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IP News Flash

The Trilateral offices of JPO, USPTO and EPO to Expand Eligibility For a Pilot Patent Prosecution Highway Program by Sara Rosengard

Beginning January 29, 2010, the Trilateral Offices of JPO, USPTO and EPO started a pilot Patent Prosecution Highway program to include PCT-based applications. Participation is now based on positive results attained from partnering offices acting as a sanctioned International Searching Authority (ISA), and International Preliminary Examining Authority (IPEA). The application will be eligible for participation if judged patentable by these authorities based on their international search report, written opinion, and international preliminary examination report.

Until now, search and examinations were limited to the use of patentable results of applications which had a) a priority claim from an office of first filing under the Paris Convention, or b) a PCT national stage application in which an office of second filing used the allowable results from an office of first filing.

PPH’s work sharing program promotes speedy acquisitions of patents by using the search and examining results of other participating offices. The new guidelines for the PPH have made it so an application does not have to have a priority claim with another international office and have enlarged the number of qualifying applications.

However, Japan already has an expedited examination system called the Accelerated Examination System (AES) which is comparable to, if not more convenient than, the PPH. The AES neither requires an application to have a priority claim with another international office, nor does it require all claims in the application to correspond to the claims already determined to be patentable. The pending time between AES and the PPH, from time of application to time of grant, is also comparable. All in all, it is our opinion the new guideline for a PPH does not give the program a significant advantage over the AES. However, determinations need to be made on a case by case basis, and we recommend that you consult a Japanese patent specialist to assess which expedited examination system best suits your needs.