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Commencement of the PCT-Patent Prosecution Highway pilot program between the Japan Patent Office and the Korean Intellectual Property Office

The Japan Patent Office (JPO) and the Korean Intellectual Property Office (KIPO) have been implementing the Patent Prosecution Highway (PPH)*1 pilot program since April 2007. It is now agreed that the eligible applications for PPH will be expanded, and that the pilot program for the Patent Prosecution Highway based on the Patent Cooperation Treaty application (PCT application)*2 (PCT-PPH)*3 will be started from July 1 this year. With the start of the PCT-PPH pilot program between the JPO and the KIPO based on this agreement, it becomes possible to use the PCT-PPH program between the JPO and any other office of the five largest patent offices in the world, namely Japan, U.S., Europe, China and Korea, which in total handle about 80% of the world's patent applications.

Thus, it is expected that the convenience of Japanese and Korean users will further increase, such as the number of cases where accelerated examination becomes available when filing a patent application from Japan to Korea.

1. Background

With the globalization of the economy, there is a growing tendency to acquire patents on the same invention in multiple countries. As a result, the number of patent applications is increasing worldwide, and the period necessary for examination is becoming longer. Thus, the JPO promotes the Patent Prosecution Highway (PPH) to shorten the period necessary for applicants to acquire patent rights abroad, to provide high-quality protection of rights, and to reduce the burden of examination.

On the other hand, 14,346 patent applications are filed a year from Japan to the KIPO, and 8,875 among them are filed by using the PCT application system (2010). PCT applications accepted by the JPO are significantly increasing; for example, the number for last year increased by 20.5% from the previous year to 37,974. It is expected that the number of patent applications from Japan to the KIPO using the PCT application system will increase in the future.

2. The PCT-PPH pilot program between the JPO and the KIPO

The JPO and the KIPO have been implementing the PPH pilot program since April 2007. Both patent offices reached an agreement to start the PCT-PPH pilot program from July 1 this year so as to further increase the convenience for users. Previously, only if applications were determined to be patentable in the domestic examination by the JPO or the KIPO, applicants were able to file a request for the PPH to the KIPO or the JPO. However, with this agreement, it becomes possible to file a request for the PPH to the KIPO or the JPO if the PCT applications have received a positive written opinion from the JPO or the KIPO as the International Searching Authority or the International Preliminary Examining Authority.

3. Future prospects

With the start of the PCT-PPH pilot program between the JPO and the KIPO based on this agreement, it becomes possible to use the PCT-PPH program between the JPO and any other office of the world's five largest patent offices, namely Japan, U.S., Europe, China and Korea, which in total handle about 80% of the world's patent applications, and it is expected that work sharing among the five largest patent offices is further promoted.

The JPO will continuously work for the expansion of the country and cases covered by the PPH and the standardization and simplification of the procedure, and will support applicants' early acquisition of patents abroad. At the same time, it will seek to enhance the use of the examination results of other patent offices in order to improve the examination quality and reduce the workload of patent examiners.

*1 Patent Prosecution Highway (PPH): A scheme whereby patent applicants whose applications have been determined as patentable by a patent office are entitled to request, through a simple procedure, an accelerated examination of the corresponding applications in another patent office.

*2 PCT application: PCT applications are international patent applications filed under the Patent Cooperation Treaty (PCT). By filing a single PCT application, an applicant can achieve the effect of simultaneously filing it in a plurality of PCT member states that he/she designates. Since these applications are examined for patentability by the International Searching Authority or the International Preliminary Examining Authority designated by the PCT, with the results published, patent offices can refer to official opinions presented therein during their domestic examination of corresponding applications.

*3: PCT-PPH: A framework that allows an applicant to apply for a fast-track examination based on a written opinion prepared by a specific International Searching Authority or a specific International Preliminary Examining Authority or positive opinion of patentability in an international preliminary examination report.

Details of the PPH program based on PCT application

Release Date

June 5, 2012

Division in Charge

Examination Policy Planning Office, Administrative Affairs Division, First Patent Examination Department; International Affairs Division, General Affairs Department, Japan Patent Office

 
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