Effective July 1, 2015, green technology companies can now choose the Japan Patent Office (JPO) as an International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) for international applications filed at the U.S. Patent and Trademark Office (USPTO). The USPTO announced terms of the agreement between the two intellectual property offices on July 1, 2015, which runs through June 30, 2018, with an option for extending the program.

See Press Release 15 -14.

A green technology applicant can take advantage of this new agreement if it satisfies the following requirements:

  1. It submits the international application in English;
  2. With claims qualifying under certain International Patent Classification classes for green technology; and
  3. Chooses the JPO as the ISA when depositing the international application with the USPTO as the Receiving Office (RO/US).

However, the JPO cannot act as an ISA if it has received: 1) more than 5,000 international applications from the USPTO during the period from July 1, 2015 to June 30, 2018; 2) more than 300 applications per quarter during the first year

(July 1, 2015 to June 30, 2016); or 3) more than 475 applications per quarter during the second and third years (July 1, 2016 to June 30, 2018). Further, the JPO will act as the IPEA only when it has acted as the ISA.

International Patent Classification classes that qualify as “green technology” include those directed to alternative energy production, energy conservation, environmentally friendly farming, and environmental purification, protection or remediation.

See Official Notices (PCT Gazette) dated June 25, 2015 pages 10 8 -114.

The USPTO’s press release indicates that additional details of the new procedure will be made available on its Web site. The USPTO will likely provide tracking statistics to inform potential green technology applicants when these application caps are reached.

This new option for green technology applicants provides for lower international search fees ($577 USD for JPO) compared to using the USPTO or several other intellectual property offices (fees range from $909 to $2125 USD). In addition, should the JPO find unity of invention lacking, which typically occurs for green technology applications that claim multiple inventive embodiments, e.g., alternative pathways to different bioproducts, the lower search fee will reduce overall costs for searching multiple inventions at the international stage.

Choosing the JPO as ISA will also benefit green technology applicants interested in obtaining patent protection in Japan, as it will provide early insight into how the JPO views the claimed invention(s). And, once in national phase examination in Japan, such applicants can also take advantage of the JPO’s “green initiatives” program. Qualifying applications under the program, i.e., inventions having a beneficial effect on the environment through low energy consumption or reduction of carbon dioxide emissions, can receive a first Office Action in about two months.