08 March 2012
67 '11 ' OFFICE ORDER NO. __ Series of 2012
Subject: IMPLEMENTATION OF IPOPHL- JPO PATE NT PROSECUTION HIGHWAY
The Intellectual Property Office of the Philipp ines (IPOPHL) - Japan Patent Office (JPO) Patent Prosecution Highway (PPH) on work sharing signed on February 9,2012 will take effect on March 12, 2012.
Applications to be prosecuted under the PPH shall be subject to the guidelines herein attached as Annex A.
Applicants and agents who wish to avail of the PPH shall duly accomplish the PPH Request Form herein attached as Anne x B, and seasonably file the same .
Under the IPOPHL- JPO PPH Agreement, JPO work products shall serve as additional reference by the IPOPHL Examiners.
For guidance.
ATTY. e oR.~LOR Directo r General
Republic of the Philippines ~ INTELLECTUAL PROPERTY OFFICE
Intellectual Property Centre, World Finance Plaza, 28 Upper McKinley Road , . McKinley Hill Town Center, Fort Bonifacio, Taguig City , Philippines 1634 n fIll. I'D Iv
• www .ipophil.gov .ph.T:+632-2386300.F: +632-8569293.mail@ipo phil.gov .ph .!/ 1
ANNEXA Part I PPH using the national work products from the ,JP O
Procedures to file a request to the IPOPHL (Intellectual Property Office of the Philippines) for Pate nt Prosecution Highway Pilot
Program between the IPOPHL and the JPO (Japan Patent Office)
Part I PPH using the national work products from the JPO
Applicants can request accelerated examination by a prescribed procedure including
submission of relevant documents on an application which is filed with the IPOPHL and satisfies
the following requirements under the IPOPHL-JPO Patent Prosecution Highway (PPH) pilot
program based on the JPO application.
When filing a request for the PPH pilot program, an applicant must submit a request form to the
IPOPHL.
The Offices may terminate the PPH pilot program if the volume of participation exceeds
manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot
program is terminated.
The PPH pilot program will be in effect for three (3) years commencing on March 12, 2012 and
will end on March 11,2015. However, the program may be extended after a joint IPOPHL-JPO
review and assessment of the program implementation.
1. Requirements
(a) The IPOPHL application (including a PCT national phase application) is
(i) an application which validly claims priority under the Paris Convention to the JP O
application(s) (examples are provided in ANNEX I, Figure A, B, C, F, G and H), or
(ii) a PCT national phase application without priority claim (examples are provided in
Annex I, Figure I), or
(iii) an application which validly claims priority under the Paris Convention to the PCT
application(s) without priority claim (examples are provided in ANNEX I, Figure J, K
and L).
The IPOPHL application, which validly claims priority to multiple JPO or direct peT
applications, or which is the divisional application validly based on the originally filed
application that is included in (i) to (iii) above, is also eligible.
(b) At least one corresponding application exists in the JPO and has one or more
claims that are determined to be patentable/allowable by the JPO.
The corresponding application(s) can be the application which forms the basis of the
priority claim, an application which derived from the JPO application which forms the basis
ANNEXA Part I PPH using the nation al work products from the JPO
of the priority claim (e.g., a divisional application of the JPO application or an application
which claims domestic priority to the JPO application (see Figure C in Annex I)), or an JPO
national phase application of a PCT appl ication (see Figures H, I, K and L in Annex I).
Claims are "determined to be allowable/patentable" when the JPO examiner clearly
identified the claims to be allowable/patentable in the latest office action, even if the
application is not granted for patent yet.
The office action includes:
(a) Decision to Grant a Patent
(b) Notification of Reasons for Refusal
(c) Decision of Refusal
(d) Appeal Decision
For example, if the following routine expression is described in the "Notification of Reason
for Refusal " of the JPO, those claims are clearly identified to be allowable/patentable.
"<Claims which has been found no reason for refusal>
At present for invention concerning Claim_ , no reason for refusal is found ."
(c) All claims on file, as originally filed or as amended, for examination under the PPH
must sufficiently correspond to one or more of those claims indicated as allowab le
in the JPO.
Claims are considered to "sufficiently correspond " where, accounting for differences due to
translations and claim format, the claims in the IPOPHL are of the same or similar scope
as the claims in the JPO, or the claims in the IPOPHL are narrower in scope than the
claims in the JPO . In this regard , a claim that is narrower in scope occurs when a JPO
claim is amended to be further limited by an additional feature that is supported in the
specification (description and/o r claims).
A claim in the IPOPHL which introduces a new/different category of claims to those claims
indicated as allowable in the JPO is not considered to sufficiently correspond. For example ,
where the JPO claims only contain claims to a process of manufacturing a product , then
the claims in the IPOPHL are not cons idered to suff iciently correspond if the IPOPHL
claims introduce product claims that are dependent on the corresponding process claims .
Any claims amended or added after the grant of the request for participation in the PPH
pilot program need not to sufficiently correspond to the claims indicated as allowable in the
JPO application.
(d) A request for PPH may be submitted even during the substantive examination stage,
provided that, exam ination on the merits of the application has not been made .
2
ANNEXA Part I PPH using the national work products from the J PO
2. Documents to be submitted
Documents (a) to (d) below must be submitted by attaching to the PPH request.
(a) Copies of all office actions (which are relevant to substantial examination for
patentability in the JPO) which were issued for the corresponding application by the
JPO, and translations ot tnem',
Either Filipino or English is acceptable as translation language. The applicant does not
have to submit a copy of JPO office actions and translations of them when those
documents are provided via AIPN (JPO's dossier access system) because the office
actions and their machine translations are available for the IPOPHL examiner via the AIPN.
If they cannot be obtained by the IPOPHL examiner via the AIPN , the applicant may be
notified and requested to provide the necessary documents.
(b) Copies of all claims determined to be patentable/allowable by the JPO, and
translations of them.
Either Filipino or English is acceptable as translation language. The applicant does not
have to submit a copy of claims indicated to be allowable/patentable in the JPO, and
translations thereof when the documents are provided via AIPN (JPO's dossier access
system) because they are available for the IPOPHL examiner via the AIPN. If they cannot
be obtained by the IPOPHL examiner via the AIPN , the applicant may be notified and
requested to provide the necessary documents .
(c) Copies of references cited by the JPO examiner
If the references are patent documents, the applicant doesn 't have to submit them
because the IPOPHL usually possesses them. When the IPOPHL does not possess the
patent document, the applicant has to submit the patent document at the examiner's
request. Non-patent literature must always be submitted.
The translations of the references are unnecessary.
(d) Claim correspondence table
The applicant requesting PPH must submit a claim correspondence table, which indicates
how all claims in the IPOPHL application sufficiently correspond to the
patentable/allowable claims in the JPO application.
When claims are just literal translation , the applicant can just write down that "they are the
same" in the table. When claims are not just literal translation, it is necessary to explain the
Machine translations will be admissible, but if it is impossible for the examiner to understand the outline of the translated office action or claims due to insufficient translation , the examiner can request the applicant to resubmit translations.
3
ANNEXA Part I PPH using the national work p roducts from the JPO
sufficient correspondence of each claim .
When the applicant has already submitted above documents (a) to (d) to the IPOPHL through
simultaneous or past procedures , the applicant may incorporate the documents by reference
and does not have to attach them.
3. PPH request form
Subject: Request for an accelerated examination under the PPH pilot program
Date of filing:
Application number:
Title of the invention :
Applicant:
This application is an application validly claiming the priority under the Paris Convention to the
corresponding JPO application (the applicat ion number is ), and the accelerated
examination is requested under the PPH pilot program . For this purpose, the following documents
are attached :
o Copies of all office actions (which are relevant to substantial examination for patentability in the JPO) which were issued for the corresponding application by the JPO
and
o translations of them
o Copies of all claims determined to be patentable/allowable by the JPO and o translations of them
o Copies of references cited by the JPO examiner
o Claim correspondence table
4
ANNEXA Part I PPH using the nati onal work products from the J PO
Claim correspondence table
The claim in
the IPOPHL
The patentable claim
in the JPO Comments about the correspondence
(Documents to be omitted to submit)
5
_ ~.L n using the peT international work products from the
Part II PPH using the peT international work products from the JPO
Applicants can request accelerated examination by a prescribed procedure includi
submission of relevant documents on an application which is filed with the IPOPHL and satisfn
the following requirements under the IPOPHL-JPO Patent Prosecution Highway pilot prograr
based on PCT international work products (PCT-PPH pilot program).
When filing a request for the PCT-PPH pilot program, an applicant must submit a request form to
the IPOPHL.
The Offices may terminate the PCT-PPH pilot program if the volume of participation exceeds
manageable level, or for any other reason. Ex Ante notice will be published if the PPH pilot
program is terminated .
The PPH pilot program will be in effect for three (3) years commencing on March 12,2012 and
will end on March 11, 2015. However, the program may be extended after a joint IPOPHL-JPO
review and assessment of the program implementat ion.
1. Requirements
The application which is filed with the IPOPHL and on which the applicant files a request under the
PCT-PPH must satisfy the following requirements :
(1) The latest work product in the international phase of a PCT application corresponding
to the application ("international work product"), namely the Written Opinion of
International Search Authority (WO/ISA), the Written Opinion of International
Preliminary Examination Authority (WO/IPEA) or the International Preliminary
Examination Report (IPER), indicates at least one claim as patentable/allowable (from
the aspect of novelty, inventive steps and industrial applicability).
Note that the ISA and the IPEA which produced the WO/lSA, WO/IPEA and the IPER are
limited to the JPO, but, if priority is claimed, the priority claim can be to an applicat ion in any
Office, see example A' in Annex II (application ZZ can be any national application).
The applicant cannot file a request under PCT-PPH on the basis of an International Search
Report (ISR) only.
In case any observation is described in Box VIII of WO/ ISA, WOIIPEA or IPER which forms the
basis of a PCT-PPH request , the applicant must explain why the claim(s) is/are not subject to
he observation irrespective of whether or not an amendment is submitted to correct the
bservation noted in Box VIII. The application will not be eligible for participating in PCT-PPH
lot program if the applicant does not explain why the claim(s) is/are not subject to the
servation . In this regard , however, it does not affect the decision on the eligibility of the
olication whether the explanation is adequate and/or whether the amendment submitted
6
Part II PPH using the peT internationa l work products from the U.l v
overcomes the observation noted in Box VIII.
2) The relationship between the application and the corresponding international
application satisfies one of the following requirements:
(A) The application is a national phase application of the corresponding international
application. (See Figures A, A', and A" in Annex II)
(8) The application is a national application as a basis of the priority claim of the
corresponding international application. (See Figure 8 in Annex II)
(C) The application is a national phase application of an international application
claiming priority from the corresponding international application. (See Figure C in
Annex II)
(0) The application is a national application claiming foreign/domestic priority from
the corresponding international application. (See Figure 0 in Annex II)
(E) The application is the derivative application (divisional application and application
claiming domestic priority etc.) of the application which satisfies one of the above
requirements (A) - (0). (See Figures E1 and E2 in Annex II)
(3) All claims on file, as originally filed or as amended, for examination under the PCT-PPH
must sufficiently correspond to one or more of those claims indicated as allowable in
the latest international work product of the corresponding international application.
Claims are considered to "sufficiently correspond" where, accounting for differences due to
translations and claim format, the claims in the IPOPHL are of the same or similar scope as the
claims indicated as allowable in the latest international work product, or the claims in the
IPOPHL are narrower in scope than the claims indicated as allowable in the latest international
work product.
In this regard , a claim that is narrower in scope occurs when a claim indicated as allowable in
the latest international work product is amended to be further limited by an additional feature
that is supported in the specification (description and/or claims).
A claim in the IPOPHL which introduces a new/different category of claims to those claims
indicated as allowable in the latest international work product is not considered to sufficiently
correspond. For example, where the claims indicated as allowable in the latest international
work product only contain claims to a process of manufacturing a product, then the claims in
the IPOPHL are not considered to sufficiently correspond if the IPOPHL claims introduce
product claims that are dependent on the corresponding process claims .
Any claims amended or added after the grant of the request for participation in the PCT-PPH
pilot program need not to sufficiently correspond to the claims indicated as allowable in the
latest international work product.
7
Part II PPH using t he P C'I' international work products from the J P O
(4) A request for PPH may be submitted even during the substantive examination stage, provided
that, examination on the merits of the application has not been made.
2. Documents to be submitted
The applicant must submit the following documents attached to the request form in filing a
request under PCT-PPH. Some of the documents may not be required to submit in certain
cases.
(1) A copy of the latest international work product which indicated the claims to be
patentable/allowable and their Filipino or English translations if they are not in English.
In case the application satisfies the relationship 1.(2)(A), the applicant need not submit a copy
of the International Preliminary Report on Patentability (IPRP) and any English translations
thereof because a copy of these documents is already contained in the file-wrapper of the
application. In addition, if the copy of the latest international work product and the copy of the
translation are available via "PATENTSCOPE (registered trademark):", an applicant need not
submit these documents, unless otherwise requested by the IPOPHL.
\:NOIISA and IPER are usually available as "IPRP Chapter I" and "IPRP Chapter II"
respectively in 30 months after the priority date.)
(2) A copy of a set of claims which the latest international work product of the
corresponding international application indicated to be patentable/allowable and their
Filipino or English translations if they are not in English
If the copy of the set of claims which are indicated to be patentable/allowable is available via
"PATENTSCOPE (registered trademark)" (e.g. the international Patent Gazette has been
published), an applicant need not submit this document unless otherwise requested by the
IPOPHL. Where the set of claims is written in Japanese, the translations thereof must be still
submitted by an applicant.
(3) A copy of references cited in the latest international work product of the international
application corresponding to the application.
If the reference is a patent document, the applicant is not required to submit it. In case the
IPOPHL has difficulty in obtaining the document, however, the applicant may be asked to
submit it. Non-patent literature must always be submitted. Translations of cited references are
unnecessary.
2 https://www.wipo.intlpctdb/en/index.jsp
8
Part II PPH using the P C'I' international work products from the J P O
(4) A claims correspondence table which indicates how all claims in the application
sufficiently correspond to the claims indicated to be patentable/allowable.
When claims are just literal translation, the applicant can just write down that "they are the
same" in the table. When claims are not just literal translation, it is necessary to explain the
sufficient correspondence of each claim based on the criteria 1. (3) (Please refer to the
Example form below).
When an applicant has already submitted the above mentioned documents (1) - (4) to the
IPOPHL through simultaneous or past procedures, the applicant may incorporate the documents
by reference and is thus not required to attach the documents.
3. PCT-PPH request form
Subject: Request for an accelerated examination under the PCT-PPH pilot program
Date of filing:
Application number:
Title of the invention:
Applicant:
This application is a national phase application of a PCT international application (the application
number is ), and the accelerated examination is requested under the
PCT-PPH pilot program. For this purpose, the following documents are attached:
o A copy of the latest international work product which indicated the claims to be patentable/allowable and
o their Filipino or English translations if they are not in English
o A copy of a set of claims which the latest international work product of the corresponding international application indicated to be patentable/allowable and
o their Filipino or English translations if they are not in English
o A copy of references cited in the latest international work product of the international application corresponding to the application
o A claims correspondence table which indicates how all claims in the application sufficiently correspond to the claims indicated to be patentable/allowable
9
Part II PPH using the peT international work products from the J P O
Claim correspondence table
The claim in
the IPOPHL
The patentable claim
in the international
phase
Comments about the correspondence
(Documents to be omitted to submit)
10
!ANNEX ~
o A case meeting requirement (a) (i)- Paris route JPO
app lication
Priority claim
® A case meeting requirement (a) (i)- peT route JPO
app lication II I I
I Priority : claim I I
'¥
peT appl icat ion
11
!ANNEX Ii
CD A case meeting requirement (a) (i)- Paris route, Domestic priority JPO
I
application I I
I
I I
Domestic : Priority V
JPO application K
IPOPHIL application
Priority claim
r[)'\A case not meeting requirement (a) ~ - Paris route, but the first application is from the third country
1 xx application I..: ------,------
Priority claim
pate"tableIAII~NG Priority claim
IPOPHL application --------1l-~~~ri~t 1
XX: the office other than the JPO
12
!ANNEX II
@A case not meeting requirement (a) - peT route, but the first application is from the third country
I1xx appl icat ion 1-.---- -,--------- I
: Priority : claim
JPO application
I
,----_NG\/ L~~~~ le/A l l owab l e )
Priority : IPOPHL DO Request claim
^( � I appli cation for PPH
peT application
XX : the office other than the JPO
o A case meeting requirement (a) (i)- Paris route & Complex priority JPO -----,---- - ----.,: patenta ble/A llow~
application OK I ZZ appl ication
I I I I
Priority : Priority claim claimI
I
^( � ^( � I
1------------1IPOPHLapplication '----'
ZZ : any office
13
[ANNEX II
«3\ A case meeting requirement (a) (i) ~ - Paris route & divisional application
application If-o-,---I Patentable/Allowable J I
: Priority : claim V
IPOPHL I-----;-~_~_~_ OK applica tion II
r I
: Divisional I
'V
IPOPHL applica tion
@ A case meeting requirement (a) (i)- peT route JPO 1'-7---~--~-
application :
: Prior ity : claim I
JPO DO I Patentable/Allowable ]I 'V application
peT application
IPOPHL DO r---------i Reque,! -oK applicat ion for PPH
14
!ANNEX II
fI\ A case meeting requirement (a) (ii) ~ - Direct peT route
JPO DO i patentable/A llo",,~bie]applic ation
PCT IPOPHL DOapplication ,---------,f-------I Req"e'l ) 0 K application for PPHWithout priority claim
fJ\A case meeting requirement (a) (iii) \:!-) -Direct peT & Paris route
JPO DO application
PCT I I I
Without priority claim I I
application
OK: Priority I claim V
IPOPHL _______ I Request l applicatio n I for PPH I
15
kL\ NNEX II
fK\A case meeting requirement (a) (iii) ~ - Direct PCT & PCT route
JPO DO appl ication
PCT appl ication I
'----'_ _ -----J I
Witho ut prior ity claim : I I OK : Priority
IPOPHL DO I claim
-.y application
PCT appl ication
0 A case meeting requirement (a) (iii) ~ - Direct PCT & PCT route
PCT appl ication I
I
Wi thoul prionly claim I I I
: Priority Patentable/Allowabl e : claim
-.y
PCT application ) OKIPOPHL DO Reque"
application for PPH
16
-
[ANNEX III
(A) The application is a national phase application of the corresponding international application.
IPCTl ~
OK
L.-- ---1 DO
(A') The application is a national phase application of the corresponding international application.
(The corresponding international application claims priority from a national application.)
IZZ Application 1- ---,------ OK
IPtT1 ~
'-------1 DO
ZZ=any office
]7
V\NNEX III
(A") The application is a national phase application of the corresponding international application.
(The corresponding international appl ication claims priority from an international application.)
OK
'--- --, DO
(8) The application is a national application as a basis of the priority claim of the corresponding international application.
IPOPHL Application t---, 1 1
I I 1
1 1 1 1 1
I
1 1 1
rPtTl ~
OK - - - - -j- - - - --1 PPH
18
[ANNEX ul
(C) The application is a national phase application of an intern ational application claiming priority from the corresponding international application.
WO OK IPER
IPCTl I~ I, I
I I
: Priority : Claim I
I I
I P~T I- -------jROI- L-----J '-------j DO
(D) The application is a national application claiming foreign/domestic priority from the corresponding international application.
WO IPER OK
Prior ity Claim
t
19
[ANNEX III
(E1) The application is a divisional application of an application which satisfies the requirement (A).
OK
Divisional application
IIPOPHL Appl ication~
(E2) The application is an application claiming domestic priority from an application which satisfies the requirement (8).
OK IPOPHL Application h-------f-----r--
I : Domestic I I
I : Priority
I
I .. Claim I
I I IPOPHL Appl ication I
I I
I
I
rPt1l ~
20
I Annex B
JPO-IPOPHL PATENT PROSECUTION HIGHWAY (PPH) REQUEST FORM
APPLICATION NO.
TITLE OF THE INVENTION
APPLICANT
CORRESPONDING JPO APPLICATION NO.
DOCUMENTS SUBMITTED 0 Copies of all office actions (which are relevant to substantial examination for patentability in the JPO) which were issued for the corresponding application by the JPO
0 Translations of said office actions if not in English
0 Copy of all claims determined to be patentable/allowable by the JPO
0 Translations of said patentable/allowable claims if not in English
0 Copies of references cited by the JPO examiner
0 Claim correspondence table
SIGNATUREIDATE
For authorized receiving officer of IPOPHL only
RECEIVING OFFICER
DATE RECEIVED
(Documents to be omitted to submit)
CLAIM CORRESPONDENCE TABLE
CLAIM(S) IN THE IPOPHL APPLICATION
PATENTABLE CLAIM(S) IN THE CORRESPONDING JPO
APPLICATION
COMMENTS ABOUT THE CORRESPONDENCE
..IPO-IPOPHL PCT-PATENT PROSECUTION HIGHWAY (PPH) REQUEST FORM
APPLICATION NO.
TITLE OF THE INVENTION
APPLICANT
CORRESPONDING PCT INTERNATIONAL APPLICATION NO.
DOCUMENTS SUBMITTED 0 A copy of the latest international work product wh ich indicated the claims to be patentable/allowable
0 Translation of said latest international work product if not in English
0 A copy of the set of claims which the latest international work product of the corresponding international appl icat ion indicated to be patentable/allowable
0 Trans lations of said patentable/allowab le claims if not in English
0 Copies of references cited in the latest international work product of the international application corresponding to the application
0 Claim correspondence table
SIGNATUREIDATE
For authorized receiving officer of IPOPHL only
RECEIVING OFFICER
DATE RECEIVED
CLAIM CORRESPONDENCE TABLE
CLAIM(S) IN THE IPOPHL APPLICATION
PATENTABLE CLAIM(S) IN THE INTERNATIONAL PHASE
APPLICATION
COMMENTS ABOUT THE CORRESPONDENCE
(Documents to be omitted to submit)
JPO-IPOPHL PATENT PROSECUTION HIGHWAY (PPH) INTERNAL WORKFLOW
Applicant submits PPH requests and documents
J
Receiving Officer ";' BOP Records Officer
\11
PPH Focal Point
No
BOP Records Officer
~ '\