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

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

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

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

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

Number of PPH requests

Plurilateral PPH Main topics Plurilateral PPH Working Level Meeting : Jan. 18-19, Tokyo, Japan Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U.S.A. Main topics Relaxing priority requirements Simplifying / Streamlining filing requirements Providing users information of the different practices between Offices Enhancing user outreach

PPH Portal Web Site http://www.jpo.go.jp/ppph-portal/index.htm - Access PPH Portal Web Site for more information - 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 http://www.jpo.go.jp/ppph-portal/index.htm

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

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.

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

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).

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.

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

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