01 May 2019 in Newsletter
Introduction to Prioritized and Expedited Patent Examination Procedures (Part Two) Chapter of Japan
By Han-Mei Tso
Previously, Osha Liang Insights provided an overview of the prioritized patent examination procedures in China (article link). For the second part of this series, we will focus on the expedited patent examination procedures in Japan.
Japan provides three types of expedited examination programs: Accelerated Examination, Preferential Examination, and Super Accelerated Examination. Patent applications eligible for Accelerated Examination may include the following:
- Working-related applications: patent applications filed by an applicant or a licensee who has already commercialized the invention or plans to commercialize the invention within two years from the filing date of a request for Accelerated Examination;
- Internationally-filed applications: patent applications that have at least one associated foreign or PCT patent application;
- Applications filed by small and medium-sized enterprises (SMEs), individuals, universities, public research institutes, approved technology licensing organization (TLOs), or authorized TLOs; and
- Green-related applications that intend to obtain a patent for a green invention (e.g., the invention has energy-saving effects and contributes to CO2 reduction).
Preferential examination can be requested for an application where a third party is practicing or planning to practice the claimed invention. Patent applications eligible for Preferential Examination must meet various conditions, such as (1) being published, (2) having the claimed invention practiced or potentially practiced by a third party, and (3) other statutory requirements. A third party can also file the Preferential Examination request for defensive purposes.
Super Accelerated Examination requires that the claimed invention be presently practiced or planned to be practiced by the applicant or licensee within two years from the date of the request. Specifically, Super Accelerated Examination can be requested when both conditions of working-related applications and Internationally-filed applications are met according to the above criteria in Accelerated Examination, or a venture company’s application meets the conditions of working-related applications.
To expedite examination, a petition for expedited examination must be filed at the same time or after filing a request for examination with the Japan Patent Office (JPO). No official fee will be incurred. With the petition, a prior art search and an explanation comparing the claimed invention with the prior art are needed. The JPO will further require an explanation on how and what kind of search was done and the results thereof. However, if a search report and its opinion from a search authority are submitted, the prior art search and the explanation can be omitted. Additionally, the request for Super Accelerated Examination must be filed before receiving the first office action on the merits.
Compared to the regular patent examination, examination occurs under expedited examination much faster. According to the statistics in 2017, the average first office action pendency for Accelerated Examination and Preferential Examination was about 2.3 months and 0.7 months for Super Accelerated Examination. The average time to issuing a first action was 9.3 months in 2017.
For Accelerated Examination and Preferential Examination, no event would trigger the early termination of the expedited process, but the applicant’s cooperation will be expected. In contrast, for Super Accelerated Examination, a request for an extension of time to respond to an office action will trigger early termination of the expedited process.
In addition to Accelerated Examination, Preferential Examination, and Super Accelerated Examination, Japan also participates in the Patent Prosecution Highway (PPH) program with many foreign patent offices. Under the PPH program, entry into the program requires that an application has at least one claim allowed by the office where the application was originally filed.