1. AIPLA PPH Users Meeting May, 2010 Report on Patent Prosecution Highway Manny Schecter Chief Patent Counsel schecter@us.ibm.com

2. AIPLA PPH Users Meeting May, 2010 2 Agenda Our experiences with PPH  Usage summary  Number of office actions & prosecution period  Rate of patent grants Benefits Suggested Improvements

3. AIPLA PPH Users Meeting May, 2010 3 Usage Summary Over 300 petitions filed to enter PPH Primary routes:  JP-US PPH  US-JP PPH  PCT PPH Significant cost savings depending upon path:  Patent office fees to enter PPH  Number of office actions eliminated  Local labor/legal costs

4. AIPLA PPH Users Meeting May, 2010 4 Number of Office Actions & Prosecution Period *1 Period from petition for JP US PPH with USPTO to 1 st US office action or 1 st action allowance *2 Period from US filing date to 1 st US office action or 1 st action allowance *3 Period from petition for US JP PPH with JPO to 1 st JP office action or 1 st action allowance *4 Period from request for examination with JPO to 1 st JP office action or 1 st action allowance Route Number of Office Actions in an OSF* Period to receive a 1st OA in OSF/ days JP US PPH1.2134 (*1 JP US Non PPH2.1966 (*2 US JP PPH1.349 (*3 US JP Non PPH2.21012 (*4

5. AIPLA PPH Users Meeting May, 2010 5 Rate of Patent Grants RouteGrant Rate % JP US PPH82.6 JP US non PPH72.0 US JP PPH86.7 US JP Non PPH69.5

6. AIPLA PPH Users Meeting May, 2010 6 Summary of Benefits (1) Regarding prosecution in OSF -Cost reduction due to decrease of the number of OAs -Increased grant rate -Significant reduction of prosecution period -Simple formality requirement to trigger PPH in OSF (2) Regarding practitioners’ workload in PPH - Early office action in OSF – improves applicant recall of invention, thereby increasing efficiency and quality of prosecution

7. AIPLA PPH Users Meeting May, 2010 7 Suggested Improvements (1) Symmetrical processes Issue: Currently, offices’ requirements for PPH vary. For example, a petition fee is necessary in USPTO while JPO does not require any such fee. Recommendation: Adopt symmetrical processes.

8. AIPLA PPH Users Meeting May, 2010 8 Suggested Improvements (2) Clarification of requirement for “sufficiently corresponding claims” Issue: OSF requires sufficient correspondence of allowed claims in OFF and claims to be examined in OSF, but the standard is not clear. Copying of claims is generally effective to avoid denial of a petition. Recommendation: Clearly define “sufficiently corresponding”.

9. AIPLA PPH Users Meeting May, 2010 9 Suggested Improvements (3) Translations of office actions Issue: Some OSFs require translations of office actions together with petitions for entering PPH. Translation cost is predominant additional cost, but substantially common parts are not standardized and mere cosmetics unduly increase translation expense. Recommendation: Adopt a common office action format.

10. AIPLA PPH Users Meeting May, 2010 10 Suggested Improvements (4) PCT information in WIPO Database Issue: In PCT PPH, a favorable opinion by ISA or IPEA is a condition for initiating examination in OSF. Currently, WIPO provides a database which includes (1) PCT documents in PDF format which are not searchable, and (2) searchable bibliographic data which does not indicate whether opinion is favorable or unfavorable. Recommendation: Facilitate applicants’ search for candidates of PCT PPH by including indications of favorability in the searchable bibliographic data.

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