1

Substantive Patent Substantive Patent Harmonization and Japan’s Harmonization and Japan’s

StanceStanceShinjiro ONOShinjiro ONO

Deputy CommissionerDeputy CommissionerJapan Patent OfficeJapan Patent Office

2002 High Technology Protection Summit2002 High Technology Protection Summit

2

HISTORY OF SUBSTANTIVE HISTORY OF SUBSTANTIVE HARMONIZATIONHARMONIZATION

19931993 Suspension of Patent Harmonization Suspension of Patent Harmonization

2000~ Patent Harmonization on2000~ Patent Harmonization on Substantive Substantive Aspects Aspects

? ? Substantive Patent Law Treaty (SPLT) Substantive Patent Law Treaty (SPLT)

1994~ Patent Harmonization on Formative 1994~ Patent Harmonization on Formative Aspects Aspects

20002000 Patent Law Treaty (PLT) Patent Law Treaty (PLT)2000 Summit:Grace Period2000 Summit:Grace Period

2002 Summit:Substantive Harmonization2002 Summit:Substantive Harmonization

3

BACKGROUND OF THE BACKGROUND OF THE SUBSTANTIVE SUBSTANTIVE

HARMONIZATIONHARMONIZATION

Development of Advanced TechnologiesDevelopment of Advanced Technologies

Rapid Growth of Patent ApplicationsRapid Growth of Patent Applications(Especially Those to Foreign Countries)(Especially Those to Foreign Countries)

4

Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications

Total Number of Patent Application in the WorldTotal Number of Patent Application in the World

6 million6 million(1998)(1998)

1.9 million1.9 million(Early 1990s)(Early 1990s)

5

Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications

Roots of Patent Applications to Foreign IP OfficesRoots of Patent Applications to Foreign IP Offices

5.1 million5.1 millionPatent Applications to Patent Applications to

Foreign IP OfficesForeign IP Offices

180,000180,000Original Patent Applications to Original Patent Applications to

Domestic IP OfficesDomestic IP Offices

6

Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications

0

50,000

100,000

150,000

200,000

250,000

300,000

350,000

400,000

450,000

500,000Patent Applications Examination Requests

Patent Applications/Examination Requests Filed with JPOPatent Applications/Examination Requests Filed with JPO

7

Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications

0

2,000

4,000

6,000

8,000

10,000

12,000

14,000

16,000

18,000

20,000

PCT Applications Filed with JPO

27%27%

8

Trends in the Number of IPERsTrends in the Number of IPERs

0

5000

10000

15000

20000

25000

30000

35000

40000

45000

1995 1996 1997 1998 1999 2000 2001

JPO USPTO EPO

9

Development of Advanced Development of Advanced TechnologiesTechnologies

Rise of advanced technologies Rise of advanced technologies such as information technology such as information technology and biotechnologyand biotechnology

Difficulty in examinationDifficulty in examination Lack of examination guidelinesLack of examination guidelines Growth of complex applicationsGrowth of complex applications

10

GOALSGOALS

Simplified Patent Obtaining Simplified Patent Obtaining ProcessProcess

Workload ReductionWorkload Reduction

11

Simplified Patent Obtaining Simplified Patent Obtaining ProcessProcess

Harmonized standards for granting Harmonized standards for granting patentspatents

Improved quality of examination Improved quality of examination standards in each Officestandards in each Office

12

Workload ReductionWorkload Reduction

Reduction in duplication of workReduction in duplication of work

Balanced work sharing between Balanced work sharing between inventors/applicants and Officesinventors/applicants and Offices

13Sources: (JPO) data compiled by the JPO; (EPO, USPTO) preliminary estimates based on regular exchange of Trilateral statistical data (4/ 2001).

USPTOUSPTO EPOEPO

JPOJPO

Application Flows among Trilateral BlocsApplication Flows among Trilateral Blocs

Duplication Duplication among Trilateral among Trilateral

Offices:Offices: 158,870158,870

Total Trilateral Total Trilateral Workload:Workload:

650,804650,804

14

JPO-USPTO Joint ProjectJPO-USPTO Joint Project

Near term project for the exploitation Near term project for the exploitation of the each side’s of the each side’s search resultssearch results

Separate project for the exploitation of Separate project for the exploitation of the each side’s the each side’s examination resultsexamination results

Identification of differences in each Identification of differences in each Office’s examination practicesOffice’s examination practices

Increased needs for Increased needs for substantial harmonizationsubstantial harmonization

15

Needs for Substantial Needs for Substantial HarmonizationHarmonization

Range of Prior ArtRange of Prior Art

Claim SystemClaim System

Claim InterpretationClaim Interpretation

16

Balanced Work Sharing between Balanced Work Sharing between Inventors/Applicants and OfficesInventors/Applicants and Offices

Inventors Inventors ApplicantsApplicants

Patent Patent OfficesOffices

17

METHODOLOGYMETHODOLOGY

Deep Harmonization on Limited Deep Harmonization on Limited IssuesIssues

Incorporation of “Best Incorporation of “Best Practices”Practices”

Tackling New IssuesTackling New Issues

18

Deep Harmonization on Limited Deep Harmonization on Limited IssuesIssues

Focusing on requirements for Focusing on requirements for granting patentsgranting patents

Deep harmonization covering Deep harmonization covering examination practicesexamination practices

Early conclusion of the SPLTEarly conclusion of the SPLT

Same examination results for Same examination results for the same inventionthe same invention

19

Incorporation of “Best Practices”Incorporation of “Best Practices”

““Best Practices” from various Best Practices” from various

patent systems should be adoptedpatent systems should be adopted

Opportunity to improve each Opportunity to improve each

Office’s examination practicesOffice’s examination practices

20

Tackling New IssuesTackling New Issues

Employing new measures to cope Employing new measures to cope with new issues, such as complex with new issues, such as complex applicationsapplications

Maintaining flexibility to cope with Maintaining flexibility to cope with future issuesfuture issues

21

NEGOTIATION POINTSNEGOTIATION POINTS Technical NatureTechnical Nature

First-to-File System/First-to-First-to-File System/First-to-Invent System and Grace PeriodInvent System and Grace Period

Complex ApplicationsComplex Applications

Rearrangement of ProvisionsRearrangement of Provisions

22

Technical NatureTechnical Nature

Technical nature is an indispensable Technical nature is an indispensable

requirement for patentabilityrequirement for patentability

23

First-to-File System/First-to Invent First-to-File System/First-to Invent system and Grace Periodsystem and Grace Period

Expecting US efforts and European Expecting US efforts and European

flexibilityflexibility

First-to-file system is most First-to-file system is most

advantageous for applicantsadvantageous for applicants

24

Complex ApplicationsComplex Applications

New measures should be sought New measures should be sought

through the Trilateral Cooperationthrough the Trilateral Cooperation

Results should be incorporated into Results should be incorporated into

the SPLTthe SPLT

25

Rearrangement of SPLT ProvisionsRearrangement of SPLT Provisions

Provisions should be rearranged according to Provisions should be rearranged according to

required compulsivity, etc.required compulsivity, etc.

TreatyTreaty

RegulationsRegulations

Practice GuidelinesPractice Guidelines

Thank YouThank You