Problems in Patent Prosecution Highway (PPH)

The OFF cannot utilize the examination result of the OSF.

All the claims in OSF application sufficiently correspond to the allowable/patentable claims in OFF applications.

Collaborative Search Pilot Program (CSP) enable synchronized examinations

Requirements for CSP 

− Common priority

− Petitions in both offices

− Claim Limits: 3 Independent, 20 Total

− Independent claims be substantially the same.

・ JPO requires a copy of the US claims, if unpublished in US yet.

・ USPTO requires a claims correspondence table. (https://www.gpo.gov/fdsys/pkg/FR-2017-10-30/pdf/2017-23661.pdf pp. 50124)

− Ready for the examination

・Examination has not been initiated 

・ JPO requires Japanese language translation 

Benefits to the Applicant 

• Greater consistency in examination across offices leading to more certainty of IP rights

• No office fee

• Citations of the Japanese first office action do not have to be submitted as US IDS. (Later citations must be submitted)

• Single analysis for responding to two office actions → Saves agent fees and in-house time

• The first office action is typically issued within 6 months. Slightly shorter than normal period of 10 months, but longer than expedited examination, which takes 3 months

Pilot Duration for CSP 

First Pilot: Two years from August, 2015

- Only 34 were requested in the first year. (RYUKA requested 8 of 37.)

Expanded Pilot: Three years from November, 2017

- Accepts up to 400 applications per year