Since the introduction of the US-Korea PPH pilot in 2008, we have received various and wide-ranging questions regarding PPH implementation, including requirements, procedures, costs, and eligibility for using the PPH.
Korea participates in the Global PPH pilot, IP5 PPH pilot, and also has a number of separate bilateral agreements with IP offices in other jurisdictions. Most recently, programs based on bilateral agreements with the EAPO (Eurasian Patent Office), IP Viet Nam (Vietnam) and the SAIP (Saudi Arabia) were launched in 2019. Korea presently receives the fourth largest amount of PPH requests as an Office of Later Examination (OLE), following the US, China and Japan.
We have prepared the following FAQs in order to assist foreign clients in considering whether to use the PPH in Korea.
(1) At what stage in the prosecution procedure may PPH prosecution be requested?
PPH prosecution may be requested at the time of, or after requesting examination, and prior to receiving a first office action.
(2) Is it permissible to submit amended claims when filing a PPH request?
(3) Is it permissible to submit amended claims after filing a PPH request? If so, when is the deadline for submitting such amendment?
Yes. Amended claims may be submitted before receiving a first office action.
In addition, if the first office action is a Preliminary Rejection, the claims may be amended when responding to the Preliminary Rejection.
(4) Are there any other amendments that should be made when filing a PPH request?
If claims allowed in the Office of Earlier Examination (OEE) do not satisfy Korean description requirements, such claims would need to be amended accordingly.
(5) Is it possible to file a PPH request in Korea based on an examination result from an office other than the Office of First Filing (OFF)? For example, is it possible to file a PPH request in Korea in the following situation?
Yes, this is possible according to the IP5 PPH and Global PPH programs launched on January 6, 2014
For example, if you file a US priority-based PCT application and enter the national phase in Korea and Japan, should the application be accepted in Japan, you could file a PPH request in Korea based on the OEE Japanese examination result.
(6) The applicant has two or more allowed applications. Which application is preferred to be used as the basis for filing a PPH request in Korea?
Generally, examiners in Korea hold EPO, Japanese, and US examination results in equal regard. Thus, if there are two or more allowed applications from these jurisdictions, any may be relied upon as the PPH request filing basis.
In the past, it was believed that the grant rate for PPH requests based on a corresponding JP or EP application was slightly higher than that for a US corresponding application, but this no longer appears to be the case.
(7) Please list the pros and cons of using the PPH.
1. PPH applications are examined earlier than non-PPH applications. Thus, you are able to obtain a patent quickly. 2. The grant rate for PPH applications is higher than that for non-PPH applications. 3. The average number of preliminary rejections for PPH applications is lower than that for non-PPH applications. Thus, you are able to save on office action response costs.
1. In order to file a PPH request, the KR claims must be the same as the claims accepted by the OEE. When a PPH application is accepted directly without an office action being issued, we lose the opportunity to amend the KR claims to be broader than the claims accepted by the OEE.
2. Since PPH applications are examined earlier than non-PPH applications, the period for amending the claims based on any market changes or changes in technology is shortened.
3. Additional fees are incurred to file a PPH request.
(8) Are there any official fees for filing a PPH request? If so, how much are they?
Yes. The official fee is ₩200,000 KRW (Approx. $166.70 USD). [Exchange rate: $1 USD = ₩1,200 KRW]
(9) Are PPH applications examined earlier than non-PPH applications?
(10) In the case of early examination of a PPH application, when is the first office action issued?
The first office action is issued, on average, within 2.5 months from the date the PPH request is filed. [*]
(11) How common is it for the first action in a PPH application to be a Notice of Allowance?
According to recent data, a Notice of Allowance is issued as first action in 21.1% of PPH applications. [*]
(12) How long does it take to receive a final decision after filing a PPH request?
According to recent data, the average time for a final decision to be issued is 6.2 months.
(13) What must be submitted to participate in the PPH?
(a) Copy of the claims that are determined to be patentable in the Office of Earlier Examination (OEE), with Korean translation
(b) Copies of all office actions from the OEE, with Korean translation
(c) Copies of references cited by the OEE examiner (d) Claims correspondence table.
It is not necessary to submit items (a) and (b) when the documents are available via the Dossier Access System (DAS) of the OEE.
(14) Do you have any other statistics which show advantages of using the PPH
[*] Source: Patent Prosecution Highway Portal Site (https://www.jpo.go.jp/e/toppage/pph-portal/statistics.html), Accessed January 06, 2020