We present the optimal strategy for European and US companies seeking patent rights in Japan through the PCT. Some patent filers who have previously used the PCT to file in Japan were frustrated with the Japan Patent Office's (JPO) tendency to cite new non-ISR references. This leads to inefficiencies and increased costs in responding to new references, particularly affecting those with markets in the EU and Japan. We propose utilizing the Patent Prosecution Highway (PPH) to address this issue. We recommend the following approach:
1. File an PCT application
2. Designate the EPO as the Search Authority in PCT
3. Make a regional entry to the EPO
4. Obtain allowance from the EPO
5. Make a national entry to the JPO, utilizing PPH simultaneously if an applicant is content with the approved claims from the EPO.
This strategic process leads to detailed and patentable claims that JPO examines, during the EPO regional phase. (Short claim 1 drafted in the PCT application becomes longer to avoid documents cited in ISR !) The preliminary work greatly helps and influences Japanese examiners, decreasing the likelihood of new citations being introduced, as compared to non-PPH applications. PPH is free of charge for the JPO, with only the patent attorney's fee for PPH applications being incurred.