Patent Prosecution Highway using PCT international work products

Examination Policy Planning Office

The JPO has commenced the PPH programs using the PCT international work products (PCT-PPH) on pilot basis since 29 January 2010 with the United States Patent and Trademark Office (USPTO) and the European Patent Office (EPO). From 1 July 2010, the JPO commence the PCT-PPH pilot program with National Board of Patents and Registration of Finland (NBPR). From 1 October 2010, the JPO commence the PCT-PPH pilot program with the Spanish Patent and Trademark Office (SPTO). From 1 June 2011, the JPO commence the PCT-PPH pilot program with the Swedish Patent and Registration Office (PRV). From 1 July 2011, the JPO commence the PCT-PPH pilot program with the Mexican Institute of Industrial Property (IMPI). From 1 October 2011, the JPO commence the PCT-PPH pilot program with the Danish Patent and Trademark Office (DKPTO) and the Nordic Patent Institute (NPI). From 1 November 2011, the JPO commence the PCT-PPH pilot program with the State Intellectual Property Office of the P. R. China (SIPO).

Under these programs, an accelerated examination can be requested using a written opinion established by certain International Searching Authorities (WO/IPA), a written opinion established by certain International Preliminary Examining Authorities (WO/IPEA) or an international preliminary examination report (IPER) established by certain International Preliminary Examining Authorities.

The applicant can request participation in the PCT-PPH to the JPO where any of the following Offices is the chosen International Searching Authority or International Preliminary Examining Authority:

The Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the National Board of Patent and Registration of Finland (NBPR), the Spanish Patent and Trademark Office (SPTO), the Swedish Patent and Registration Office (PRV) Nordic Patent Institute (NPI) and the State Intellectual Property Office of the P. R. China (SIPO).

【Major requirements for the participation in PCT-PPH】

(1)At least one claim is determined/indicated to be allowable/patentable^*1 in WO/ISA, WO/IPEA^*2 or IPER

(2)All claims on file for examination under the PCT-PPH sufficiently correspond to those claims determined/indicated to be allowable/patentable in WO/ISA, WO/IPEA^*2 or IPER

(3)Examination of the application which the PCT-PPH is requested for has not been begun^*3

*1 Claim(s) are indicated to have novelty, inventive step and industrial applicability (See each guideline where any observation is described in Box Ⅷ). See guidelines below for further details.

*2 Not eligible when filing with the EPO.

*3 When filing with the SPTO, the PRV or the DKPTO, eligible even after examination of the application has begun.

PCT-PPH guidelines and request forms where the JPO is the chosen International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) are listed below. (See also each PPH program’s page. When filing a PCT-PPH request with the JPO based on other Office’s PCT international work products, see guidelines and request forms listed under “Patent Prosecution Highway Requests to the JPO” on each PPH program’s page.)

PCT-PPH where the JPO is the ISA or IPEA

・Requests to the JPO

Guideline (Requirements and procedures in detail) (Japanese <PDF 195KB>) (English <PDF 190KB>)

Request form (Explanation of circumstances concerning accelerated examination)

・Requests to the USPTO

Guideline (Requirements and procedures in detail) (Japanese <PDF 232KB>) (English <PDF 4,418KB>)

The sentence “The PCT-PPH pilot program will commence on January 29,　2010, for a period of two years ending on January 28,　2012” is described on this guideline, but this pilot program is extended until 28 January 2014.

Request form Request form of USPTO <PDF 664KB>

・Requests to the EPO

Guideline (Requirements and procedures in detail) (Japanese <PDF 173KB>) (English <PDF 598KB>)

Request form (EPC proceedings - forms)

・Requests to the NBPR

Guideline (Requirements and procedures in detail) (Japanese <PDF 261KB>) (English <PDF 151KB>)

Request form (Microsoft® Word version <DOC 39KB>)

・Requests to the SPTO