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Patent Prosecution Highway -Mottainai

Patent Prosecution Highway -Mottainai. January, 2012 AIPLA MWI in Las Vegas. Takaki Nishijima Nakamura & Partners E-mail:t_nishijima@nakapat.gr.jp http://www.nakapat.gr.jp. Applications among countries/region (2005).

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Patent Prosecution Highway -Mottainai

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  1. Patent Prosecution Highway-Mottainai January, 2012AIPLA MWI in Las Vegas Takaki Nishijima Nakamura & Partners E-mail:t_nishijima@nakapat.gr.jp http://www.nakapat.gr.jp

  2. Applications among countries/region (2005)

  3. Applications among countries/region (2006)

  4. Applications among countries/region(2008)

  5. Applications among countries/region (2009)

  6. The number of PCT applications for each country (between 2006 and 2010) SWEDEN SWISS SWEDEN CHINA OTHERS SWISS OTHERS USA USA HOLLAND HOLLAND UK UK FRANCE SOUTH KOREA JAPAN JAPAN GERMANY SOUTH KOREA FRANCE GERMANY CHINA

  7. The number of applications filed worldwide ×10,000 Filed by foreigners Filed by domestic residents More than 40% were filed by foreigners

  8. The number of applications filed by foreigners and Japanese before JPO ×10,000 Filed by foreigners Filed by Japanese

  9. The number of applications filed by domestic residents and foreigners before USPTO ×10,000 Filed by foreigners (except for Japanese) Filed by Japanese Filed by domestic residents

  10. The number of applications filed by domestic residents and foreigners before EPO ×10,000 Filed by foreigners (except for Japanese) Filed by Japanese Filed by residents in EPC countries

  11. The number of applications filed by domestic residents and foreigners before SIPO ×10,000 Filed by foreigners (except for Japanese) Filed by Japanese Filed by domestic residents

  12. The number of applications filed by domestic residents and foreigners before KIPO ×10,000 Filed by foreigners (except for Japanese) Filed by Japanese Filed by domestic residents

  13. Level of Inventive Step （Recent Trend as of 2010 ） TEACHAWAY Inventive Step (High) IP High Court (past) JPO 2000 guideline(present) OBVIOUS TO TRY IP High Court (recent) EPO(2010) JPO 1993 guideline(past) EPO USPTO (After KSR) USPTO (Before KSR) MOTIVATION Inventive Step (Low)

  14. Patent Prosecution Highway

  15. Patent Prosecution Highway Portal Site Expanding PPH Network

  16. OUTLINE The purpose of PPH is to facilitate an applicant's acquisition of a patent at an early stage worldwide and to enhance the utilization of search and examination results among the world's major IP Offices so as to reduce the burden of examination and to enhance the quality of examination worldwide. PPH enables an application with claims determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon request for PPH by an applicant.

  17. FILING A REQUEST FOR PPH An application is granted in Office of First Filing (OFF) to file a request for PPH with the JPO as Office of Second Filing (OSF) for PPH

  18. Requirements for PPH using U.S. National Work Products • Corresponding U.S. application has claim(s) determined to be allowable by the USPTO. • All claim(s) in the JP application must sufficiently correspond to the allowable claim(s) in the U.S. application • format difference (dependent->independent) : OK • limiting claim scope (A -> A+B) : OK • category change (method -> apparatus) : Not OK • The JPO has not begun examination of the application.

  19. Eligibility for PPH -- Case (1)

  20. Eligibility for PPH -- Case (2)

  21. Eligibility for PPH -- Case (3)

  22. Eligibility for PPH -- Case (4)

  23. Eligibility for PPH -- Case (5)

  24. 4 requirements a. The application in the OSF validly claims priority from an application in the OFF*. b. The application in the OFF has at least one claim already determined to be patentable. c. All claims in the OSF application sufficiently correspond to the claims already determined to be patentable in the OFF. d. The application in the OSF has not yet been examined**. * In the case of the USPTO, the UK-IPO or the DKPTO, national stage application of PCT without priority claim is also eligible. ** In the case of the KIPO or the DKPTO as the OSF, an application which has already been examined is also eligible.

  25. 4 required documents A table listing and containing an explanation of the sufficiently corresponding claims A copy of the claims already determined to be patentable in the OFF Copies of all office actions of the OFF Copies of references cited by the OFF examiner

  26. ・Qualities of applications under the AE are better than that under regular examination. ・Applicants under the AE pursue granting of a patent in a serious manner. ・JPO does not intentionally increase the grant rate of applications under the AE. Material from JPO: Annual Report

  27. Number of Request of PPH Material from JPO: Annual Report

  28. PPH MOTTAINAI Pilot

  29. PPH MOTTAINAI Pilot To make the PPH program more user-friendly and available for patent applicants, the PPH MOTTAINAI Pilot will launch on 15 July, 2011. The pilot which include the JPO (Japan), USPTO (USA), UK-IPO (UK), CIPO (Canada), IP Australia (Australia), NBPR (Finland), ROSPATENT (Russia) and SPTO (Spain) will ease the requirements for requesting patent examinations. Material from JPO: PPH Portal Website

  30. PPH MOTTAINAI Pilot Case 1: OSF (Office B) provides the examination result to the OFF (Office A). Material from JPO: PPH Portal Website

  31. PPH MOTTAINAI Pilot Case 2: OFF is other than Office A or Office B. Material from JPO: PPH Portal Website

  32. PPH MOTTAINAI Pilot Pilot Period for the PPH MOTTAINAI Pilot The PPH MOTTAINAI pilot will commence on 15 July, 2011, for a period of one year ending on 14 July 2012. The pilot period may be extended if necessary. The offices will bilaterally determine whether and how the program should be fully implemented at the end of the pilot period. The offices may also terminate the PPH pilot program early if the volume of participation exceeds manageable level, or for any other reason. Notice will be published if the PPH pilot program will be terminated before 14 July 2012. Any decision regarding extension and termination of the pilot affects only the respective bilateral offices concluding agreements. Material from JPO: PPH Portal Website

  33. Summary Table of PPH *Two orange boxes mean PPH arrangement is available between the two offices ** "MOTTAINAI" is a Japanese term meaning "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized."It is said that its concept is made up by Reuse, Recycle, Reduce and Respect. Material from JPO: PPH Portal Website

  34. Thank you ! Takaki Nishijima Nakamura & Partners E-mail:elec@nakapat.gr.jp

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