PPH Introduction to the Patent Prosecution Highway JAPAN PATENT OFFICE

Contents 1 1.Background 2.Current Status of PPH 3.Merits of PPH 4.Requirement for requesting PPH 5.Recent developments (Global PPH, etc.) 6.PPH Portal Site 7.Reference materials

Contents 2 1.Background 2.Current Status of PPH 3.Merits of PPH 4.Requirement for requesting PPH 5.Recent developments (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

Increase in patent applications filed in the Whole World The number of applications filed in many offices is increasing. The number of patent applications in the world is increasing. In particular, the number of applications filed in multiple offices is significantly increasing. The number of patent applications in the world is increasing. In particular, the number of applications filed in multiple offices is significantly increasing. Changes in Patent Appl. Filed in the Whole World Source: WIPO Industrial Property Statistics (Unit: 10 thou.) mil mil The number of Appl. by nationality of applicant

Growing Demand for Work Sharing 4 The number of applications filed in multiple offices is increasing. The cost and workload is increasing The number of applications filed in multiple offices is increasing. The cost and workload is increasing Growing Demand for Worksharing ・ For applicants: - Cost of obtaining patents increases. - Delay in acquiring patents. ・ For the IP offices: - More duplicate work is being conducted at each patent office

Contents 5 1.Background 2.Current Status of PPH 3.Merits of PPH 4.Requirement for requesting PPH 5.Recent developments (Global PPH, etc.) 6.PPH Portal Site 7.Reference materials

Outline of the Patent Prosecution Highway 6 PPH is a framework in which, when applicants request, they can have their applications that have been determined to be patentable in the Office of Earlier Examination (OEE) undergo accelerated examination in the Office of Later Examination (OLE) based on simplified procedures. Application A Corresponding Application A’ Grant AcceleratedExamination OEE (Office of Earlier Examination) OLE (Office of Later Examination) OLE workload can be reduced Work Sharing Benefits applicants PPH Request Claims correspondence OEE Examination History Benefits office

The Scheme of Patent Prosecution Highway Search / Examination Allowable Request for PPH Application OEE (Office of Earlier Examination) Application Paris Route Accelerated Exam. A B Examination C PCT International Phase National/Regional Phase PCT Application Allowable WO or IPER Positive Opinion PCT-PPH Regular-type PPH Request for PPH Accelerated Exam. OLE (Office of Later Examination) PCT work products Claim Correspondence PCT-PPH Regular-type PPH

IPO-CZ (Czech) SIC (Colombia) IPOPHL (Philippines ) TIPO (Taiwan) IMPI (Mexico) APO (Austria) SIPO (China ) EPO (Europe) DPMA (Germany) IPOS (Singapore) PPO (Poland) EAPO (Eurasia) DGIPR (Indonesia) DIP (Thai) JPO (JAPAN) UKIPO (UK) CIPO (Canada) ROSPATENT (Russia) USPTO (USA) DKPTO (Denmark) PRH (Finland) SPTO (Spain) INPI (Portugal) ILPO (Israel) IP Australia (Australia) IPO (Iceland) PRV (Sweden) NIPO (Norway) NPI (Nordic) HIPO (Hungary) KIPO (Korea) NRIP （ Nicaragua ） As of 6th of January, offices participate in the PPH as of January 6, 2014 (Japan started the PPH with 28 offices.) The accumulated total number of requests for PPH applications filed worldwide is about 50,000. As of December offices participate in the PPH as of January 6, 2014 (Japan started the PPH with 28 offices.) The accumulated total number of requests for PPH applications filed worldwide is about 50,000. As of December 2013 Expanding PPH Network 2006~

9 US2012.9~ ES ~ US2011.3~ JP2011.7~ ES ~ KR2012.7~ CN2013.3~ SG2014.4~ US2013.9~ ColombiaMexicoNicaragua PPH Development in Latin America

Number of applications for the PPH (received by JPO) as of December 2013

(as of the end of Dec. 2013) Cumulative Number of Requests for PPH

(as of the end of Dec. 2013) Cumulative Number of Requests for PCT-PPH

Number of PPH Requests (received by JPO) OEENumber of PPH Requests OEENumber of PPH Requests US2898ES0 KR288MX0 GB117PT0 CA18IL0 DE144TW3 DK25NO1 EP256CN23 SG3IS0 FI11PH0 RU6PL1 AT3EA0 HU2ID0 Bilateral PPH OEENumber of PPH Requests US33 EP748 KR56 FI2 ES2 SE23 XN8 CN48 RU1 IL1 PCT-PPH Breakdown (Except JPO-JPO PCT-PPH) JPO-JPO PCT-PPH:

Number of PPH Requests by IPC Sections (Except JPO-JPO PCT-PPH) 14

Contents 15 1.Background 2.Current Status of PPH 3.Merit of PPH 4.Requirement for requesting PPH 5.Recent issues (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

Merit for the Applicants 16 Merit for the Applicants: High speed, Low cost, High predictability

Merit for the Applicants: High Speed 17 Period: Jul-Dec 2013 Accelerated Examination Down! JPUSKRGBCADEAUEPRUMXTW Average Pendency from PPH Request to First Office Action (months) 2.0 (13) 4.4 (18.0) 2.52 (13.2) (15.8) (7.8) (30.1) Average pendency from PPH request to Final Decision (months) 6.7 (22) 14.0 (29.0) 4.89 (19.1) (35.1) (14) (39.8) ( ) : All applications including PPH and non-PPH Down!

Merit for the Applicants: Low Cost 18 DOWN! cost Decrease in the number of office actions reduces applicant cost (e.g. attorney and translation fee). Period: Jul-Dec 2013 JPUSKRGBCADEAUEPRUMXTW Average Number of Office Actions1.01 (1.1)(2.4) (1.6) (1.9) (0.99) ( ) : All applications including PPH and non-PPH Decrease in the number of office actions

Merit for the Applicants: High Predictability 19 PPH applications tend to be granted by the OLE because they were already judged to be patentable by the OEE. Increase in Grant Rate Period: Jul-Dec 2013 JPUSKRGBCADEAUEPRUMXTW Grant Rate (%)75 (71) 87.9 (53) 91.3 (67.5) 9488 (65) (44) (61) ( ) : All applications including PPH and non-PPH

Merit for the Patent Offices 20 an application Search an application Finished Search Refer the results before Search Utilization of Results! prior arts, office actions Duplication Work.. Merit for the Patent Offices: Work Sharing effect

Merit for the Patent Offices 21 1.Decrease in the number of office actions 2.Utilization of OEE search/examination result 3.Optimized claim scope Work Sharing Effect: Easing Examination Burden Optimized claim scope Decrease in the number of office actions NormalPPH Total Amount of Work in Examination Utilization of the OEE examination results Down

Merit for the Patent Offices: Easing Examination Burden 22 DOWN! PPH applications tend to be efficiently judged in the OLE because OLE examiners can refer examination history of the OEE. Period: Jul-Dec 2013 JPUSKRGBCADEAUEPRUMXTW Average Number of Office Actions1.01 (1.1)(2.4) (1.6) (1.9) (0.99) ( ) : All applications including PPH and non-PPH Decrease in the number of office actions

Merit for the Patent Offices: Easing Examination Burden 23 Utilization of OEE search/examination results PPH request OLE examiner can refer; Copies of all OEE Office Actions Copies of all claims determined to be patentable/allowable Copies of all cited documents Claim correspondence table OEE examiner OEE application is patentable/allowable OEE Office Actions OLE Applicant must submit; Copies of all claims determined to be patentable/allowable by the OEE Copies of all cited documents Claim correspondence table OLE application’s claim scope must sufficiently correspond to OEE application’s claim scope

Merit for the Patent Offices: Easing Examination Burden 24 Claim Scope OEE (Office of Earlier Examination) Optimized claim scope In many cases, the number of claims is decreasing. Patentable in the OEE Scope of search is greatly reduced. Optimized Claim Scope Claim Correspondence Not Patentable in the OEE OLE (Office of Later Examination) To request for the PPH, the OLE application’s claim scope must be sufficiently corresponded to OEE application’s claim scope which was determined to be patentable/allowable by the OEE

25 Merit for offices and applicants: Quality Improvement Merit for Offices and Applicants

Merit for Offices and Applicants: Quality Improvement 26 In PPH scheme, the 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 + “Claim correspondence” makes understanding easy.

Contents 27 1.Background 2.Current Status of PPH 3.Merit of PPH 4.Requirement for requesting PPH 5.Recent issues (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

Requirements for PPH request 28 Search/ Examination Allowable Request for PPH Application JPO Application Accelerated Exam OEE application has one or more claims that are determined as allowable. OEE(Office of Earlier Examination) 1-4. All claims of the OEE application must sufficiently correspond to the allowable claims in the JPO 1-2. Relationship between the OEE and the JPO application. e.g. The JPO application is an application which validly claims priority under Paris Convention to the OEE application The JPO has not begun examination of the application. 2. Submission of required documents.

Required Documents 29 Translations of the copies described in the left side Copies of all OEE office actions and all claims determined to be allowable/patentable Copies of references Claim correspondence table No need to submit copies of all OEE office actions and all claims determined to be allowable/patentable, if they are available via the OEE dossier access system. No need to submit the copies of references, if they are patent document.

Requirements for PCT-PPH request 30 A B Examination Request for PPH C International Phase National/Regional Phase PCT Application Allowable Request for PPH Accelerated Exam. WO or IPER Positive Opinion Accelerated Exam. PCT Work Products PCT Route (PCT-PPH) 1-3. PCT application has one or more claims that are indicated as allowable All claims of the application must sufficiently correspond to the allowable claims in the PCT application 1-2. Relationship between the application and the corresponding PCT application 1-1. The JPO has not begun examination of the application. 2. Submission of required documents. Requirements, required documents are very similar to the normal PPH.

Required Documents 31 Copies of all claims determined to be patentable/allowable and translations of them Copies of latest international work product and translations of them Copies of references Claim correspondence table No need to submit these documents, if they are available via “PATENTSCOPE” (registered trademark) No need to submit the copies of references, if they are patent document.

Requirements, required documents and fee (to the JPO) 32 Requirements 1-1. The examination has not begun in the JPO The JPO application is in particular relationship with the OEE application. Ex.) The JPO application is an application which validly claims priority under Paris Convention to the OEE application The OEE application has at least one claim that was determined by the OEE to be allowable All claims in the JPO application sufficiently correspond or are amended to sufficiently correspond to the allowable/patentable claims in the OEE applications. List of Required Documents 2-1. Copies of all claims* 1 and their translations 2-2. Copies of the OEE office actions* 1 and their translations 2-3. Copies of all cited documents* Claims Correspondence Table * 1 Applicants do not have to submit these documents, if the JPO can obtain these documents via the OEE’s dossier access system. * 2 Applicants do not have to submit these documents, if the documents are patent document. PPH petition fee Free For more details, please see PPH guideline which is available at JPO website.

Comparison with USPTO 33 To USPTOTo JPO Copy of allowable claims A copy of the allowable claims from OEE application along with English translation thereof and a statement that the English translation is accurate. Either Japanese or English is acceptable as translation language. Machine translations will be admissible. *Submission of the copy of claims can be omitted (in case claims are provided via the OEE’s DAS). Copy of OEE office action All OEE office actions.All OEE office actions. Either Japanese or English is acceptable as translation language. Machine translation will be admissible. *Submission of the copy of claims can be omitted (in case claims are provided via the OEE’s DAS). Copies of documents cited by the OEE examiner IDS(Information disclosure statement) listing the documents cited in the OEE office action along with copies of all documents except U.S. patents and U.S. patent applications. Submission of the patent documents can be omitted. Number of opportunity given to the applicant to correct certain specified defect Only one timeNo limitation on the number of opportunity

Contents 34 1.Background 2.Current Status of PPH 3.Merit of PPH 4.Requirement for requesting PPH 5.Recent issues (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

Global PPH 35 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, Previously, different types of PPH systems were used between two offices, depending on their bilateral agreements. The types include the regular type PPH, the PPH MOTTAINAI, and the PCT-PPH. Having various types of systems made it rather difficult for applicants to understand how to use them. Besides, the systems were not user friendly. On the other hand, this Global PPH pilot program enables participating offices to effectively use all types of PPH systems, enhancing user-friendliness. Seventeen countries/regions are participating in this pilot program. (Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Korea, Nordic Patent Institute, Norway, Portugal, Russia, Spain, Sweden, UK, and USA) Global PPH (From January 6, 2014) Types of PPHs available for all participating offices: Regular PPH, PPH MOTTAINAI, and PCT-PPH Before launching Global PPH

PPH MOTTAINAI Pilot Program ~Easing of PPH requirements~ 36  To make the PPH program more user-friendly and available for patent applicants, the PPH MOTTAINAI Program launched on 15 th of July,  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).  JPO (Japan), USPTO(USA), UK-IPO(UK), CIPO (Canada), IP Australia (Australia), PRH (Finland), ROSPATENT (Russia), SPTO (Spain), EPO, DPMA (Germany), INPI (Portugal), IPOPHL( Philippines), TIPO(Taiwan), KIPO (Korea), SIPO (China), DKPTO (Denmark), HIPO(Hungary), PRV (Sweden), ILPO(Israel), NIPO(Norway) and IPO(Iceland) have adopted this pilot program as of the end of January The newly eligible examples under the PPH MOTTAINAI Pilot Program ・・・ the participating Office for this Pilot Program ※ Case １ Case 2

IP5 PPH 37 IP5 PPH pilot program commenced on January 6, 2014 for a period of 3 years. Under the program, applicants whose patent claims have been found to be patentable by one office may ask for accelerated processing of their corresponding applications pending before the other IP5 offices. JPO (JAPAN) KIPO (Korea) USPTO (USA) EPO (Europe) SIPO (China)

Contents 38 1.Background 2.Current Status of PPH 3.Merit of PPH 4.Requirement for requesting PPH 5.Recent issues (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

PPH Portal Website 39 JPO administrates the PPH Portal Website, which provides the latest information regarding PPH, the links of different countries and regions. Latest PPH Information in the world PPH Procedure Information - Links to the individual offices

PPH Portal Website 40 PPH Portal Website also provide the PPH statistical data. Provision of the number of PPH requests by Office Provision of the PPH statistical data, such as Grant Rate and Average Pendency from FA to Final Decision. Please access URL:

Gracias For more information, please visit our website.

Contents 42 1.Background 2.Current Status of PPH 3.Merit of PPH 4.Requirement for requesting PPH 5.Recent issues (Global PPH etc.) 6.PPH Portal Site 7.Reference materials

Example Request Form used in the JPO (1) 43

Example Request Form used in the JPO (2) 44

Example Request Form used in the JPO (3) 45

46 FAQ (1) What are differences between PPH and other approaches? (2) Does PPH prioritize only ‘foreign’ applicants? (3) Does PPH interfere independency of examination?

47 (1) What are differences between PPH and other approaches? PCTPPHDossier Cooperation (OPD, AIPN, ePEC, CASE…) JPO Yes Type User driven Offices cooperation Referring other office results Yes Claim correspondence obligation NoYesNo Accelerated examination NoYesNo Users can select one of them or PCT-PPH according to their needs. All these approaches are important work sharing approaches. PPH has higher work sharing effects than PCT and Dossier cooperation because PPH has claims correspondence obligation.

48 (1) What are differences between PPH and other approaches? PCT facilitates applications to many countries. an application PCT route an application Paris route PPH enables accelerated examination on both PCT and Paris route. In users’ view, PCT and PPH bring each merits. PCT PPH Dossier Cooperation Acceleration of Work sharing

Accelerated examination PPH request 49 (2) Does PPH prioritize only ‘foreign’ applicants? PPH scheme is a reciprocity scheme. Therefore, both peoples can acquire PPH merits. Accelerated examination PPH request Country ACountry B

50 (3) Does PPH interfere independency of examination? PPH is the agreement concerning only examination order. PPH is NOT concerning substantive examination. For this reason, PPH pilot programs are spreading all over the world including China and Mexico, Colombia etc. and all PPH pilot programs do not have expired. Purposes of PPH are work sharing and accelerated examination.