PPH from the JPO Point of ViewPPH from the JPO Point of View

Yutaka NiidomeYutaka NiidomeDeputy DirectorDeputy Director

Japan Patent OfficeJapan Patent Office

AIPLA PPH Users Meeting

May 19, 2010

2

Search/Examination

Allowable

Request for PPHRequest for PPHApplication

OFF

OSF

Application

Paris Route

Accelerated Exam.

A

B

Examination

Request for PPHRequest for PPHC

PCT International Phase PCT National/Regional Phase

PCTApplication

IPER

Allowable

Request for PPHRequest for PPH

Accelerated Exam.

ISRWO

Positive Opinion Accelerated

Exam.

PCT work products of a Trilateral Office

Request for PPH in a Trilateral Office

The Patent Prosecution HighwayThe Patent Prosecution Highway

3

DPMA

IP Australia

DKPTO

UKIPO

KIPO

CIPO

EPO

ROSPATENT

IPOS

NBPR

HPO

USPTO

JPOAPO

The PPH NetworkThe PPH Network

: permanent PPH

: pilot PPH

: PCT-PPH pilot

4

Number of PPH RequestsNumber of PPH Requests

At JPO as OSF

820

96 62 5115

0

100

200

300

400

500

600

700

800

900

USPTO KIPO EPO DPMA UKIPO

Total Number

( ～ 2010/5/11)

At JPO as OFF

1920

371220

16 80

500

1000

1500

2000

2500

USPTO KIPO DPMA UKIPO Rospatent

Total Number

*1

*1: ～ 2010/3/1

( ～ 2010/1/31)

5* At the JPO as OSF as of May 11, 2010

Number of PPH RequestsNumber of PPH Requests

OFF Cumulative number of PPH requests remarks

JPO(ISA/IPEA) 26 PCT-PPH

USPTO 820

USPTO(ISA/IPEA) 0 PCT-PPH 　

KIPO 96 　

UKIPO 15 　

DPMA 51 　

DKPTO 1 　

NBPR 3 　

ROSPATENT 0 　

APO 0 　

IPOS 0 　

HPO 0 　

CIPO 0 　

EPO 3 　

EPO(ISA/IPEA) 59 PCT-PPH

6

RANKING APPLICANT’S NAME

1 Microsoft Corporation

2 International Business Machines Corporation

3 General Electric Company

4 Apple Incorporated

5 SanDisk Corporation

6 Altera Corporation

7 GE Medical Systems Global Technology Company LLC.

8 Honda Motor Corporation Ltd.

8 Cree Incorporated

10 Elan Pharma International Ltd.

As of the end of Jan. 2010

Top Users of PPH (US -> JP)Top Users of PPH (US -> JP)

7

Advantages of PPHAdvantages of PPH - - Timely Patent AcquisitionTimely Patent Acquisition - -- Average Pendency from PPH Request to First Action (JP-US PPH)-- Average Pendency from PPH Request to First Action (JP-US PPH)-

Reduced pendency at the OSFReduced pendency at the OSF

Expeditious examinationExpeditious examination

OFFOFFOFFOFF ExamExamPatentPatent

FAFA

Request Request for PPHfor PPH

ExamExam

Request for PPHRequest for PPH

FAFA ExamExamWith With PPHPPH

Without Without PPH PPH 29.3 29.3

monthsmonths

1.9 1.9 monthsmonths

FA Pendency: Approx. 1.9 months (CY2009)FA Pendency: Approx. 1.9 months (CY2009)Cf. Overall average for all accelerated exams: 2.0 months (CY2009) Cf. Overall average for all accelerated exams: 2.0 months (CY2009)

Average First Action Pendency of All of the Applications in the JPOAverage First Action Pendency of All of the Applications in the JPO:: 29.3months (FY2008)29.3months (FY2008)

8

Advantages of PPHAdvantages of PPH - - Timely Patent AcquisitionTimely Patent Acquisition - -- Average Pendency from PPH Request to First Action -- Average Pendency from PPH Request to First Action -

Route PPH applications (Time from PPH request to First Action)

Average Overall First Action Pendency

JP -> DK 3 months (2008CY)

6.9 months (2008CY)

JP -> KR 2.1 months (2009CY)

15.4 months (2009CY)

US -> KR 2.0 months (2009CY)

15.4 months (2009CY)

All -> US 165.4 days* (Jan. 2009)

25 months (July 2009)

* Note that USPTO examiners will generally examine an application within 2 months from the grant of a PPH request provided the application has completed all its pre-exam processing.

9

Advantages of PPH – Speed -Advantages of PPH – Speed -- Average Pendency from First to Final Action (JP-US PPH)-- Average Pendency from First to Final Action (JP-US PPH)-

6.4

10.5

0 2 4 6 8 10 12

(months)

Average Pendency from FA to Final Action (CY2009)

Applications under J P- US PPH Applications claiming priority to US application

Reduced pendency at the OSFReduced pendency at the OSFExpeditious examinationExpeditious examination

10

Advantages of PPH – Speed -Advantages of PPH – Speed -- Average Time to Final Action & First Action Grant Rate -- Average Time to Final Action & First Action Grant Rate -

Route PPH Applications Overall average*From PPH request to

First ActionFrom First Action to

Final Action

JP -> UK 2.4 months(2009CY)

5.7 months (2009CY)

27 months (Feb. 2010)

US -> UK 1.02 months (2009CY)

6.6 months (2009CY)

27 months (Feb. 2010)

* the average time from the request for substantive examination through to the grant of a patent

Applications claiming priority to US application 2.6% (2009CY)

Applications under JP-US PPH 9.5% (2009CY)

Average Time to Final ActionAverage Time to Final Action

First Action Grant RateFirst Action Grant Rate

11

Advantages of PPH – Quality -Advantages of PPH – Quality -- Average Pendency from FA to Final Action (JP-US PPH)-- Average Pendency from FA to Final Action (JP-US PPH)-

Higher grant rate at the OSFHigher grant rate at the OSFHigh predictability of examination results at the OSFHigh predictability of examination results at the OSF

59.0

37.0

0.0 10.0 20.0 30.0 40.0 50.0 60.0 70.0

( % )

Grant Rate (CY2009)

Applications under J P- US PPH Applications claiming priority to US application

59.0

37.0

0.0 10.0 20.0 30.0 40.0 50.0 60.0 70.0

( % )

Grant Rate (CY2009)

Applications under J P- US PPH Applications claiming priority to US application

12

The PPH Portal SiteThe PPH Portal Sitehttp://www.jpo.go.jp/ppph-portal/index.htm

• One-stop portal for statistics, guidelines, and links• Request forms and a common drafting tool

13

The PPH Portal SiteThe PPH Portal Site

Common Drafting tool for PPH request formsCommon Drafting tool for PPH request forms

14

Reaction from PPH UsersReaction from PPH Users

- User A- User AIn a certain business field of our company, negotiations often take place for cross In a certain business field of our company, negotiations often take place for cross licensing of patents. Given such circumstances, we have come to the idea that licensing of patents. Given such circumstances, we have come to the idea that patent rights should be promptly obtained for any inventions related to the field. patent rights should be promptly obtained for any inventions related to the field. Focusing on such inventions as patentable in Japan, we are seeking for prompt Focusing on such inventions as patentable in Japan, we are seeking for prompt acquisition of patent rights in the US, by actively utilizing the PPH.acquisition of patent rights in the US, by actively utilizing the PPH.

- User B- User BIn the case of our company, where the reception of office actions usually occurs a In the case of our company, where the reception of office actions usually occurs a few times, applications using the PPH actually resulted in one or less of office few times, applications using the PPH actually resulted in one or less of office action on average. That allowed prompt acquisition of patent rights, thereby action on average. That allowed prompt acquisition of patent rights, thereby reducing the associated cost.reducing the associated cost.

- User C- User CWe have had our patent filing in the US examined promptly under simple We have had our patent filing in the US examined promptly under simple procedures, without facing strict requirements.procedures, without facing strict requirements.

15

Reaction from PPH UsersReaction from PPH Users

- User D- User DAs to the patent application filed in Japan, a patent right was granted As to the patent application filed in Japan, a patent right was granted without receiving a notice of rejection. without receiving a notice of rejection.

Then, we decided to use the U.S. accelerated examination system Then, we decided to use the U.S. accelerated examination system through the PPH while preparing necessary documents - followed by through the PPH while preparing necessary documents - followed by timely and efficient obtainment of a U.S. patent right. timely and efficient obtainment of a U.S. patent right.

Having acquired the U.S. patent right, we managed to start license Having acquired the U.S. patent right, we managed to start license negotiations with a U.S. company that said it would wait until the U.S. negotiations with a U.S. company that said it would wait until the U.S. patent was granted. Without being able to utilize the PPH framework, we patent was granted. Without being able to utilize the PPH framework, we would not have even started the negotiation yet.would not have even started the negotiation yet.

16

Future PlansFuture Plans

- Relaxation of PPH requirements- Relaxation of PPH requirementsConsideration of relaxing PPH requirementsConsideration of relaxing PPH requirementsPerhaps to be discussed in the next Plurilateral PPH meetingPerhaps to be discussed in the next Plurilateral PPH meeting

-PPH Joint SeminarPPH Joint SeminarPPH seminars in Japan and USPPH seminars in Japan and USJPO officials will attend the seminar in the U.S., and USPTO JPO officials will attend the seminar in the U.S., and USPTO officials will attend the seminar in Japan.officials will attend the seminar in Japan.

--Further Development of the PPH Portal SiteFurther Development of the PPH Portal Site