1 IP issues from the viewpoint of the JPO Ken-Ichi MOROOKA The Japan Patent Office Fordham IP Conference April 29, 2011

2 Overview 1. Patent Prosecution Highway (PPH) 2. Amendment of the Japanese Patent Act

3 Overview 1. Patent Prosecution Highway (PPH) 2. Amendment of the Japanese Patent Act  The PPH scheme  Expanding PPH network  Number of PPH requests  Plurilateral PPH  PPH Portal Website

4 Search / Examination Allowable Request for PPH Application OFF (Office of First Filing) Application Paris Route Accelerated Exam. A Ｂ Examination Ｃ PCT International Phase National/Regional Phase PCT Application Allowable WO or IPER Positive Opinion PCT Work Products of Trilateral Offices or NBPR PPH Request to Trilateral Offices or NBPR PCT-PPH PPH (Paris Route) Claiming priority to application to Office “A” Request for PPH Accelerated Exam. OSF (Office of Second Filing) The PPH scheme

5 Expanding PPH network JPO (Japan) SPTO (Spain) APO (Austria) ROSPATENT (Russia) NBPR (Finland) IPOS (Singapore) EPO (Europe) IP Australia （ Australia ） DPMA (Germany) CIPO (Canada) DKPTO (Denmark) UKIPO (UK) KIPO (Korea) USPTO (USA) IMPI (Mexico) As of 4th of April, 2011 ： PPH ： PCT-PPH HIPO (Hungary)

6 Number of PPH requests

7 Plurilateral PPH Plurilateral PPH Working Level Meeting : Jan , Tokyo, Japan Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U.S.A. Main topics 1.Relaxing priority requirements 2.Simplifying / Streamlining filing requirements 3.Providing users information of the different practices between Offices 4.Enhancing user outreach

8 PPH Portal Web Site Provision of various statistical data Provision of the PPH guidelines of different countries Provision of the PPH request forms of different countries Provision of the pamphlets of PPH of different countries - Access PPH Portal Web Site for more information -

9 Overview 1. Patent Prosecution Highway (PPH) 2. Amendment of the Japanese Patent Act  The PPH scheme  Expanding PPH network  Number of PPH requests  Plurilateral PPH  PPH Portal Website  The aim of the amendment  Points of the amendment

10 The Aim of the Amendment  To cope with “Open innovation”.  To deal with the acceleration of innovation, and the short life-cycle of products.  To improve user convenience.

11 Points of the Amendment (1)Increasing user-friendliness (2)Appropriate protection of inventors in relation to the results of joint researches etc. (3)Enhancing protection of license agreements (4)Revising the trial examination system to expeditiously and efficiently solve disputes

12 Points of the Amendment (1) Increasing user-friendliness Extension of the patent fee exemption period from 3 to 10 years (for small- and medium-sized Enterprises).

13 Points of the Amendment (1) Increasing user-friendliness (continued) Expanding the mode of disclosure eligible for the grace period. (Present) Conducting an experiment, Presentations made in a printed publication, Presentations made through electric telecommunication lines, Presentations made in writing at a study meeting held by scientific organizations etc. (Amended) Disclosures made by the inventor himself / herself regardless of the mode of disclosure.

14 Points of the Amendment (1)Increasing user-friendliness (2)Appropriate protection of inventors in relation to the results of joint researches etc. (3)Enhancing protection of license agreements (4)Revising the trial examination system to expeditiously and efficiently solve disputes

15 Thank you