Introduction

Under Japanese patent practice, there are three options to expedite patent application examinations: the Accelerated Examination, the Super Accelerated Examination, and the Patent Prosecution Highway (PPH). While any of the three options can be filed before or simultaneously with a request for examination without no extra official fees, there are several differences among them which could influence the decision on which option to select. This article introduces and compares these three systems in terms of examination speed as well as by grant rate. By illuminating the distinctive features and benefits of each system, this article aims to assist readers in making an informed decision on which system to utilize for their patent applications in Japan.

Overview of the three options 

The Accelerated Examination
A Japanese patent application, which is either a national application or a national entry application of a PCT application, claiming a Paris priority to a foreign application is entitled to the Accelerated Examination.
The two typical requirements for the Accelerated Examination are as follows: 

a) There is a family application (a PCT application or national application filed in a country other than Japan), or
b) The applicant has already been utilizing the invention or has a plan to utilize the invention within 2 years.

When requesting the Accelerated Examination, it is required to submit explanations of comparison between the present invention and prior art documents. However, such explanations could be substituted either with an examination result for a family application or explanations of comparison between the present invention and prior art described in the specification.

The Super Accelerated Examination

The Super Accelerated Examination allows for an even faster examination than the Accelerated Examination. Both a) and b) above must be met to take advantage of the Super Accelerated Examination as well as the following requirements:

- Durin05 g the period within 4 weeks prior to the filing of the Super Accelerated Examination, all procedures for the application need to be done online,
- For foreign applicants, the response period to an Office Action is shortened to 2 months and cannot be extended
(* If extended, the application is no longer eligible for the Super Accelerated Examination).

PPH

As with many other countries, PPH is available in Japan. In order to use PPH, the following requirements must be met:

- At least one of the claims in the family application must be found to be patentable, and
- the claims of the Japanese application have to be amended so as to correspond to the patentable claims of the family application.

Examination speed

First of all, the average time from a request for examination until a first Office Action is issued is approximately 10.1 months(*1) for a normal examination without utilizing the Accelerated Examination, the Super Accelerated Examination, or the PPH.

Among the three systems, the Super Accelerated Examination offers the fastest examination speed. The average time from a request for the Super Accelerated Examination to a first Office Action is shortened to 0.8 months (in 2021)(*2).

The Accelerated Examination and the PPH offer similar examination speeds; 2.7 months for the Accelerated Examination (in 2021), and approximately 2 to 3 months(*3) for the PPH (in 2022).

Grant rate

First, for all applications, regardless of whether the Accelerated Examination, the Super Accelerated Examination, or the PPH is utilized or not, the grant rate (i.e., the percentage of applications that have obtained a patent allowance out of all applications) is 74.8% in 2021.

Regarding the Accelerated Examination as well as the Super Accelerated Examination, the grant rate for these systems only do not appear to be publicly available. However, it is expected that the grant rate for an accelerated examination will generally be about the same as the overall grant rate, which is approximately 75%, or at most a little higher.

As for the PPH, the grant rate at the first office action is publicly available; 21.5 % for the national PPH (which is based on a national application filed in a country other than Japan), and 50.2 % for the PCT-PPH (which is based on a PCT application), in 2022.  Further, the final grant rate for the national PPH is 82.5%, and that for the PCT-PPH is 93.8%.

Conclusion

It is possible to apply for the PPH by amending the claims of the Japanese application to correspond to the allowed claims of the family application.

For the PPH, it may not necessarily be likely that the allowed claims in the family application will be patented as is. However, if there is necessity to facilitate the examination, it’s worthwhile considering the PPH to expedite the examination.

On the other hand, considering the Accelerated Examination, no amendment is required to conform to the allowed claims of the family application and the speed of the examination is not noticeably longer than that of the PPH. Therefore, the Accelerated Examination is worth considering.

Further, the Super Accelerated Examination is even faster.  However, when utilizing the Super Accelerated Examination, it should be noted that the response period to an Office Action is quite short.


*1: https://www.jpo.go.jp/resources/report/nenji/2022/index.html
*2: https://www.jpo.go.jp/resources/report/nenji/2022/index.html
*3: https://www.jpo.go.jp/e/toppage/pph-portal/