PPH in APAA Countries i. Status of PPH agreement and Statistics. ii. Benefits for Entering PPH Agreements. iii. Advantages of PPH compared to Other Accelerated.

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PPH in APAA Countries i. Status of PPH agreement and Statistics. ii. Benefits for Entering PPH Agreements. iii. Advantages of PPH compared to Other Accelerated Type of Prosecution Schemes. Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 0 Hiroyuki HASHIMOTO MIYOSHI&MIYOSHI Tokyo, Japan

Current Overall PPH Network Copyright (C) 2014 Miyoshi International Patent Office All Rights Reserved. 1 Source: Patent Prosecution Highway Portal Site (

Latest PPH Utilization Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 2 Source: Patent Prosecution Highway Portal Site Table above shows major PPH participating countries and regions (not all) including APAA countries.

Latest PPH Utilization Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 3 Source: Patent Prosecution Highway Portal Site

Latest PCT-PPH Utilization Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 4 Source: Patent Prosecution Highway Portal Site Table above shows major PPH participating countries and regions (not all) including APAA countries.

Latest PCT-PPH Utilization Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 5 Source: Patent Prosecution Highway Portal Site

Effects of PPH (High Grant Rate) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 6 Source: Patent Prosecution Highway Portal Site

Effects of PPH (Fast allowance) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 7 Source: Patent Prosecution Highway Portal Site

Effects of PPH (Fast prosecution) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 8 Source: Patent Prosecution Highway Portal Site

Effects of PPH (Faster prosecution) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 9 Source: Patent Prosecution Highway Portal Site

Effects of PPH (No. of Office Actions) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 10 Source: Patent Prosecution Highway Portal Site

PCT-PPH Statistics (Overall) Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 11 Source: Patent Prosecution Highway Portal Site Table above shows major PPH participating countries and regions (not all) including APAA countries. * Lower column shows figure of all applications (PPH and non-PPH)

PPH Statistics: Summary Grant Rate 64.3% 92.7% First Action Allowance Rate: 10.2% 48.7% Average Pendency from PPH request to 1 st Office Action: 16.08mo mo. Average Pendency from PPH request to Final Decision: 25.93mo mo. Average number of Office Actions: 1.58 times 0.94 times Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 12 Figures represent PPH applications only (excluding PCT-PPH applications)

Benefits for Entering into PPH 1. Fast Prosecution i. Fast prosecution is expected for both PPH and PCT-PPH applications. Especially, average pendency from PPH request to final decision is quite fast compared to non- PPH applications. ii. PPH participating offices recently agreed to expedite examination not only the First Action (FA) pendency from PPH request but also the period from FA to final decision (e.g., decision to grant or reject a patent). *For more information, please access Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 13

Benefits for Entering into PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved Improvement of Examination Quality i. Since Offices of Later Examination (OLE) use search/examination-related information of Offices of Earlier Examination (OEE), examination quality is expected to be improved and unified between OEEs and OLEs. ii. PPH participating offices recently agreed : that OEE should maximize their efforts to improve examination quality, providing reliable work products, and that OLE should be expected to make maximum use of search/examination-related information of OEEs. However, the independence of the OLE is always preserved.

Benefits for Entering into PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved High Grant Rate i. Grant rate is relatively higher than non-PPH applications. ii. Although grant rate of PPH applications is not significantly higher than non-PPH applications, throughout the improvement of examination quality described above, grant rate of PPH applications is expected to be further improved. 4. Mitigation of Workloads in Patent Offices i. From Patent Office perspective, workloads of examination can be mitigated by work-sharing among participating Patent Offices. ii. Accordingly, a heavy increase in workloads of examination at Patent Offices can be avoided.

Advantages of PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved Conditions to be met i. The claims of the OLE are sufficiently correspond to the claims of the OEE. ii. The claims determined to be allowable in OEE. Noted that “decision to grant” is not essential for requesting PPH. The claims determined to be allowable in Office Action can also be candidates of PPH.

Advantages of PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved Comparing with Other Prosecution Schemes i. Accelerated prosecution schemes within Patent Offices (e.g., Accelerated Examination in JPO, AEP/PEP in US, PACE in EPO) do not require claim correspondence between OEE and OLE. Pendency from a request of the examination to Office Action is significantly faster compared to a regular examination. However, special requirements (e.g., limited application types, prior art search by applicant) need to be met. ii. Modified Substantive Examination (MSE): Decision to grant of the corresponding foreign application is essential. Claims must be same as the granted claims of the corresponding foreign applications.

Advantages of PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved Summary i. If conditions are met, i.e., (i) claims are sufficiently correspond between OEE and OLE, and (ii) claims determined to be allowable by OEE, applicant should consider the use of PPH. ii. Especially, even the entire application has not yet been granted, PPH can be requested if at least one claim has determined to be allowable by OEE.

Advantages of PPH Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved Summary (Continued) iii. Other accelerated examination schemes do not require to meet above conditions, thus if the above conditions are not met, those examination schemes are alternatively considered. However, it may have to meet special requirements. iv. Modified Substantive Examination (MSE) is performed based on decision to grant of the corresponding foreign applications. Accordingly, claims to be examined under MSE must be same as the granted claims of the corresponding foreign applications.