Newsletter
Patent Prosecution Highway (PPH) Pilot Program between TIPO and JPO now Modified to PPH MOTTAINAI Pilot and Extended for 3 Years
The Patent Prosecution Highway (PPH) Pilot Program between TIPO (Taiwan) and JPO (Japan), which has been implemented for 2 years, was modified to the PPH MOTTAINAI Pilot starting May 1, 2014. The pilot run will be extended for 3 more years.
Under the PPH Programs, only the examination results of the Office of First Filing (OFF), which determine that the claims of an application are patentable, can be utilized to go through an accelerated examination in the Office(s) of Second Filing (OSF). However, if one of the OSFs issues its examination results ahead of the OFF, such examination results cannot be utilized by the OFF (as illustrated in the figure below):
(Note: The direction of an arrow indicates applying for a PPH application based on the examination results of one office to the other office.)
As a result of the aforementioned, the examination results of one of the OSFs are not properly utilized, which might cause waste. That is the reason why the new pilot program is called "PPH MOTTAINAI," with "MOTTAINAI" being a Japanese term meaning "a sense of regret concerning waste when the intrinsic value of an object or resource is not properly utilized," since by means of the new PPH MOTTAINAI Pilot, one will be able to fully utilize the earlier examination results from any office, which causes no waste.
For example, under the PPH MOTTAINAI Pilot, if an applicant first files one patent application with TIPO in Taiwan, and then files one patent application based on the priority of said Taiwan patent application in Japan, then when JPO issues the examination results ahead of TIPO, the applicant can utilize those examination results in TIPO to accelerate the examination of the Taiwan patent application under the PPH MOTTAINAI Pilot. Such a utilization could not be accepted under other PPH programs.
Furthermore, under the PPH MOTTAINAI Pilot, not only can the OFF and one of the OSFs mutually utilize the earlier examination results (as shown in Case 1 below), but even if neither Office A nor Office B is the OFF, so long as both offices have a bilateral agreement of the PPH MOTTAINAI Pilot, and the application with Office A and that with Office B have the same earliest priority date, the earlier examination results of any office can be utilized in the other office (as shown in Case 2 below). What follows next is that, if Offices A, B and C all implement the PPH MOTTAINAI Pilot, and all three of the applications have the same earliest priority date, the earlier examination results of any of the three Offices can be utilized in any of the other two Offices (as shown in Case 3):
Likewise, when the PPH MOTTAINAI Pilot is implemented among several countries, all of these countries can utilize the earlier examination results of any of them more flexibly.
At present, in addition to TIPO-JPO, TIPO-SPTO (Spain) has also run the PPH MOTTAINAI Pilot for 2 years commencing on October 1, 2013. Moreover, a PPH program has been formally launched by TIPO-USPTO (USA) beginning on September 1, 2012. Although the scope for the utilization of the Patent Prosecution Highway Programs remains limited in Taiwan, it has been significantly strengthened and thus can be more effectively utilized now.