Patent Prosecution Highway -Mottainai Takaki Nishijima Nakamura & Partners

Patent Prosecution Highway
-Mottainai
January, 2012
AIPLA MWI in Las Vegas
Takaki Nishijima
Nakamura & Partners
E-mail:t_nishijima@nakapat.gr.jp
http://www.nakapat.gr.jp
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Applications among countries/region (2005)
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Applications among countries/region (2006)
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Applications among countries/region(2008)
Applications among countries/region (2009)
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The number of PCT applications for each country
(between 2006 and 2010)
SWISS
SWEDEN
SWEDEN
CHINA
OTHERS
SWISS
OTHERS
USA
USA
HOLLAND
HOLLAND
UK
UK
FRANCE
SOUTH KOREA
JAPAN
JAPAN
FRANCE
GERMANY
SOUTH KOREA
CHINA
GERMANY
The number of applications filed worldwide
×10,000
Filed by foreigners
Filed by domestic residents
More than 40%
were filed by
foreigners
The number of applications
filed by foreigners and Japanese before JPO
×10,000
Filed by foreigners
Filed by Japanese
The number of applications
filed by domestic residents and foreigners before USPTO
×10,000
Filed by foreigners
(except for Japanese)
Filed by Japanese
Filed by domestic
residents
The number of applications
filed by domestic residents and foreigners before EPO
×10,000
Filed by foreigners
(except for Japanese)
Filed by Japanese
Filed by residents in
EPC countries
The number of applications
filed by domestic residents and foreigners before SIPO
×10,000
Filed by foreigners
(except for Japanese)
Filed by Japanese
Filed by domestic
residents
The number of applications
filed by domestic residents and foreigners before KIPO
×10,000
Filed by foreigners
(except for Japanese)
Filed by Japanese
Filed by domestic
residents
Level of Inventive Step （Recent Trend as of 2010 ）
Inventive Step (High)
TEACH
AWAY
IP High Court (past)
JPO 2000 guideline(present)
OBVIOUS TO TRY
IP High Court (recent)
JPO 1993 guideline(past)
EPO(2010)
EPO
USPTO (After KSR)
USPTO (Before KSR)
Inventive Step (Low)
MOTIVATION
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Patent Prosecution
Highway
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Patent Prosecution Highway
Portal Site
Expanding PPH Network
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OUTLINE
The purpose of PPH is to facilitate an applicant's
acquisition of a patent at an early stage worldwide
and to enhance the utilization of search and
examination results among the world's major IP
Offices so as to reduce the burden of examination
and to enhance the quality of examination
worldwide.
PPH enables an application with claims determined
to be patentable in the Office of First Filing (OFF)
to undergo an accelerated examination in the
Office of Second Filing (OSF) with a simple
procedure upon request for PPH by an applicant.
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FILING A REQUEST FOR PPH
An application is granted in Office of
First Filing (OFF) to file a request for PPH
with the JPO as Office of Second Filing
(OSF) for PPH
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Requirements for PPH
using U.S. National Work Products

Corresponding U.S. application has claim(s) determined to be
allowable by the USPTO.

All claim(s) in the JP application must sufficiently correspond to
the allowable claim(s) in the U.S. application
– format difference (dependent->independent) : OK
– limiting claim scope (A -> A+B)
: OK
– category change (method -> apparatus)
: Not OK

The JPO has not begun examination of the
application.
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Eligibility for PPH -- Case (1)
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Eligibility for PPH -- Case (2)
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Eligibility for PPH -- Case (3)
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Eligibility for PPH -- Case (4)
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Eligibility for PPH -- Case (5)
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4 requirements
a. The application in the OSF validly claims priority from an
application in the OFF*.
b. The application in the OFF has at least one claim already
determined to be patentable.
c. All claims in the OSF application sufficiently correspond to
the claims already determined to be patentable in the OFF.
d. The application in the OSF has not yet been examined**.
* In the case of the USPTO, the UK-IPO or the DKPTO, national
stage application of PCT without priority claim is also eligible.
** In the case of the KIPO or the DKPTO as the OSF, an
application which has already been examined is also eligible.
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4 required documents
A table listing and containing an explanation
of the sufficiently corresponding claims
A copy of the claims already determined to be
patentable in the OFF
Copies of all office actions of the OFF
Copies of references cited by the OFF
examiner
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・Qualities of applications under the AE are better than that under regular examination.
・Applicants under the AE pursue granting of a patent in a serious manner.
・JPO does not intentionally increase the grant rate of applications under the AE.
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Material from JPO: Annual Report
Number of Request of PPH
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Material from JPO: Annual Report
PPH MOTTAINAI Pilot
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PPH MOTTAINAI Pilot
To make the PPH program more user-friendly
and available for patent applicants, the PPH
MOTTAINAI Pilot will launch on 15 July, 2011.
The pilot which include the JPO (Japan), USPTO
(USA), UK-IPO (UK), CIPO (Canada), IP
Australia (Australia), NBPR (Finland),
ROSPATENT (Russia) and SPTO (Spain) will
ease the requirements for requesting patent
examinations.
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Material from JPO: PPH Portal Website
PPH MOTTAINAI Pilot
Case 1: OSF (Office B) provides the examination result to the OFF (Office A).
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Material from JPO: PPH Portal Website
PPH MOTTAINAI Pilot
Case 2: OFF is other than Office A or Office B.
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Material from JPO: PPH Portal Website
PPH MOTTAINAI Pilot
Pilot Period for the PPH MOTTAINAI Pilot
The PPH MOTTAINAI pilot will commence on 15 July, 2011,
for a period of one year ending on 14 July 2012. The pilot period
may be extended if necessary. The offices will bilaterally
determine whether and how the program should be fully
implemented at the end of the pilot period. The offices may also
terminate the PPH pilot program early if the volume of
participation exceeds manageable level, or for any other reason.
Notice will be published if the PPH pilot program will be
terminated before 14 July 2012. Any decision regarding extension
and termination of the pilot affects only the respective bilateral
offices concluding agreements.
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Material from JPO: PPH Portal Website
Summary Table of PPH
*Two orange boxes mean PPH arrangement is available between the two offices
** "MOTTAINAI" is a Japanese term meaning "a sense of regret concerning waste when the intrinsic value of an object or
resource is not properly utilized."
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It is said that its concept is made up by Reuse, Recycle, Reduce and Respect.
Material from JPO: PPH Portal Website
Thank you !
Takaki Nishijima
Nakamura & Partners
E-mail:elec@nakapat.gr.jp
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