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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

Non-resident

approx.40%

45

58 6166

8287

94

104

115 117122 124

128

136 138

98

74

108

0

20

40

60

80

100

120

140

160

180

1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007CY（ ）

thousands（ ）

Others

GB

FR

DE

US

J P

PCT memberstates

(source) WIPO Website

Growing Demand for Work Sharing

0

0.2

0.4

0.6

0.8

1

1.2

1.4

1.6

1.8

2

1997 1998 1999 2000 2001 2002 2003 2004 2005 2006(CY)

(million)

Patent applications filed by non- residents

Patent applications filed by residents Non-resident approx. 40%

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Patent applications at 5 Offices in 2007Patent applications at 5 Offices from 2001 to 2007

Large majority of worldwide patent applications are filed at 5 Offices (1,410,000 in 2007)420,000 patent applications of them are duplicated

Large majority of worldwide patent applications are filed at 5 Offices (1,410,000 in 2007)420,000 patent applications of them are duplicated

440

245

171141

396

0

100

200

300

400

500

2001 2002 2003 2004 2005 2006 2007

(CY)

(thousands)

US

J P

CN

KR

EP

78,79422,889

32,870

396,291

26,026

35,603

22,887

12,103

456,154

24,611

64,000

24,420

11,084

140,763

666

3,903

1,146

296

6,347

22,976

4,934

8,467

172,469

18,100

245,161

Growing Demand for Work Sharing

172

456

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Foundation Project by IP ５ Offices

• IP5 Offices held the first commissioners' meeting in 2007

(JPO, USPTO, EPO, KIPO and SIPO)

• Work Sharing Framework and 10 Foundation Projects

• Maximize utilization existing infrastructure

Support & Enhance Support & Enhance

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Work-sharing Framework and 10 Foundation Work-sharing Framework and 10 Foundation ProjectsProjects

Common Documentation Database: EPOCommon Documentation Database: EPOCommon Documentation Database: EPOCommon Documentation Database: EPO

Common Application Format: JPOCommon Application Format: JPOCommon Application Format: JPOCommon Application Format: JPO Common Classification: EPOCommon Classification: EPOCommon Classification: EPOCommon Classification: EPO

Common Training Policy [Certification]: Common Training Policy [Certification]: KIPOKIPO

Common Training Policy [Certification]: Common Training Policy [Certification]: KIPOKIPO

Common Approach to Sharing and Common Approach to Sharing and Documenting Search Strategies: USPTODocumenting Search Strategies: USPTO

Common Approach to Sharing and Common Approach to Sharing and Documenting Search Strategies: USPTODocumenting Search Strategies: USPTO

Mutual Machine Translation: KIPOMutual Machine Translation: KIPOMutual Machine Translation: KIPOMutual Machine Translation: KIPO

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

Expanding PPH Network! PPH Network!

GPTO

IP Australia

Mar. 2008

DKPTO

UKIPO

KIPO

CIPO

EPOSep. 2008

ROSPATENT

IPOS

NBPR

Feb

. 20

09

APO

Apr. 20

08

Sep. 2007

Jan. 2008

Mar. 2009

Apr. 2007

Nov. 2008

May 2009

Apr. 2009

Jul. 2008

Apr. 2009 Jul. 2009

HPO

Jul. 2006

Jan.

200

8

Jul.

2007

USPTO

: under consideration

: full implementation

: pilot implementation

Jul. 2009

Oct

. 20

09

No

v. 2009

Au

g. 2

009

Jul. 2009

JPO

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Thank you

http://www.jpo.go.jp/index.htm