Patent Prosecution Highway

between JPO and INPI

Japan Patent Office

1

The PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) with a simple procedure upon an applicant’s request.

Application

A

Corresponding

Application

A’

Grant

Accelerated

Examination

OEE (Office of Earlier Examination)

OLE (Office of Later Examination) OLE examination

burden can be lighten

Work Sharing

Applicant Merit

PPH Request

Claims

correspondence

OEE Examination History

Office Merit Examination

Refer

What is Patent Prosecution Highway (PPH)?

1

IPOS*

(SG: Singapore)

PPO* (PL: Poland)

EAPO (EA: Eurasia)

DIP

(TH: Thailand)

DGIP

(ID: Indonesia)

DPMA*

(DE: Germany)

EPO

(EP: Europe)

SIPO

(CN: China)

APO*

(AT: Austria)

IMPI

(MX: Mexico)

TIPO

(TW: Taiwan)

IPOPHL

(PH: Philippines)

SIC

(CO: Colombia)

IPO CZ

(CZ: Czech)

INPI*

(PT: Portugal)

ILPO*

(IL: Israel)

IP Australia*

(AU: Australia)

NIPO*

(NO: Norway)

NPI*

(XN: Nordic)

HIPO*

(HU: Hungary)

ROSPATENT*

(RU: Russia)

SPTO*

(ES: Spain) DKPTO*

(DK: Denmark)

USPTO*

(US: USA)

JPO *

(JP: JAPAN)

KIPO*

(KR: Korea)

CIPO*

(CA: Canada)

NRIP

(NI: Nicaragua)

MYIPO

(MY: Malaysia)

UKIPO*

(GB: UK)

PRH*

(FI: Finland)

PPH member offices (2017.2)

OSIM

(RO: Romania)

EGYPO

(EG: Egypt)

IPO*

(IS: Iceland)

EPA*

(EE: Estonia)

PRV*

(SE: Sweden)

INDECOPI

(PE: Peru)

INPI

(BR: Brazil)

NOIP

(VN: Vietnam)

OMPIC

(MA: Morocco)

INAPI

(CL: Chile)

*: GPPH-participating offices

DINAPI

(PY: Paraguay)

DNPI

(UY: Uruguay)

INPI

(AR: Argentina)

IEPI

(EC: Ecuador)

Japan doesn’t have PPH programs in place with Argentina, Brazil, Chile, Ecuador, Morocco, Nicaragua, Peru,

Paraguay, Uruguay. (They are surrounded by orange frame.)

JPO advocated the PPH for the first time in the world in 2006.

Since 2006, the number of PPH member office has been expanding to 45.

2

Expansion of the network for PPH in Latin America

In 2016, many countries in Latin America – Brazil, Peru, Chile, Argentina, Ecuador, Paraguay and Uruguay - joined the PPH network.

On January 11, 2016, INPI-USPTO PPH pilot project was launched.

JPO has implemented PPH programs with 35 offices.

3

0

10

20

30

40

50

60

70

80

90

100

JP US KR CA

0

5

10

15

20

25

30

35

JP US KR CA0

2

4

6

8

10

12

14

16

18

20

JP US KR CA

More PPH applications tend to

be granted in each country and

region.

1. High Grant Rate

Average pendency from PPH

request to First office action and

Final decision is decreasing.

2. Reduced Examination Period

High First Action Allowance Rate

reduces costs to applicants

(e.g. attorney and translation fees)

3. Cost saving

Period : Jul.- Dec. 2015 ※US PPH-Figures include PCT-PPH

PPH applications All applications

Average Pendency from PPH request to FA

Month

*

*JP all applications: Jan.-Dec. 2014

First Action Allowance Rate %

Grant Rate

*JP all applications: Jan.-Dec.2014

%

*

UP! UP! DOWN!

Main benefit of PPH : 1. High Grant Rate, 2. Reduced Examination Period, 3. Cost saving

**US all applications: Jul.-Dec. 2013

**

Benefits of the PPH for Users

4

5

Joint Statement（Outline） A new Working Group focused on

defining the scope of pilot project on patent work sharing between INPI and JPO is created.

The WG includes representatives of JPO and INPI, and aims to provide a detailed technical proposal of a collaborative pilot project.

JPO-INPI PPH – Background

On October 6, 2016, METI and MDIC signed “Joint Statement between Brazil and Japan on Collaboration on Patent Examination”

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JPO-INPI PPH – Background

The Working Group meetings were held twice at the INPI(1st WG meeting on November 10, 2016 and 2nd WG meeting on February 6, 2017). The Working Group has discussed issues to implement the JPO-INPI PPH pilot project.

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JPO-INPI PPH – Duration

April 1st 2017 March 31st 2019

200 PPH requests

200 PPH requests

INPI

JPO

JPO-INPI PPH will start on April 1st ,2017. JPO-INPI PPH will be finished under the following two conditions, whichever occurs first:

1) a period of 2 years has passed 2) both offices have accepted 200 applications

Finish

Finish

8

JPO-INPI PPH – Number of requests per applicant

INPI will limit the number of PPH requests made by same applicant as 6 per 4 months. In the last 4 months, there will be no limit of PPH requirements per applicant. JPO will have no limitation with regard to number of PPH requests per applicant.

April 1st 2017 March 31st 2019

Max 6 PPH requests

Applicant A to INPI Finish

Max 6 PPH requests

Max 6 PPH requests

Max 6 PPH requests

Max 6 PPH requests

No Limit

April 1st 2018

No Limit

Applicant A to JPO

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JPO-INPI PPH – Oldest application and Route

The oldest patent application of the patent’s family must have been filed to INPI or JPO, following the PCT, at RO/INPI or RO/JPO. JPO-INPI PPH will use Paris-Route PPH and Direct-PCT-Route PPH.

[Direct PCT Route]

[Paris Route]

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JPO-INPI PPH – Technical Fields

INPI will accept patent applications classified at the Information Technology and Mechanical Technology such as Automobile related Technology. JPO will accept patent applications classified at all of the technical fields.

IPCs in G sections G02B,G02F,G03G,

G06F,G06K,G06M,G06N,G06Q,G06T,

G08C,G08G,G09F,G09G,G10L,G11B,G11C

IPCs in H sections All classifications

IPCs in the other sections F21, F02D

B60K, B60L, B60W, B62D, B62J

All classifications

USPTO-INPI PPH JPO-INPI PPH

Duration 2 years (January 11, 2016-) 2 years (April 1, 2017-)

Number of

requests 150 on each office 200 on each office

Oldest filling BR or US or RO/BR or RO/US BR or JP or RO/BR or RO/JP

Route Paris-Route and Direct-PCT-

Route (not PCT-PPH)

Paris-Route and Direct-PCT-Route

(not PCT-PPH)

Patent Inventions Inventions and INPI’s utility models

Technical field Oil, Gas, or Petro-Chemical

Technology

Information Technology

and Mechanical Technology such as

Automobile related Technology

Work Product National Decision to Grant National Decision to Grant

Divisional

applications Not accepted basically Not accepted basically

Filing date 3 years prior to January 11, 2016 Any time

Number of

requests per

applicant

No limitation 6 requests each 4 months

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Comparison USPTO-INPI PPH v. JPO-INPI PPH

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Obrigado

Thank you ありがとうございました