Transcript IP Infrastructure for Promotion of Work Sharing - Japan’s Perspective Koichi MINAMI Deputy Commissioner Japan Patent Office WIPO Global Symposium of Intellectual Property Authorities, 17and.

IP Infrastructure
for Promotion of Work Sharing
- Japan’s Perspective Koichi MINAMI
Deputy Commissioner
Japan Patent Office
WIPO Global Symposium of Intellectual Property Authorities, 17and 18 September 2009
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Contents
 Growing Demand for Work Sharing
 Foundation Projects by IP5 Offices
 JP-FIRST and PPH
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Growing Demand for Work Sharing
The total number of worldwide patent filings has been increasing
770,000 patent applications of 1,760,000 (40%) are filed by non-residents
Total number of worldwide patent
applications by year
PCT applications and PCT member states
from 1990 to 2007
(million)
2
1.8
（thousands）
180
Patent applications filed by non-residents
O thers
Patent applications filed by residents
Non160
Non-resident
resident
140
approx.
approx.40%
40%
120
1.6
1.4
1.2
GB
FR
136
DE
115
US
104
JP
1
100
0.8
80
94
P C T m em ber
states
0.6
60
0.4
40
0.2
20
82
117
122
124
138
128
108
98
87
74
58
61
66
45
0
(CY)
1997 1998
1999 2000
2001
2002 2003 2004
2005
2006
0
1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007
（C Y）
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(source) WIPO Website
(source) WIPO Website
Growing Demand for Work Sharing
Large majority of worldwide patent applications are filed at 5 Offices (1,410,000 in 2007)
420,000 patent applications of them are duplicated
Patent applications at 5 Offices from 2001 to 2007
Patent applications at 5 Offices in 2007
(thousands)
500
78,794
396,291
456
440
400
396
26,026
32,870
US
300
24,611
666
JP
245
200
172
171
141
100
6,347
18,100
35,603
CN
KR
22,889
64,000
456,154
EP
22,976
3,903
12,103
24,420
22,887
140,763
1,146
4,934
11,084
0
2001
2002
2003
2004
(C Y)
2005
2006
2007
8,467
296
245,161
172,469
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Foundation Project by IP５ Offices
• IP5 Offices held the first commissioners' meeting
in 2007
(JPO, USPTO, EPO, KIPO and SIPO)
• Work Sharing Framework and 10 Foundation
Projects
Support & Enhance
• Maximize utilization existing infrastructure
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Foundation Projects by IP5 Offices
Work-sharing Framework and 10 Foundation
Projects
10 Foundation Projects - Platform for Work-sharing
Common Application Format: JPO
Common Classification: EPO
Common Access to Search and
Examination Results: JPO
Mutual Machine Translation: KIPO
Common Approach to Sharing and
Documenting Search Strategies: USPTO
Common Training Policy [Certification]:
KIPO
Common Search and Examination
Support Tools: USPTO
Common Rules for Examination Practice
and Quality Control: SIPO
Common Documentation Database: EPO
Common Statistical Parameter System for
Examination: SIPO
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Foundation Projects by IP5 Offices
 Common Application Format (CAF)
 CAF (Description, Claims, Abstract and Drawings) is available to all these
offices
 CAF will reduce burden on applicants, cutting out the need of re-drafting
applications caused by the difference among the Offices.
JPO
Format
EPO
Format
Common
Format
(Based on
PCT)
USPTO
Format
KIPO
Format
SIPO
Format
PCT
Format
…
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PCT adopts CAF since Jan. 2009
Foundation Projects by IP5 Offices
 Common Access to Search and Examination Results
JPO
AIPN*1
Other IP Offices
36 IP Offices
EPO
KIPO
Dossier Access System
Search results and examination results in
each office can be accessible among these
offices （Japanese-English Machine
Translation）
SIPO
*1 AIPN: Advanced Industrial Property Network
*2 SIPO is under consideration to connect to Dossier Access System in 2016.
USPTO
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JP-FIRST (JP-Fast Information Release STrategy)
Introduced: April 2008
JPO provides FA results to the OSF before the OSF’s examinations.
 JPO prioritizes examination of applications that satisfy certain conditions:
(i) First filed with JPO (and then filed via the Paris route with OSF) and
(ii) Examination is requested within two years of JPO filing date
 JPO provides examination results (FA) to applicants within 30 months of
JPO filing date.
JPO prioritizes examination of first filing
satisfying JP-FIRST conditions.
30 months
JPO
(OFF)
Application
FA
Final
Examination
FA Results
OSF
Corresponding
Application
12 months
(Paris Priority)
FA
OSF utilizes FA results of JPO.
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PPH (Patent Prosecution Highway)
If a patent application has been determined to be patentable in the first
filing office,
the corresponding application is qualified for accelerated examination in
second filing offices with a simple procedure.
Office of First Filing (OFF)
Application
Office
Action
Office of Second Filing (OSF)
Corresponding
Application
Patented
OSF utilizes
search and examination result of
OFF.
Request
for PPH
Accelerated Exam.
Average Pendency from PPH Request to FA in the OSF: 2-3 months
(As of the end of Apr. 2009 in the JPO and the USPTO)
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Advantages of PPH ~Quality and Speed ~
• Expeditious examination and Cost savings are expected due to
decreasing number of office actions.
• High Grant Rate in the OSF
• High predictability of examination results in the OSF
Average Pendency from FA to Final Action at the JPO
Applications under JP-US PPH
Grant Rate at the JPO
Applications claiming priority to US application
Applications under JP-US PPH
10.4
All the applications
49%
5.6
0
2
4
6
64%
8
10
12
30%
35%
40%
45%
50%
55%
60%
65%
(Months)
As of Dec. 31, 2008
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Another Aspect of PPH
Same invention and Same claims between the applications
to the OFF and OSF under the PPH Program
Mutual understanding of examination practice in
each office (What are same, What are different)
Facilitation of the substantial harmonization of
the examination practices between the offices
Improvement of the predictability of the
examination result of the OSF for users
Expanding PPH Network!
ROSPATENT
UKIPO
IP Australia
DKPTO
NBPR
USPTO
Jul. 2009
EPO
APO
JPO
CIPO
: full implementation
GPTO
KIPO
HPO
IPOS
: pilot implementation
: under consideration
Thank you
http://www.jpo.go.jp/index.htm
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