1 Introduction to the Japan Patent Office Japan Patent Office

Intellectual Property Laws in Japan 2 –Patent Law (Invention) –Utility Model Law (Device) –Design Law (Industrial Design) –Trademark Law (Trademark, Service mark) –Copyright Law (Copyright) –Unfair Competition Prevention Law (Well-known Marks, Indication of Origin, Trade Secrets) –Law concerning the Circuit Layout of Semiconductor Integrated Circuits –Seed and Seedlings Law

Organization (1) 3 Agency of Natural Resources and Energy Japan Patent Office Ministry of Economy, Trade and Industry Small and Medium Enterprise Agency

Organization (2) 4 General Affairs Dept. Patent and Design Examination Dept. (Physics, Optics, Social Infrastructure and Design) Patent and Design Examination Dept. (Physics, Optics, Social Infrastructure and Design) Patent Examination Dept. (Mechanical Technology) Patent Examination Dept. (Mechanical Technology) Patent Examination Dept. (Chemistry, Life Science and Material Science) Patent Examination Dept. (Chemistry, Life Science and Material Science) Patent Examination Dept. (Electronic Technology) Patent Examination Dept. (Electronic Technology) Japan Patent Office Trial and Appeal Dept. Trademark and Customer Relations Dept.

5 Comparison with EPO and USPTO OrganizationJPOEPOUSPTO JurisdictionPatent Utility Model Design Trademark Patent (Plant) (Design) Trademark Number of staffs Total Staff2,8526,726*11,531 Patent Examiners1,7133,949*7,831 Design Examiners Trademark Examiners Number of applications (2012) Patent342,796148,494542,815 Design32,391-32,799 Trademark119, ,049* IP5 Statistics Report 2011, Website of each office * :Data of 2011

6 OrganizationJPOEPOUSPTO Application LanguageJapanese English* (Translation in Japanese should be submitted later) German French English Other EPO languages* (Translation in any of above 3 languages should be submitted later) English Other languages* (Translation in English should be submitted later) Publication18 months from filing or priority date Request for substantive examination 3 years from filing or priority date 6 month from European Search Report none Term of patent right20 years from filing date (applications after June ) Comparison with EPO and USPTO

7 Japan Patent Office Actions for Work sharing and International Cooperation at the JPO

8 The number of patent applications in the world is increasing along with the globalization of business. In particular, the number of applications filed in many offices is significantly increasing. Duplicate work among individual patent offices is also on the rise. The number of patent applications in the world is increasing along with the globalization of business. In particular, the number of applications filed in many offices is significantly increasing. Duplicate work among individual patent offices is also on the rise. Patent Application Filed in the Whole World Changes in Patent Appl. Filed in the Whole World Source: WIPO Industrial Property Statistics (Unit: 10 thou.) mil mil. 83.4

9 Work-sharing Case an application The general concept of work-sharing is the utilization of search & examination results in office of earlier examination. Search an application Duplicate Work.. Normal Case Search Finished Search Refer to the results before searching Utilization of Results! prior arts, office actions Reduced examination workload Growing Demand for work-sharing among IP Offices

Patent applications filed with major 5 Offices 10 Large majority of worldwide patent applications are filed at 5 Offices (1,876,823 in 2012) Patent applications at 5 Offices in 2012 Work sharing (mutual exploitation of search/examination results) is a key issue

Contents PPH 2. PCT 3. PCT-Kaizan 4. Competent ISA 5. Examiner Exchange Program 6. Global Dossier

The Scheme of Patent Prosecution Highway 12 PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination is eligible to have an accelerated examination in the Office of Later Examination with a simple procedure upon an applicant’s request Application A Corresponding Application A’ Grant AcceleratedExamination OEE (Office of Earlier Examination) OLE (Office of Later Examination) OLE examination burden can be lighten Work Sharing Applicant Merit PPH Reques t Claims correspondence OEE Examination History Office Merit The JPO proposed the patent prosecution highway (PPH) and put it into action with the United States in 2006 for the first time in the world. Since then, the JPO has been working toward expanding the PPH network and enhancing the usability of this framework.

IPO-CZ (Czech) SIC (Colombia) IPOPHL (Philippines ) TIPO (Taiwan) IMPI (Mexico) APO (Austria) SIPO (China ) EPO (Europe) DPMA (Germany) IPOS (Singapore) PPO (Poland) EAPO (Eurasia) DGIPR (Indonesia) DIP (Thai) JPO (JAPAN) UKIPO (UK) CIPO (Canada) ROSPATENT (Russia) USPTO (USA) DKPTO (Denmark) PRH (Finland) SPTO (Spain) INPI (Portugal) ILPO (Israel) IP Australia (Australia) IPO (Iceland) PRV (Sweden) NIPO (Norway) NPI (Nordic) HIPO (Hungary) KIPO (Korea) NRIP （ Nicaragua ） As of 6th of January, offices participate in the PPH. As of January 6, 2014 (Japan implements the PPH with 28 offices.) The accumulated total number of requests for PPH filed worldwide is about 50,000. As of December offices participate in the PPH. As of January 6, 2014 (Japan implements the PPH with 28 offices.) The accumulated total number of requests for PPH filed worldwide is about 50,000. As of December 2013 Expanding PPH Network

Number of applications for the PPH (received by JPO) as of December 2013

High Speed: Reduced pendency at the office of second filing (OSF)  Expeditious examination Cost Saving: Reduction in Number of Office Actions High Quality: High grant rate at the OSF  High predictability of examination results at the OSF Merits of PPH: High Speed, Cost Saving, High Quality 15

PCT as an international work sharing initiative 16 ISA/IPEA provides international work products (Written Opinion (WO), IPER etc.) that can be utilized at the subsequent national phase. 16 Refer the written opinion ISA/IPEA DO Refer the written opinion WO PCT system

“PCT Kaizen” 17 【 Issues with the PCT System 】 ・ Duplicate work of applicants and IP offices ・ Lack of predictability of acquiring patent rights, etc. Current measures Improving individual elements and functions that make up the PCT system (partial optimization) ・ Measures to improve the quality of international searches (prior art searches) of an individual ISA ・ Improving electronic processing of applications, etc. Proposed “PCT Kaizen” 【 Basic concept 】 Looking at the entire PCT system as a whole, and encouraging coordination among a series of processes and procedures, from applications up to examinations in each country (total optimization) 【 Specific proposals 】 ・ Improving quality of search and examination results at the international phase ・ Promoting linkage between the international phase and the national phase ・ Refining international search collaboration (collaborative search) ・ Creating intelligence for analyzing and improving PCT processes ・ Creating IT infrastructure which is conductive to PCT Kaizen (full use of the Global Dossier)

Ｉｎｄｏｎｅｓｉａ Started on June 1, 2013 Actual total number: 0 Ｐｈｉｌｉｐｐｉｎｅ s Started on Jan. 1, 2002 Actual total number: 10 Ｔｈａｉｌａｎｄ Started on April 15, 2010 Actual total number: 23 Ｖｉｅｔｎａｍ Started on July 1, 2012 Actual total number: 0 Ｍａｌａｙｓｉａ Started on April 1, 2013 Actual total number: 16 Ｓｉｎｇａｐｏｒｅ Started on Dec. 1, 2012 Actual total number: 10 Rep. of Ｋｏｒｅａ *Resumed on July 1, 2001 * Actual total number: 12 (Only applications prepared in Japanese) *JPO first served as an ISA for Rep. of Korea on Sep. 1, 1990, but in essence discontinued as an ISA on Dec. 1, The above “actual total number” reflects the number after JPO resumed operations as an ISA for Rep. of Korea. Competent ISA (International Searching Authority)

Examiner Exchange Program 19  Purposes 1.Mutual understanding of the other offices’ examination practices 2.Learning useful tools for examiners themselves 3.Fostering mutual confidence on “work results” of the other offices Maximize mutual exploitation of search/examination results among the offices

Expanding Examiners Exchange Program 20  As of end of March, 2014

21 System enabling to retrieve patent application / examination result information in multiple countries at “one stop” Contribute to enhance work sharing among the Offices Examination information sharing system in operation among the IP5 Offices (China, Europe, Japan, Korea and USA) Promote to expand a linkage with the other countries Patent Application/Examination Result Information Database (Build a virtual database by a linkage of the systems at the Offices) Examiner Other Countries Image of system infrastructure for sharing of patent examination information JAPAN USA DATE DOCUMENT ** : Request for a Patent ** : Description ** : Abstract ** : Request for Examination ** : Notification of Reasons for Refusal ** : Written Argument ** : Decision to Grant a Patent JAPAN Country A DATE DOCUMENT ******* XXXXXXXX ******* XXXXX ******* XXXXXXX ******* XXXXXX Country X DATE DOCUMENT ******* XXXXX ******* XXXX ******* XXXXXXX ******* XXXXXXXX ******* XXXXXX Country Z DATE DOCUMENT ******* XXXXX ******* XXXXXX ******* XXXXX ******* XXXXXXXX ******* XXXXXX ******* XXXXXXXX Retrieve patent examination result information in multiple countries at “one stop” Retrieve patent examination result information in multiple countries at “one stop” EUROPE CHINA … … Public User KOREA Global Dossier Global Dossier Initiative

22 Gracias