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IP issues from the viewpoint of the JPO

Ken-Ichi MOROOKAThe Japan Patent Office

Fordham IP ConferenceApril 29, 2011

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Overview

1. Patent Prosecution Highway (PPH)

2. Amendment of the Japanese Patent Act

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Overview

1. Patent Prosecution Highway (PPH)

2. Amendment of the Japanese Patent Act

The PPH scheme Expanding PPH network Number of PPH requests Plurilateral PPH PPH Portal Website

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Search /Examination

Allowable

Request for PPHApplication

OFF (Office of First Filing)Application

Paris Route

Accelerated Exam.

A

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Examination

Ｃ

PCT International Phase National/Regional Phase

PCT Application

AllowableWO or IPER

Positive Opinion

PCT Work Products of Trilateral Offices or NBPR

PPH Request to Trilateral Offices or NBPR

PCT-PPHPPH (Paris Route)

Claiming priority to application to Office “A”Request

for PPH

Request for PPH

Accelerated Exam.

Accelerated Exam.

OSF (Office of Second Filing)

The PPH scheme

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Expanding PPH network JPO

(Japan)

SPTO(Spain)

APO(Austria)

ROSPATENT(Russia)

NBPR(Finland)

IPOS(Singapore)

EPO(Europe)

IP Australia（ Australia ）

DPMA (Germany)

CIPO (Canada)

DKPTO (Denmark)

UKIPO(UK)

KIPO(Korea)

USPTO(USA)

IMPI(Mexico)

As of 4th of April, 2011

：　 PPH：　 PCT-PPH

HIPO(Hungary)

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Number of PPH requests

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Plurilateral PPH

Plurilateral PPH Working Level Meeting : Jan. 18-19, Tokyo, Japan

Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U.S.A.

Main topics

1. Relaxing priority requirements

2. Simplifying / Streamlining filing requirements

3. Providing users information of the different practices between Offices

4. Enhancing user outreach

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PPH Portal Web Site

http://www.jpo.go.jp/ppph-portal/index.htm

Provision of various statistical data

Provision of the PPH guidelines of different countries

Provision of the PPH request forms of different countries

Provision of the pamphlets of PPH of different countries

- Access PPH Portal Web Site for more information -

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Overview

1. Patent Prosecution Highway (PPH)

2. Amendment of the Japanese Patent Act

The PPH scheme Expanding PPH network Number of PPH

requests Plurilateral PPH PPH Portal Website

The aim of the amendment

Points of the amendment

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The Aim of the Amendment

To cope with “Open innovation”.

To deal with the acceleration of innovation, and the short life-cycle of products.

To improve user convenience.

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Points of the Amendment

(1) Increasing user-friendliness

(2) Appropriate protection of inventors in

relation to the results of joint researches etc.

(3) Enhancing protection of license agreements

(4) Revising the trial examination system to

expeditiously and efficiently solve disputes

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Points of the Amendment

(1) Increasing user-friendliness

Extension of the patent fee exemption period from3 to 10 years (for small- and medium-sized Enterprises).

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Points of the Amendment

(1) Increasing user-friendliness (continued)Expanding the mode of disclosure eligible for the grace period.

(Present)Conducting an experiment, Presentations made in a printed publication, Presentations made through electric telecommunication lines,Presentations made in writing at a study meeting held by scientific organizations etc.

(Amended)Disclosures made by the inventor himself / herself regardless of the mode of disclosure.

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Points of the Amendment

(1) Increasing user-friendliness

(2) Appropriate protection of inventors in

relation to the results of joint researches etc.

(3) Enhancing protection of license agreements

(4) Revising the trial examination system to

expeditiously and efficiently solve disputes

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Thank you