1. Introduction
  In Japan, if you need your invention to be patented promptly, there are some systems for accelerating the examination of the patent application. Depending on which system to be utilized, requirements and required documents are different.

  Thus, in this Newsletter, we will explain the requirements and documents required in each system for the speed-up of patent examinations in Japan.

2. Which System to Utilize?
  As described below, in Japan, the examination accelerating system for prompt granting of patent can be chosen from PPH (Patent Prosecution Highway), Accelerated Examination, Super-accelerated Examination, and Prioritized Examination.

  Although these systems require different procedures for the request, the substantially the same examination is performed by Japan Patent Office (hereinafter, referred to as the "JPO").

  Regarding the procedures for the request, "PPH" sometimes requires more documents than "Accelerated Examination," or requires translations which are not required for "Accelerated Examination." However, in "PPH," the number of office actions decreases and a grant rate of patents increases on average, compared to "Accelerated Examination." Therefore, when the invention of the patent application has been determined as patentable as a result of examination in a foreign country, and the applicant desires to be granted the patent for the same claims, choosing "PPH" often offers more advantages.

  In "Accelerated Examination," although applications eligible for the examination are limited, it often requires fewer documents compared to "PPH." Therefore, "Accelerated Examination" is advantageous in that the requesting procedures are simpler.

  In "Super-accelerated Examination," although the requirements for the request and the procedures are stricter than the regular "Accelerated Examination," the patent can be obtained more quickly. Therefore, when the requirements for the request are satisfied, and the applicant needs his/her invention to be patented urgently, "Super-accelerated Examination" is recommended to be utilized.

  "Prioritized Examination" can be used only in specific occasions (e.g., when a third party is working the invention of the patent application after the publication of the application), and it requires a lot of documents. Therefore, this system is less advantageous.

  The record in 2019 shows that, as for the applications utilizing Super-accelerated Examination, it takes 0.6 months on average until the first office action after the request, whereas as for the applications utilizing PPH or Accelerated Examination, it takes 2.5 months on average until the first office action after the request. In either case, significantly less time is required compared to the application not utilizing any accelerated examination (9.5 months avg.).
  Below, each system is explained in detail.

3. Patent Prosecution Highway (PPH)
  Patent Prosecution Highway (PPH) is a system based on agreements between the patent offices. In this system, when a first office (Office of First Filing) determines the invention to be patentable, an application including the invention can take an accelerated examination in a second office (Office of Second Filing) through simple procedures upon the applicant's request.

  The PPH offers three types of programs (regular PPH, PPH MOTTAINAI, and PCT-PPH), and applicants can utilize either program when filing patent applications in Japan.

  Note that examiners independently carry out literature search to issue office actions even when PPH is utilized.

3-1. Regular PPH
  The regular PPH is a system in which, when the invention is determined to be patentable at the first office (to which the patent application is filed the earliest), the applicant can request to take an accelerated examination at the JPO (the second office).
  No fee is charged by the JPO to utilize this system.

(1) Requirements
  All of the following requirements [1]-[5] need to be satisfied to request for the regular PPH.
[1] The application to the first office and the application in Japan (JP application) have the specific relation (e.g., priority is claimed in the JP application on the basis of the application to the first office under the Paris Convention, or the PCT application is transferred into the national phase in Japan without claiming priority).
[2] At least one claim is determined to be patentable in the application to the first office.
[3] Every claim in the JP application sufficiently corresponds to any of the claims determined to be patentable at the first office.
[4] Examination has not yet been commenced by the JPO.
[5] Examination has been requested to the JPO at the time of or before the request for PPH.
* Note that "determined to be patentable" includes that positive opinions are shown in the European Search Report etc., in addition to that the patent is determined to be granted.

(2) Required Documents
  The following documents are required for the request.
  Note that, when information on the prosecution history is provided by the first office through the Dossier Access System, submission of [2] and [3] can be omitted. Moreover, when [4] is a patent document, its submission can be omitted.
[1] Correspondence table of claims
[2] Copies of claims determined to be patentable by the first office, and its translations (English or Japanese)
[3] Copies of all the office actions issued by the first office, and its translations (English or Japanese)
[4] Cited documents provided in the office actions by the first office

(3) Participating Countries
  Visit JPO website regarding the countries implementing PPH (including PPH MOTTAINAI and PCT-PPH).
  https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/index.html

3-2. PPH MOTTAINAI
  PPH MOTTAINAI is a system in which, between the JPO and other offices agreed on PPH MOTTAINAI pilot program, PPH can be utilized when either office (Office of Earlier Examination) issues an examination result that the concerning invention is patentable, regardless of which office the patent application was first filed with.

  In the regular PPH, the examination result only by the first office (to which the patent application is filed the earliest) can be utilized. On the other hand, in PPH MOTTAINAI, there is no such a limitation, but the examination result of the application filed after the first office can be utilized.
  Other requirements and documents to be submitted are the same as the regular PPH.
  No fee is charged by the JPO to utilize this system.

3-3. PCT-PPH
  PCT-PPH is a system in which the accelerated examination can be requested utilizing the written opinion created by the specific International Searching Authority (WO/ISA), the written opinion (WO/IPEA) or the International Preliminary Examination Report (IPER) created by the specific International Preliminary Examining Authority.
  No fee is charged by the JPO to utilize this system.

(1) Requirements
  All of the following requirements [1]-[5] need to be satisfied to request for PCT-PPH.
[1] The JP application and the international application have the specific relation (e.g., the JP application is in the national phase of the corresponding international application, the JP application is the basis of the priority claimed under the Paris Convention in the corresponding international application, or the JP application is in the national phase of the international application which claims priority under the Paris Convention on the basis of the corresponding international application).
[2] The latest document (hereinafter, referred to as the "latest international work product") among the written opinion of the International Searching Authority (WO/ISA), the written opinion of the International Preliminary Examining Authority (WO/IPEA), and the International Preliminary Examination Report (IPER) indicates that at least one claim "has patentability" (from the aspect of the novelty, the inventive step, and the industrial applicability).
[3] Every claim in the application requested for PCT-PPH sufficiently corresponds to any of the claims indicated to "have patentability" in the document of [2].
[4] Examination has not yet been commenced by the JPO.
[5] Examination has been requested to the JPO at the time of or before the request for PPH.

(2) Required Documents
  The following documents are required for the request.
  Note that, normally, submissions of [2] and [3] can be omitted (necessary when demanded by the JPO). Moreover, when [4] is a patent document, its submission can be omitted.
[1] Correspondence table of claims
[2] Copies of claims indicated to "have patentability" in the latest international work product, and its translations (English or Japanese)
[3] A Copy of the latest international work product, and its translation (English or Japanese)
[4] Cited documents provided in the latest international work product (excluding documents which do not constitute the reasons for refusal)

4. Accelerated Examination
  "Accelerated Examination" is a system in which the examination is conducted more quickly than normal examinations upon the applicants' request under certain conditions.
  No fee is charged by the JPO to utilize this system.
  Note that, different from PPH, the Accelerated Examination can be requested even after the examination has been commenced by the JPO.

(1) Eligible Applications
  Applications which fall under any of the following <a>-<f> are eligible for Accelerated Examination.
<a> Working-related applications: applications for inventions which have already been worked or planned to be worked within 2 years
<b> Internationally-filed applications: applications filed also in a foreign country
<c> Applications filed by small and medium-sized enterprises (SMEs), individuals, universities, public research institutes, etc.: applications of which whole or part of applicants are SMEs, individuals, universities, public research institutes, etc.
<d> Green-technology related applications: applications related to an environment-related technology
<e> Applications related to the Act for Promotion of Japan as an Asian Business Center: applications for inventions related to the achievement by the research and development business accredited under the "Act on Special Measures to Promote Research and Development Business, etc. by Specified Multinational Enterprises (the Act for Promotion of Japan as an Asian Business Center)"
<f> Applications related to earthquake disaster reconstruction support: applications by entities, individuals, etc. in the specified areas in Japan affected by the earthquake and related disasters.

(2) Requirements
  All of the following requirements [1]-[4] need to be satisfied to request for Accelerated Examination.
[1] The application falls under any of the above <a>-<f>.
[2] Examination has been requested to the JPO at the time of or before the request for Accelerated Examination.
[3] The application is not withdrawn under the Article 42(1) of the Patent Act (when an application is filed in Japan by claiming priority based on an application which was filed earlier in Japan, the earlier application is deemed to have been withdrawn).
[4] A "written explanation of the needs of Accelerated Examination" is submitted, and the prior art document is disclosed and the comparative explanation is provided in the written explanation. Note that, when the comparison with the prior art document is appropriately described in the specifications of the patent application, the disclosure of the prior art document and the comparative explanation can be omitted.

5. Super-accelerated Examination
  "Super-accelerated Examination" is a system in which the examination is conducted more quickly than the regular Accelerated Examination, and is applicable to the "working-related applications" which are also the "internationally-filed applications" with the higher priority.

  When Super-accelerated Examination is utilized, the first office action is issued within a month after the request, and the examination after the first office action is also conducted within a month after the submission of the written opinion and amendment by the applicant. Therefore, compared to the regular Accelerated Examination, the period of time required from the request for Super-accelerated Examination until the patent is granted can be shorter.

  However, even when Super-accelerated Examination is utilized, if the applicant does not respond to the office action within the response period and extends this period, the application becomes ineligible for Super-accelerated Examination, and is processed under the regular Accelerated Examination.
  No fee is charged by the JPO to utilize this system.

(1) Eligible Applications
  Applications which fall under the following <g> or <h> are eligible for Super-accelerated Examination.
<g> The "working-related applications" which are also the "internationally-filed applications" described above
<h> The "working-related applications" filed by startup companies

(2) Requirements
  All of the following requirements [1]-[4] need to be satisfied to request for Super-accelerated Examination.
[1] The application falls under the above <g> or <h>.
[2] For the application, all the procedures conducted 4-weeks before the request for Super-accelerated Examination and thereafter are conducted online.
[3] Examination has been requested to the JPO at the time of or before the request for Super-accelerated Examination.
[4] Examination has not yet been commenced by the JPO.

6. Prioritized Examination (Article 48-6 of the Patent Act)
  "Prioritized Examination" is a procedure defined in the Article 48-6 of the Patent Act. It is a system in which, after the application is published, when a third party is working the invention of the patent application as a business, and an early settlement of the conflict between the applicant and the working party of the invention is required, the patent application can be examined prior to the other patent applications.

  Even when a "written explanation of the needs of Prioritized Examination" is submitted, the application may not be eligible for Prioritized Examination when the JPO determines that Prioritized Examination is unnecessary.

  The "written explanation of the needs of Prioritized Examination" can be submitted by the third party, that is, by a person who works as a business the invention of the published patent application filed by others.
  No fee is charged by the JPO to utilize this system.

(1) Requirements
[1] Examination has been requested at the time of or before the request for Prioritized Examination.
[2] The patent application has been published, and not yet been granted.
[3] A third party is working the invention of the application as a business, after the patent application has been published, and before the patent is granted.
[4] "Prioritized Examination" is necessary.

(2) Required Documents
[1] A written explanation of the needs of Prioritized Examination
  •　The written explanation should describe the working state by a third party, an influence of the working etc., and progress of negotiations, etc.

[2] Documents to be Attached
  •　A copy of a warning letter
  •　A written explanation describing an article or a method related to the working by the third party, and necessary drawings
  •　A document specifically describing the ground for that the third party is working the invention of the patent application
  •　A document or an article (e.g., a product, a catalog, a sample, and a photo) which becomes the evidence for the working by the third party
  •　When the third party submits the written explanation, a document describing the reasons for dissatisfaction of conditions for patentability in the invention of the patent application, and a publication etc. which becomes the evidence for the dissatisfaction