Starting of New PPH Pilot Programs Within the Trilateral Offices
-Agreements Made in the Trilateral Conference-

On November 12, the heads of the European Patent Office and the Japan Patent Office met in Kyoto, and agreed on a Patent Prosecution Highway (PPH) pilot project to be launched on January 29, 2010.

Furthermore, at the Trilateral conference held today in Kyoto, the Offices discussed the types of applications eligible for the basis of PPH, and decided to start a Trilateral pilot in which applications based on the Patent Cooperation Treaty (PCT) which have been decided to be allowable by a Trilateral office acting as an International Search Authority (ISA) or an International Preliminary Examination Authority (IPEA) will be eligible for the PPH.

These efforts are expected to accelerate worksharing among the Trilateral offices, and to promote the applicant expeditious acquisition of patent rights in Europe and the U.S.

1.Background

In order to speed examination and improve user-friendliness, Japan has been starting “Patent Prosecution Highway (PPH)”programs with other countries, in which examination results concerning an application deemed allowable in one office is utilized in another office, and in turn the application would be entitled to an accelerated examination in the latter office.

Over 20 thousand applications of Japanese origin have been filed in the European Patent Office (EPO) in 2007, but until now the JPO did not have a PPH program with the EPO. Therefore, our users had long waited for a start of a JPO-EPO PPH program.
Furthermore, in the present PPH schemes, only national phase applications which have been decided to be allowable in the office of first filing are eligible for the PPH. On the other hand, since approximately half of the applications in the world from non-residents come through the PCT* route (data of 2007), the Trilateral offices have discussed the possibility to include applications which have been deemed allowable in PCT international phase work products (e.g., International Search Reports, etc.) to increase user friendliness.

*PCT: Abbreviation for Patent Cooperation Treaty, a system in which one PCT application is deemed to be filed in all designated countries. The ISAs and IPEAs examine PCT applications and disclose information concerning their patentability, which are used in the national phase examination of each designated office.

2. Results of the meeting

(1) The launch a new JPO-EPO PPH pilot

Ms. Alison Brimelow, the President of the EPO, and Mr. Tetsuhiro Hosono, the Commissioner of the JPO, reached agreement to launch a new JPO-EPO PPH pilot program on January 29, 2010 as the result of the yesterday meeting in Kyoto. In the case where an application is deemed allowable in one office, the program offers an accelerated examination in the other office upon the applicant’s request, which will enable quicker acquisition of patent rights.
The new PPH program becomes the 12th PPH agreement JPO has reached with the EPO, having the 4th largest number of patent application in the world. The 13 countries including JPO and EPO account for approximately 75% of the number of patent applications in the world. In addition, the agreement between JPO and EPO will also mark the start of a common Trilateral PPH effort.

(2) Expansion of applications eligible for PPH (Trilateral PPH pilot program)

Today the heads of the Trilateral offices discussed on the eligible types of application for PPH, and decided to start a Trilateral pilot on January 29, 2010, in which applications based on the PCT which have been decided to be allowable by a Trilateral office acting as an International Search Authority (ISA) or an International Preliminary Examination Authority (IPEA) will be eligible for an accelerated examination under the PPH.
These efforts are expected to accelerate worksharing among the Trilateral offices, and to promote the applicant expeditious acquisition of patent rights in Europe and the U.S.

For more information on the PPH programs see the URL below:
http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/patent_highway_e.htm

Release Date

November 13, 2009

Division in Charge

International Affairs Division, General Affairs Department, JPO

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