Patent Prosecution Highway JAPAN PATENT OFFICE

Transcription

1 Patent Prosecution Highway JAPAN PATENT OFFICE 0

2 Outline Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway (PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH Part II. Global PPH I. Background II. The scheme III. The procedure 1

3 I. Background Growing Demand for Work Sharing Changes in Patent Appl. Filed in the Whole World (Unit: 10 thou.) 2.35 mil. Search The number of applications filed in many offices is increasing mil an application Search Search Increasing duplicate work! Search Source: WIPO Industrial Property Statistics Growing Demand for Work Sharing 2

4 I. Background Efficiency of Work sharing Search Normal Case Duplicate Work.. Finished Search Work-sharing Case Utilization of Results! prior arts, office actions an application Search an application Refer to the results before searching Reduced examination workload 3

5 II. The scheme of Patent Prosecution Highway (PPH) 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. OEE (Office of Earlier Examination) Application A Grant Claims correspondence OLE (Office of Later Examination) OEE Examination History Refer Examination Work Sharing OLE examination burden can be lighten Office Merit Corresponding Application A PPH Request Accelerated Examination Applicant Merit 4

6 II. The scheme of Patent Prosecution Highway (PPH) Points of the PPH scheme Utilization of OEE examination results of application determined to be patentable. OLE claims correspondence to OEE claims determined to be patentable. Accelerated examination by OLE examiner. Workload reduction without sacrificing OLE examiner s right making a final judgment about patentability. 5

7 III. The benefit of the PPH Benefit Easing Examination Burden A. Optimized claim scope B. Utilization of OEE search/examination history C. Decrease in the number of office actions D. Quality improvement Workload Down Quality improvement Optimized claim scope Total Amount of Work in Examination PPH quality Utilization of the OEE examination results Decrease in the number of office actions Normal quality Quality Up Total Amount of Work in Examination Normal PPH 6

8 III. The benefit of the PPH Benefit for IPOs A. Optimized claim scope OEE (Office of Earlier Examination) OLE (Office of Later Examination) Scope to be searched shrinks. Claim Scope Optimized Patentable in OEE Claim Scope Claim Correspondence Not Patentable in OEE And in a lot of cases, the number of claims are decreasing. 7

9 III. The benefit of the PPH Benefit for IPOs B. Utilization of OEE search/examination history Example: Claims consists of parts A and B. I found A. OLE OEE examiner Claim correspondence OEE search/examination history OLE examiner Oh, A is already found. Let s search ONLY B! Office Actions of OEE 8

10 III. The benefit of the PPH Benefits for IPOs and Users C. Decrease in the number of office actions JP PPH - Average number of office actions PPH Appl. All Appl. For Users: Decrease in the number of office actions reduces applicant cost (e.g. attorney and translation fee). US CA KR DOWN! For IPOs: Decrease in the number of office actions saves examination time. TW Average number of office actions Period: Jan-Jun 2015 US : Jul-Dec 2014 / Figures including the number of PCT-PPH 9

11 III. The benefit of the PPH Benefits for IPOs and Users D. Quality Improvement In PPH scheme, the OLE can make additional search based on the OEE results. Therefore, examination quality of the OLE is guaranteed for at least the OEE level. In addition, the OLE examiners can learn the OEE examination/search practices via submitted OAs and cited prior arts. Search / Examination OLE Oh, this practice is good. OEE examiner Claim correspondence OEE search/examination history OLE examiner Option1: Utilizing OEE s result for efficiency. Option2: Additional search for higher quality. 10

12 III. The benefit of the PPH 1. High Grant Rate More PPH applications tend to be granted in each country and region. 2. Reduced Examination Period Average pendency from PPH request to First office action and Final decision is decreasing. 3. Cost saving High First Action Allowance Rate reduces costs to applicants (e.g. attorney and translation fees) % Grant Rate UP! Japan * U.S. ** Korea Canada *JP applications period : Jan. -Dec.2014 **US period : Jul.-Dec Average Pendency from PPH request to FA Month DOWN! Japan * U.S. Korea Canada *JP applications period : Jan.-Dec % First Action Allowance Rate UP! Japan U.S. Korea Canada All applications PPH applications Period : Jan.- Jun US PPH-Figures include PCT-PPH 11

13 IV. Types of the PPH scheme 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. OEE (Office of Earlier Examination) Application A Grant Claims correspondence OLE (Office of Later Examination) OEE Examination History Refer Examination Work Sharing OLE examination burden can be lighten Office Merit Corresponding Application A PPH Request Accelerated Examination Applicant Merit 12

14 IV. Types of the PPH scheme Under this pilot program, PPH request is eligible, whether or not the office which provides the examination results is the Office of First Filing (OFF). This PPH scheme is called PPH MOTTAINAI. OFF (Office of First Filing) Application A PPH Request Office of Later Examination (OLE) Accelerated Examination OSF (Office of Second Filing) Priority claim Corresponding Application A Grant Examination Refer OEE Examination History Claims correspondence Office of Earlier Examination (OEE) 13

15 IV. Types of the PPH scheme PCT-PPH is the PPH based on a PCT international work product. International Phase International Phase PCT Application PCT work products PCT work products Positive Opinion WO or IPER Positive Opinion WO or IPER National/Regional Phase DO Application A A DO Application B B PCT - DO Application C C PPH Request Accelerated Exam. 14

16 V. Various data of the PPH Office of First Filing Application Search/Examination Allowable Accelerated Exam. Office of Second Filing Application Request for PPH The number of PPH member offices The number of filings utilizing PPH system in the world EAPO, Indonesia, Nicaragua, Poland Brazil, Peru, Vietnam(Apr.) 39 Number of the offices China, Iceland, Israel, Mexico, NPI, Norway, Portugal, Sweden, Chinese Taipei Austria, Finland, Hungary, Russia, Singapore Japan, U.S. Spain Malaysia, Thailand Colombia, Czech Republic, Philippines Egypt, Estonia, Romania Number of cases 5 0 Korea, UK Australia, Canada, Denmark, EPO, Germany

17 Outline Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway (PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH Part II. Global PPH I. Background II. The scheme III. The procedure 16

18 I. Background NIPO (Norway) SIPO (China) IPOPHL (Philippines) IPO (Iceland) SIC (Columbia) JPO (JAPAN) USPTO (USA) KIPO (Korea) PPH is steadily developing! UKIPO (UK) As of 1st of September, 2012 CIPO (Canada) DPMA (Germany) IP Australia (Australia) TIPO (Taiwan) NPI (Nordic) ILPO (Israel) PRV (Sweden) INPI (Portugal) But the current condition is often called Spaghetti Bowl IMPI (Mexico) SPTO (Spain) HIPO (Hungary) APO (Austria) ROSPATENT (Russia) NBPR (Finland) IPOS (Singapore) DKPTO (Denmark) EPO (Europe) : PPH : PPH MOTTAINAI : PCT-PPH 17

19 I. Background Bilateral PPH arrangement has been increasing, and as a result, bundles of Bilateral Arrangements and Guidelines existed. Users have requested PPH requirement or procedures to commonalize. Current Condition.. (Bundles of Bilateral Arrangements and Guidelines) Plurilateral PPH One PPH arrangement One guideline Sometime in the future One Guideline 18

20 I. Background PPH participating offices have discussed about various approach in order to enhance the usability at Plurilateral Patent Prosecution Highway Working Level Meeting. This Meeting was held seven times until now, and 26 countries or authorities participated at the 7th Meeting. Discussion about Global PPH was performed at Plurilateral Patent Prosecution Highway Working Level Meeting. 4th, 5th Meeting at EPO 2nd, 3rd, 6th Meeting at JPO 1st Meeting at DKIPO 7th Meeting at IPOS 19

21 II. Scheme The launch of a Global PPH pilot program within the framework of multiple countries: this program was created by making use of common factors found in the PPH. It commenced on January 6, The Global PPH pilot program enables participating offices to effectively use all types of PPH systems (regular type PPH, the PPH MOTTAINAI, and the PCT-PPH), enhancing user-friendliness. The JPO works as the secretariat of Global PPH. ( PA2260@jpo.go.jp) Before launching Global PPH 17 offices at the start of Global PPH Global PPH (From January 6, 2014) Types of PPHs available to all participating offices: Regular PPH, PPH MOTTAINAI, and PCT-PPH

22 III. Procedure New offices wishing to join the GPPH pilot can apply to join on the 6th January or on the 6th July. In order to be eligible to join, an office must declare its interest in joining the GPPH to the Secretariat no later than two months before the above dates. Requests to join the GPPH should be accompanied by the standard letter, provided on the Office s headed paper and signed by the Head of Office. No later than 2 months 6th January No later than 2 months 6th July Join the GPPH Join the GPPH Letter Letter New offices Secretariat (JPO) New offices Secretariat (JPO) 21

23 V. Global PPH (GPPH) ~ c. Procedures Where two participating offices have a pre-existing bi-lateral PPH arrangement, the guidelines of the Global PPH pilot will take precedence over those of the existing bi-lateral arrangement for the duration of the pilot. Bi-lateral PPH Global PPH Participating Using the Global PPH guideline Office A Using the bi-lateral PPH guideline Participating Office B 22

24 Today s point PPH has a lot of benefits. By launching Global PPH, usability for users has increased. JPO promotes international cooperation to expand Global PPH. 23

25 Thank You! 24