1. IP issues from the viewpoint of the JPO
Fordham IP Conference
April 29, 2011
IP issues from the viewpoint of the JPO
Ken-Ichi MOROOKA
The Japan Patent Office

2. Overview 1. Patent Prosecution Highway (PPH)
2. Amendment of the Japanese Patent Act

3. Overview 1. Patent Prosecution Highway (PPH)
The PPH scheme
Expanding PPH network
Number of PPH requests
Plurilateral PPH
PPH Portal Website
2. Amendment of the Japanese Patent Act

4. The PPH scheme Paris Route OFF (Office of First Filing) Allowable
Search /
Examination
Application
Accelerated Exam.
OSF (Office of Second Filing)
Request for PPH
Application
PCT International Phase
National/Regional Phase
PPH (Paris Route)
PCT Work Products of Trilateral Offices or NBPR
PCT-PPH A
Examination
Allowable
WO or IPER
PCT Application
Accelerated Exam.
Positive Opinion
Request for PPH Ｂ
Accelerated Exam.
Claiming priority to application to Office “A”
Request for PPH Ｃ
PPH Request to Trilateral Offices or NBPR

5. Expanding PPH network ： PPH ： PCT-PPH JPO USPTO KIPO IMPI UKIPO SPTO
(Japan)
USPTO
(USA)
KIPO
(Korea)
IMPI
(Mexico)
UKIPO
(UK)
SPTO
(Spain)
HIPO
(Hungary)
CIPO
(Canada)
APO (Austria)
DPMA
(Germany)
ROSPATENT (Russia)
IP Australia
（Australia）
NBPR (Finland)
：　 PPH
：　 PCT-PPH
DKPTO (Denmark)
IPOS (Singapore)
EPO
(Europe)
As of 4th of April, 2011

6. Number of PPH requests

7. Plurilateral PPH Main topics
Plurilateral PPH Working Level Meeting : Jan , Tokyo, Japan
Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U.S.A.
Main topics
Relaxing priority requirements
Simplifying / Streamlining filing requirements
Providing users information of the different practices between Offices
Enhancing user outreach

8. PPH Portal Web Site http://www.jpo.go.jp/ppph-portal/index.htm
- Access PPH Portal Web Site for more information -
Provision of various statistical data
Provision of the PPH guidelines of different countries
Provision of the PPH request forms of different countries
Provision of the pamphlets of PPH of different countries

9. Overview 1. Patent Prosecution Highway (PPH)
The PPH scheme
Expanding PPH network
Number of PPH requests
Plurilateral PPH
PPH Portal Website
2. Amendment of the Japanese Patent Act
The aim of the amendment
Points of the amendment

10. The Aim of the Amendment
To cope with “Open innovation”.
To deal with the acceleration of innovation, and the short life-cycle of products.
To improve user convenience.

11. Points of the Amendment
Increasing user-friendliness
Appropriate protection of inventors in relation to the results of joint researches etc.
Enhancing protection of license agreements
Revising the trial examination system to expeditiously and efficiently solve disputes

12. Points of the Amendment
(1) Increasing user-friendliness
Extension of the patent fee exemption period from 3 to 10 years
(for small- and medium-sized Enterprises).

13. Points of the Amendment
(1) Increasing user-friendliness (continued)
Expanding the mode of disclosure eligible for the grace period.
(Present)
Conducting an experiment,
Presentations made in a printed publication,
Presentations made through electric telecommunication lines,
Presentations made in writing at a study meeting held by
scientific organizations etc.
(Amended)
Disclosures made by the inventor himself / herself regardless of
the mode of disclosure.

14. Points of the Amendment
Increasing user-friendliness
Appropriate protection of inventors in relation to the results of joint researches etc.
Enhancing protection of license agreements
Revising the trial examination system to expeditiously and efficiently solve disputes

15. Thank you