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The Japan Patent Office Commencement of the Patent Prosecution Highway Program between Japan and Brazil/Chile Accelerated acquisition of patent rights to be available in Brazil and Chile as well

The Japan Patent Office (hereinafter referred to as the “JPO”) agreed to start the Patent Prosecution Highway (PPH) program* with the National Institute of Industrial Property of Brazil (hereinafter referred to as the “INPI”) on April 1, 2017, and with the National Institute of Industrial Property of Chile (hereinafter referred to as the “INAPI”) on August 1, 2017. Considering Argentina with which the PPH agreement has already been concluded, the JPO will start new PPH partnerships with two countries in South America, i.e., Brazil and Argentina, on April 1, 2017.

This effort will allow Japanese companies to obtain patent rights in these countries in an accelerated manner.

1. Background

Countries in South America are famous for their abundant energy and resources and have been attracting global attention for their huge market scales due to large population. In particular, in recent years, Brazil, a country boasting the largest economic scale and population in South America, has been achieving dramatic economic development, and many Japanese companies have been developing business mainly in the automobile and other manufacturing industries. Along with this business expansion, the number of patent applications filed by Japanese companies in Brazil has increased over three times in this decade.

Meanwhile, INPI is facing a serious problem with delays in patent examination procedures. Currently, INPI requires over 10 years on average from receiving an application from applicants to sending a notice of the first examination result to them. In this situation, the JPO has been receiving many requests from Japanese companies to start a PPH program between the JPO and INPI so they are able to acquire patent rights in Brazil in an accelerated manner.

2. Outline of the PPH pilot program with INPI and INAPI

1) PPH pilot program with INPI

On March 16, 2017, the JPO and INPI held a commissioners’ meeting in Sao Paulo and agreed to start the PPH pilot program on April 1, 2017. Characteristics of the JPO-INPI PPH program are as follows:

  1. Period of the pilot program
    • Both sides will accept applications filed under the PPH program (hereinafter referred to as the “PPH applications”) for two years from April 1, 2017, or until reaching 200 applications filed with each office.
  2. Technical fields of applications eligible for the PPH program
    • INPI will accept PPH applications concerning the following technical fields: IT and machinery, mainly for automobile-related technologies. Meanwhile, the JPO will accept any PPH applications, not limited to technical fields.
  3. Number of PPH applications that an applicant is able to file
    • INPI will accept up to six PPH applications per applicant for four months. However, the office will remove the limit for four months before the end of the PPH pilot program, i.e., from December 2018 to March 2019. Meanwhile, the JPO will not limit the number of PPH applications per applicant and will accept any such applications.

2) Outline of the PPH pilot program with INAPI

On March 14, 2017, the JPO and INAPI held a commissioners’ meeting in Santiago and agreed to start the PPH pilot program on August 1, 2017.

Moreover, the JPO and the National Institute of Industrial Property of Argentina will start the PPH pilot program on April 1, 2017.** As a result of the start of the PPH program with Brazil, Argentina and Chile, the number of JPO’s partner IP offices overseas under the PPH program comes to 38. The JPO will release details of the PPH program between Japan and Brazil, Argentina and Chile on its website upon the start of the respective PPH programs.

3. Advantages that Japanese companies may enjoy through the start of the PPH program between the JPO and INPI/INAPI

If applicants file PPH applications with INPI or INAPI, INPI and INAPI will examine such applications in an accelerated manner prior to other applications. In particular, if Japanese companies utilize the PPH program and file PPH applications with INPI, facing a problem with delays in patent examination procedures, they will be able to acquire their patent rights in Brazil in an accelerated manner, thereby encouraging them to smoothly develop their business in the country.

Notes
*1: The PPH program enables an applicant whose application has been determined to be patentable by the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon request from the applicant on the basis of bilateral office agreements. The JPO also started the PPH program with Columbia, South America, in September 2014.

**2: News release on October 7, 2016:

Release date

March 17, 2017

Division in Charge

Examination Promotion Office, Administrative Affairs Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure and Design), JPO

Ministry of Economy, Trade and Industry1-3-1 Kasumigaseki, Chiyoda-ku, Tokyo 100-8901, Japan Tel: +81-(0)3-3501-1511
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