The French patent office (FPO) and the Japanese patent office (JPO) have ratified a Patent Prosecution Highway (PPH) agreement. This agreement will be implemented in the framework of a Pilot Program conducted until the end of 2022. At that point, the Pilot Program may either be extended or confirmed.
In essence, the FPO-JPO PPH should lead to efficient sharing of work product and should result in faster and more cost-effective examination procedures.
This is particularly important, noting that Japanese applicants rank 2nd among non-domestic applicants for French patent applications, whereas French applicants rank 6th among non-domestic applicants for Japanese patent applications.
The PPH is available for a French patent application claiming the priority of a Japanese patent application or a PCT application having matured into a Japanese national phase. So far, no PPH agreements have been signed between the FPO and any other patent office.
The PPH request is available as long as substantial examination of the French patent application has not started. The FPO recommends filing the PPH request within 12 months from filing the French patent application.
Together, with the PPH request, the following elements are requested:
- a claim correspondence table or a statement that the claims filed in France are identical to the Japanese claims deemed allowable (mandatory),
- copies of Japanese office actions relevant to substantial examination for patentability,
- translation (into English or French) of such office actions,
- copies of all claims determined to be patentable by the JPO,
- translation of such claims (into English or French);
- copies of the references cited by the JPO (if other than patent literature).
If elements 2 to 5 are available via the JPO electronic file (https://www.j-platpat.inpit.go.jp/), it is possible to merely invite the FPO to retrieve these elements.
If the PPH request is found admissible, examination of the French patent application would be expedited.
In combination with implementation of the PACTE law, which provides an opposition procedure for granted French patents and a more thorough examination, implementation of the FPO-JPO PPH is a further decisive cornerstone in the construction of a more efficient, cost-effective and user-oriented French patent system.