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| IP Newsletter | Winter 2013/14 |
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PATENT |
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The Patent Prosecution Highway in Korea and Its Strategic Use in Prosecution |
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In January this year, Korea launched two programs to expedite patent prosecution: |
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i) The Global Patent Prosecution Highway (“GPPH”), along with sixteen counterpart patent offices (Australia, Canada, Denmark, Finland, Hungary, Iceland, Israel, Japan, Norway, Portugal, Russia, Spain, Sweden, the UK, the U.S., and the Nordic Patent Institute); and |
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ii) The IP5 PPH, for three years, with the European Patent Office (EPO), Japan (JPO), China (SIPO), and the U.S. (USPTO) (together with Korea (KIPO), known collectively as the IP5 Offices). |
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The purpose of both programs is to simplify the existing system, which consists of multiple bilateral agreements, by replacing it with a single set of qualifying requirements and permitting an applicant to use one unitary system across multiple jurisdictions. |
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The Framework of the PPH Programs |
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Under the previous bilateral framework, an applicant may have encountered difficulties in expediting examination in multiple countries. In Korea, expedited examination under the bilateral program was permitted only if the application filed in and allowed by the partner’s patent office was a priority application, or “first application.” For example, under the Korean-U.S. bilateral program, if the first application was filed in the U.S., an allowed Japanese counterpart of the first application could not trigger expedited prosecution in Korea, even though Japan also had a bilateral agreement with Korea. The GPPH and IP5 programs, however, are intended to address this issue by standardizing and streamlining the requirements of the existing bilateral PPH programs — in the example above, the Japanese counterpart would now be eligible to expedite examination in Korea. |
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Both the GPPH and IP5 programs allow applicants to request expedited examination at any of the participating offices if their application claims have been found to be acceptable by any of the other offices involved in the pilot. The specific requirements are: |
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- All the applications involved must have the same priority date; |
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- At least one claim in an application filed with the first or previous examining office (Office of Earlier Examination (“OEE”)) must have been determined to be allowable; |
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- Substantive examination at the second or later examining office (Office of Later Examination (“OLE”)) generally must not yet have started; |
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- A request for substantive examination must be filed with the OLE prior to or at the same time as the PPH expedited examination request; and |
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- All claims presented for examination at the OLE must sufficiently correspond to the claims found allowable by the OEE. |
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A claim in the OLE which introduces a new or different category of claims to those claims found allowable in the OEE is not considered to sufficiently correspond. For example, where the OEE claims only claim a process of manufacturing a product, if the OLE claims include product claims that are dependent on the corresponding process claims, then the claims in the OLE are not considered to sufficiently correspond. |
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Procedurally, when filing a request for expedited examination under the GPPH or IP5 pilot, an applicant must submit (i) a PPH request form, (ii) the OEE’s notice of patentability of the claims, and (iii) a copy of the claims of the OEE application. The OLE may seek additional materials, including a list of any prior art references cited in the OEE’s examination, to verify the request. |
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Prosecution Strategies |
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According to statistics at the JPO1, the grant rate for an expedited patent application is significantly higher than for one undergoing normal prosecution: |
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Bilateral PPH Data between January and June 2013
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U.S. |
Korea |
Japan |
UK |
Canada |
Australia |
| Grant Rate (%) |
86
(53) |
88.6
(65.6)* |
75
(69) |
100 |
91
(65) |
100** |
| First Action Allowance Rate (%) |
25.7
(15.2) |
33.5
(10.7)* |
22
(15) |
7.1 |
42
(5.1) |
50 |
| Average Number of Office Actions |
TBD
(2.5) |
0.75 |
1.0
(1.1) |
1.1 |
0.7
(1.5) |
0.5 |
( ) – Data for all applications including PPH and non-PPH
* Reference statistics are based on the 2012 data
** 100% includes acceptance, withdrawal or abandonment, but not refusal.
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The statistics above imply that an expedited application may be less scrutinized than normally-prosecuted applications. As such, applicants should consider utilizing the GPPH or IP5 option as a strategic tool for enhancing global patent positions. We recommend the following when expediting examination under these two programs: |
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i) Choose the “right” OEE – As indicated, allowance at the OEE may strengthen the patentability claim of an expedited application at the OLE. However, allowance by an OEE that is perceived to be lax in its examination (e.g., more lenient patentability standards or lower examination quality) may not achieve the desired effect of smoother prosecution at the OLEs. Indeed, the examiners at an OLE may be dismissive of allowance at such an OEE, and may exercise more scrutiny. In contrast, applicants may be able to leverage allowance by the “right” OEE to achieve broader claim scope and a shorter file history, in addition to shortening the length of examination, thereby saving costs and unnecessary (and potentially compromising) paper trails. |
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ii) Consider the legal standards and related provisions in respective jurisdictions – Obviously, prosecution strategies involving expedited examination must consider jurisdictional quirks, including: |
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a. Patentability standards – The patentability standards of some jurisdictions are stricter than others. For example, the Far East patent offices typically require more working examples than their U.S. or European counterparts. Without sufficient support, KIPO or JPO would likely narrow a generic claim, commensurate with the disclosed working examples—for instance, a chemical claim is usually narrowed to claim specific substituents instead of generic functional groups. Applicants should be mindful of the support requirements when choosing KIPO or JPO as the OEE. |
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b. Regulatory and legal provisions – Applicants should be aware of applicable legal and regulatory provisions related to expedited examination in various jurisdictions. For example, an earlier grant of a patent may lengthen the patent term in Korea. Similar to some other jurisdictions, an applicant may seek a patent term extension (PTE) for the duration of clinical trials and regulatory review in Korea. The Korean regulatory body, however, does not credit any of the eligible duration prior to the grant of a patent towards PTE. Therefore, applicants may benefit from expediting examination to achieve the earliest grant and to ensure maximum PTE in Korea. |
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iii) Strategic prosecution – Instead of pursuing examination on an ad hoc basis, reacting to examination deadlines in various jurisdictions, applicants should actively oversee prosecution, slowing or accelerating examination at the OLEs, in step with the examination progress at the OEE. |
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Under the two expedited prosecution programs, we expect that applicants will be able to obtain patent rights in participating countries faster and more efficiently, and that requests for expedited examination will increase accordingly. |
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1 See http://www.jpo.go.jp/ppph-portal/statistics.htm. |
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Back to Main Page |
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If you have any questions regarding this article, please contact: |
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For more information, please visit our website: www.ip.kimchang.com |
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