JURISDICTION REPORT: JAPAN
PPH: THE HIGHWAY OF THE FUTURE Ryo Maruyama
Kyosei International Patent Office
As previously reported in WIPR, Patent Prosecution Highway (PPH) programmes have been adopted by 24 offices of various countries and regions, including Japan. With regard to the Japan Patent Office, applicants from the US, Korea, and Europe tend to use the programmes to obtain patent rights in Japan speedily. Tis firm encourages foreign clients to obtain patent rights efficiently by combining the measures for accelerating prosecution, including interviews with examiners, and the PPH programmes.
When an applicant uses the PPH, office actions are reduced and the number of applications that are granted patents with one office procedure is increased. Accordingly, the costs of agents and translations can be reduced. Terefore, a PPH satisfies the needs of applicants that want to obtain patent rights around the world efficiently, as well as simplifying the procedures patent firms need to carry out.
If an applicant uses the PPH, the period of pendency at the office is greatly reduced. For example, in Japan, the period from filing a substantial examination to the first examination is 24 to 30 months. However, if an applicant requests PPH, this period is reduced to about six months on an average (the period from PPH request to the first examination), and the application that is granted a patent by the Office of Earlier Examination (OEE) is highly likely to be granted a patent by the Office of Later Examination (OLE).
Also, because OEE and OLE both examine the same application, the obtained patent right should be more stable.
Furthermore, there is a quicker and smoother method for obtaining patents: the ‘Super Highway’ programme. Tis requires, before the office procedure, an existing foreign patent application that has already been carried out by the applicant or licensed person, and all documents to be submitted online within four weeks. In Japan, online filing is standard, so it is easy for foreign applicants to fulfil these requirements. Te period between filing and the first examination is a few months.
Last year, a further new programme to enhance the effect of the PPHs was added, called ‘PPH Mottainai’. Mottainai is a Japanese term meaning ‘a sense of regret concerning waste when the intrinsic value of an object or resource is not properly used’.
Te offices of eight countries (Japan, US, UK, Canada, Australia, Finland, Russia, and Spain) eased the restrictions on the current PPH programmes from July 15, 2011.
Te current PPH is a framework in which an application with claims that have been determined to be patentable in the Office of First Filing is eligible
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“A PPH SATISFIES THE NEEDS OF APPLICANTS THAT WANT TO OBTAIN PATENT RIGHTS AROUND THE WORLD EFFICIENTLY, AS WELL AS SIMPLIFYING THE PROCEDURES PATENT FIRMS NEED TO CARRY OUT.”
to go through an accelerated examination in the Office(s) of Second Filing. Under the PPH Mottainai pilot, an applicant can make PPH requests at the OLE by using the examination results of the OEE, provided that the OEE and OLE have a PPH Mottainai agreement. On January 29, 2012, the European Patent Office entered into this agreement.
People are waiting to see how the programme works, but considering the globalisation of patent strategies, this system should benefit various types of foreign applicants in Japan, in terms of both cost and effectiveness.
Ryo Maruyama is a patent attorney and vice president of Kyosei International Patent Office. He can be contacted at:
kyosei@tkc.att.ne.jp
World Intellectual Property Review March/April 2012 53
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