Various WIPO, USPTO and JPO sources are the basis of this article and series. In case you are not familiar, from the WIPO home page or the JPO homepage you’ll find links to a wealth of information on the Patent Prosecution Highway (PPH) and other Patent and IP matters. The PPH is speeding multi-country patent examinations.
Kimura & Partners regularly posts important Japan IP News in its blog.
An Introduction
In this Japan IP News post, we introduce the Patent Prosecution Highway (PPH), its connection to the Patent Cooperation Treaty (PCT) and some recently introduced improvements made by the the USPTO and JPO – the two largest participants (number of applicants) in the PPH.
Surely, the Patent Prosecution Highway (PPH) is a very important enhancement of the patent system, globally. Over 55 countries are participants in the PPH. The JPO defines the PPH as:
a fast-track examination framework that enables users to make a simple request to accelerate the examination of a patent application pending at an Office (Office of later examination) when a corresponding application has been found allowable/patentable by another Office (Office of earlier examination).
Of course, there is the more fundamental and broadly applicable Patent Cooperation Treaty (PCT), in which there are now 156 member countries. WIPO defines the PCT thusly:
The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”.
The PPH, then, complements the PCT but focuses entirely on speeding the process of seeking multi-jurisdictional patent protection. For greater detail, and hopefully not confusion, we point out that there are in fact, the PCT-Patent Prosecution Highway Program (PCT-PPH) and the Global PPH. Details of work-sharing initiatives among global Patent Offices are here.
Improvements Implemented in January 2022: As Stated By The JPO and the USPTO
The Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) intend to further improve their Patent Prosecution Highway (PPH) programs. Some 30% of all global PPH applications having been filed with the JPO or the USPTO in 2020, “the two Offices continue to lead the promotion of the PPH as the original initiators of this innovative scheme, which began in 2006.”
In order to further improve the user experience under PPH, the two Offices will each set a target deadline for issuing office actions for PPH applications and strive to meet the target as they examine each application, making it easier for users to predict the timing of examination.
More specifically, to ensure that the original goals of the PPH are achieved, both Offices will set the targets below for the extent to which examination is accelerated under the program, i.e. time
taken to issue an office action under the PPH after the examiner can start examination upon a PPH request or the applicantʼs response to an office action.
The JPO’s dedicated PPH website, contains significant information to help visitors to gain a better understanding of the PPH, the global network of PPH members and statistics relating to PPH requests and even the rate of application grants (acceptances).
From a Japanese perspective, in 2021, here are some highlights:
- 6480 PPH requests with JPO (Japan) as the Office of Earlier Examination (OEE)
- 3950 PPH requests with JPO (Japan) as the Office of Later Examination (OLE)
The First Action Allowance Rate highlights the effectiveness of the PPH:
- The USPTO and the JPO have relatively low rates at 14.1% and 15.1% respectively. For those, the average waiting times are 5 months and 10 months respectively.
- Some countries reporting very high rates include Saudi Arabian Malaysia and Singapore over 65%, and Israel and Mexico at about 60%.
Without any doubt, the PPH is speeding multi-country patent examinations.
