Patent Prosecution Highway - wipo.int · to enhance the usability at Plurilateral Patent...

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Patent Prosecution Highway

JAPAN PATENT OFFICE

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Outline

Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway

(PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH

Part II. Global PPH I. Background II. The scheme III. The procedure

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The number of applications filed in many offices is increasing.

an application

I. Background

Changes in Patent Appl. Filed in the Whole World

Source: WIPO Industrial Property Statistics

Increasing duplicate work!

Search

Search

Search

Search

Growing Demand for Work Sharing

Growing Demand for Work Sharing

(Unit: 10 thou.)

56.1

92.4 151.3

2.35 mil.

1.48 mil. 83.4

Efficiency of Work sharing

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Work-sharing Case

an application

Reduced examination workload

Finished Search

Refer to the results before searching

Utilization of Results!

prior arts, office actions

Search

Search

Duplicate Work..

Normal Case

an application

I. Background

II. The scheme of Patent Prosecution Highway (PPH)

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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

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II. The scheme of Patent Prosecution Highway (PPH)

Points of the PPH scheme Utilization of OEE examination results of application

determined to be patentable. OLE claims correspondence to OEE claims determined to be

patentable. Accelerated examination by OLE examiner. Workload reduction without sacrificing OLE examiner’s right

making a final judgment about patentability.

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A. Optimized claim scope B. Utilization of OEE search/examination history C. Decrease in the number of office actions D. Quality improvement

Easing Examination Burden Benefit

III. The benefit of the PPH

Normal PPH

Workload Down Optimized claim scope

Decrease in the number of office actions

Utilization of the OEE examination results

Quality Up

Normal quality

PPH quality

Quality improvement

Total Amount of Work in Examination

Total Amount of Work in Examination

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Claim Scope


A. Optimized claim scope

And in a lot of cases, the number of claims are decreasing.

Patentable in OEE

Scope to be searched shrinks.

Optimized Claim Scope

Claim Correspondence

Not Patentable in OEE

OLE (Office of Later Examination)

Benefit for IPOs III. The benefit of the PPH

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B. Utilization of OEE search/examination history Example: Claims consists of parts A and B.

OLE examiner

Claim correspondence OEE search/examination history

OEE examiner

I found A.

Oh, A is already found. Let’s search ONLY B!

Office Actions of OEE

OLE

Benefit for IPOs III. The benefit of the PPH

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C. Decrease in the number of office actions Benefits for IPOs and Users

For Users: Decrease in the number of office actions reduces applicant cost (e.g. attorney and translation fee).

For IPOs: Decrease in the number of office actions saves examination time.


1.0

1.1

1.7

3.7

1.2

0.6

0.8

0.9

2.9

1.0

0.0 1.0 2.0 3.0 4.0

TW

KR

CA

US

JP

PPH Appl. All Appl.

PPH - Average number of office actions

DOWN!

Average number of office actions Period: Jan-Jun 2015 US : Jul-Dec 2014 / Figures including the number of PCT-PPH

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In PPH scheme, the OLE can make additional search based on the OEE results. Therefore, examination quality of the OLE is guaranteed for at least the OEE level. In addition, the OLE examiners can learn the OEE examination/search practices via submitted OAs and cited prior arts.

OLE examiner Claim correspondence

OEE search/examination history

OEE examiner

Search / Examination Oh, this practice is good.

OLE

D. Quality Improvement

Option1: Utilizing OEE’s result for efficiency.

Option2: Additional search for higher quality.

Benefits for IPOs and Users III. The benefit of the PPH

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10

15

20

25

30

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Japan U.S. Korea Canada 0

5

10

15

20

Japan U.S. Korea Canada

0

20

40

60

80

100

Japan U.S. Korea Canada

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 : Jan.- Jun. 2015 ※US PPH-Figures include PCT-PPH PPH applications All applications

Average Pendency from PPH request to FA Month

*

*JP applications period : Jan.-Dec. 2014.

First Action Allowance Rate %

Grant Rate

*JP applications period : Jan. -Dec.2014

%

*

**US period : Jul.-Dec. 2014

**

UP!

UP! DOWN!

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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


A’

Grant



OLE (Office of Later Examination) OLE examination burden can be lighten

Work Sharing

Applicant Merit

PPH Request


OEE Examination History

Office Merit Examination

Refer

IV. Types of the PPH scheme

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Application A


A’ Grant


OFF (Office of First Filing)

OSF (Office of Second Filing)

PPH Request


OEE Examination History Priority claim

Office of Earlier Examination (OEE)

Office of Later Examination (OLE)

Under this pilot program, PPH request is eligible, whether or not the office which provides the examination results is the Office of First Filing (OFF).

This PPH scheme is called “PPH MOTTAINAI”.

Examination Refer


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A

B

C

International Phase

PCT Application WO or IPER

Positive Opinion

Exam.

PCT work products

PCT -

DO Application A

International Phase National/Regional Phase

PCT Application

Accelerated Exam.

PCT work products

Positive Opinion

WO or IPER

PCT-PPH is the PPH based on a PCT international work product.

DO Application B

DO Application C

PPH Request


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5

10

15

20

25

30

35

40

45

2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016

Num

ber o

f the

off

ices

Australia, Canada, Denmark, EPO, Germany

Austria, Finland, Hungary, Russia, Singapore

Spain

China, Iceland, Israel, Mexico, NPI, Norway, Portugal, Sweden, Chinese Taipei

Colombia, Czech Republic, Philippines

Malaysia,Thailand

EAPO, Indonesia, Nicaragua, Poland

Egypt, Estonia, Romania

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Japan, U.S.

Brazil, Peru, Vietnam（Apr.）

Korea, UK

The number of PPH member offices The number of filings utilizing PPH system in the world

Num

ber o

f cas

es

Search/Examination Allowable

Request for PPH

Application

Office of First Filing

Office of Second Filing

Application Accelerated Exam.

V. Various data of the PPH

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Outline

Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway

(PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH

Part II. Global PPH I. Background II. The scheme III. The procedure

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JPO (JAPAN) SIC

(Columbia)

As of 1st of September, 2012

: PPH

: PCT-PPH : PPH MOTTAINAI

DPMA (Germany)

UKIPO (UK)

KIPO (Korea)

USPTO (USA)

CIPO (Canada)

EPO (Europe)

IP Australia （Australia）

DKPTO (Denmark)

IPOS (Singapore)

NBPR (Finland) ROSPATENT

(Russia) HIPO

(Hungary) APO

(Austria) SPTO

(Spain)

IMPI (Mexico)

INPI (Portugal)

PRV (Sweden)

ILPO (Israel)

NPI (Nordic)

TIPO (Taiwan)

NIPO (Norway)

SIPO (China)

IPO (Iceland)

IPOPHL (Philippines)

I. Background

PPH is steadily developing!

But the current condition is often called “Spaghetti Bowl”…

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Current Condition.. (Bundles of Bilateral Arrangements and Guidelines)

Sometime in the future…

One Guideline

Plurilateral PPH One PPH arrangement One guideline

Bilateral PPH arrangement has been increasing, and as a result, bundles of Bilateral Arrangements and Guidelines existed. Users have requested PPH requirement or procedures to commonalize.

I. Background

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PPH participating offices have discussed about various approach in order to enhance the usability at Plurilateral Patent Prosecution Highway Working Level Meeting. This Meeting was held seven times until now, and 26 countries or authorities participated at the 7th Meeting. Discussion about Global PPH was performed at Plurilateral Patent Prosecution Highway Working Level Meeting.

4th, 5th Meeting at EPO 2nd, 3rd, 6th Meeting at JPO

7th Meeting at IPOS

1st Meeting at DKIPO

I. Background

The launch of a “Global PPH” pilot program within the framework of multiple countries: this program was created by making use of common factors found in the PPH. It commenced on January 6, 2014. The Global PPH pilot program enables participating offices to effectively use all types of PPH systems (regular type PPH, the PPH MOTTAINAI, and the PCT-PPH), enhancing user-friendliness. The JPO works as the secretariat of Global PPH. (E-mail:[email protected])

Global PPH (From January 6, 2014)

Types of PPHs available to all participating offices: Regular PPH, PPH MOTTAINAI, and PCT-PPH

Before launching Global PPH 17 offices at the start of Global PPH

II. Scheme

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New offices wishing to join the GPPH pilot can apply to join on the 6th January or on the 6th July. In order to be eligible to join, an office must declare its interest in joining the GPPH to the Secretariat no later than two months before the above dates. Requests to join the GPPH should be accompanied by the standard letter, provided on the Office’s headed paper and signed by the Head of Office.

6th January 6th July

Join the GPPH Join the GPPH

Letter Letter

Secretariat (JPO)

Secretariat (JPO) New offices New offices

No later than 2 months

No later than 2 months

III. Procedure

V. Global PPH (GPPH) ～ c. Procedures

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Where two participating offices have a pre-existing bi-lateral PPH arrangement, the guidelines of the Global PPH pilot will take precedence over those of the existing bi-lateral arrangement for the duration of the pilot.

Office A

Office B

Using the bi-lateral PPH guideline

Using the Global PPH guideline

Global PPH Bi-lateral PPH

Participating

Participating

Today’s point

PPH has a lot of benefits. By launching Global PPH, usability for users has increased. JPO promotes international cooperation to expand Global PPH.

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Thank You!

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