Expanding of Eligibility for PPH in the JPO

Since the beginning of the PPH pilot program, many applicants have requested that eligibility requirements be eased. So the JPO revised the requirements based on a concept of the PPH. Applicants can file a request for the PPH in following cases.

1.Filing a PPH request with the JPO

Case 1:When an applicant has 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, the Japanese application is eligible for the PPH.

Case 2:When 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., the Japanese application is eligible for the PPH based on the patentable claims of the derived application.

The applications in both cases are only eligible for the PPH when 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]of
"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
  

2.Filing a Request with the USPTO

(1)An application in the U.S. is eligible for the PPH in the USPTO, in the case that the following exist: (1) a US application claims priority to a Japanese application (JP1), (2) a Japanese application (JP2) derived from the JP1 application that has claims which were determined to be patentable by the JPO examiner, and (3) the claims in the US application sufficiently correspond to the patentable claims of the JP2 application.

In this case, please indicate that the decision to be patentable is from the application (identify the JP2 application number) and that the JP2 application is, for example, a divisional application of the JP1 application (identify the JP1 application number) for which priority is claimed by the US application somewhere under the page 1 item, I.a. (copy of all JPO office actions) of the request form for the PPH to the USPTO (PTO/SB/20 form).

(2)A JPO examiner will identify patentable claims in the Notice of Reasons for rejection (the non-final notice of reasons for rejection, the final notice of reasons for rejection) drafted on or after December 1, 2006.
The JPO examiner will write down following sentences at the end of the remarks and just above the list of cited documents.
For the claims ( ), no Reason for refusal is found, at present.
If any reason(s) for the refusal is found later, it will be notified.
The USPTO will start accepting a request for the PPH based on patentable claims which are explicitly identified in the Notification of Reason for Refusal of the JPO by December 1. It is necessary to make all the claims of the US application sufficiently correspond to the claim for which no Reason for refusal is found.

"The Procedure to file a Request for the PPH Pilot Program between the JPO and the USPTO"

[Last updated 22 November 2006]

Contact

Examination Policy Planning Office Administrative Affairs Division First Patent Examination Department Japan Patent Office Tel: +81-3-3581-1101 (ex. 3103) E-mail: PA2260@jpo.go.jp