Patent Prosecution Highway (PPH) Program

Q1.　Is a prosecution under the Patent Prosecution Highway (PPH) program^*1 available in Japan?

A1.　 Yes. The PPH programs have been implemented between the Japan Patent Office (JPO) and the Patent Offices of the following countries (as of August 2012): Austria, Canada, China, Denmark, EPO, Finland, Germany, Hungary, Iceland, Israel, Korea, Mexico, Norway, Philippines, Portugal, Russia, Singapore, Spain, Taiwan, the United Kingdom, and the United States.

The JPO also implements the PPH MOTTAINAI pilot program^*2 with the following countries (as of August 2012): Australia, Canada, EPO, Finland, Russia, Spain, United Kingdom, and United States.

^*1 The PPH program is a framework in which a patent application with claims determined to be patentable by the Office of First Filing is eligible to go through an accelerated examination in the Office(s) of Second Filing, upon the applicant’s request.

^*2 The PPH MOTTAINAI pilot program is a PPH program which enables an applicant to make PPH requests at the Office of Later Examination (OLE) by relying on the examination results of the Office of Earlier Examination (OEE), provided that the OEE and OLE have a PPH MOTTAINAI agreement. In this program, OEE may not be the Office of First Filing, and accelerated examination can be filed based on the examination results of the Office(s) of Second Filing.

Q2.　What are the documents necessary for filing a request for an accelerated examination under the PPH program in Japan?

A2.　 Documents necessary for filing a request for an accelerated examination under the PPH program in Japan include:

(1) Request for Accelerated Prosecution under PPH Program;

(2) Amendment for bringing the Japanese claims in conformity with the claims allowed by the participating patent office other than the JPO (if necessary);

(3) Table showing the relationship between the (amended) claims of the Japanese application and the allowed claims mentioned in (2);

(4) All Office Actions issued by the participating patent office (omissible if available via an online file inspection sysmtem provided by the patent office);

(5) Non-patent documents cited in the Office Action issued by the participating patent office (filing of patent documents is not required);

(6) Copy of the allowed claims (omissible if available via an online file inspection system provided by the patent office); and

(7) Japanese or English translations of documents (4) and (6) above when these documents are not in English.

Documents (1) to (3) must be prepared in Japanese. Although some or all of the information included in items (4), (5) and (6) may be omitted, we usually request the applicant to provide us with such information since it is generally useful for preparing the Japanese language documents (1) to (3).

Q3.　Is it possible to request an accelerated examination based on the PCT international work products?

A3.　 The JPO has commenced the PPH programs based on the PCT international work products (PCT-PPH) on pilot basis. According to current schedule (as of August 2012), this program will continue until January 28, 2014. Participating in PCT-PPH (as of August 2012) are the following 14 countries and organizations: China, Denmark, the EPO, Finland, Iceland, Korea, Mexico, the Nordic Patent Institute, Norway, Philippines, Portugal, Spain, Sweden and the United States.

Under the PCT-PPH programs, an accelerated examination can be requested in Japan using search and examination results (namely, written opinion or international preliminary examination report (IPER)) established by the International Searching Authorities (WO/ISA) or International Preliminary Examining Authorities (WO/IPEA) of the above-mentioned countries or organizations when any one of the examination results indicate that at least one of the claims has novelty, inventive step and industrial applicability.

Detailed requirements for filing a request for PCT-PPH may vary depending on which country's ISA or IPEA has carried out search. Therefore, please let us know if you are interested in PCT-PPH and need more information.