1 IP Infrastructure for Promotion of Work Sharing - Japan’s Perspective - Koichi MINAMI Deputy Commissioner Japan Patent Office WIPO Global Symposium of Intellectual Property Authorities, 17and 18 September 2009

2 Contents Growing Demand for Work Sharing Foundation Projects by IP5 Offices JP-FIRST and PPH

3 PCT applications and PCT member states from 1990 to 2007 Total number of worldwide patent applications by year (source) WIPO Website The total number of worldwide patent filings has been increasing 770,000 patent applications of 1,760,000 (40%) are filed by non-residents The total number of worldwide patent filings has been increasing 770,000 patent applications of 1,760,000 (40%) are filed by non-residents (source) WIPO Website Growing Demand for Work Sharing Non- resident approx. 40%

4 Patent applications at 5 Offices in 2007 Patent applications at 5 Offices from 2001 to 2007 Large majority of worldwide patent applications are filed at 5 Offices (1,410,000 in 2007) 420,000 patent applications of them are duplicated Large majority of worldwide patent applications are filed at 5 Offices (1,410,000 in 2007) 420,000 patent applications of them are duplicated Growing Demand for Work Sharing

5 Foundation Project by IP ５ Offices IP5 Offices held the first commissioners' meeting in 2007 (JPO, USPTO, EPO, KIPO and SIPO) Work Sharing Framework and 10 Foundation Projects Maximize utilization existing infrastructure Support & Enhance

6 Work-sharing Framework and 10 Foundation Projects Common Documentation Database: EPO Common Application Format: JPO Common Classification: EPO Common Training Policy [Certification]: KIPO Common Approach to Sharing and Documenting Search Strategies: USPTO Mutual Machine Translation: KIPO Common Search and Examination Support Tools: USPTO Common Rules for Examination Practice and Quality Control: SIPO Common Access to Search and Examination Results: JPO Common Statistical Parameter System for Examination: SIPO 10 Foundation Projects - Platform for Work-sharing Foundation Projects by IP5 Offices

7 CAF (Description, Claims, Abstract and Drawings) is available to all these offices CAF will reduce burden on applicants, cutting out the need of re-drafting applications caused by the difference among the Offices. CAF (Description, Claims, Abstract and Drawings) is available to all these offices CAF will reduce burden on applicants, cutting out the need of re-drafting applications caused by the difference among the Offices. Common Format (Based on PCT) JPO Format EPO Format USPTO Format KIPO Format … Foundation Projects by IP5 Offices PCT adopts CAF since Jan Common Application Format (CAF) SIPO Format PCT Format

8 Foundation Projects by IP5 Offices JPO SIPO EPO USPTO KIPO AIPN* 1 36 IP Offices Dossier Access System Other IP Offices *1 AIPN: Advanced Industrial Property Network *2 SIPO is under consideration to connect to Dossier Access System in Common Access to Search and Examination Results Search results and examination results in each office can be accessible among these offices （ Japanese-English Machine Translation ）

9  JPO prioritizes examination of applications that satisfy certain conditions: (i) First filed with JPO (and then filed via the Paris route with OSF) and (ii) Examination is requested within two years of JPO filing date  JPO provides examination results (FA) to applicants within 30 months of JPO filing date. JP-FIRST (JP-Fast Information Release STrategy) Introduced: April 2008 Introduced: April 2008 JPO (OFF) Application Final Examination OSF FA FA Results FA JPO prioritizes examination of first filing satisfying JP-FIRST conditions. Corresponding Application Corresponding Application OSF utilizes FA results of JPO. 30 months 12 months (Paris Priority) JPO provides FA results to the OSF before the OSF’s examinations.

10 Office of First Filing (OFF) Corresponding Application Request for PPH Accelerated Exam. Application Patented Office Action Office of Second Filing (OSF) OSF utilizes search and examination result of OFF. If a patent application has been determined to be patentable in the first filing office, the corresponding application is qualified for accelerated examination in second filing offices with a simple procedure. PPH (Patent Prosecution Highway) Average Pendency from PPH Request to FA in the OSF: 2-3 months (As of the end of Apr. 2009in the JPO and the USPTO) (As of the end of Apr in the JPO and the USPTO)

11 Advantages of PPH ~Quality and Speed ~ Expeditious examination and Cost savings are expected due to decreasing number of office actions. High Grant Rate in the OSF High predictability of examination results in the OSF As of Dec. 31, 2008

Another Aspect of PPH Same invention and Same claims between the applications to the OFF and OSF under the PPH Program Mutual understanding of examination practice in each office (What are same, What are different) Facilitation of the substantial harmonization of the examination practices between the offices Improvement of the predictability of the examination result of the OSF for users

PPH Network! Expanding PPH Network! GPTO IP Australia Mar DKPTO UKIPO KIPO CIPO EPO Sep ROSPATENT IPOS NBPR Feb APO Apr Sep Jan Mar Apr Nov May 2009 Apr Jul Apr Jul HPO Jul Jan Jul USPTO : under consideration : full implementation : pilot implementation Jul Oct Nov Aug Jul JPO

14 Thank you