Introduction to Japan's accelerated examination process

Introduction to Japan's accelerated examination process

In Japan, there are two ways to speed up the examination process of a patent application: one is to file a normal request for accelerated examination, and the other is to file a PPH request.

Both of these accelerated examination procedures allow the first office action to be issued within three to four months. And:

• No official fees required
• The applicant must respond to the review opinion within three months.
• The time for issuing subsequent review opinions is usually 3-4 months

Japan Patent Prosecution Highway (PPH) requirements:

• The corresponding patent application in the Contracting State has obtained a positive search report, examination result or notification of intention to grant;
• The claims of the Japanese patent application must be amended to be substantially identical to the claims for which a positive search report, examination result, or grant has been obtained.
• Submit a search report with positive results, examination results or a notification of intention to grant and its Japanese/English translation
• Submit the granted claims of the corresponding application and their Japanese or English translation
• Submit copies of all references cited in the review opinion.

However, it should be noted that PPH does not significantly increase the grant rate in Japan. Even without PPH, if the invention has been granted in a foreign country and the Japanese claims have been amended accordingly before examination, the grant rate will increase by 6.1%.

In Japan, ordinary accelerated examination is preferred over filing a PPH request, even if the invention has been granted in a foreign country. This is because:

• More freedom in amending claims
• Procedural claims can be added
• The claim of the product manufacturing method should be amended to a method claim or a structural product claim
• Dependencies can be added, and the JPO accepts multiple dependent claims without paying additional official fees
• Can handle Japan's unique clarity requirements.

Ordinary accelerated examination requires fewer documents:

• Applicants are not obliged to disclose all known prior art and may only present 1-2 prior art
• A brief explanation of the difference with the prior art may be sufficient.
• The independent claims are reproduced and it is stated that these combined features are not described in any document.
• The service fee for ordinary accelerated examination is significantly lower than that for PPH