1 Substantive Patent Harmonization and Japan’s Stance Shinjiro ONO Deputy Commissioner Japan Patent Office 2002 High Technology Protection Summit

2 HISTORY OF SUBSTANTIVE HARMONIZATION 1993 Suspension of Patent Harmonization 2000~ Patent Harmonization on Substantive Aspects ? Substantive Patent Law Treaty (SPLT) ? Substantive Patent Law Treaty (SPLT) 1994~ Patent Harmonization on Formative Aspects 2000 Patent Law Treaty (PLT) 2000 Summit:Grace Period 2002 Summit:Substantive Harmonization

3 BACKGROUND OF THE SUBSTANTIVE HARMONIZATION Development of Advanced Technologies Rapid Growth of Patent Applications (Especially Those to Foreign Countries)

4 Rapid Growth of Patent Applications Total Number of Patent Application in the World 6 million (1998) 1.9 million (Early 1990s)

5 Rapid Growth of Patent Applications Roots of Patent Applications to Foreign IP Offices 5.1 million Patent Applications to Foreign IP Offices 180,000 Original Patent Applications to Domestic IP Offices

6 Rapid Growth of Patent Applications Patent Applications/Examination Requests Filed with JPO

7 Rapid Growth of Patent Applications PCT Applications Filed with JPO 27%

8 Trends in the Number of IPERs

9 Development of Advanced Technologies  Rise of advanced technologies such as information technology and biotechnology  Difficulty in examination  Lack of examination guidelines  Growth of complex applications

10 GOALS  Simplified Patent Obtaining Process  Workload Reduction

11 Simplified Patent Obtaining Process  Harmonized standards for granting patents  Improved quality of examination standards in each Office

12 Workload Reduction  Reduction in duplication of work  Balanced work sharing between inventors/applicants and Offices

13 Sources: (JPO) data compiled by the JPO; (EPO, USPTO) preliminary estimates based on regular exchange of Trilateral statistical data (4/ 2001). USPTO EPO JPO Application Flows among Trilateral Blocs Duplication among Trilateral Offices: 158,870 Total Trilateral Workload: 650,804

14 JPO-USPTO Joint Project  Near term project for the exploitation of the each side’s search results  Separate project for the exploitation of the each side’s examination results  Identification of differences in each Office’s examination practices  Increased needs for substantial harmonization

15 Needs for Substantial Harmonization  Range of Prior Art  Claim System  Claim Interpretation

16 Balanced Work Sharing between Inventors/Applicants and Offices InventorsApplicants Patent Offices

17 METHODOLOGY  Deep Harmonization on Limited Issues  Incorporation of “Best Practices”  Tackling New Issues

18 Deep Harmonization on Limited Issues  Focusing on requirements for granting patents  Deep harmonization covering examination practices  Early conclusion of the SPLT  Same examination results for the same invention

19 Incorporation of “Best Practices”  “Best Practices” from various patent systems should be adopted  Opportunity to improve each Office’s examination practices

20 Tackling New Issues  Employing new measures to cope with new issues, such as complex applications  Maintaining flexibility to cope with future issues

21 NEGOTIATION POINTS  Technical Nature  First-to-File System/First-to-Invent System and Grace Period  Complex Applications  Rearrangement of Provisions

22 Technical Nature  Technical nature is an indispensable requirement for patentability

23 First-to-File System/First-to Invent system and Grace Period  Expecting US efforts and European flexibility  First-to-file system is most advantageous for applicants

24 Complex Applications  New measures should be sought through the Trilateral Cooperation  Results should be incorporated into the SPLT

25 Rearrangement of SPLT Provisions  Provisions should be rearranged according to required compulsivity, etc. Treaty Regulations Practice Guidelines

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