS application. The PCT application validly claims priority fromthe 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 SAIP as International Authority (IA), 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

SAIP/
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 SAIP as International Authority (IA).

WO/ISAWO/IPEA
IPER
SAIP/
IA

First PCT
application
Priority
claim

IPOS NPapplication

Second PCTapplication

Requestfor PPH

NP application
NP = National Phase

Scenario 18: The IPOS application validly claims priority under section 17 of the Singapore
Patents Act (Cap. 221) from the PCT application. The PCT application is being relied upon for
the PPH request and it is examined by the SAIP as International Authority (IA).

WO/ISAWO/IPEA
IPER

PCTapplication

SAIP/
IA

Priority
claim

IPOS
application

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Request for
PPHScenario 19: The IPOS application is a divisional application of another IPOS application thatis a national phase entry of a PCT application (“IPOS NP application”). The PCT application
is being relied upon for the PPH request and it is examined by the SAIP as International
Authority (IA).

WO/ISAWO/IPEA
IPER

PCTapplication

SAIP/
IA

IPOS NPapplication
NP application

Divisional

IPOS
application

NP = National Phase

Requestfor PPH

Note: The PCT work products are namely the Written Opinion of the International Search Authority (WO/ISA), theWritten Opinion of the International Preliminary Examining Authority (WO/IPEA) or the International Preliminary
Examination Report (IPER).

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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/allowable claims 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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