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・ JPO requires a copy of the US claims, if unpublished in US yet.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