1. PPH from the JPO Point of View Yutaka Niidome Deputy Director Japan Patent Office AIPLA PPH Users Meeting May 19, 2010

2. 1 Search/ Examination Allowable Request for PPH Application OFF OSF Application Paris Route Accelerated Exam. A B Examination Request for PPH C PCT International PhasePCT National/Regional Phase PCT Application IPER Allowable Request for PPH Accelerated Exam. ISR WO Positive Opinion Accelerated Exam. PCT work products of a Trilateral Office Request for PPH in a Trilateral Office The Patent Prosecution Highway

3. 2 DPMA IP Australia DKPTO UKIPO KIPO CIPO EPO ROSPATENT IPOS NBPR HPO USPTO JPO APO The PPH Network : permanent PPH : pilot PPH : PCT-PPH pilot

4. 3 Number of PPH Requests ( ～ 2010/5/11) *1*1 *1: ～ 2010/3/1 ( ～ 2010/1/31)

5. 4 * At the JPO as OSF as of May 11, 2010 Number of PPH Requests OFFCumulative number of PPH requestsremarks JPO(ISA/IPEA)26PCT-PPH USPTO820 USPTO(ISA/IPEA)0 PCT-PPH KIPO96 UKIPO15 DPMA51 DKPTO1 NBPR3 ROSPATENT0 APO0 IPOS0 HPO0 CIPO0 EPO3 EPO(ISA/IPEA)59PCT-PPH

6. 5 RANKINGAPPLICANT’S NAME 1Microsoft Corporation 2International Business Machines Corporation 3General Electric Company 4Apple Incorporated 5SanDisk Corporation 6Altera Corporation 7GE Medical Systems Global Technology Company LLC. 8Honda Motor Corporation Ltd. 8Cree Incorporated 10Elan Pharma International Ltd. As of the end of Jan. 2010 Top Users of PPH (US -> JP)

7. 6 Advantages of PPH - Timely Patent Acquisition - - Average Pendency from PPH Request to First Action (JP-US PPH)- Reduced pendency at the OSF Expeditious examination OFFOFF Exam Exam Patent FA Request for PPH Request for PPH Exam Exam Request for PPH FA Exam Exam With PPH Without PPH 29.3 months 1.9 months FA Pendency: Approx. 1.9 months (CY2009) Cf. Overall average for all accelerated exams: 2.0 months (CY2009) Average First Action Pendency of All of the Applications in the JPO: 29.3months (FY2008) 29.3months (FY2008)

8. 7 Advantages of PPH - Timely Patent Acquisition - - Average Pendency from PPH Request to First Action - RoutePPH applications (Time from PPH request to First Action) Average Overall First Action Pendency JP -> DK3 months (2008CY) 6.9 months (2008CY) JP -> KR2.1 months (2009CY) 15.4 months (2009CY) US -> KR2.0 months (2009CY) 15.4 months (2009CY) All -> US165.4 days* (Jan. 2009) 25 months (July 2009) * Note that USPTO examiners will generally examine an application within 2 months from the grant of a PPH request provided the application has completed all its pre- exam processing.

9. 8 Advantages of PPH – Speed - - Average Pendency from First to Final Action (JP-US PPH)- Reduced pendency at the OSF Expeditious examination

10. 9 Advantages of PPH – Speed - - Average Time to Final Action & First Action Grant Rate - RoutePPH ApplicationsOverall average* From PPH request to First Action From First Action to Final Action JP -> UK 2.4 months (2009CY) 5.7 months (2009CY) 27 months (Feb. 2010) US -> UK 1.02 months (2009CY) 6.6 months (2009CY) 27 months (Feb. 2010) * the average time from the request for substantive examination through to the grant of a patent Applications claiming priority to US application2.6% (2009CY) Applications under JP-US PPH9.5% (2009CY) Average Time to Final Action First Action Grant Rate

11. 10 Advantages of PPH – Quality - - Average Pendency from FA to Final Action (JP-US PPH)- Higher grant rate at the OSF High predictability of examination results at the OSF

12. 11 The PPH Portal Site http://www.jpo.go.jp/ppph-portal/index.htm One-stop portal for statistics, guidelines, and links Request forms and a common drafting tool

13. 12 The PPH Portal Site Common Drafting tool for PPH request forms

14. 13 Reaction from PPH Users - User A In a certain business field of our company, negotiations often take place for cross licensing of patents. Given such circumstances, we have come to the idea that patent rights should be promptly obtained for any inventions related to the field. Focusing on such inventions as patentable in Japan, we are seeking for prompt acquisition of patent rights in the US, by actively utilizing the PPH. - User B In the case of our company, where the reception of office actions usually occurs a few times, applications using the PPH actually resulted in one or less of office action on average. That allowed prompt acquisition of patent rights, thereby reducing the associated cost. - User C We have had our patent filing in the US examined promptly under simple procedures, without facing strict requirements.

15. 14 Reaction from PPH Users - User D As to the patent application filed in Japan, a patent right was granted without receiving a notice of rejection. Then, we decided to use the U.S. accelerated examination system through the PPH while preparing necessary documents - followed by timely and efficient obtainment of a U.S. patent right. Having acquired the U.S. patent right, we managed to start license negotiations with a U.S. company that said it would wait until the U.S. patent was granted. Without being able to utilize the PPH framework, we would not have even started the negotiation yet.

16. 15 Future Plans - Relaxation of PPH requirements Consideration of relaxing PPH requirements Consideration of relaxing PPH requirements Perhaps to be discussed in the next Plurilateral PPH meeting Perhaps to be discussed in the next Plurilateral PPH meeting -PPH Joint Seminar PPH seminars in Japan and US PPH seminars in Japan and US JPO officials will attend the seminar in the U.S., and USPTO officials will attend the seminar in Japan. JPO officials will attend the seminar in the U.S., and USPTO officials will attend the seminar in Japan. - Further Development of the PPH Portal Site