In 2006, Japan called for the establishment of the Patent Prosecution Highway (PPH),*1 the membership of which has expanded to 30 countries and regions. Aiming to make the procedures taken under the PPH more convenient, the Japan Patent Office (JPO) and other intellectual property (IP) offices in 12 countries and regions have decided to commence the Global Patent Prosecution Highway (GPPH) in January 2014. This will enable Japanese enterprises to enjoy accelerated examination of their state-of-the art technologies at IP offices in other member countries.
As the globalization of economies is expanding, the number of international patent applications is also growing, from about 1.44 million in 2002 to about 2.14 million in 2011. In line with this trend, the number of such applications that Japanese enterprises and entities file with overseas IP offices is also rapidly increasing, from about 120,000 in 2002 to about 190,000 in 2011.
Aiming to support applicants in Japan in promptly acquiring patent rights overseas, the JPO called for the establishment of the PPH and launched it between Japan and the U.S. in 2006 as a pioneering effort in the global IP area. Since then, the JPO has been making efforts to strongly promote the PPH in other countries, and has expanded the PPH framework to cover 30 countries and regions worldwide as of November 2013. In addition, the JPO has also been endeavoring to make the PPH more convenient for applicants, including by commencing the PCT-PPH program,*2 which covers international patent applications (PCT applications*3), and the PPH MOTTAINAI*4 program, under which an applicant can make PPH requests at the Office of Later Examination (OLE) by using the examination results of the Office of Earlier Examination (OEE).
However, as there are various types of PPH programs between member countries, applicants become confused about which PPH program is available in which country, and this variety increases the complexity of the PPH; for example, in some cases the applicant is able to file an application under the PCT-PPH program in the U.S. but not in the UK.
2. Global Patent Prosecution Highway Pilot program
The JPO and IP offices in 12 countries and regions, namely, the U.S., the ROK, the UK, Denmark, Finland, Russia, Canada, Spain, the Nordic Patent Institute (NPI), Norway, Portugal, and Australia (the countries’ respective programs with Japan were launched in that order) have decided to commence the Global Patent Prosecution Highway (GPPH). Under the GPPH, the various types of available PPH programs are harmonized so as to provide a framework among the member countries.
Applicants who file applications with IP offices participating in the GPPH framework will be able to enjoy all the PPH programs, and this framework will provide such applicants with a simpler procedure that does not require them to identify which program is available for them. Through future expansion of the GPPH framework, the PPH is expected to become a more convenient system for applicants.
As additional information, the arrangement on the GPPH among these countries will achieve the following effects for applicants in Japan:
- Applicants will be able to use all the PPH programs at the IP office in Australia, a new member country.
- Applicants will be able to use more of the various types of PPH programs for applications filed with IP offices in Canada, the UK, the ROK, and Norway.
The arrangement has brought the number of countries and regions that have concluded a PPH with Japan to 28. The JPO will endeavor to expand the PPH membership as well as to harmonize and simplify the PPH procedures between IP offices overseas. By doing so, it will support applicants in Japan in promptly acquiring patent rights overseas.
- Under the Patent Prosecution Highway (PPH), applications judged to satisfy requirements for patentability at the IP office where the applicant filed the first application (e.g., Japan) can request an accelerated examination at a different IP office where the applicant secondly filed the same application (e.g., the U.S.), which will be carried out more quickly than applications filed by ordinary examination procedures.
- PCT-PPH: Under this program, applicants are able to request an accelerated examination based on a positive opinion of patentability prepared by a specific International Searching Authority or stated in an international preliminary examination report.
- PCT applications: 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 multiple PCT member states.
- PPH MOTTAINAI: Under this system, applicants are able to use a PPH program for their applications based on a positive opinion of patentability determined by an IP office among member countries of the program, regardless of which country the applicant filed the application in first. In the previous PPH procedure, applicants were able to request an accelerated examination based only on a positive examination result prepared by the IP office where the applicant filed the first application (office of first filing).
For more information on the PPH, please visit the following website:
November 1, 2013
Division in Charge
Examination Policy Planning Office, Administrative Affairs Division, Patent and Design Examination Department, JPO
International Policy Division, Policy Planning and Coordination Department, JPO