Recent Trends in Patent Harmonization and Modernization JPAA International Activities Center Kazuhiro Yamaguchi October 21-22, 2014 AIPLA Annual Meeting IP Practice in Japan Committee Pre-Meeting

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 (AIPLA)

Forum established in 2007 that consists of the five largest IP offices in the world: - the European Patent Office (EPO); - the Japan Patent Office (JPO); - the Korean Intellectual Property Office (KIPO); - the State Intellectual Property Office of the People's Republic of China (SIPO); and - the United States Patent and Trademark Office (USPTO). Since the IP5 Offices account for approximately 80% of all patent applications filed worldwide, IP5 global cooperation is highly expected to improve the quality and efficiency of examination work (AIPLA) (Source)JPO website IP5 Co-operation

IP5 Co-operation Areas of Activity The IP5 Offices have set up three Working Groups (WGs) dealing with projects and topics in the areas of: - Classification (WG1) - Global Dossier and patent information (WG2) - Work-sharing and quality (WG3) (AIPLA) (Source)IP5 website

IP5 Co-operation Structure of Activities (Source)JPO website (AIPLA) To promote work sharing, the IP5 Offices agreed to establish 10 Foundation Projects, further dividing them into three working groups.

Working Group 1 (WG1) Classification The IP5 Offices are working on harmonizing their classification practice, in both the Cooperative Patent Classification (CPC) and FI (File Indexing) schemes, as well as in the International Patent Classification (IPC) scheme. Related Topics (September 25, 2014) USPTO and KIPO announce KIPO’s full expansion of the Cooperative Patent Classification system. (September 25, 2014) JPO announce Japanese classifications (FI/F-term) are provided to Chinese patent literature published in 2011 for several important technical fields (AIPLA) (Source)IP5 website

Working Group 2 (WG2) Global Dossier and Patent Information Global Dossier At the 5th IP5 Heads Meeting in June 2012 the IP5 Heads created the Global Dossier Taskforce which comprised not only delegations from the IP5 Offices but also delegations representing industry from the IP5 regions. At present the Global Dossier is focusing on delivering tools within the current legal framework but with time as harmonization efforts progress even more ambitious goals may be set (AIPLA) (Source)IP5 website

Working Group 2 (WG2) Global Dossier and Patent Information Global Dossier (cont.) What are the ambitious goals? - One Portal Dossier "One Stop Service" for Application and Examination Documents - Future Services for Applicants "Active Components" such as Cross Filing (AIPLA)

(Source)IP5 website: Presentation material by KIPO Working Group 2 (WG2) Global Dossier and Patent Information Global Dossier (cont.) Framework for Promoting Public Access (cf. One Portal Dossier) (AIPLA)

JPAA's Concern on Global Dossier (AIPLA) "Active Components" - Cross Filing (as a dream?) Potential issues = Translation (machine translation), Agents etc. - Automatic request/provision of documents between offices Lessening burden = "IDS" in US "Prior Documents Information" in JP - Legal status of all patent family members in one location "Next Global Task Force Meeting in January 2015 (China)"

Working Group 2 (WG2) Global Dossier and Patent Information Patent information For many years, the IP5 Offices have been exchanging patent data (ex. bibliographic information, text data and document images) for the mutual benefit of their offices as well as the general public. The IP5 Patent Information Policy aims at improving the availability of patent information, supporting users of worldwide patent information and minimizing the obstacles to accessing patent information (AIPLA) (Source)IP5 website

Working Group 3 (WG3) Work-sharing and Quality The IP5 Offices agreed that in order to achieve their vision of eliminating unnecessary duplication of work. There are two prerequisites: quality and timely availability of search and examination results. IP5 projects in the area of work-sharing and quality include: - PCT as work-sharing platform - IP5 Patent Prosecution Highway (IP5 PPH) - Quality management (AIPLA) (Source)IP5 website

Working Group 3 (WG3) Work-sharing and Quality (AIPLA) IP5 PPH and PPH Network (Source)PPH Portal website

Tegernsee Experts Group The first meeting on patent-system harmonization was held at Tegernsee in the suburb of Munich, Germany, in July Ever since then, the group of offices participating in these meetings has been called the "Tegernsee Group.” Key Issues: - Grace period (JP Art. 30; US AIA Sec. 102(b)) ; - Conflicting applications (JP Art. 29bis; US AIA Sec. 102(a)(2)) ; - 18-month publication; - Prior user rights Final Report Available at: (AIPLA) (Source)JPO and METI websites

Tegernsee Experts Group Symposium on Patent System Harmonization (July, 2014 in Tokyo) (AIPLA) (1) Keynote Speeches (2) Report from the Tegernsee Group Offices (3) User Opinions on the Grace Period (4) Panel Discussion on the Grace Period (Source)METI website Issues JapanU.S.Europe Duration of grace period 6 months12 months6 months Mode of disclosures eligible for grace period All disclosures (other than patent gazettes) All disclosures Specified international exhibitions Declarations or prescribed procedures Required Not required (Note: except for Declaration?) Required

IP5 Deputy/Heads Meeting Seventh Meeting in Busan, ROK (June, 2014) 1)Harmonization of the patent examination practices IP5 agreed that the following three areas should be prioritized in discussions: - written description and sufficiency of disclosure - citation of prior art - unity of invention. 2)Policy on timely examination 3)IP5 offices' mutual access to and provision to the general public of patent examination information (AIPLA) (Source)USPTO website InternationalUpdate.pdf EPO website InternationalUpdate.pdf

Discussion - Pros and Cons (AIPLA) "Global Dossier" - Potential Issues relating to "Active Components": Cross Filing; Automatic request/provision of documents between offices (from the viewpoint of IDS) "Harmonization" - Grace Period - Conflicting Applications - Citation of Prior Art (especially, IDS) - Unity of Invention (Restriction, Election of Species) etc.

(AIPLA) Appendix excerpts from CONSOLIDATED REPORT ON THE TEGERNSEE USER CONSULTATION ON SUBSTANTIVE PATENT LAW HARMONIZATION MAY 2014 (Final Report)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Grace Period (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Conflicting applications (AIPLA) Treatment of Conflicting Applications: When later-filed applications are examined, there are cases that they are rejected on the grounds that inventions claimed in earlier-filed, unpublished applications are deemed to be publicly known prior art, although they are in fact secret prior art. Such earlier-filed applications are called “conflicting applications.” (In Japan, provisions of Article 29bis of the Patent Act, which are the rules dealing with “the expanded effect of earlier-filed applications,” apply to conflicting applications.)

Tegernsee Experts Group Final Report (May, 2014): Conflicting applications (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Conflicting applications (cont.) (AIPLA)

Tegernsee Experts Group Final Report (May, 2014): Conflicting applications (cont.) (AIPLA)

(AIPLA) Kazuhiro Yamaguchi SOEI PATENT AND LAW FIRM Marunouchi MY PLAZA 9th fl. 1-1, Marunouchi 2-chome, Chiyoda-ku, Tokyo JAPAN THANK YOU