Patent Prosecution Highway (PPH) FAQs

Contents

* In this FAQ page, "the other Office (the PPH-participating Office)" means "USPTO (United States Patent and Trademark Office), KIPO (Korean Intellectual Property Office), UK-IPO (UK Intellectual Property Office), GPTO (German Patent and Trademark Office), DKPTO (Danish Patent and Trademark Office), NBPR (National Board of Patents and Registration of Finland), ROSPATENT (Federal Service for Intellectual Property), APO (Austrian Patent Office), IPOS (Intellectual Property Office of Singapore), HIPO (Hungarian Intellectual Patent Office), CIPO (Canadian Intellectual Property Office), EPO (European Patent Office), SPTO (Spanish Patent and Trademark Office), PRV (Swedish Patent and Registration Office), IMPI (Mexican Institute of Industrial Property), SIPO (State Intellectual Property Office of the P. R. China), NIPO (Norwegian Industrial Property Office), IPO (Icelandic Patent Office), Intellectual Property Office of the Philippines (IPOPHIL), ILPO (Israel Patent Office), INPI (Portuguese Institute of Industrial Property) or TIPO (Taiwan Intellectual Property Office)"and " a country participating in a PPH with Japan" means "US, KR, UK, DE, DK, FI, RU, AT, SG, HU, CA, EP, ES, SE, MX, CN, NO, IS, PH, IL, PT, TW."

Japanese Page

1.Common to all PPH programs

Eligibility (Invention first patentable in foreign country)

Q1-1
(1)I first filed an application with the JPO and thereafter filed a corresponding application, which claims a Paris Convention priority based on the Japanese application, with the other Office . If the corresponding application (i.e., the one filed with the other party) is determined to be patentable but an examination has not yet begun for the application filed with the JPO, is the application in the JPO eligible for participation in the PPH?
(2) I filed applications for the same invention in (i) a country participating in a PPH with Japan and (ii) Japan, and both applications claim Paris Convention priority based on the application filed in the other country. If the application in the country participating in the PPH with Japan is determined to be patentable first, is the application in Japan eligible for participation in the PPH?

A1-1
Except for the case described below, the applications in both cases (1) and (2) are not eligible for participation in the PPH program. In the PPH program, an application determined to be patentable in a country participating in a PPH with Japan is eligible for participation in the PPH, and that patentable application forms the basis of Paris Convention priority for the corresponding application filed with Japan. The eligibility of an application is unrelated to an applicant's nationality. Even if the applicant is Japanese, when an application is first filed with the other Office in the PPH and then a corresponding application is filed with the JPO (i.e., corresponding JP application) based on the other Office's application, the corresponding JP application is eligible for participation in the PPH.

[Exception 1] If the IPOS application in case (2) uses the all-foreign approach and claims priority to the application of a prescribed office which is the KIPO, UK-IPO or USPTO, it is eligible for participating in the JP-SG PPH.

[Exception 2] If the corresponding application filed in the country which is either US, UK, FI, CA, RU or ES is determined to be patentable in the cases (1) and (2), the application is eligible for participating in the PPH from 15 July 2011.In addition, if the corresponding application filed in the EPO is determined to be patentable in the cases (1) and (2), the application is also eligible for participating in the PPH from 29 January 2012.

Eligibility (PCT national phase application)

Q1-2
(1) I filed a PCT application based on the national application of the other Office, and this application entered the national stage in Japan. If the basic application is first determined to be patentable in the other Office, is the application in Japan eligible for participation in the PPH?
(2) I filed a PCT application with the other Office as a Receiving Office without claiming priority to a national application. In case that the PCT application entered the national phase in Japan and the national phase application of the other country was determined to be patentable, is the application in Japan eligible for participation in the PPH?

A1-2
The application in both cases (1) and (2) are eligible for all of the PPH programs.
As the inverted case of (2), the national phase application of the other country except for Singapore is also eligible for the PPH programs if the national phase application in Japan was determined to be patentable.
With regard to the receiving office and international searching authority, we do not make any distinction according to country or region.

Eligibility (Timing of filing)

Q1-3
Is an application filed before the starting date of the PPH program eligible for participation in the program?

A1-3
An application filed before the starting date of the PPH program can be also eligible for participation in the PPH if the application satisfies the other requirements.

However, as for the request to the EPO for participating in the PPH pilot program between the JPO and the EPO, only an application that has been filed or has been entered the European regional phase respectively as of 29 January 2010 is eligible.

The object determined to be patentable

Q1-4
(1)　I filed an application directly with the other Office which claims priority from the Japanese application (JP1). In parallel with that, I filed a Japanese application (JP2) which claims internal priority from JP1. JP1 was deemed to be withdrawn. On the other hand, JP2 was granted a patent. In that case, is the application in the other Office eligible for the PPH?
(2)　I filed a PCT application (P1) which claims priority from the Japanese application (JP1) and designated a country participating in a PPH with Japan as well as self-designation. As P1 entered the national phase, JP1 was deemed to be withdrawn. In the meantime, the application (JP2), which entered the national phase, was granted a patent. In this case, is the application in the other Office eligible for participation in the PPH?
(3)　I filed an application with the other Office which claims priority from the Japanese application (JP1), and the divisional application of JP1 (i.e., JP2) was granted a patent. In this case, is the application in the other Office eligible for participation in the PPH?

A1-4
The applications in cases (1), (2), and (3) are eligible. In these cases, it is required that all the claims in the applications filed with the other Office correspond to the JP2 claims which were determined to be patentable. When you apply for participation in the PPH with the other Office, please write down the application number of both JP1 and JP2, as well as the relationship between JP1 and JP2.

Judgment of patentability

Q1-5
The application in the other Office, which forms a basis of priority, is determined to be patentable in the appeal procedure after a final rejection. Is the corresponding application in Japan eligible for participation in the PPH?

A1-5
The application is eligible. The decision of the appeal and all office actions in the other Office should be submitted to the JPO at the examination stage of the corresponding application in Japan.

Timing of amendment

Q1-6
The claims of the application in the other Office were determined to be patentable after amendment. So the claims of the corresponding Japanese application must also be amended to correspond to the patentable claims of the application in the other Office. By when should such claims be amended? When the request for participation in the PPH and the written amendment of the claims of the same application are submitted on the same date, is the request treated as a request submitted after the amendment?

A1-6
If a written amendment is submitted and received on or prior to the date on which a request for participation in the PPH program is submitted, the JPO treats the request as a request submitted after the amendment.

Omission of submission of JPO documents

Q1-7
When I file a request for participation in the PPH with the other Office, if the examiner in the country participating in the PPH with Japan can obtain Japanese prosecution documents via the Dossier Access System, it seems that I can save myself the trouble of submitting the office actions of the JPO (notification of reasons for refusal, decision to grant a patent, and so on) and claims determined to be patentable. Is there any way to know which application(s) and/or related document(s) can be obtained via the Dossier Access System.
JPO is currently negotiating with the USPTO to allow the applicant to skip submitting office actions and claims determined to be patentable if they are available via the Dossier Access System, but at the present time, the applicant needs to submit those documents.

A1-7
The JPO basically provides other Offices with the prosecution documents of a published application filed with the JPO in and from December 1990 via the Dossier Access System. Therefore, an applicant does not have to submit an office action of the JPO (notification of reasons for refusal, decision to grant a patent, and so on) and claims determined to be patentable. However, in the case that the application is not yet open to the public or that an examiner cannot obtain this information because of a technical problem, the applicant must submit the documents at the examiner’s request. When you would like to know if the prosecution documents are provided, please contact us via email (PA2260@jpo.go.jp) with the application number of the JPO application, which forms the basis of priority, and the type(s) of document(s) you would prefer not to submit. We will inform you whether the document(s) are provided via the Dossier Access System.

Omission of submission of written translation

Q1-8
Is there no need to submit a written translation of the office action of the JPO (notification of reasons for refusal, decision to grant a patent, and so on) and claims determined to be patentable to the other Office if these office actions are available via the Dossier Access System?

A1-8
At the present time, regarding a request for participation in the PPH submitted to the other Office (except for the CIPO, SIPO and IPO), you need not submit manual translations if the machine translations are available via the Dossier Access System.
When filing with the CIPO, you need not submit a manual translation of the office action of the JPO if the machine translation is available via the Dossier Access System. However, a manual translation of the claims determined to be patentable is needed even if the machine translation is available via the Dossier Access System.

Timing of the examination

Q1-9
One of the requirements for participation in the PPH is that the examination for the application has not yet begun.* Therefore, I would like to avoid the situation in which my application is examined during my preparation to request participation in the PPH. Is there any way to know when the examination for an application will begin?

* As the exception of this requirements in case regarding the filing of the request to the KIPO, DKPTO, NBPR, APO, HIPO, SPTO, PRV or INPI, the application is eligible for the PPH even if the examination in the respective Office has already begun.

A1-9
Regarding an application filed with the JPO, "the examination for the application has not yet begun" means that any of the following notifications has not arrived at the applicant.
- Notification of reasons for refusal (Patent Law, Section 50)
- Copy of decision to grant a patent (Patent Law, Section 52 (2))
- Notification regarding requirement for disclosure of information on prior art documents (Patent Law, Section 48-7)
- Directive for consultation in case of applications of the identical invention filed on the identical date (Patent Law, Section 39 (7))
You can roughly know the timing of the examination of applications filed with the JPO from http://www.jpo.go.jp/torikumi/t_torikumi/search_top.htm (Both pages are in the Japanese language.) Regarding an application filed with the USPTO, check the “status”of the application in Public PAIR (http://portal.uspto.gov/external/portal/pair), which is the online service of the USPTO. If the “status”is “Application Dispatched from Pre-Exam, Not Yet Docketed" or "Docketed New Case, Ready for Examination," the examination has not yet begun. If the "status" is "Non final Action Counted, Not Yet Mailed" or "Non Final Action Mailed," the examination has already begun.
Where an application has a restriction requirement, that application may still be eligible to participate in the PPH program since examination on the merits has not started yet. However, note that at this point, that application really does not need PPH because once applicant responds to the restriction requirement; the examiner will generally go out with a first action on the merits within 2 months from applicant's response to the restriction requirement.
Furthermore, the USPTO presents the average filing date of applications receiving a first office action in the last three months for each technical field in the weekly Official Gazette Notice (http://www.uspto.gov/web/offices/com/sol/og/j. You can roughly estimate the timing of an examination from this data. For example, you can see the data of the 36th week in 2009 from http://www.uspto.gov/web/offices/com/sol/og/2009/week36/TOC.htm#ref19

Comparison to the usual substantive examination

Q1-10
If an application is recognized as eligible for the PPH in the JPO, is the application going to be granted without a substantive examination?

A1-10
The PPH is a scheme which reduces the procedural burden for requesting an accelerated examination and expedites the examination of an application, but the substantive examination under the PPH is conducted according to the Japanese law and guidelines in the same way as a normal substantive examination. For this reason, the result of the examination in Japan is not necessarily the same as the result of the examination in the other Office.

Comparison to the usual accelerated examination

Q1-11
It's already possible for internationally-filed applications to receive an accelerated examination. The search result of a foreign office can be used as prior art in the “Explanation of Circumstances Concerning Accelerated Examination.”Which procedure for requesting an accelerated examination is omitted under the PPH?

A1-11
Under the current accelerated examination system for internationally-filed applications, an applicant is required to provide an explanation based on a comparison between the prior art and the claimed invention in the “Explanation of Circumstances Concerning Accelerated Examination.”The applicant is not required to provide this explanation under the PPH.

The FA period

Q1-12
When a request for participation in the PPH is accepted, to what extent is the examination accelerated? Is it accelerated more than a usual accelerated examination?

A1-12
The JPO processes an application under the PPH by conducting an examination according to the existing accelerated examination process. Therefore, there is no difference in the speed at which both types of examinations are conducted. In 2008, the average period from request for accelerated examination to first office action (i.e., FA period) was about 2.0 months.
Due to the internal office process, it might take more time to begin the examination of a PCT national stage application than national applications. To be more precise, if a PCT application is filed in Japanese at RO/JP and enters its national phase in or after April 2006, its examination can begin even before its international publication. Therefore, the examination of that application will begin soon after the request for accelerated examination is submitted and admitted.
The examination of a PCT application filed in foreign language will begin soon after the WIPO international bureau sends the IB documents and the documents are processed in JPO if the request for accelerated examination is submitted and admitted.
The examination of a PCT application filed at a receiving office other than RO/JP will begin soon after the WIPO international bureau sends the IB documents and the documents are processed in JPO if the request for accelerated examination is submitted and admitted.

Accelerated appeal examination

Q1-13
I filed a request for an Appeal against an Examiner’s Decision of Refusal regarding the application for which the request for participation in the PPH was accepted. Will the JPO process this application under the accelerated appeal examination without any request for it?

A1-13
Even if a request for participation in the PPH was accepted, it is necessary for an applicant to file a request for accelerated appeal examination when he/she desires his/her application to be processed under it.

2.Regarding the PPH program between the JPO and the USPTO

Eligibility (Request to the JPO)

Q2-1
1) I filed a U.S. application and a Japanese application based on a U.S. provisional application . If the U.S. application is determined to be patentable first, is the Japanese application eligible for participation in the PPH?
2) If a U.S. application derived from a U.S. basic application, e.g. divisional application, continuation application or continuation-in-part application, is determined to be patentable in the U.S., is the Japanese application eligible for participation in the PPH based on the patentable claims of the derived application?

A2-1
The applications in both cases (1) and (2) are eligible if the application determined to be patentable is derived from the U.S. basic application. In these cases, the following information should be written in [1. Circumstances] under “The explanation of circumstances concerning accelerated examination.”
- The application number of the basic application for priority
- The application number of the application which is determined to be patentable in the USPTO
- The relationship between the above applications

3.Regarding PPH between the JPO and the KIPO

Regarding an application for which an examination has already begun

Q3-1
Is an application for which an examination has already begun eligible for participation in the PPH?

A3-1
In the case that an application is first filed with the JPO and then filed with the KIPO based on the JP application, the application filed with the KIPO is eligible for the PPH even if the examination in the KIPO has already begun. Regarding the filing of the request to the JPO, the application for which an examination has already begun is not eligible for the PPH.

4.Regarding PPH pilot program between the JPO and the UK-IPO

Omission of submission of documents (Request to the JPO)

Q4-1
In the case of a Japanese application which claims priority from a UK-IPO application, is it permissible for an applicant not to submit the office actions (notification of reasons for refusal, decision to grant a patent, and so on) of the UK-IPO and claims determined to be patentable in the UK-IPO?

A4-1
If an applicant clearly states that he/she prefers the JPO to obtain the documents directly from the UK-IPO in [1. Circumstances] under “The explanation of circumstances concerning accelerated examination,” those documents need not be submitted by the applicant. However, if the application in the UK-IPO has not yet been published, the applicant must submit the documents.

5.Regarding PPH pilot program between the JPO and the GPTO, NBPR, ROSPATENT or APO

Omission of submission of documents (Request to the JPO)

Q5-1
In the case of a Japanese application which claims priority from a GPTO, NBPR, ROSPATENT or APO application, is it permissible for an applicant not to submit copies and translations of the office actions (notification of reasons for refusal, decision to grant a patent, and so on) and claims determined to be patentable?

A5-1
An applicant has to submit copies of office actions and patentable claims in the above case. Translations of office actions and patentable claims also have to be submitted along with them.

6.Regarding PPH pilot program between the JPO and the DKPTO

Omission of submission of documents (Request to the JPO)

Q6-1
In the case of a Japanese application which claims priority from a DKPTO application, is it permissible for an applicant not to submit the copies and written translations in Japanese or English of the office actions (notification of reasons for refusal, decision to grant a patent, and so on) of the DKPTO and claims determined to be patentable in the DKPTO?

A6-1
Regarding the copies of the office actions and claims, it is permissible for an applicant not to submit them if the dossier information is available via PVS online(http://onlineweb.dkpto.dk/pvsonline/patent?action=1&subAction=front&language=GB). Regarding the written translations of the office actions and claims, it is not permissible not to submit them because PVS online does not provide the English translations of the dossier information.

Regarding an application for which an examination has already begun

Q6-2
Is an application for which an examination has already begun eligible for participation in the PPH?

A6-2
Regarding the filing of the request to the DKPTO, the application is eligible for the PPH even if the examination in the DKPTO has already begun. Regarding the filing of the request to the JPO, the application for which an examination has already begun is not eligible for the PPH.

7.Regarding PPH pilot program between the JPO and the HIPO

Omission of submission of documents (Request to the JPO)

Q7-1
In the case of a JPO application which claims priority from an HIPO application, is it permissible for an applicant not to submit the office actions (notification of reasons for refusal, decision to grant a patent, and so on) of the HIPO and claims determined to be patentable in the HIPO, and their translations in English or Japanese?

A7-1
If an applicant clearly states that he/she prefers the JPO to obtain the documents directly from the HIPO in [1. Circumstances] under “The explanation of circumstances concerning accelerated examination,” those documents need not be submitted by the applicant. If the application in the HIPO has not yet been published, the applicant also must submit the documents. Even where office actions and patentable claims need not be submitted, the applicant must submit the translations of them.

8.Regarding PPH pilot program between the JPO and the CIPO

Omission of submission of documents (Request to the JPO)

Q8-1
In the case of a Japanese application which claims priority from a CIPO application, is it permissible for an applicant not to submit copies and translations of the office actions (notification of reasons for refusal, decision to grant a patent, and so on) and claims determined to be patentable?

A8-1
An applicant has to submit copies of office actions and patentable claims. Translations of office actions and patentable claims also have to be submitted along with them if those documents are written in French.

9.Regarding PPH pilot program between the JPO and the EPO

“Examination of the EP application has not begun”

Q9-1
It is said that in order to be eligible to participate in the PPH pilot programme in the EPO, examination of the EP application for which participation in the PPH pilot programme is requested must have not begun. Is it considered to be eligible to file a PCT-PPH request with the EPO after the Extended European Search Report (EESR) was issued?

A9-1
In this context, “examination of the EP application has not begun” means that substantive examination by the EPO examiner has not yet started. Therefore, it is considered to be eligible to file a PCT-PPH request even after the EESR was issued as long as this condition is satisfied.

Relevant date for a divisional application for which PCT-PPH is requested

Q9-2
When filing a PCT-PPH request with the EPO for a divisional application under scenario (E1), is it necessary that the filing date of its original application is on or after 29 January 2010?

A9-2
No, a divisional application filed on or after 29 January will be eligible for the PCT-PPH.

10.Regarding PPH pilot program between the JPO and the SPTO

Omission of submission of documents (Request to the JPO)

Q10-1
In the case of a Japanese application which claims priority from a SPTO application, is it permissible for an applicant not to submit the copies and written translations in Japanese or English of the office actions (written opinion of the report of the state of the art, decision to grant a patent, and so on) of the SPTO and claims determined to be patentable in the SPTO?

A10-1
An applicant doesn't need to submit copies of the report of the state of the art and written opinion of the report of the state of the art when they are published with publication of the SPTO application. Other than that, an applicant has to submit copies of office actions and patentable claims. Translations of office actions and patentable claims also have to be submitted along with them if those documents are written in Spanish.

Regarding an application for which an examination has already begun

Q10-2
Is an application for which an examination has already begun eligible for participation in the PPH?

A10-2
Regarding the filing of the request to the SPTO, the application is eligible for the PPH even if the examination in the SPTO has already begun. Regarding the filing of the request to the JPO, the application for which an examination has already begun is not eligible for the PPH.

11.Regarding PPH using PCT international work products (PCT-PPH)

Filing a PCT-PPH request with the JPO using PCT international work products from the JPO

Q11-1
Is it permissible to file a PCT-PPH request with the JPO using a written opinion or an international preliminary examination report established by the JPO as the ISA or IPEA?

A11-1
Yes. See the guideline here. In this case, only a claims correspondence is to be attached to “The explanation of circumstances concerning accelerated examination”.

PCT application which claims priority to an application filed with a third country

Q11-2
Is it permissible to file a PCT-PPH request based on a PCT application which claims priority to an application filed with an Office that is not implementing the PCT-PPH?

A11-2
As far as the ISA or the IPEA is a PCT-PPH implementing Office, you can file a PCT-PPH request whether or not the first filing as the basis of a priority claim is in a PCT-PPH implementing Office. For example, if the EPO is the ISA or the IPEA, you can file a PCT-PPH request with the JPO no matter where the first filing as the basis of a priority claim was made.

PCT application where the receiving Office is different from the ISA/IPEA

Q11-3
Is it permissible to file a PCT-PPH request where the receiving Office is different from the ISA/IPEA?

A11-3
As far as the ISA or the IPEA is a PCT-PPH implementing Office, you can file a PCT-PPH request regardless of the receiving Office. For example, you can file a PCT-PPH request with the JPO where the receiving Office is the International Bureau and the ISA or the IPEA is the USPTO.

PCT-PPH using an international search report

Q11-4
Is it permissible to file a PCT-PPH request using an international search report (ISR) if a written opinion of the ISA (WO/ISA) is not issued? (PCT international application filed before 1 January 2004)

A11-4
No, you cannot file a PCT-PPH request using an international search report (ISR). You can file a PCT-PPH request using a written opinion of the IPEA (WO/IPEA) or an international preliminary examination report (IPER) if any where the PCT international application was filed before 1 January 2004, unless otherwise restricted.

PCT application which entered the Japanese national phase early

Q11-5
Will a PCT application which entered the Japanese national phase before the international publication date be processed in an accelerated manner under the PCT-PPH?

A11-5
Yes. However, where a PCT application is filed with a receiving Office other than the JPO or a PCT application is filed with the JPO as receiving Office but written in a language other than Japanese, it will be processed after the JPO has received IB documents from the International Bureau of WIPO and the subsequent internal process has been completed.

[Last updated 11 April 2012]