1. JPAA International Activities Center Nobuo Sekine
Patent Strategy in Japan: Increased Grant Rate And Reduced Rate of Invalidated Patents
JPAA International Activities Center Nobuo Sekine
October 21-22, AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting

2. Disclaimer
The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice. 2
(AIPLA)

3. JPO’s Statement JPO states that they are working for:
Speedy Examination
and
Stable Patent Right.
Result …?
(Source) Japan Patent Office Annual Report 2014 3
(AIPLA)

4. Months before first office action
Speedy!
Months before first office action 4
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

5. High patent grant rate! Patent Grant Rate*
Patent Grant Rate* = Number of Patent Grant/
(Number of Patent Grant + Number of Final Rejection + Number of Patent Application Withdrawn or Abandoned after First Office Action） 5
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

6. Patent Maintained Rate* of Invalidation Trial Decision
Stable!
Patent Maintained Rate* of Invalidation Trial Decision
Patent Maintained Rate* = Number of Trial Decision maintaining ALL claims / (Number of Trial Decision maintaining ALL claims + Number of Trial Decision invalidating at least one claim) 6
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

7. Summary
- JP patent prosecution procedure is as speedy and applicant friendly as the other main patent offices. >>> Is there any way to expedite examination? - JP patent is stable once granted. 7
(AIPLA)

8. Strategy
Expedited Examination First Office Action is issued in about two months from filing request for expedited examination (2013). 8
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

9. Expedited Examination
Becoming popular!
Number of Request for
Expedited Examination 9
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

10. Requirements for Expedited Examination
If the JP patent application is the national phase of a PCT application claiming priority from a prior US patent application, … differences between the invention of the JP patent application and references cited in PCT ISR can be explained. >>> Concise explanation is usually sufficient. >>> No official fee! 10
(AIPLA)

11. Then, PPH-MOTTAINAI (PARIS route)
Soon!
US Appln.
PPH-MOTTAINAI
2 to 6 months
(Expedited Examination)
JP Appln.
Patent Grant
PPH-MOTTAINAI
EP, CN, KR, TW, MY, IL, GB, DE, RU, AU, CA, AU Applins. etc. 11
(AIPLA)

12. Then, PPH-MOTTAINAI (PCT route)
Soon!
US Appln.
PPH-MOTTAINAI
PCT
2 to 6 months
(Expedited Examination)
JP Appln.
Patent Grant
PPH-MOTTAINAI
EP, CN, KR, MY, IL, GB, DE, RU, AU, CA, AU Applins. etc. 12
(AIPLA)

13. Importance of JPO Examination
Number of Published Patent Documents 13
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

14. Importance of JPO Examination
Number of Cumulative Published Patent Documents
(from 1997 to 2012)
Others
(2.4M) JP
(6.0M) CN
(4.0M) US
(2.6M) KR
(1.3M) EP
(0.3M) 14
(AIPLA)
(Source) Japan Patent Office Annual Report 2014

15. 3-5-1 Toranomon, Minato-ku
THANK YOU
Nobuo Sekine
SEIWA PATENT & LAW
Toranomon37 Mori Bldg. 10F
3-5-1 Toranomon, Minato-ku
Tokyo , JAPAN 15
(AIPLA)