The United States and Japan have a close relationship when it comes to the filing of related patent applications. The United States is the global hub for technology-based companies, and Japan being the most suited country due to its large-scale economic trade. With the third-largest economy by GDP and fourth-largest by PPP, Japan has been a leader in the technology sector. So it becomes very common for applicants to file the related patent application in the United States and Japan. Due to this close relationship, there have been multiple programs between the two countries which work for the expediting of the applications.
Common Application and Priority
The issues that remain here are with priority. While applying in other countries, the applicant can claim the priority to a common patent application, claiming priority over to others. In which case, the previous examination report can be used for speeding the prosecution in one of both jurisdictions. For the better execution of the speeding prosecution, both countries have initiated multiple programs which have helped both countries to increase the number of applications filed and the applicant in speeding the whole process.
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Patent Prosecution Highway (PPH)
A very important development of recent times is that of the Patent Prosecution Highway (PPH) developed by the United States Patent and Trademark Office (USPTO). This concept primarily works on the premise of having a bilateral linkage of two patent offices to alleviate the burden of work. Through this, the second patent office takes advantage of the work that has already been completed in the first patent office. This helps in reducing the burden on the patent office and it allows an expedited patent examination in a second patent office when a corresponding claim has already been found patentable in the first office. This way the second patent office needs not undergo repetition of search and examination resulting in an expedited process. The first patent office is generally known as the office of earlier examination (OEE) or Office of First Filing (OFF) and the second patent office is called the office of later examination (OLE) or Office of Second Filing (OSF). The first PPH was developed between USPTO and Japan Patent office as a pilot program that began on July 3, 2006, which was implemented on a full-time and permanent basis on January 4, 2008.
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In this situation, if the applicant identifies any allowable claims in the corresponding application, it can apply for the PPH either in the US or Japan, indicating similar allowable claims as specified through the international patent office. The allowable claims must correspond to the claim pending in the jurisdiction where PPH is sought. Such an acceptance generally fastens the whole procedure of the patent examination, since the OSF need not undergo repetition and examination and will rely on the previous examination done. Issues concerning allowance might arise since it depends upon the particular patent office rules. Nevertheless, the application tends to be examined quicker through this route.
Collaborative Search Pilot Program
This program is also very useful for getting more efficient results while dealing with the prior art search. Both the office can share the prior art search results before coming on the first action. This way the expedited examination can be done where both the countries can be ensured that the relevant prior art is identified. Also, there is a timeline associated with this, where the prior art result needs to be given within four months. Any applicant can apply for this program by filing few certifications showing the substantial corresponding scope. This application needs to be filed at both offices within 15 days.
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Japan’s Internal Policy
The patent office of Japan provides the system of accelerated examination. This feature is available for all the applicants who have related patent applications in Japan and internationally. This program does not only cover the USPTO but also covers other countries as well. Few points for taking the benefits of this accelerated examination must be noted. The application needs to be filed at the Japan Patent Office and the related application subsequently filed at the foreign intellectual property office. In the case of the PCT application, the PCT is filed in Japan and enters the national stage in Japan. The application can also be related to the JPO domestic application and PCT filed with JPO.
The difference here as compared to the above two is to not need to have a corresponding claim and it will be the prerogative of the applicant to provide the prior art documents as compared to the above two where the prior art was shared between the offices.
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Author: Saransh Chaturvedi an associate at Global Patent Filing, in case of any queries please contact/write back us at email@example.com.