Advantages and Concerns for Patent Prosecution Below Patent Prosecution Freeway in Australia, Canada, South Korea, and Japan


I. Introduction

That is the second article of the multi-part collection discussing advantages of prosecuting patents underneath Patent Prosecution Freeway or PPH. The primary article may be accessed right here. To recap, PPH is a set of initiatives promulgated by collaborating patent places of work all over the world to speed up patent prosecution in international locations of the collaborating patent places of work. PPH permits collaborating patent places of work to share info and to profit from work carried out by different collaborating patent places of work, thereby lowering examination workload and enhancing high quality of patents. readers are invited to learn the primary article by way of the hyperlink supplied.

Within the first article, we surveyed PPH necessities for america, China, European Union, and Singapore. Within the second article, we’ll proceed our survey of PPH necessities. Specifically, we’ll take a look at PPH necessities for Australia, Canada, South Korea, and Japan.

II. Eligibility Necessities for PPH

As mentioned within the first article, necessities to take part in PPH in every of the collaborating patent places of work could differ barely. Nonetheless, some common guidelines may be gleaned. To be eligible for PPH at a collaborating patent workplace of curiosity, at time of submitting, candidates are required to point out that: (1) a associated patent utility has been decided by a collaborating patent workplace to be patentable; (2) the associated patent utility consists of at the least one patentable declare; and (3) claims of a filed patent utility should sufficiently correspond to allowed claims of the associated patent utility. As soon as these necessities are met, candidates can apply for PPH by submitting a PPH request and offering the collaborating patent workplace of curiosity: (1) copies of all correspondences of the associated patent utility; (2) a duplicate of the allowed claims of the associated patent utility; and (3) a declare correspondence desk indicating relatedness between the claims of the filed patent utility and the allowed claims of the associated patent utility. With this in thoughts, we’ll proceed our look into PPH necessities for Australia, Canada, South Korea, and Japan.

A. Australia (AU)

The Mental Property of Australia (IPA) is a participant of World PPH. Necessities for collaborating in PPH in Australia are as observe: (1) a filed AU utility is related to a corresponding Workplaces of Earlier Examination (OEE) utility; (2) Claims of the AU utility sufficiently correspond or amended to sufficiently correspond to a number of allowed claims of the OEE utility or corresponding PCT utility; (3) a PPH request to look at the AU utility should be filed earlier than or at similar time of submitting the PPH request; and (4) the IPA has not issued a primary examination report on the AU utility. The affiliation requirement between the AU utility and the OEE utility mentioned in (1) above may be proven by: (i) the AU utility claiming precedence from the OEE utility; (ii) the AU utility and the OEE utility are primarily based on similar PCT utility; (iii) the AU utility and the OEE utility declare precedence from a standard doc filed at any jurisdiction; (iv) the AU utility is foundation of precedence declare of the OEE utility; or (v) the AU utility is a divisional utility of an AU utility referred to in (i)-(iv). In (2), claims are thought of to “sufficiently correspond” the place the AU claims are of the identical, related or narrower scope because the claims indicated as allowable/patentable by the OEE. A slim declare happens when the declare is amended to be additional restricted by an extra characteristic.

If the above necessities are met, candidates can file a PPH request with the IPA. The PPH request should be accompanied by: (1) copies of workplace actions issued by the OEE indicating allowability or patentability of claims; (2) a duplicate of claims examined by the OEE and copies of amendments discovered to be allowable or patentable by the OEE; and (3) a claims correspondence desk indicating relatedness between claims of the AU utility and people of the OEE utility.

When the required paperwork will not be in English, the applicant is required to file verified English language translations, or the OEE File Entry System is to supply acceptable machine translations. If the standard of the machine translations is just not sufficient, the IPA could require verified translations.

B. Canada (CA)

The Canadian Mental Property Workplace (CIPO) is a participant of PPH. Necessities for collaborating in PPH in Canada are as observe: (1) a filed CA utility shares similar earliest date (the precedence date or the submitting date) with a corresponding OEE utility; (2) the CA utility should be open to public inspection; (3) the OEE utility has been decided to include at the least one allowable declare; (4) claims of the CA utility sufficiently correspond to claims deemed allowable within the OEE utility; and (5) substantive examination of the CA utility has not begun. Claims of the CA utility are thought of to “sufficiently correspond” when the claims are of the identical, related, or narrower scope as claims indicated as allowable/patentable by the OEE.

If the above necessities are met, candidates can file a PPH request with the CIPO. The PPH request should be accompanied by: (1) a PPH request type; (2) copies of the work merchandise that are related to allowability of claims of the OEE utility; (3) a duplicate of claims discovered allowable by the OEE; (4) copies of citations raised in opposition to the OEE utility which aren’t obtainable to the CIPO through common databases or search information; and (5) a declare correspondence desk indicating relatedness between claims of the CA utility and people of the OEE utility. Paperwork listed in (1) by way of (4) must be in English or French. Machine translations of purposes in English or French are okay. Nonetheless, if the CIPO determines that the machine translations are insufficient, the CIPO could request official translations.

C. South Korea (KR)

The Korean Mental Property Workplace (KIPO) is a participant of PPH. Necessities for collaborating in PPH in South Korea are as observe: (1) a filed KR utility shares similar earliest date with a corresponding OEE utility; (2) the OEE utility has been decided to incorporate at the least one patentable declare; and (3) claims of the KR utility correspond to or be amended to sufficiently correspond to claims deemed patentable within the OEE utility. Right here, claims of the KR utility are thought of to “sufficiently correspond” when the claims are of the identical, related, or narrower scope as claims indicated as allowable/patentable by the OEE.

If the above necessities are met, candidates can file a PPH request with the KIPO. The PPH request should be accompanied by: (1) copies and translations of claims that have been deemed patentable by the OEE; (2) copies of translations (if not in Korean or English) of all workplace actions issued by the OEE; (3) copies of references cited by the OEE; and (4) a claims correspondence desk indicating relatedness between claims of the KR utility and people of the OEE utility. Paperwork submitted should be in both Korean or English. Machine translations are usually acceptable. Nonetheless, the KIPO could request candidates to resubmit translations if the machine translations are incomprehensible to examiners.

D. Japan (JP)

The Japan Patent Workplace (JPO) is a participant of PPH. Necessities for collaborating in PPH in Japan are as observe: (1) a filed JP utility and a corresponding OEE utility have similar earliest date (i.e., similar precedence date or submitting date); (2) the OEE utility has at the least one declare that has been decided to be patentable by the OEE; (3) claims of the JP utility should sufficiently correspond or amended to sufficiently correspond to a number of claims decided to be patentable by the OEE; and (4) examination has not begun on the JP utility.

If the above necessities are met, candidates can file a PPH request with the JPO. The PPH request should be accompanied by: (1) copies of all workplace actions within the OEE utility; (2) a duplicate of allowed claims of the OEE utility; (3) a declare correspondence desk indicating relatedness between claims of the JP utility and people of the OEE utility; and (4) copies of prior artwork references cited throughout prosecution of the OEE utility. Both Japanese or English is appropriate as a translation language for the submitted paperwork. The JPO explicitly clarifies that any claims “amended or added after the grant of the request for participation within the PPH pilot program want to not sufficiently correspond to the claims indicated as patentable/allowable within the OEE utility.” Thus, evaluating with different PPH collaborating patent places of work (e.g., the USPTO) that require amended or added claims to nonetheless sufficiently correspond to allowed claims, with the JPO, candidates have considerably extra discretion so as to add or amend claims after the PPH request is granted.

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