Patent Prosecution Highway: The JPO and USPTO

By: Summer Associate Sarah Kelly and Director Paul A. Calvo, Ph.D.

Major patent offices around the world have long been aware of backlog and redundancy issues facing the global patent landscape. As previously reviewed, the Patent Prosecution (PPH) program aims to accelerate examination among participating offices. Using PPH, participating patent offices have agreed that when an applicant receives a final notice from a first patent office that at least one claim is allowed, the applicant may request fast track examination of corresponding claim(s) in a corresponding patent application that is pending in a second patent office. Thus, the PPH leverages fast-track examination procedures already in place among participating patent offices to allow applicants to reach issuance in multiple regions more quickly and efficiently than through multiple standard parallel examinations.

The PPH program coordinated by the Japanese Patent Office (JPO) has been a leading participant in the program. The PPH first began with a trial program between the USPTO and the JPO in July 2006. By January 2009, the effort between the JPO and the USPTO became the first fully implemented PPH program, with PPH programs between the USPTO and the UKIPO and the KIPO following.[i] Now 54 offices have implemented a PPH to increase efficiency with at least one office. The USPTO has a PPH with 35 offices, adding almost 10 in the last year alone.[ii] Since the first highway instituted in 2006, the USPTO has received 66,557 Total Applications with Petitions for PPH examination, of those, 58,650 were granted.[iii]

Over the past 5 years, the CNIPA, CIPO, KIPO, and JPO are by far the most used PPH programs with the USPTO as the office of first filing (OFF). Additionally, when the USPTO is the Office of Second Fling (OSF) nearly one-third of requests for PPH requests indicate JPO as the OFF.[iv]

From the applicant’s perspective, cited benefits include a higher speed to grant (thereby improving predictability and certainty), as well as cost savings by reducing the prosecution tasks in each jurisdiction. If all requirements are met, patent prosecution of a PPH application runs considerably faster with fewer office actions per disposal, reduced RCE filing rates, and reduced appeal rates than non-PPH applications. All at no additional charge to regular fees.[v] On average, applications from a higher grant rate compared to standard applications.[vi] In some countries, the difference is staggering (e.g. CIPO: 92% PPH grant v. 71% overall; IP Australia 100% vs. 52% overall).

Further, in the rapidly growing markets of Korea and Japan, it may be increasingly advantageous to use PPH programs. At the JPO, PPH applications have an average pendency of 2.6-2.8 months to first action, while overall applications have average 9.4 months. KIPO PPH applications have an average pendency of 2.5-2.9 months before first action, while overall application pendency is an average of 10.8 months until first action. Pendency to final decision is similarly accelerated with PPH applications in both countries.[vii]

However, notwithstanding these benefits, it should be remembered that ultimately the decision about whether to grant a patent remains under the control of the national Patent Office where individual patentability criteria might vary. Taking advantage of a PPH does not offer a guarantee of allowance. Nor does it allow for complicated claim strategies (e.g. where different prior art documents or different subject matter claims are available in different countries).

There are continuing benefits the initial PPH relationship put forth between the JPO and USPTO in 2006. In a recent joint statement from both offices, the directors underscored the importance of promptly establishing stable patent rights, especially in light of the COVID-19 pandemic. The importance of the PPH program was also highlighted along with the U.S.-Japan Collaborative Search Pilot Program; and the Global Dossier Initiative.[viii]

[i] Current details on the PPH programs available with the USPTO are available at the USPTO website at https://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track

[ii] View all participating offices here https://www.jpo.go.jp/e/toppage/pph-portal/network.html; Note, offices may have different requirements and procedures so it is best to evaluate guidelines on the website of the relevant office.

[iii] As of June 30, 2020 https://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track

[iv] https://www.jpo.go.jp/e/toppage/pph-portal/statistics.html

[v] Notice Regarding the Elimination of the Fee for Petitions To Make Special Filed Under the Patent Prosecution Highway (PPH) Programs https://www.govinfo.gov/content/pkg/FR-2010-05-25/pdf/2010-12471.pdf

[vi] https://www.jpo.go.jp/e/toppage/pph-portal/statistics.html (most recent dataset from July-Dec 2019)

[vii] https://www.jpo.go.jp/e/toppage/pph-portal/statistics.html

[viii] Joint message from the USPTO and the JPO: For the future of innovation: https://www.uspto.gov/about-us/news-updates/joint-message-uspto-and-jpo-future-innovation

This article appeared in the October 2020 issue of Global Patent Prosecution.