The JPO & USPTO's new PPH pledge will benefit applicants
What is PPH?
PPH (Patent Prosecution Highway) is a fast-track patent examination scheme between participating counties that allows an applicant to request expedited examination of an application pending at one or more patent offices (e.g. Offices of Later Examination (OLE)) when a corresponding application pending at another office (e.g. Office of Earlier Examination (OEE)) has been determined to have at least one patentable claim by Examination.
PPH is therefore a valuable tool for applicants planning their global IP portfolios. It enhances the use of search and examination results between offices, meaning faster, more consistent examination, a reduced number of office actions, and earlier patent decisions across the desired jurisdictions.
The new 3-month target agreed by the JPO and USPTO
PPH programs have greatly contributed to reducing the time to an office action in all participating countries. However, the actual time period has never previously been guaranteed. This has led to inconsistencies between jurisdictions and caused uncertainty for applicants.
Consequently, as originators of PPH and its key drivers, the JPO and USPTO have decided to formally commit to the three-month targets from commencement of examination after a PPH request to first office actions. The new commitment will also apply to subsequent office actions after a response by an applicant to an office action under PPH.
In a joint statement, the two patent offices said: “With almost 30% of all PPH applications in the world having been filed with the JPO or the USPTO in 2020, the two Offices will continue to lead the effort to promote the PPH as the original initiators of this innovative scheme, which began in 2006.”
We can expect to see other PPH participating offices following the JPO and USPTO’s lead.
Tables 1&2 - Targets set by the JPO and USPTO:
How might PPH benefit you?
PPH programs offer applicants great benefits including accelerated patent allowances, high rates of allowance, and the potential of large cost savings due to reduced time and number of actions.
The JPO has the largest PPH network in the world. Selecting the JPO as the office of earlier examination maximizes an applicant's
options for later examination.
By leveraging the JPO's PPH network and its speedy and highly respected examination, international applicants can be confident of quick and efficient acquisition of quality rights in any of the most important IP jurisdictions in the world.
Who does Japan have PPH agreements with?
The JPO currently has bilateral PPH agreements with 46 IP offices (see
Table 3). In terms of numbers, over 13,000 PPH application requests have been received at the JPO from the US, around 6,500 from the EPO and more than 1,200 from Korea (2020 JPO figures).
Table 3 - The JPO’s PPH agreements (fully implemented and trials)
Table 3 notes:
● = Only available if the original patent application or PCT application has been filed with both offices.
△ = Since these offices are not ISA or IPEA under the PCT system, PPH is only available if the first application is in Japan.
Normal
PPH, PPH Mottainai, PCT-PPH = There are actually various types of PPH program. For example, Normal PPH requires that the application be found patentable in the “office of first filing” (OFF) in order to apply for PPH. PPH MOTTAINAI makes PPH available for applications found allowable/patentable in an 'office or earlier examination result' (OEE) regardless of the Office of First Filing.
Table 3 created from figures compiled in the JPO’s Annual Report for 2021 (p.115):
For more details on the PPH program at the JPO (including the new 3-month targets), please see:
