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PATENT-Accelerated Examination
Usually, it takes about twenty four months before Japan Patent Office issues a first office action after filing a Request for Examination. In order to receive a first office action earlier, there is a procedure called “Request for Accelerated Examination” which would shorten the period for a notice of a first office action to two or three months. There are two types of Accelerated Examination under the Japanese patent practice: (a) a Normal Accelerated Examination and (b) an accelerated examination under Patent Prosecution Highway (PPH). Conditions and necessary documents for these Accelerated Examinations are described as below.
(a) Normal Accelerated Examination*1
[Conditions]
Four types of applications which are eligible for filing the Accelerated Examination are as follows:
(i) the applicant or its licensee is doing business using the invention claimed in the application or about to start the business in two years;
(ii) a corresponding application is filed in a country other than Japan or are filed as an international application;
(iii) the applicant is academic or public institution, or small and medium size enterprise*2; and
(iv) claiming inventions of green technologies (e.g. energy saving or CO2 reduction).
[Necessary Documents]
In filing the Accelerated Examination, applicants’/inventors’ comments on patentability over the prior art should be filed.
(b)Patent Prosecution Highway (PPH) *3
[Conditions]
PPH is available when all claims of a Japanese patent application, which may be originally filed or amended, sufficiently correspond to one or more of those claims indicated as allowable by a Patent Office.
There are three types of PPH: (i) PPH, (ii) PPH-PCT, and (iii) PPH-MOTTAINAI*4 pilot program.
(i) PPH is available for a Japanese patent application which claims priority under the Paris Convention when the basic application has been granted in the Office of the First Filing (OFF). Also, PPH is available for a national phase entered Japanese patent application from a PCT application when a patent has been granted in any designated country other than Japan. At the time of filing an Accelerated Examination, all claims of the Japanese patent application should correspond to one or more of those claims indicated as allowable by the OFF or the designated country’s patent office.
(ii) PPH-PCT is available for a Japanese patent application which is a national phase application of a corresponding PCT application, to which International Search Report (ISR), International Preliminary Report on Patentability (IPRP) or International Preliminary Examination Report (IPER) has been issued showing that at least inventions claimed in the Japanese patent application appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. At the time of filing an Accelerated Examination, all claims of the Japanese patent application should correspond to one or more of those claims indicated as novel, inventive and industrially applicable in ISR, IPER or IPRP.
(iii) PPH-MOTTAINAI pilot program is more user-friendly program than PPH in the point of whether or not the office which provides the examination results is the OFF. PPH-MOTTAINAI pilot program is available when corresponding patent application has been filed and granted in any of the following countries regardless of whether the country is the OFF: U.S.A., U.K., German, Canada, Finland, Russia, Spain, Portuguese and EPO. At the time of filing an Accelerated Examination, all claims of the present application should correspond to one or more of those claims indicated as allowable in any one of the above countries.
[Necessary Documents]
Usually, following documents/information are required in filing of Accelerated Examination under PPH:
-A table of claim numbers showing how all claims in the Japanese patent application sufficiently corresponds to the allowable/patentable claims in a corresponding allowable application;
-Indication of all of correspondences noticed for the corresponding allowable application and if the language of such correspondences are not English, English translation of such correspondences; and
-Non-patent prior art documents cited in the examination of the corresponding allowable application.
*1 Please also see the website of the Japan Patent Office in detail:>
http://www.jpo.go.jp/cgi/linke.cgi?url=/torikumi_e/t_torikumi_e/outline_accelerated.htm
*2 Under Small and Medium Enterprise Basic Law, small and medium size enterprise is defined as follows:
| Industries | Capital Size (million) | Number of employees |
|---|---|---|
| a. Manufacturing and Others (except for b to f below) | ¥300 or less | 300 or less |
| b. Wholesale | ¥100 or less | 100 or less |
| c. Retail | ¥50 or less | 50 or less |
| d. Services (except for software industry, information handling service, and hotel business) | ¥50 or less | 100 or less |
| e. Hotel business | ¥50 or less | 200 or less |
| f. Manufacturing rubber product | ¥300 or less | 900 or less |
*3 Please also see the website of the Japan Patent Office in detail:
http://www.jpo.go.jp/cgi/linke.cgi?url=/ppph-portal/index.htm
*4 “MOTTAINAI” is a Japanese term meaning “a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized.” It is said that its concept is made up by Reuse, Recycle, Reduce and Respect