Patent Prosecution Highway

June 13, 2007
Patent Attorney
Mayu Hirose

Recently, the number of companies, who apply for a patent in foreign countries at the same time as they apply for a patent in Japan, has been increasing. Such a tendency to apply for a patent on one invention in several countries can be seen not only in Japanese companies, but also in the U.S. companies and European companies.
To apply for a paten in several countries imposes a heavy burden on an applicant in aspects of procedures and costs. On the other hand, procedures such as examining applications in Patent Offices becomes complicated, and in addition, Patent Office in each countries has serious problems such as examination delay, cumbersome office works and the like accompanied with the increasing number of applications.
To avoid these problems, new approaches have been performed. One of the approaches is the Patent Prosecution Highway (PPH) pilot program, which is implemented between Japan and the U.S. from 2006. The details of the PPH pilot program are described below.

Object
The object of the PPH pilot program is to enable applicants to obtain a patent on the corresponding application filed in the office of second filing (OSF) faster while at the same time the OSF to exploit the search of prior art and examination result of the office of the first filing (OFF), to reduce workload, and to improve examination delay.

Eligible Application
In order to be eligible to participate in the PPH pilot program, the following conditions must be met.
(1) The application filed in the OSF (the application for which a request for participation in the PPH pilot program is made) is a Paris Convention application validly claiming priority to one or more applications filed in the OFF. PCT national phase applications are included (PCT national phase applications were excluded at the time when the PPH pilot program started, but has been included since May 2007).
(2) The application(s) in the OFF have at least one claim that was determined by the OFF to be allowable/patentable.
(3) All the claims in each application of the OSF must sufficiently correspond to the allowable/patentable claims in the OFF (it will be fine if the claims substantially correspond to the allowable/patentable claims in the OFF).
(4) Examination of the application in the OSF has not begun.

Procedures
(1) Applicant must file a request for participation in the PPH pilot program.
If the OSF is the Japan Patent Office, an applicant should submit a request form “The Explanation of Circumstances Concerning Accelerated Examination” because this program is considered to be included in “the Accelerated Examination and Appeal” system which has been conventionally implemented. An applicant is not required to fill in the section “the disclosure of prior arts and comparison between the claimed invention and prior art” in “The Explanation of Circumstances Concerning Accelerated Examination”, if the application satisfies prescribed conditions.
(2) Applicant must submit an information disclosure statement listing the documents cited by the OFF.
(3) Applicant must submit a copy of all the office actions (including a “Decision to Grant a Patent”) from each of the application(s) in the OFF containing the allowable/patentable claims.
In the case where the request for participation in the PPH pilot program does not meet all the requirement set forth above, the applicant will be given one opportunity to make a correction to the request.

Effect
The application filed in the OSF can be examined at an early stage. For example, if the OSF is the Japan Paten Office, the applicant can obtain a first response in an average of three months from the request.

As described above, it is expected that participation in this program enable applicants to obtain a paten on the OSF application faster. However, when an applicant in Japan requests participation in this program in the U.S., the applicant must submit all the office actions from each of the application(s) in the Japan Patent Office, along with an English translation thereof and a statement that the English translation is accurate. In requesting participation in this program, the costs related to these procedures cannot be disregarded.
Furthermore, to file a request for participation in the PPH pilot program, all the claims in each OSF application must substantially correspond to the allowable/patentable claims in the OFF. Therefore, it may be difficult to participate in this program in a field where criteria for examination is not corresponded between both countries.
It has been almost one year since the PPH pilot program between Japan and the U.S. started. Because this program is an unprecedented system that those countries having a different legal system corporate with examination of patent applications, I suppose various problems and disadvantages have been raised. It will be interesting to see which problems will have been improved when the program is officially implemented. The requests for participation in the PPH pilot program between Japan and Korea have started from April 2007, and will also start between Japan and England from July 2007.