The result of the 2nd Plurilateral Patent Prosecution Highway Meeting

The 2nd Plurilateral Patent Prosecution Highway (PPH) Meeting at the Heads of Office Level was held in Geneva on September 24. Intellectual property offices and organizations from 22 countries/regions, including Japan, gathered to discuss ways to improve the usability of the PPH. As a result, the Heads of Offices affirmed the matters on which a basic agreement was reached at the Working-Level Meeting in May and agreed to continue with discussion in order to make the PPH more convenient for applicants.

Background

The expansion of global activities of business entities has resulted in the growing need for the acquisition of patent rights in a plurality of countries, creating the situation where the same invention is filed at various Patent Offices around the world. This has led to an upsurge in the number of patent filings and longer prosecution times worldwide.

Patent Offices across the world face the common challenge of expediting the examination process and improving user convenience by eliminating the redundant work of examining the same applications at different Offices.

Under these circumstances, the Japan Patent Office (JPO) proposed the Patent Prosecution Highway (PPH), a bilateral framework whereby the office of second filing refers to the examination results of the applications determined to be patentable in the office of the first filing, thus implementing accelerated examination. Since the conclusion of the world’s first PPH with the United States Patent and Trademark Office in 2006, the JPO has been working to spread this program and improve its usability.

Regarding this improvement of usability, the first Plurilateral PPH Meeting at the Heads of Office Level was co-organized by Japan and Denmark in February this year with the aim of standardizing application requirements and procedures under the PPH across the partner countries. At the Plurilateral PPH Meeting at the working level in May this year, a general agreement was reached on aiming to share the PPH request format and standardizing part of the requirements for requesting accelerated examination under the PPH, such as the use of machine translation to prepare documents to submit to the office of second filing.

Results of the 2nd Plurilateral PPH Meeting at the Heads of Office Level

At the present meeting, 22 national / regional intellectual property offices and organizations - more than the number of participants in the Working - Level Meeting in May - gathered and conducted discussions (the patent offices in these countries / regions received over 90% of worldwide applications in 2007). They discussed and agreed on the following points :

- The JPO will officially provide a tool that allows applicants to prepare PPH requests for different countries through a single entry screen. Other Offices will cooperate in improving and disseminating the tool. All Offices will also continue with the discussion on a common PPH request format.
- The JPO will publish guidelines, statistics and other PPH-related information received from other Offices at the PPH portal site it has opened.
- With some exceptions, applicants are permitted to machine-translate the examination results of the office of first filing to submit to the office of second filing. The possibility of using machine translation for claims should be studied as well.

In view of the future, discussion also took place on the extension of the eligibility for requesting accelerated examination under the PPH beyond successful applications in the office of the first filing, over to applications that have been determined to be patentable in deliverables (e.g., international study reports) in the international phase of PCT international applications*.

* PCT international applications:
International applications filed under the Patent Cooperation Treaty (PCT). The PCT provides for a system whereby a single application filed pursuant to the requirements under the PCT can have the effect equivalent to a simultaneous filing in multiple PCT member states.

Release Date

September 25, 2009

Division in Charge

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

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