10-year Goal Achieved, Now Aiming for Top Quality

January, 2015

澤井　智毅Tomoki SAWAI

JAPAN PATENT OFFICE

Initiative 3 Promoting structural reform of procedures for patent applications and requests for examinations

(1) Shifting from quantity to quality(2) Shifting from domestic filing strategies to

global one

Number of examined applications eligible for First Actions per examiner

The past 10 years up to now

Initiatives

Number of registered search agencies (RSAs)

2

Achievement of FA11

Initiative 1 　 Increasing the number of patent examiners (including hiring about 500 fixed-term patent examiners)

10-Year Goal for Prompt Examination was Achieved

One in 2004 Eleven in 2014

Initiative 2 　 Enhancing prior art search activities by outsourcing searches to RSAs* Increasing cases that encourage dialogue and which are beneficial in terms of examination efficiency

Since Japan has been implementing its IP policies to become “the leading nation based on intellectual property” in 2002, the top priority of Japanese IP policies has been to attain prompt and efficient patent examinations by conducting initiatives such as: (1) further improving the examination structure, (2) expanding the use of outsourcing, and (3) shifting its focus from quantity to quality in terms of filings. The JPO set its 10-year target of FA11, which was a goal to shorten the first office action pendency for patent examinations to at least 11 months by the end of March 2013, and this target was achieved, thanks to support from many concerned parties also..

(Number of People)

Foreign Docs (Including cases of conducting searches for foreign documents by using commercial search tools)

International Competition in IP Systems

During that time, competition arose among IP offices worldwide to determine which would be the best system for stimulating innovation, with the offices focusing on improving their systems and strengthening their infrastructure.

Europe 　　　　　　　　　　　　　The Regulations concerning Unitary Patent Protection, and Translation Arrangements, were enacted in 2012. The Agreement on a Unified Patent Court (UPC) was signed in 2013.

China 　　　　　　　　　　　　　China greatly reinforced its examination structure (Number of patent examiners: 1,178 in 2003 → 5,730 in 2012) 　

Other countriesThe patent examination systems are also being enhanced in emerging countries.

For example, Singapore has started its original examination practices to gradually shift from the conventional Modified Substantive Examination (MSE) system.

U.S. 　　　　　　　　　　　　　The Leahy-Smith America Invents Act (AIA) was enacted in 2011, which has three main focuses: enhancing patent quality, reducing IP litigation costs, and harmonizing international patent systems.The USPTO budget was significantly increased, from $1.67 billion in 2006, to $3.04 billion in 2014.The examination system has been progressively improved (Total number of patent examiners at the USPTO: 3535 in 2003 → 7831 in 2012.)

3※The numbers in brackets of the JPO means the numbers of fixed-term patent examiners

Changes in Number of Patent Examiners in Major Countries(Number of

People)

(Year)

Two Priorities at the JPO

4

1. Quality 　 In responding to rapid changes in economic markets, the JPO is focusing on promptly granting the highest quality patent rights that are reliable in and outside Japan.

2. Globalization　 With economic activities becoming more and more globalized, the JPO will promote further globalization of the intellectual property system, in order to support the smooth acquisition of global IP rights by users.

Quality: Ensuring High Quality Patent Rights Are Timely Granted, which are Reliable in and outside Japan

Further improve the infrastructure for conducting searches on foreign patent documents such as English documents and rapidly increasing Chinese documents

Review all of the descriptions in JPO’s “Examination Guidelines” to make them easy for any user to understand

Conduct examinations responding to applicants’ needs by improving, for example, interview examinations, aimed at achieving the overall satisfaction of applicants.

Better manage the quality control system and revise the Quality Manual, in order to improve the quality management of examination procedures at the JPO

While shortening the average period from examination request to issuing patent rights,

6

Quality Policy on Patent Examination

The JPO released its “Quality Policy on Patent Examination” in April 2014. The “Quality Policy” outlines the following fundamental principles of quality

management in terms of patent examinations, in order to work on achieving the world’s highest quality patent examination.

All officials involved with patent examinations, under the leader ship and participation of directors, conduct examinations in accordance with these fundamental principles with a sense of great responsibility and ambition.

　・ We grant robust, broad and valuable patents;　・ We meet wide-ranging needs and expectations;　・ We all dedicate ourselves to improving quality, 　　 cooperating with concerned persons and parties;　・ We contribute to improving the quality of patent　　 examination globally:　・ We continually improve our operations;　・ We improve the knowledge and capabilities of our staff.

7

Quality Manual ／ PDCA Cycle

The JPO released its “Quality Management Manual for Patent Examination” (“Quality Manual”) in August 2014.

This Quality Manual is designed to document the quality management system consisting of structures and activities based on the fundamental principles stipulated in the Quality Policy.

The Quality Manual states that examination quality will be continuously improved by implementing the PDCA (plan-do-check-act) cycle at both the patent examination departmental level and divisional level, each of which is supervised by a Director-General and a Director, respectively.

“Quality Management Manual for

Patent Examination”

(“Quality Manual”)

8

ExaminationDetermined patentable

Japan

Other countries

Application

2006 2007 2008 2009 2010 2011 2012 2013 20140

5

10

15

20

25

30

3533

Num

ber

of P

PH

mem

ber

offi

ces

Korea, U.K.

Canada, Germany, Australia, Demark, Europe

Singapore, Finland, Russia, Austria, Hungary

Spain

Mexico, Portugal, Sweden, Israel, North Europe, Taiwan, Norway, China, Iceland

Philippines, Colombia, Czechoslovakia

Thailand, Malaysia

Poland, Eurasia, Indonesia, Nicaragua

Base on the JPO’s proposal, the first PPH in the world was implemented with the U.S.

(1) Number of PPH member offices

2010.06

2010.12

2011.06

2011.12

2012.06

2012.12

2013.06

2013.12

2014.06

0

10000

20000

30000

40000

50000

60000

70000

(Acc

umul

ated

num

ber)

61,000

(2) Total number of requests made worldwide for PPH on an accumulated basis as of the end of June 2014

Patent Prosecution Highway (PPH)

Globalization: Support for Acquiring Global Rights

Application File PPH application

Accelerated examination based on JPO’s examination results

In 2006, to support users in acquiring IP rights globally, the JPO proposed the Patent Prosecution Highway (PPH), and started it with the United States.

The PPH provides users with advantages such as “early acquisition of rights overseas” and “acquisition of high quality rights by making reference to other offices’ examination results.”

Thanks to these advantages, the number of PPH member countries has increased to 33. Also, the total number of requests made worldwide to use the PPH has been steadily increasing.

Advancing Discussions toward Patent System Harmonization

9

Discussing four key issues for the harmonization, namely the grace period, 18-month publication, prior use rights, and conflicting applications

Tegernsee Meetings

In response to the increasing number of patent applications being filed all over the world, discussions on issues for harmonizing patent systems were started in June 2011 at the IP5 Heads Meeting in Japan, in addition to the ongoing agenda.

Meetings of IP5 Heads of Office

Framework of the Trilateral Patent Offices (EPO, JPO and USPTO), and patent offices of major European countries (United Kingdom, Germany, France, Denmark)

The first Tegernsee Meeting was held in July 2011. Here is some background information on the Tegernsee Meetings. Discussions on patent system harmonization were held for the first time at the IP5 Heads Meeting that was hosted by the JPO in June 2011. However, based on the fact that the EPO does not have the authority to amend the European Patent Convention (EPC), a new forum was established, namely the Tegernsee Meeting, which includes participation from major European countries in addition to the EPO. The forum was called the Tegernsee Meeting because the first meeting was held at Tegernsee, a suburb of Munich, Germany.

It is hoped that the Tegernsee Meetings find common ground among the EPO and the IP offices in major European countries that have the authority to amend the Convention.

The IP5, which includes the IP offices of Japan, the U.S., Europe, China, and Korea, has been continuously holding the Heads Meetings since 2007, in order to take the lead in promoting global initiatives on intellectual property.

Japan has been advancing discussions toward patent system harmonization by making use of a variety of forums such as the Meetings of the IP5 Heads of Office, which is a newer cooperative framework than the original Trilateral Offices of Japan, the U.S., and Europe, since the IP offices of China and Korea have also joined. Japan has welcomed the fact that the U.S. enacted the America Invents Act (AIA) in 2011, so Japan and the U.S. should jointly take the lead in advancing discussions on patent system harmonization. In addition, by making use of other forums such as the Tegernsee Meetings that involves major European countries, the discussions have been further developed.A study on the systems in each country, and discussions among experts from each patent office based on the study results, should be advanced, enabling the momentum of interest in and discussions on patent system harmonization to be maintained.

In December 2014, the JPO sent an examiner to the Intellectual Property Office of Singapore (IPOS) to work as a Senior Examiner. 1010

Enhancing the Frameworks of International Examiner Conferences

The JPO and other IP offices are sending examiners to each other’s office under the framework of examiner exchange programs, in which examiners from both offices discuss requirements for patentability based on actual cases. The discussions are aimed at deepening mutual understanding of examination procedures and judgment standards on requirements for patentability, as well as advancing harmonization of examination practices and promoting major initiatives.In order to support Asian countries in developing IP systems, the JPO is sending more patent examiners to them. JPO examiners work as advisers to examiners in the Asian countries, for example, by conducting training programs and sharing the JPO’s expertise and experiences with them, which eventually supports business activities of Japanese companies involved with intellectual property.

Send 260Accept

191

Send 23Accept

31

Send 33Accept 32

Send 40Accept

38

Send 2Accept

10

Accept 1

Accept 2

Send 10Accept

10

Send 16Accept

16

Send 6

Send 7Accept 6

人

Send 11

Send 2Accept

2

Send 8Accept

5

Send 4Accept

2

Korea

U.S.

Europe

China

Germany

Canada

Singpore

Australia

Russia

Taiwan

Spain

Sweden

India

Mexico

U.K.

Brazil

Eurasia

Examiner Exchange Program of the Trilateral Offices 　

Send 28 　 Accept 24

P5 workshopSend 13 　 Accept 12

Examiner Exchange Program on Classification

Send 73 　 Accept 11

Portugal

Send 2

Total number of examiners that the JPO sent or welcomed from April 2000 to July 2014

Sending 7 officials for a mid- and

long-term

Sending 6 officials for a mid-and long-

term

Viet Nam

Denmark

Send 7Accept

4

Send 4Accept

2WIPO

Sending 1 official for a mid- and long-term

Sending 1 official for

a mid- and long-

term

Send 2Accept

2

Sending 1 official for a

mid- and long-term

Philippines Send 2

The JPO intends to prepare more than 1,200 slides in English for training programs, aiming to strengthen its advice and training activities on operational practices for developing countries

In order to enhance the examination capabilities and international reliability of the JPO, Japan will conduct international searches and international preliminary examinations for international patent applications filed under the PCT system that were received by the U.S. In other words, Japan will extend its competency as the ISA/IPEA to the U.S. In this pilot program, the JPO will give higher priority to applications on green technologies, the number of which is expected to be around 5,000 for three years.

Competent ISA/IPEA

Collaborative Search and Examination (CS&E)The JPO will enhance its examination quality through cooperative efforts on searches and examinations on patent applications by examiners from the JPO and the USPTO.

Examiners from both Offices will collaborate on conducting consolidated examinations, i.e., collective examinations, on batch applications in which the technical content is related to each other, so as to grant patent rights simultaneously in both Japan and the U.S.When necessary, applicants will explain the technical background of their applications.

Collaborative Examination Batch applications in the technical content is related to each other Establishment of patent portfolio

JPO USPTO

Collaboration

The JPO and the USPTO have reached a basic agreement to launch the following two pilot programs as early as April 1, 2015, based on the JPO-USPTO cooperation initiative on patent examinations, in order to strengthen cooperation between the US and Japan in the area of examination.

App.

App.

App.

App. App.

App.

App.

App.

App.

App.

App.

App.

11

Strengthening US-Japan Cooperation in Examination

The U.S. and Japan will take the lead in promoting innovations by enhancing the quality of IP rights and advancing globalization of intellectual property.

12

Conclusion

JPO USPTO

IP Collaboration

innovations

Enhancing quality and globalization

Thank you for your kind attention !