pph in apaa · pdf filejp 1519 496 10 52 238 21 317 5 15 20 248 809 0 0 tbd 26 us 465 331 38...

PPH in APAAPPH in APAA CountriesCountries

i. Status of PPH agreement and Statistics.ii. Benefits for Entering PPH Agreements.iii. Advantages of PPH compared to Other Accelerated

Type of Prosecution Schemes.

Copyright (C) 2014 Miyoshi International Patent Firm All Rights Reserved. 0

Hiroyuki HASHIMOTOMIYOSHI&MIYOSHI

Tokyo, Japan

Current Overall PPH Network

Copyright (C) 2014 Miyoshi International Patent Office All Rights Reserved. 1

Source: Patent Prosecution Highway Portal Site (http://www.jpo.go.jp/ppph-portal/index.htm)

Latest PPH Utilization


Source: Patent Prosecution Highway Portal SiteTable above shows major PPH participating countries and regions (not all) including APAA countries.

JP US KR GB CA DE AU EP SG RU MX TW CN PH EA ID TH

JP 1519 496 10 52 238 21 317 5 15 20 248 809 0 0 TBD 26

US 465 331 38 585 64 153 271 9 43 61 149 491 0 - - -

KR 32 790 0 6 1 0 11 0 4 0 - 69 - - - -

GB 19 71 10 11 4 6 - - 2 - - - - - - -

CA 2 53 9 0 1 3 - - 5 0 - 3 - - - -

DE 9 19 4 2 1 - - - - - - 14 - - - -

AU 8 92 4 0 18 - - - 0 - - - - - - -

EP 59 757 32 - - - - - - - - 28 - - - -

SG 0 1 0 - - - - - - 0 - 0 - - - -

RU 0 25 2 - 3 - 1 - - - - 0 - - - -

MX 0 1 0 - 0 - - - - - - 0 - - - -

TW 1 2 - - - - - - - - - - - - - -

CN 6 178 16 - 4 1 - 18 0 3 1 - - - - -

PH 0 0 - - - - - - - - - - - - - -

EA 0 - - - - - - - - - - - - - - -

ID 0 - - - - - - - - - - - - - - -

TH 0 - - - - - - - - - - - - - - -

a

Number of PPH Requests (Jan. - Jun. 2014)

Off

ice

of

Earl

ier

Exam

inat

ion

(O

EE)

Office of Later Examination (OLE)

Latest PPH Utilization


Source: Patent Prosecution Highway Portal Site

Latest PCT-PPH Utilization



JP US KR GB CA AU EP RU MX CN PH EA ID

JP 626 0 85 1 6 12 131 7 5 306 9 0 TBD

US 9 148 15 0 41 31 47 7 - 18 2 - -

KR 18 0 43 1 1 18 15 2 - 65 - - -

CA 10 0 2 0 41 1 - 1 - - - - -

AU 0 0 1 1 0 0 - 0 - - - - -

EP 135 0 83 - - - - - - 62 - - -

RU 2 0 1 1 0 0 - 0 - 3 - - -

CN 29 0 5 - - - 21 0 0 - - - -

Number of PCT-PPH Requests (Jan. - Jun. 2014)

ISA

/IP

EA

Office of Filing

Latest PCT-PPH Utilization



Effects of PPH (High Grant Rate)



Effects of PPH (Fast allowance)



Effects of PPH (Fast prosecution)



Effects of PPH (Faster prosecution)



Effects of PPH (No. of Office Actions)



PCT-PPH Statistics (Overall)


JP US KR GB CA AU RU MX

Grant Rate(%) 83.0% 90.3% 79.8% 85.0% 100.0% 100.0% 100.0%69.8% 53.0% 67.9% 65.0% 67.0%

First Action Allowance Rate (%) 22.7% 19.9% 45.5% 0.0% 43.0% 20.0% 100.0% 0.8%12.0% 17.3% 9.8% 4.4%

Average Pendency

from PPH Request to 1st Office Action (mo.)3.31 5.20 2.77 1.00 1.70 1.00 3.60 1.10

10.40 18.00 11.30 14.30

Average Pendency

from PPH Request to Final Decision (mo.)8.39 14.10 5.94 3.60 1.50 3.60 2.20

28.10 29.00 17.20 32.90 13.00

Average number of Office Actions 1.01 1.60 0.79 0.50 0.32 1.00 0.201.12 2.40 1.50 1.90


* Lower column shows figure of all applications (PPH and non-PPH)

PPH Statistics: Summary

Grant Rate 64.3% 92.7%

First Action Allowance Rate: 10.2% 48.7%

Average Pendency from PPH request

to 1st Office Action: 16.08mo. 2.48 mo.

Average Pendency from PPH request

to Final Decision: 25.93mo. 5.82 mo.

Average number of

Office Actions: 1.58 times 0.94 times


Figures represent PPH applications only (excluding PCT-PPH applications)

Benefits for Entering into PPH

1. Fast Prosecutioni. Fast prosecution is expected for both PPH and PCT-PPH

applications. Especially, average pendency from PPH request to final decision is quite fast compared to non-PPH applications.

ii. PPH participating offices recently agreed to expedite examination not only the First Action (FA) pendency from PPH request but also the period from FA to final decision(e.g., decision to grant or reject a patent).*For more information, please access http://www.jpo.go.jp/ppph-portal/PPH_Policy.pdf




2. Improvement of Examination Qualityi. Since Offices of Later Examination (OLE) use

search/examination-related information of Offices of Earlier Examination (OEE), examination quality is expected to be improved and unified between OEEs and OLEs.

ii. PPH participating offices recently agreed : that OEE should maximize their efforts to improve

examination quality, providing reliable work products, and

that OLE should be expected to make maximum use of search/examination-related information of OEEs.

However, the independence of the OLE is always preserved.



3. High Grant Rate i. Grant rate is relatively higher than non-PPH applications.ii. Although grant rate of PPH applications is not significantly

higher than non-PPH applications, throughout the improvement of examination quality described above, grant rate of PPH applications is expected to be further improved.

4. Mitigation of Workloads in Patent Officesi. From Patent Office perspective, workloads of examination

can be mitigated by work-sharing among participating Patent Offices.

ii. Accordingly, a heavy increase in workloads of examination at Patent Offices can be avoided.

Advantages of PPH


1. Conditions to be meti. The claims of the OLE are sufficiently correspond to

the claims of the OEE.

ii. The claims determined to be allowable in OEE. Noted that “decision to grant” is not essential for requesting PPH. The claims determined to be allowable in Office Action can also be candidates of PPH.

Advantages of PPH


2. Comparing with Other Prosecution Schemes

i. Accelerated prosecution schemes within Patent Offices (e.g., Accelerated Examination in JPO, AEP/PEP in US, PACE in EPO) do not require claim correspondence between OEE and OLE.Pendency from a request of the examination to Office Action is significantly faster compared to a regular examination. However, special requirements (e.g., limited application types, prior art search by applicant) need to be met.

ii. Modified Substantive Examination (MSE): Decision to grant of the corresponding foreign application is essential. Claims must be same as the granted claims of the corresponding foreign applications.

Advantages of PPH


3. Summaryi. If conditions are met, i.e.,

(i) claims are sufficiently correspond between OEE and OLE, and(ii) claims determined to be allowable by OEE, applicant should consider the use of PPH.

ii. Especially, even the entire application has not yet been granted, PPH can be requested if at least one claim has determined to be allowable by OEE.

Advantages of PPH


3. Summary (Continued)iii. Other accelerated examination schemes do not require to

meet above conditions, thus if the above conditions are not met, those examination schemes are alternatively considered. However, it may have to meet special requirements.

iv. Modified Substantive Examination (MSE) is performed based on decision to grant of the corresponding foreign applications. Accordingly, claims to be examined under MSE must be same as the granted claims of the corresponding foreign applications.

pph in apaa · pdf filejp 1519 496 10 52 238 21 317 5 15 20 248 809 0 0 tbd 26 us 465 331 38...

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