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PPH from the JPO Point of View

AIPLA PPH Users Meeting May 19, 2010. PPH from the JPO Point of View. Yutaka Niidome Deputy Director Japan Patent Office. The Patent Prosecution Highway. PCT International Phase. PCT National/Regional Phase. PCT work products of a Trilateral Office. A. Examination. Allowable. PCT

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PPH from the JPO Point of View

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  1. AIPLA PPH Users Meeting May 19, 2010 PPH from the JPO Point of View Yutaka Niidome Deputy Director Japan Patent Office

  2. The Patent Prosecution Highway PCT International Phase PCT National/Regional Phase PCT work products of a Trilateral Office A Examination Allowable PCT Application ISR WO Accelerated Exam. IPER Request for PPH B Positive Opinion Accelerated Exam. Request for PPH C Request for PPH in a Trilateral Office Paris Route OFF Search/ Examination Allowable Application Accelerated Exam. OSF Request for PPH Application

  3. : permanent PPH : pilot PPH : PCT-PPH pilot The PPH Network UKIPO ROSPATENT IP Australia DKPTO USPTO NBPR EPO JPO APO CIPO KIPO DPMA HPO IPOS

  4. (～2010/1/31) *1 *1:～2010/3/1 Number of PPH Requests (～2010/5/11)

  5. Number of PPH Requests *At the JPO as OSF as of May 11, 2010

  6. Top Users of PPH (US -> JP) As of the end of Jan. 2010

  7. Advantages of PPH - Timely Patent Acquisition - - Average Pendency from PPH Request to First Action (JP-US PPH)- Expeditious examination Reduced pendency at the OSF OFF Exam Patent Request for PPH FA Exam With PPH Request for PPH 1.9 months Without PPH FA Exam 29.3 months FA Pendency: Approx. 1.9 months (CY2009) Cf. Overall average for all accelerated exams: 2.0 months (CY2009) Average First Action Pendency of All of the Applications in the JPO: 29.3months (FY2008)

  8. Advantages of PPH - Timely Patent Acquisition - - Average Pendency from PPH Request to First Action - * Note that USPTO examiners will generally examine an application within 2 months from the grant of a PPH request provided the application has completed all its pre-exam processing.

  9. Advantages of PPH – Speed - - Average Pendency from First to Final Action (JP-US PPH)- Expeditious examination Reduced pendency at the OSF

  10. Advantages of PPH – Speed - - Average Time to Final Action & First Action Grant Rate - Average Time to Final Action * the average time from the request for substantive examination through to the grant of a patent First Action Grant Rate

  11. Advantages of PPH – Quality - - Average Pendency from FA to Final Action (JP-US PPH)- High predictability of examination results at the OSF Higher grant rate at the OSF

  12. The PPH Portal Site http://www.jpo.go.jp/ppph-portal/index.htm • One-stop portal for statistics, guidelines, and links • Request forms and a common drafting tool

  13. The PPH Portal Site Common Drafting tool for PPH request forms

  14. Reaction from PPH Users - User A In a certain business field of our company, negotiations often take place for cross licensing of patents. Given such circumstances, we have come to the idea that patent rights should be promptly obtained for any inventions related to the field. Focusing on such inventions as patentable in Japan, we are seeking for prompt acquisition of patent rights in the US, by actively utilizing the PPH. - User B In the case of our company, where the reception of office actions usually occurs a few times, applications using the PPH actually resulted in one or less of office action on average. That allowed prompt acquisition of patent rights, thereby reducing the associated cost. - User C We have had our patent filing in the US examined promptly under simple procedures, without facing strict requirements.

  15. Reaction from PPH Users - User D As to the patent application filed in Japan, a patent right was granted without receiving a notice of rejection. Then, we decided to use the U.S. accelerated examination system through the PPH while preparing necessary documents - followed by timely and efficient obtainment of a U.S. patent right. Having acquired the U.S. patent right, we managed to start license negotiations with a U.S. company that said it would wait until the U.S. patent was granted. Without being able to utilize the PPH framework, we would not have even started the negotiation yet.

  16. Future Plans • - Relaxation of PPH requirements • Consideration of relaxing PPH requirements • Perhaps to be discussed in the next Plurilateral PPH meeting • PPH Joint Seminar • PPH seminars in Japan and US • JPO officials will attend the seminar in the U.S., and USPTO officials will attend the seminar in Japan. -Further Development of the PPH Portal Site

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