The expansion of eligible applications for PPH pilot program to PCT applications

Since the beginning of the PPH pilot program, many applicants have strongly requested that eligible applications be expand to PCT route applications.
The JPO and the USPTO recently agreed to meet these requests and permit certain applications based on PCT filings to qualify for participation in the PPH pilot program (Herewith the objective of the PPH is (will be) standardized between the PPH with KIPO, started in April, 2007, and the PPH with UKIPO, will start in July 2007.).
After today a national stage application under the PCT international application may be eligible to participate in the PPH pilot program. However, please note that it is still required that "claims in the national application in the office of first filing・should be determined to be patentable.

1.Filing a PPH request with the JPO

(1)When an applicant has filed a PCT application claiming priority to a U.S. national application, national stage application in the JPO is eligible for the PPH if claims are correspond to the claims which determined to be patentable in the USPTO.

The application which contains the claims determined to be patentable is not only an application which forms a basis of priority, but also　a divisional or continuation application of that. In this case, 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 has claims determined to be patentable in the USPTO
  
• The relationship between the above applications
  

2.Filing a PPH request with the USPTO

(1)When an applicant has filed a PCT application claiming priority to a JP national application, national stage application in the USPTO is eligible for the PPH if claims are correspond to the claims which determined to be patentable in the JPO.

(2)When an applicant has filed a PCT application claiming priority to a JP national application, continuation application of the PCT application etc. (so-called "bypass・application) in the USPTO is eligible for the PPH.

Both in case (1) and (2), the application which contains the claims determined to be patentable is not only an application which forms a basis of priority, but also a divisional application of that or an application which claims internal priority to that. In this case, the following information should be indicated on the form, PTO/SB/20, "Request for Participation on the Patent Prosecution Highway (PPH) Pilot Program between　the JPO and the USPTO・

• The application number of the basic application for priority
  
• The application number of the application which has claims determined to be patentable in the JPO
  
• The relationship between the above applications
  

The USPTO's Official Gazette about this revised requirement

Revised Requirements for Requesting Participation in the Patent Prosecution Highway Pilot Program in the USPTO(PDF:145KB)

Patent Prosecution Highway between the JPO and the USPTO

[Last updated 18 May 2007]

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