Patent Prosecution Highway pilot program between JPO and INPI
The French Patent office (INPI) and the Japanese Patent office (JPO) have launched a Patent Prosecution Highway (PPH) pilot program lasting from January 1, 2021 and until at least December 31, 2022. This PPH agreement will allow both countries, Japan and France, to benefit from accelerated prosecution at INPI provided that at least one claim of a Japanese priority application has been examined and found patentable by the JPO.
The PPH request is free but must be filed before the examination of the application starts. The examination begins at INPI after the three-month period from the publication of the application during which third parties can make observations. Therefore, the examination usually starts about one year after the French patent filing.
A decision to grant, based on the Japanese prior application, is not needed. At least one notification of the JPO indicating that “no reason of rejection has been found for claim XX” is enough to request PPH.
The items to file with the PPH request are:
- all the JPO notifications established for the prior application, and their translation in English or French,
- translation of the claims deemed to be patentable at the JPO,
- a table of correspondence between the claims of the Japanese application and the claims of the French application,
- and a copy of the documents referenced by the JPO and their translation in English or French when needed.
For all of these items, an automatic translation is accepted by INPI (provided that it is correct).
The examination at INPI will start usually on the basis of the provided documents cited by the JPO even if a complementary search is carried out at INPI. Therefore, if the JPO examiner is convinced by the patentability of the subject-matter of the application, the INPI Examiner is expected to trust and follow the opinion of the JPO examiner.
This PPH prosecution at INPI will allow applicants to provide the prior art cited by the JPO, but also the arguments which convinced the JPO Examiner and will be a tool to avoid possible pitfalls of the examination of the inventive steps at INPI for applications filed after May 2020.
Of course, in most cases, the prosecution will be quick and should last between one and two years after the French filing.
Reversely, French applicants will have the opportunity to get an accelerated prosecution at the JPO, directly from the search report opinion received from INPI. Therefore, there will be no need for French applicants to wait for the positive opinion given in the International Search Report of the PCT (Patent Cooperation Treaty) application claiming the priority of the French application.
Of course, the benefits of the PPH will become more interesting for French applicants when INPI will have similar agreements with other IP offices. For the time being, discussions would be well advanced with KIPO (South Korea), and starting with CNIPA (China).
Plasseraud IP Group has a dedicated Japan Team that provides practical advice on patenting in France and Japan.