Global Patent Prosecution under the Patent Prosecution Highway


Introduction

This is the second article in a multi-part series dealing with the benefits of patent prosecution under the Patent Prosecution Highway or PPH. The first article is accessible here. To recap, the PPH is a set of initiatives promulgated by participating patent offices around the world to accelerate the prosecution of patents in the countries of participating patent offices. The PPH enables participating patent offices to share information and benefit from the work done by other participating patent offices, thereby reducing the examination workload and improving the quality of patents. Interested readers are encouraged to read the first article via the link provided.

In the first article, we looked at the PPH requirements for the United States, China, the European Union, and Singapore. In the second article, we will continue our investigation of the PPH requirements. In particular, we will be looking at the PPH requirements for Australia, Canada, South Korea, and Japan.

II. Eligibility conditions for PPH

As noted in the first article, the conditions for participating in the PPH in each of the participating patent offices may differ slightly. However, a few general rules can be gleaned. To be eligible for the PPH with a participating patent office of interest, at the time of filing, applicants must prove that: (1) a related patent application has been found patentable by a participating patent office; (2) the related patent application includes at least one patentable claim; and (3) the claims of a filed patent application must sufficiently correspond to the permitted claims of the related patent application. Once these conditions are met, applicants can apply for a PPH by filing a PPH application and providing the relevant participating patent office with: (1) copies of all correspondence from the related patent application; (2) a copy of the authorized claims of the related patent application; and (3) a claim correspondence table indicating the relationship between the claims of the filed patent application and the permitted claims of the related patent application. With that in mind, we will continue our review of the PPH requirements for Australia, Canada, South Korea and Japan.

Australia (AU)

Intellectual Property Australia (IPA) is a participant of Global PPH. The requirements for participating in the PPH in Australia are as follows: (1) a submitted UA request is associated with a corresponding Offices of Early Examination (OEE) request; (2) The claims of the AU application sufficiently correspond or are modified to sufficiently correspond to one or more authorized claims of the corresponding OEE application or PCT application; (3) a PPH request to review the UA request must be filed before or at the same time as the PPH request is filed; and (4) the IPA has not issued a first review report on the AU candidacy. The association requirement between the AU application and the OEE application discussed in (1) above can be demonstrated by: (i) the AU application claiming priority from the OEE application; (ii) the AU application and the OEE application are based on the same PCT application; (iii) the AU application and the OEE application claim priority from a common document filed in any jurisdiction; (iv) the AU request is the basis for the priority claim of the OEE request; or (v) the AU request is a divisional request of an AU request referred to in points (i) – (iv). In (2), claims are considered “sufficiently corresponding” when the AU claims have the same scope, similar scope or narrower than the claims indicated as permissible / patentable by the OEE. A restricted claim occurs when the claim is amended to be further limited by an additional feature.

If the above conditions are met, applicants can apply for PPH with the IPA. The PPH application must be accompanied by: (1) copies of administrative documents issued by the OEE indicating the admissibility or patentability of the claims; (2) a copy of the claims reviewed by the OEE and copies of any modifications deemed admissible or patentable by the OEE; and (3) a claims correspondence table showing the link between the claims of the AU request and those of the OEE request.

Where the required documents are not in English, the applicant is required to file verified translations in English, or the OEE’s records access system must provide acceptable machine translations. If the quality of the machine translations is not adequate, the API may require verified translations.

Canada (CA)

The Canadian Intellectual Property Office (CIPO) is a participant of PPH. The requirements to participate in the PPH in Canada are as follows: (1) a filed CA application shares the same oldest date (the priority date or the filing date) with a corresponding EST application; (2) the CA request must be open for public inspection; (3) it has been determined that the OEE request contains at least one qualifying claim; (4) the claims in the CA application sufficiently correspond to the claims deemed admissible in the EST application; and (5) the substantive examination of CA’s request has not started. Claims in the CA application are considered “sufficiently corresponding” when the claims are of the same, similar or narrower scope than the claims indicated as eligible / patentable by the OEE.

If the above requirements are met, applicants can file a PPH application with CIPO. The PPH request must be accompanied by: (1) a PPH request form; (2) copies of work products that are relevant to the eligibility of OEE application claims; (3) a copy of the claims deemed admissible by the OEE; (4) copies of citations raised against OEE’s request that are not available to CIPO through regular databases or research files; and (5) a claims correspondence table indicating the link between the claims of the CA application and those of the OEE application. The documents listed from (1) to (4) must be in English or French. Machine translations of applications into English or French are acceptable. However, if CIPO determines that the machine translations are inadequate, CIPO may request official translations.

South Kedge (KR)

The Korean Intellectual Property Office (KIPO) participates in the PPH. The requirements for participating in the PPH in South Korea are as follows: (1) a filed KR application shares the same oldest date with a corresponding EST application; (2) it has been determined that the OEE application includes at least one patentable claim; and (3) the claims of the KR application correspond or will be modified to sufficiently correspond to the claims deemed patentable in the OEE application. Here, the claims of the KR application are considered “sufficiently corresponding” when the claims are of the same, similar or narrower scope than the claims indicated as admissible / patentable by the OEE.

If the above conditions are met, applicants can file a PPH application with KIPO. The PPH application must be accompanied by: (1) copies and translations of the claims which have been found patentable by the OEE; (2) copies of translations (if not in Korean or English) of all administrative actions issued by the OEE; (3) copies of references cited by the OEE; and (4) a claims correspondence table showing the relationship between the claims of the KR request and those of the OEE request. Documents submitted must be in Korean or English. Machine translations are generally acceptable. However, KIPO may require applicants to resubmit translations if the machine translations are incomprehensible to the examiners.

Japan (JP)

The Japanese Patent Office (JPO) is a participant in PPH. The requirements for participating in the PPH in Japan are as follows: (1) a filed JP application and a corresponding OEE application have the same earliest date (i.e. same priority date or same date of deposit) ; (2) the OEE application has at least one claim that has been found patentable by the OEE; (3) the claims of the JP application must sufficiently correspond or be modified to sufficiently correspond to one or more claims deemed patentable by the OEE; and (4) the review was not started at JP’s request.

If the above conditions are met, applicants can file a PPH application with the JPO. The PPH request must be accompanied by: (1) copies of all office actions in the OEE application; (2) a copy of the authorized claims of the OEE request; (3) a claims correspondence table indicating the link between the claims of the JP request and those of the OEE request; and (4) copies of prior art references cited when pursuing the OEE request. Japanese or English is acceptable as the translation language for the submitted documents. The JPO explicitly states that any claims “amended or added after the granting of the application to participate in the PPH Pilot Program must not sufficiently correspond to the claims indicated as patentable / admissible in the OEE application”. So, compared to other PPH participating patent offices (e.g. USPTO) that require amended or added claims to still sufficiently match permitted claims, with JPO applicants have much more leeway to add or modify claims after the PPH request is granted.

Copyright © 2021, Sheppard Mullin Richter & Hampton LLP.Revue nationale de droit, volume XI, number 354


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