1 IP Infrastructure IP Infrastructure for Promotion of Work for Promotion of Work Sharing Sharing - Japan’s Perspective - - 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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1 IP Infrastructure for Promotion of Work Sharing - Japan’s Perspective - Koichi MINAMI Deputy Commissioner Japan Patent Office WIPO Global Symposium of.
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IP Infrastructure IP Infrastructure for Promotion of Work Sharingfor Promotion of Work Sharing
- Japan’s Perspective -- Japan’s Perspective -
Koichi MINAMIDeputy 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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PCT applications and PCT member states from 1990 to 2007
Total number of worldwide patent applications by year
(source) WIPO Website
The total number of worldwide patent filings has been increasing770,000 patent applications of 1,760,000 (40%) are filed by non-residents
The total number of worldwide patent filings has been increasing770,000 patent applications of 1,760,000 (40%) are filed by non-residents
Common Search and Examination Common Search and Examination Support Tools: USPTOSupport Tools: USPTO
Common Search and Examination Common Search and Examination Support Tools: USPTOSupport Tools: USPTO
Common Rules for Examination Practice Common Rules for Examination Practice and Quality Control: SIPOand Quality Control: SIPO
Common Rules for Examination Practice Common Rules for Examination Practice and Quality Control: SIPOand Quality Control: SIPO
Common Access to Search and Common Access to Search and Examination Results: JPOExamination Results: JPO
Common Access to Search and Common Access to Search and Examination Results: JPOExamination Results: JPO
Common Statistical Parameter System for Common Statistical Parameter System for Examination: SIPOExamination: SIPO
Common Statistical Parameter System for Common Statistical Parameter System for Examination: SIPOExamination: SIPO
10 Foundation Projects - Platform for Work-sharing10 Foundation Projects - Platform for Work-sharing
Foundation Projects by IP5 Offices
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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.
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.
CommonFormat
(Based on PCT)
CommonFormat
(Based on PCT)
JPOFormat
JPOFormat
EPOFormat
EPOFormat
USPTOFormat
USPTOFormat
KIPOFormat
KIPOFormat
…
Foundation Projects by IP5 Offices
PCT adopts CAF since Jan. 2009PCT adopts CAF since Jan. 2009
Common Application Format (CAF)
SIPOFormat
SIPOFormat
PCTFormat
PCTFormat
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Foundation Projects by IP5 OfficesFoundation Projects by IP5 Offices
JPO
SIPO
EPO
USPTO
KIPO
AIPN*1
36 IP Offices
Dossier Access SystemDossier Access System
Other IP Offices
*1 AIPN: Advanced Industrial Property Network*2 SIPO is under consideration to connect to Dossier Access System in 2016.
Common Access to Search and Examination Results
Search results and examination results in each office can be accessible among these
offices ( Japanese-English Machine Translation)
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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.
JP-FIRST JP-FIRST ((JPJP--FFast ast IInformation nformation RRelease elease STSTrategy)rategy) Introduced: April 2008Introduced: April 2008
JPO(OFF)
ApplicationApplicationFinal
ExaminationFinal
Examination
OSF FAFA
FA Results
FAFA
JPO prioritizes examination of first filing satisfying JP-FIRST conditions.
CorrespondingApplication
CorrespondingApplication
OSF utilizes FA results of JPO.
30 months
12 months(Paris Priority)
JPO provides FA results to the OSF before the OSF’s examinations.
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Office of First Filing (OFF)Office of First Filing (OFF)
CorrespondingApplication
Request for PPH
Accelerated Exam.
ApplicationPatentedOffice
Action
Office of Second Filing (OSF)Office of Second Filing (OSF)
OSF utilizes search and examination
result of OFF.
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.
PPH (Patent Prosecution Highway)
Average Pendency from PPH Request to FA in the OSF: Average Pendency from PPH Request to FA in the OSF: 2-3 months2-3 months (As of the end of Apr. 2009(As of the end of Apr. 2009 in the JPO and the USPTO)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
5.6
10.4
0 2 4 6 8 10 12
(Months)
Average Pendency from FA to Final Action at the JPO
Applications under JP-US PPH Applications claiming priority to US application
As of Dec. 31, 2008
64%
49%
30% 35% 40% 45% 50% 55% 60% 65%
Grant Rate at the JPO
Applications under JP-US PPH All the applications
Another Aspect of PPHSame 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