PPH from the JPO Point of View
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Transcript of PPH from the JPO Point of View
PPH from the JPO Point of ViewPPH from the JPO Point of View
Yutaka NiidomeYutaka NiidomeDeputy DirectorDeputy Director
Japan Patent OfficeJapan Patent Office
AIPLA PPH Users Meeting
May 19, 2010
2
Search/Examination
Allowable
Request for PPHRequest for PPHApplication
OFF
OSF
Application
Paris Route
Accelerated Exam.
A
B
Examination
Request for PPHRequest for PPHC
PCT International Phase PCT National/Regional Phase
PCTApplication
IPER
Allowable
Request for PPHRequest for PPH
Accelerated Exam.
ISRWO
Positive Opinion Accelerated
Exam.
PCT work products of a Trilateral Office
Request for PPH in a Trilateral Office
The Patent Prosecution HighwayThe Patent Prosecution Highway
3
DPMA
IP Australia
DKPTO
UKIPO
KIPO
CIPO
EPO
ROSPATENT
IPOS
NBPR
HPO
USPTO
JPOAPO
The PPH NetworkThe PPH Network
: permanent PPH
: pilot PPH
: PCT-PPH pilot
4
Number of PPH RequestsNumber of PPH Requests
At JPO as OSF
820
96 62 5115
0
100
200
300
400
500
600
700
800
900
USPTO KIPO EPO DPMA UKIPO
Total Number
( ~ 2010/5/11)
At JPO as OFF
1920
371220
16 80
500
1000
1500
2000
2500
USPTO KIPO DPMA UKIPO Rospatent
Total Number
*1
*1: ~ 2010/3/1
( ~ 2010/1/31)
5* At the JPO as OSF as of May 11, 2010
Number of PPH RequestsNumber of PPH Requests
OFF Cumulative number of PPH requests remarks
JPO(ISA/IPEA) 26 PCT-PPH
USPTO 820
USPTO(ISA/IPEA) 0 PCT-PPH
KIPO 96
UKIPO 15
DPMA 51
DKPTO 1
NBPR 3
ROSPATENT 0
APO 0
IPOS 0
HPO 0
CIPO 0
EPO 3
EPO(ISA/IPEA) 59 PCT-PPH
6
RANKING APPLICANT’S NAME
1 Microsoft Corporation
2 International Business Machines Corporation
3 General Electric Company
4 Apple Incorporated
5 SanDisk Corporation
6 Altera Corporation
7 GE Medical Systems Global Technology Company LLC.
8 Honda Motor Corporation Ltd.
8 Cree Incorporated
10 Elan Pharma International Ltd.
As of the end of Jan. 2010
Top Users of PPH (US -> JP)Top Users of PPH (US -> JP)
7
Advantages of PPHAdvantages of PPH - - Timely Patent AcquisitionTimely Patent Acquisition - -- Average Pendency from PPH Request to First Action (JP-US PPH)-- Average Pendency from PPH Request to First Action (JP-US PPH)-
Reduced pendency at the OSFReduced pendency at the OSF
Expeditious examinationExpeditious examination
OFFOFFOFFOFF ExamExamPatentPatent
FAFA
Request Request for PPHfor PPH
ExamExam
Request for PPHRequest for PPH
FAFA ExamExamWith With PPHPPH
Without Without PPH PPH 29.3 29.3
monthsmonths
1.9 1.9 monthsmonths
FA Pendency: Approx. 1.9 months (CY2009)FA Pendency: Approx. 1.9 months (CY2009)Cf. Overall average for all accelerated exams: 2.0 months (CY2009) Cf. Overall average for all accelerated exams: 2.0 months (CY2009)
Average First Action Pendency of All of the Applications in the JPOAverage First Action Pendency of All of the Applications in the JPO:: 29.3months (FY2008)29.3months (FY2008)
8
Advantages of PPHAdvantages of PPH - - Timely Patent AcquisitionTimely Patent Acquisition - -- Average Pendency from PPH Request to First Action -- Average Pendency from PPH Request to First Action -
Route PPH applications (Time from PPH request to First Action)
Average Overall First Action Pendency
JP -> DK 3 months (2008CY)
6.9 months (2008CY)
JP -> KR 2.1 months (2009CY)
15.4 months (2009CY)
US -> KR 2.0 months (2009CY)
15.4 months (2009CY)
All -> US 165.4 days* (Jan. 2009)
25 months (July 2009)
* Note that USPTO examiners will generally examine an application within 2 months from the grant of a PPH request provided the application has completed all its pre-exam processing.
9
Advantages of PPH – Speed -Advantages of PPH – Speed -- Average Pendency from First to Final Action (JP-US PPH)-- Average Pendency from First to Final Action (JP-US PPH)-
6.4
10.5
0 2 4 6 8 10 12
(months)
Average Pendency from FA to Final Action (CY2009)
Applications under J P- US PPH Applications claiming priority to US application
Reduced pendency at the OSFReduced pendency at the OSFExpeditious examinationExpeditious examination
10
Advantages of PPH – Speed -Advantages of PPH – Speed -- Average Time to Final Action & First Action Grant Rate -- Average Time to Final Action & First Action Grant Rate -
Route PPH Applications Overall average*From PPH request to
First ActionFrom First Action to
Final Action
JP -> UK 2.4 months(2009CY)
5.7 months (2009CY)
27 months (Feb. 2010)
US -> UK 1.02 months (2009CY)
6.6 months (2009CY)
27 months (Feb. 2010)
* the average time from the request for substantive examination through to the grant of a patent
Applications claiming priority to US application 2.6% (2009CY)
Applications under JP-US PPH 9.5% (2009CY)
Average Time to Final ActionAverage Time to Final Action
First Action Grant RateFirst Action Grant Rate
11
Advantages of PPH – Quality -Advantages of PPH – Quality -- Average Pendency from FA to Final Action (JP-US PPH)-- Average Pendency from FA to Final Action (JP-US PPH)-
Higher grant rate at the OSFHigher grant rate at the OSFHigh predictability of examination results at the OSFHigh predictability of examination results at the OSF
59.0
37.0
0.0 10.0 20.0 30.0 40.0 50.0 60.0 70.0
( % )
Grant Rate (CY2009)
Applications under J P- US PPH Applications claiming priority to US application
59.0
37.0
0.0 10.0 20.0 30.0 40.0 50.0 60.0 70.0
( % )
Grant Rate (CY2009)
Applications under J P- US PPH Applications claiming priority to US application
12
The PPH Portal SiteThe PPH Portal Sitehttp://www.jpo.go.jp/ppph-portal/index.htm
• One-stop portal for statistics, guidelines, and links• Request forms and a common drafting tool
13
The PPH Portal SiteThe PPH Portal Site
Common Drafting tool for PPH request formsCommon Drafting tool for PPH request forms
14
Reaction from PPH UsersReaction from PPH Users
- User A- User AIn a certain business field of our company, negotiations often take place for cross In a certain business field of our company, negotiations often take place for cross licensing of patents. Given such circumstances, we have come to the idea that licensing of patents. Given such circumstances, we have come to the idea that patent rights should be promptly obtained for any inventions related to the field. patent rights should be promptly obtained for any inventions related to the field. Focusing on such inventions as patentable in Japan, we are seeking for prompt Focusing on such inventions as patentable in Japan, we are seeking for prompt acquisition of patent rights in the US, by actively utilizing the PPH.acquisition of patent rights in the US, by actively utilizing the PPH.
- User B- User BIn the case of our company, where the reception of office actions usually occurs a In the case of our company, where the reception of office actions usually occurs a few times, applications using the PPH actually resulted in one or less of office few times, applications using the PPH actually resulted in one or less of office action on average. That allowed prompt acquisition of patent rights, thereby action on average. That allowed prompt acquisition of patent rights, thereby reducing the associated cost.reducing the associated cost.
- User C- User CWe have had our patent filing in the US examined promptly under simple We have had our patent filing in the US examined promptly under simple procedures, without facing strict requirements.procedures, without facing strict requirements.
15
Reaction from PPH UsersReaction from PPH Users
- User D- User DAs to the patent application filed in Japan, a patent right was granted As to the patent application filed in Japan, a patent right was granted without receiving a notice of rejection. without receiving a notice of rejection.
Then, we decided to use the U.S. accelerated examination system Then, we decided to use the U.S. accelerated examination system through the PPH while preparing necessary documents - followed by through the PPH while preparing necessary documents - followed by timely and efficient obtainment of a U.S. patent right. timely and efficient obtainment of a U.S. patent right.
Having acquired the U.S. patent right, we managed to start license Having acquired the U.S. patent right, we managed to start license negotiations with a U.S. company that said it would wait until the U.S. negotiations with a U.S. company that said it would wait until the U.S. patent was granted. Without being able to utilize the PPH framework, we patent was granted. Without being able to utilize the PPH framework, we would not have even started the negotiation yet.would not have even started the negotiation yet.
16
Future PlansFuture Plans
- Relaxation of PPH requirements- Relaxation of PPH requirementsConsideration of relaxing PPH requirementsConsideration of relaxing PPH requirementsPerhaps to be discussed in the next Plurilateral PPH meetingPerhaps to be discussed in the next Plurilateral PPH meeting
-PPH Joint SeminarPPH Joint SeminarPPH seminars in Japan and USPPH seminars in Japan and USJPO officials will attend the seminar in the U.S., and USPTO JPO officials will attend the seminar in the U.S., and USPTO officials will attend the seminar in Japan.officials will attend the seminar in Japan.
--Further Development of the PPH Portal SiteFurther Development of the PPH Portal Site