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Mr. David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO visited JIPA

Mr. David Kappos, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO visited JIPA on November 11, 2009. He was nominated this position by President Barack Obama last June. When he worked at IBM, he was a member of Industry Trilateral Meeting, which has suggested and requested harmonization and efficient Patent practice since early 1990S’. It is still fresh in our minds that he took back USPTO’s some new rules which are now pending for validity.

He emphasized that Japanese applicants should use Patent Prosecution Highway(PPH), according following data;

1)PPH applications have higher rate of granting patent
The percentage of granting patent for PPH application is more than 90% , compare to normal one’s 44%.

2) PPH application requires less Office Action
The Normal application requires two times Office Action on average, compare to PPH’s 1.7 times. This means decreasing costs.

3) Period up to the First Action is surprisingly short
the Normal application takes 25 months though, PPH application takes only a few month.

In addition, Mr. Kappos introduced about “the First Action Interview Pilot Program”. Under the program, participants are permitted to conduct an interview with the examiner after reviewing a Pre-Interview Communication providing the results of a prior art search conducted by the examiner. Participants in the program can have the opportunity to resolve patentability issues one-on-one with the examiner at the beginning of the prosecution process. The Pilot increases 6-fold in patent granting rate. So he urged as many of Japanese applicants as possible to use the Pilot Program, because this will eventually result in the cost reduction.
Finally, he told us that Japanese applicants should take great care of translation quality, especially on claims.


Note) When the specification has poor translation quality, your invention is understood well neither by examiner nor by judge. This will threaten that you would not implement your high cost IPR.

[Update 2009-11-12 ]