Cooperation between SSO and JPO through use of standardization documents in patent examination Yu Kochi Deputy Director Administrative Division Japan Patent Office GSC IPR Working group meeting 20 th April, 2015

１． Use of standardization documents in patent examination Benefit of the cooperation Importance of standardization documents as prior art Impact of standardization documents to patent examination Opinions of user of patent system ２． Necessary condition to use standardization documents Publicly-available Status of standardization documents Access to standardization documents 1 Contents

2 １． Use of standardization documents in patent examination

Benefit of the cooperation Both SSOs and JPO can obtain benefits when JPO use standardization documents as prior art for patent examination. Benefit for SSOs and its members - Suppression of the number of SEPs through patent applications that do not have novelty or inventive step are rejected - Contributors to standard development can take part in standard setting process without worries Benefit for JPO and user of patent system - Quality assurance in patent examination 3

New technology A Similar technology A’ Patent applications filed by third parties Flow of time Patent applications filed by true inventors Filing application Draft standards for new technology A (published) Contributions or proposals for standards by true inventors Importance of standardization documents as prior art 4 Filing application (not published) Publication of application (at 18 months from the filing) Patent application A’ is refused by the standardization document Standardization document

5 Impact of standardization documents to patent examination (1) ※ It is rare that multiple standardization documents are cited in a decision of refusal, so this statistics is almost equivalent to the number of rejected patent applications with examiner’s opinion by standardization documents.

In JPO, in a year, with approximate estimation, ・ The number of decision of refusal with examiners opinion is about ・ 1000 in refusals are based on standard documents ⇒ 1000/50000 = 2 % of refusals are based on standardization documents In the technical field of communication, ・ Share of communication field in total patent application is about 5% ・ The number of refusal in communication field is estimated to 2500 (5% of 50000) ・ Most of standardization documents that JPO use is related to communication technology ⇒ 1000/2500 = 40% of refusals are base on standardization documents 6 Impact of standardization documents to patent examination (2)

Opinions of major patent applicants 7 JPO interviewed 10 Japanese company as major patent applicants as well as participants of SSOs about use of standardization documents for patent examination The result is, ・ 10 in 10 company agreed that JPO promotes to use standardization documents ・ Some company answered that standardization documents in the field of ICT is important for patent examination

2. Necessary condition to use standardization documents 8

Publicly-Known Status of standardization Documents (1) In order to use standardization documents for patent examination as prior art that can deny patentability of someone’s application, ・ Publicly-available Status in Japanese patent Act should be confirmed ・ The date of issue should be shown 9

Publicly-available Status of Standard Documents (2) ConditionPublicly-available Status On free website anyone can accessYes On sale for anyoneYes Member of the SSO only, but anyone can be a member Yes Documents are distributed in SSO meeting. Anyone can join the meeting and obtain the documents Yes Documents are confidentialNo 10 Validity of publicly-available Status Note: This table shows concept, but actually the publicly-available status of each document is carefully considered in case by case basis

Access to standardization documents For standardization documents that have “publicly-available status”, it can be used in patent examination as prior art. JPO would like SSOs to provide us the access to documents for patent examination. 11

12 Thank you very much. 12