Patent Prosecution Highway - WIPO€¦ · 1 . Outline Part I. Abstract of Patent Prosecution...
Transcript of Patent Prosecution Highway - WIPO€¦ · 1 . Outline Part I. Abstract of Patent Prosecution...
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Patent Prosecution Highway
JAPAN PATENT OFFICE
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Outline
Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway
(PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH
Part II. Global PPH I. Background II. The scheme III. The procedure
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The number of applications filed in many offices is increasing.
an application
I. Background
Changes in Patent Appl. Filed in the Whole World
Source: WIPO Industrial Property Statistics
Increasing duplicate work!
Search
Search
Search
Search
Growing Demand for Work Sharing
Growing Demand for Work Sharing
(Unit: 10 thou.)
56.1
92.4 151.3
2.35 mil.
1.48 mil. 83.4
Efficiency of Work sharing
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Work-sharing Case
an application
Reduced examination workload
Finished Search
Refer to the results before searching
Utilization of Results!
prior arts, office actions
Search
Search
Duplicate Work..
Normal Case
an application
I. Background
II. The scheme of Patent Prosecution Highway (PPH)
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The PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) with a simple procedure upon an applicant’s request.
Application A
Corresponding Application
A’
Grant
Accelerated Examination
OEE (Office of Earlier Examination)
OLE (Office of Later Examination) OLE examination burden can be lighten
Work Sharing
Applicant Merit
PPH Request
Claims correspondence
OEE Examination History
Office Merit Examination
Refer
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II. The scheme of Patent Prosecution Highway (PPH)
Points of the PPH scheme Utilization of OEE examination results of application
determined to be patentable. OLE claims correspondence to OEE claims determined to be
patentable. Accelerated examination by OLE examiner. Workload reduction without sacrificing OLE examiner’s right
making a final judgment about patentability.
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A. Optimized claim scope B. Utilization of OEE search/examination history C. Decrease in the number of office actions D. Quality improvement
Easing Examination Burden Benefit
III. The benefit of the PPH
Normal PPH
Workload Down Optimized claim scope
Decrease in the number of office actions
Utilization of the OEE examination results
Quality Up
Normal quality
PPH quality
Quality improvement
Total Amount of Work in Examination
Total Amount of Work in Examination
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Claim Scope
OEE (Office of Earlier Examination)
A. Optimized claim scope
And in a lot of cases, the number of claims are decreasing.
Patentable in OEE
Scope to be searched shrinks.
Optimized Claim Scope
Claim Correspondence
Not Patentable in OEE
OLE (Office of Later Examination)
Benefit for IPOs III. The benefit of the PPH
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B. Utilization of OEE search/examination history Example: Claims consists of parts A and B.
OLE examiner
Claim correspondence OEE search/examination history
OEE examiner
I found A.
Oh, A is already found. Let’s search ONLY B!
Office Actions of OEE
OLE
Benefit for IPOs III. The benefit of the PPH
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C. Decrease in the number of office actions Benefits for IPOs and Users
For Users: Decrease in the number of office actions reduces applicant cost (e.g. attorney and translation fee).
For IPOs: Decrease in the number of office actions saves examination time.
III. The benefit of the PPH
1.0
1.1
1.7
3.7
1.2
0.6
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0.9
2.9
1.0
0.0 1.0 2.0 3.0 4.0
TW
KR
CA
US
JP
PPH Appl. All Appl.
PPH - Average number of office actions
DOWN!
Average number of office actions Period: Jan-Jun 2015 US : Jul-Dec 2014 / Figures including the number of PCT-PPH
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In PPH scheme, the OLE can make additional search based on the OEE results. Therefore, examination quality of the OLE is guaranteed for at least the OEE level. In addition, the OLE examiners can learn the OEE examination/search practices via submitted OAs and cited prior arts.
OLE examiner Claim correspondence
OEE search/examination history
OEE examiner
Search / Examination Oh, this practice is good.
OLE
D. Quality Improvement
Option1: Utilizing OEE’s result for efficiency.
Option2: Additional search for higher quality.
Benefits for IPOs and Users III. The benefit of the PPH
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Japan U.S. Korea Canada 0
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15
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Japan U.S. Korea Canada
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Japan U.S. Korea Canada
More PPH applications tend to be granted in each country and region.
1. High Grant Rate Average pendency from PPH
request to First office action and Final decision is decreasing.
2. Reduced Examination Period High First Action Allowance Rate
reduces costs to applicants (e.g. attorney and translation fees)
3. Cost saving
Period : Jan.- Jun. 2015 ※US PPH-Figures include PCT-PPH PPH applications All applications
Average Pendency from PPH request to FA Month
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*JP applications period : Jan.-Dec. 2014.
First Action Allowance Rate %
Grant Rate
*JP applications period : Jan. -Dec.2014
%
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**US period : Jul.-Dec. 2014
**
UP!
UP! DOWN!
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III. The benefit of the PPH
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The PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) with a simple procedure upon an applicant’s request.
Application A
Corresponding Application
A’
Grant
Accelerated Examination
OEE (Office of Earlier Examination)
OLE (Office of Later Examination) OLE examination burden can be lighten
Work Sharing
Applicant Merit
PPH Request
Claims correspondence
OEE Examination History
Office Merit Examination
Refer
IV. Types of the PPH scheme
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Application A
Corresponding Application
A’ Grant
Accelerated Examination
OFF (Office of First Filing)
OSF (Office of Second Filing)
PPH Request
Claims correspondence
OEE Examination History Priority claim
Office of Earlier Examination (OEE)
Office of Later Examination (OLE)
Under this pilot program, PPH request is eligible, whether or not the office which provides the examination results is the Office of First Filing (OFF).
This PPH scheme is called “PPH MOTTAINAI”.
Examination Refer
IV. Types of the PPH scheme
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A
B
C
International Phase
PCT Application WO or IPER
Positive Opinion
Exam.
PCT work products
PCT -
DO Application A
International Phase National/Regional Phase
PCT Application
Accelerated Exam.
PCT work products
Positive Opinion
WO or IPER
PCT-PPH is the PPH based on a PCT international work product.
DO Application B
DO Application C
PPH Request
IV. Types of the PPH scheme
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2006 2007 2008 2009 2010 2011 2012 2013 2014 2015 2016
Num
ber o
f the
off
ices
Australia, Canada, Denmark, EPO, Germany
Austria, Finland, Hungary, Russia, Singapore
Spain
China, Iceland, Israel, Mexico, NPI, Norway, Portugal, Sweden, Chinese Taipei
Colombia, Czech Republic, Philippines
Malaysia,Thailand
EAPO, Indonesia, Nicaragua, Poland
Egypt, Estonia, Romania
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Japan, U.S.
Brazil, Peru, Vietnam(Apr.)
Korea, UK
The number of PPH member offices The number of filings utilizing PPH system in the world
Num
ber o
f cas
es
Search/Examination Allowable
Request for PPH
Application
Office of First Filing
Office of Second Filing
Application Accelerated Exam.
V. Various data of the PPH
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Outline
Part I. Abstract of Patent Prosecution Highway I. Background II. The scheme of Patent Prosecution Highway
(PPH) III. The Benefit of the PPH IV. Types of the PPH scheme V. Various data of the PPH
Part II. Global PPH I. Background II. The scheme III. The procedure
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JPO (JAPAN) SIC
(Columbia)
As of 1st of September, 2012
: PPH
: PCT-PPH : PPH MOTTAINAI
DPMA (Germany)
UKIPO (UK)
KIPO (Korea)
USPTO (USA)
CIPO (Canada)
EPO (Europe)
IP Australia (Australia)
DKPTO (Denmark)
IPOS (Singapore)
NBPR (Finland) ROSPATENT
(Russia) HIPO
(Hungary) APO
(Austria) SPTO
(Spain)
IMPI (Mexico)
INPI (Portugal)
PRV (Sweden)
ILPO (Israel)
NPI (Nordic)
TIPO (Taiwan)
NIPO (Norway)
SIPO (China)
IPO (Iceland)
IPOPHL (Philippines)
I. Background
PPH is steadily developing!
But the current condition is often called “Spaghetti Bowl”…
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Current Condition.. (Bundles of Bilateral Arrangements and Guidelines)
Sometime in the future…
One Guideline
Plurilateral PPH One PPH arrangement One guideline
Bilateral PPH arrangement has been increasing, and as a result, bundles of Bilateral Arrangements and Guidelines existed. Users have requested PPH requirement or procedures to commonalize.
I. Background
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PPH participating offices have discussed about various approach in order to enhance the usability at Plurilateral Patent Prosecution Highway Working Level Meeting. This Meeting was held seven times until now, and 26 countries or authorities participated at the 7th Meeting. Discussion about Global PPH was performed at Plurilateral Patent Prosecution Highway Working Level Meeting.
4th, 5th Meeting at EPO 2nd, 3rd, 6th Meeting at JPO
7th Meeting at IPOS
1st Meeting at DKIPO
I. Background
The launch of a “Global PPH” pilot program within the framework of multiple countries: this program was created by making use of common factors found in the PPH. It commenced on January 6, 2014. The Global PPH pilot program enables participating offices to effectively use all types of PPH systems (regular type PPH, the PPH MOTTAINAI, and the PCT-PPH), enhancing user-friendliness. The JPO works as the secretariat of Global PPH. (E-mail:[email protected])
Global PPH (From January 6, 2014)
Types of PPHs available to all participating offices: Regular PPH, PPH MOTTAINAI, and PCT-PPH
Before launching Global PPH 17 offices at the start of Global PPH
II. Scheme
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New offices wishing to join the GPPH pilot can apply to join on the 6th January or on the 6th July. In order to be eligible to join, an office must declare its interest in joining the GPPH to the Secretariat no later than two months before the above dates. Requests to join the GPPH should be accompanied by the standard letter, provided on the Office’s headed paper and signed by the Head of Office.
6th January 6th July
Join the GPPH Join the GPPH
Letter Letter
Secretariat (JPO)
Secretariat (JPO) New offices New offices
No later than 2 months
No later than 2 months
III. Procedure
V. Global PPH (GPPH) ~ c. Procedures
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Where two participating offices have a pre-existing bi-lateral PPH arrangement, the guidelines of the Global PPH pilot will take precedence over those of the existing bi-lateral arrangement for the duration of the pilot.
Office A
Office B
Using the bi-lateral PPH guideline
Using the Global PPH guideline
Global PPH Bi-lateral PPH
Participating
Participating
Today’s point
PPH has a lot of benefits. By launching Global PPH, usability for users has increased. JPO promotes international cooperation to expand Global PPH.
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Thank You!