A PPH (Patent Prosecution Highway) agreement is an agreement between two (or more) patent offices concerning the accelerated processing of patent applications extended under priority of a first national application that has been deemed patentable by the office of first filing.
A PPH agreement between the INPI (French Industrial Property Office) and the JPO (Japan Patent Office) came into force on 1 January 2021 for a pilot period of two years.
The grant procedure can be accelerated by making use of the results of the first procedure.
PPH requests for Japanese applications filed with the JPO
In order for a Japanese patent application to be eligible for a PPH request with the JPO, it must meet certain requirements.
The Japanese application must include at least one claim from the French application that has been determined to be patentable.
Further, all of the original or amended claims filed for examination in the context of the PPH programme must sufficiently correspond to one or more of the claims that have been determined to be patentable by the INPI.
The examination procedure must not have commenced at the JPO.
Lastly, an examination request must be filed with the JPO, either before or at the same time as the PPH request.
A PPH request may be filed at the JPO for the following types of application:
- A Japanese patent application extended under priority of a French patent application that has been determined to be patentable by the INPI;
- A Japanese patent application that has entered the national phase in Japan on the basis of an international application extended under priority of a French patent application that has been determined to be patentable by the INPI;
- A Japanese patent application extended under priority of a French patent application for which a French priority has been determined to be patentable;
- A Japanese patent application extended under priority of:
- a French patent application that has been determined to be patentable; and
- a patent application in a third country;
- A divisional application linked to a Japanese patent application extended under priority of a French patent application that has been determined to be patentable.
When filing a PPH request with the JPO, the applicant must provide copies of relevant patentability reports (and a Japanese or English translation of those reports), copies of the claims that have been determined to be patentable by the INPI (and a Japanese or English translation of those claims), copies of the documents cited in the Search Report sent by the INPI and a correspondence table between the French and Japanese claims.
PPH requests for French applications filed with the INPI
In order for a French patent application to be eligible for a PPH request with the INPI, it must meet certain requirements.
The French application must include at least one claim from the Japanese application that has been determined to be patentable.
Further, the claims contained in the French application must sufficiently correspond to the claims that have been determined to be patentable by the JPO. The scope of the claims of the extended French application must be the same or narrower than the scope of the claims that have been determined to be patentable by the office of first filing.
In order for an application to be eligible for a PPH request, the INPI examination procedure must not have commenced. The INPI therefore recommends that applicants for a French patent file a PPH request within 12 months of filing their patent application with the INPI.
A PPH request may be filed at the INPI for the following types of application:
- A French patent application extended under priority of a Japanese patent application that has been determined to be patentable;
- A French patent application extended under priority of a Japanese patent application for which a Japanese priority has been determined to be patentable;
- A French patent application extended under priority of:
- a Japanese patent application that has been determined to be patentable; and
- a patent application in a third country;
- A divisional application linked to a French patent application extended under priority of a Japanese patent application that has been determined to be patentable;
- A French patent application extended under priority of a priority international application (PCT) that has entered the national phase in Japan and that has been determined to be patentable by the JPO.
When filing a PPH request with the INPI, the applicant must provide copies of relevant patentability reports (and a French or English translation of those reports), copies of the claims that have been determined to be patentable by the JPO (and a French or English translation of those claims), copies of the documents cited by the JPO examiner and a correspondence table between the Japanese and French claims.
A PPH request form must be filed with the PPH request filed after the patent application.
This pilot phase for the PPH agreement between the INPI and the JPO will last for two years and may only concern a limited number of applications each year.
The agreement between the INPI and the JPO will expedite the patent grant procedure. By way of a guide, a grant procedure that might usually take 14 months can be reduced to 7 months. Making use of the results of the first procedure (before the INPI or the JPO) reduces the number of notifications issued by the Office to whom the PPH request is made.
However, it is important to bear in mind that each patent office has absolute discretion to decide the end results of the procedure.
Please do not hesitate to contact our industrial property attorneys for additional information on this and other PPH agreements.
