Patent Prosecution Highway between JPO and INPI Japan Patent Office
Patent Prosecution Highway
between JPO and INPI
Japan Patent Office
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The PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) with a simple procedure upon an applicant’s request.
Application
A
Corresponding
Application
A’
Grant
Accelerated
Examination
OEE (Office of Earlier Examination)
OLE (Office of Later Examination) OLE examination
burden can be lighten
Work Sharing
Applicant Merit
PPH Request
Claims
correspondence
OEE Examination History
Office Merit Examination
Refer
What is Patent Prosecution Highway (PPH)?
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IPOS*
(SG: Singapore)
PPO* (PL: Poland)
EAPO (EA: Eurasia)
DIP
(TH: Thailand)
DGIP
(ID: Indonesia)
DPMA*
(DE: Germany)
EPO
(EP: Europe)
SIPO
(CN: China)
APO*
(AT: Austria)
IMPI
(MX: Mexico)
TIPO
(TW: Taiwan)
IPOPHL
(PH: Philippines)
SIC
(CO: Colombia)
IPO CZ
(CZ: Czech)
INPI*
(PT: Portugal)
ILPO*
(IL: Israel)
IP Australia*
(AU: Australia)
NIPO*
(NO: Norway)
NPI*
(XN: Nordic)
HIPO*
(HU: Hungary)
ROSPATENT*
(RU: Russia)
SPTO*
(ES: Spain) DKPTO*
(DK: Denmark)
USPTO*
(US: USA)
JPO *
(JP: JAPAN)
KIPO*
(KR: Korea)
CIPO*
(CA: Canada)
NRIP
(NI: Nicaragua)
MYIPO
(MY: Malaysia)
UKIPO*
(GB: UK)
PRH*
(FI: Finland)
PPH member offices (2017.2)
OSIM
(RO: Romania)
EGYPO
(EG: Egypt)
IPO*
(IS: Iceland)
EPA*
(EE: Estonia)
PRV*
(SE: Sweden)
INDECOPI
(PE: Peru)
INPI
(BR: Brazil)
NOIP
(VN: Vietnam)
OMPIC
(MA: Morocco)
INAPI
(CL: Chile)
*: GPPH-participating offices
DINAPI
(PY: Paraguay)
DNPI
(UY: Uruguay)
INPI
(AR: Argentina)
IEPI
(EC: Ecuador)
Japan doesn’t have PPH programs in place with Argentina, Brazil, Chile, Ecuador, Morocco, Nicaragua, Peru,
Paraguay, Uruguay. (They are surrounded by orange frame.)
JPO advocated the PPH for the first time in the world in 2006.
Since 2006, the number of PPH member office has been expanding to 45.
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Expansion of the network for PPH in Latin America
In 2016, many countries in Latin America – Brazil, Peru, Chile, Argentina, Ecuador, Paraguay and Uruguay - joined the PPH network.
On January 11, 2016, INPI-USPTO PPH pilot project was launched.
JPO has implemented PPH programs with 35 offices.
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0
10
20
30
40
50
60
70
80
90
100
JP US KR CA
0
5
10
15
20
25
30
35
JP US KR CA0
2
4
6
8
10
12
14
16
18
20
JP US KR CA
More PPH applications tend to
be granted in each country and
region.
1. High Grant Rate
Average pendency from PPH
request to First office action and
Final decision is decreasing.
2. Reduced Examination Period
High First Action Allowance Rate
reduces costs to applicants
(e.g. attorney and translation fees)
3. Cost saving
Period : Jul.- Dec. 2015 ※US PPH-Figures include PCT-PPH
PPH applications All applications
Average Pendency from PPH request to FA
Month
*
*JP all applications: Jan.-Dec. 2014
First Action Allowance Rate %
Grant Rate
*JP all applications: Jan.-Dec.2014
%
*
UP! UP! DOWN!
Main benefit of PPH : 1. High Grant Rate, 2. Reduced Examination Period, 3. Cost saving
**US all applications: Jul.-Dec. 2013
**
Benefits of the PPH for Users
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Joint Statement(Outline) A new Working Group focused on
defining the scope of pilot project on patent work sharing between INPI and JPO is created.
The WG includes representatives of JPO and INPI, and aims to provide a detailed technical proposal of a collaborative pilot project.
JPO-INPI PPH – Background
On October 6, 2016, METI and MDIC signed “Joint Statement between Brazil and Japan on Collaboration on Patent Examination”
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JPO-INPI PPH – Background
The Working Group meetings were held twice at the INPI(1st WG meeting on November 10, 2016 and 2nd WG meeting on February 6, 2017). The Working Group has discussed issues to implement the JPO-INPI PPH pilot project.
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JPO-INPI PPH – Duration
April 1st 2017 March 31st 2019
200 PPH requests
200 PPH requests
INPI
JPO
JPO-INPI PPH will start on April 1st ,2017. JPO-INPI PPH will be finished under the following two conditions, whichever occurs first:
1) a period of 2 years has passed 2) both offices have accepted 200 applications
Finish
Finish
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JPO-INPI PPH – Number of requests per applicant
INPI will limit the number of PPH requests made by same applicant as 6 per 4 months. In the last 4 months, there will be no limit of PPH requirements per applicant. JPO will have no limitation with regard to number of PPH requests per applicant.
April 1st 2017 March 31st 2019
Max 6 PPH requests
Applicant A to INPI Finish
Max 6 PPH requests
Max 6 PPH requests
Max 6 PPH requests
Max 6 PPH requests
No Limit
April 1st 2018
No Limit
Applicant A to JPO
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JPO-INPI PPH – Oldest application and Route
The oldest patent application of the patent’s family must have been filed to INPI or JPO, following the PCT, at RO/INPI or RO/JPO. JPO-INPI PPH will use Paris-Route PPH and Direct-PCT-Route PPH.
[Direct PCT Route]
[Paris Route]
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JPO-INPI PPH – Technical Fields
INPI will accept patent applications classified at the Information Technology and Mechanical Technology such as Automobile related Technology. JPO will accept patent applications classified at all of the technical fields.
IPCs in G sections G02B,G02F,G03G,
G06F,G06K,G06M,G06N,G06Q,G06T,
G08C,G08G,G09F,G09G,G10L,G11B,G11C
IPCs in H sections All classifications
IPCs in the other sections F21, F02D
B60K, B60L, B60W, B62D, B62J
All classifications
USPTO-INPI PPH JPO-INPI PPH
Duration 2 years (January 11, 2016-) 2 years (April 1, 2017-)
Number of
requests 150 on each office 200 on each office
Oldest filling BR or US or RO/BR or RO/US BR or JP or RO/BR or RO/JP
Route Paris-Route and Direct-PCT-
Route (not PCT-PPH)
Paris-Route and Direct-PCT-Route
(not PCT-PPH)
Patent Inventions Inventions and INPI’s utility models
Technical field Oil, Gas, or Petro-Chemical
Technology
Information Technology
and Mechanical Technology such as
Automobile related Technology
Work Product National Decision to Grant National Decision to Grant
Divisional
applications Not accepted basically Not accepted basically
Filing date 3 years prior to January 11, 2016 Any time
Number of
requests per
applicant
No limitation 6 requests each 4 months
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Comparison USPTO-INPI PPH v. JPO-INPI PPH
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Obrigado
Thank you ありがとうございました