IP NEWS:SOEI Patent & Law Firm

Applicants who wish to get a patent in short time in both Japan and U.S.A. may take advantage of a pilot program on Patent Prosecution Highway (PPH). The PPH enables an application whose claims are determined to be allowable/patentable in the Office of First Filing to undergo accelerated examination in the Office of Second Filing by using a simple procedure. According to the Expanding of Eligibility for PPH
(http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/highway_pilot_program_e.htm), when an application has been filed both in Japan and the U.S.A. based on a US provisional application and the application filed in the U.S.A. is allowed/patented, then, the application filed in Japan may be able to enjoy the benefit of the PPH. Further, when a US divisional application or continuation application or CIP application based on an application filed in the U.S.A. is allowed/patented, the corresponding application filed in Japan may become subject to the PPH based on the US divisional application or continuation application or CIP application.

However, the Frequently Asked Questions published by the Japan Patent Office (JPO) on its website indicate that there were some bumps in the road:
1) No application filed through the PCT is eligible for the PPH. Accordingly, neither international applications that have entered the Japanese national phase nor Japanese applications claiming priority under the Paris convention to a PCT application are able to enjoy the benefit of the PPH.
2) The claims of one application (e.g. the application filed in the U.S.A.) must be same as those of the other application (e.g. the application filed in Japan). Accordingly, even though the application filed in U.S.A. is allowed/patented the corresponding Japanese application may not be able to enjoy the benefit of the PPH if the claims of the application filed in Japan are different from the allowed claims as a result of amendment made during the prosecution in the U.S.A.
3) Even if the claims are not amended in the application filed and allowed in the U.S.A. and the claims in Japan are exactly the same as those in the patented application in the U.S.A., it does not mean that all the claims in the application filed in Japan will be automatically allowed in Japan. In this case, the claims filed in Japan are subject to the PPH and normal examination starts. Since the USPTO generally does not examine Japanese prior art in detail, it is common for the JPO to point out a lack of inventive step based on some Japanese prior art in an Office Action.

Nonetheless, the PPH can still save time for the applicants. For example, if some of the claims of a Japanese patent application are the same as the allowed claims of the corresponding US patent application, the PPH is available for the Japanese patent application after an amendment to delete all the claims in the Japanese application that are not identical with the US allowed claims.

This approach is available not only for the directly corresponding Japanese patent application but also its divisional application. Accordingly, in any related applications, if the applicant matches all the claims in the Japanese application by amendment or filing divisional applications to the claims in the corresponding US application allowed by the USPTO, the PPH is available for the Japanese application.