What Japan can teach us about PPH:

Transcription

1 I DIEGO BOSCHETTI MUSSKOPF What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey This report was prepared for the Japanese Patent Office and Japan Institute of Invention and Innovation as a requirement for the conclusion of the Six-month Studycum-research Fellowship Program. The report shall be presented during the fellowship and followed by a discussion including the JPO officials and the APIC staff. Adviser: Prof. Yoshitoshi Tanaka Tokyo Institute of Technology Japan Tokyo March, 2012

2 II FROM PRO-PATENT TO PRO-INNOVATION From a historical viewpoint, the agricultural society grew into industrial society, which is followed by knowledge society. Intellectual property policies in the industrial society have been swinging between anti-patent and pro-patent policies. Today, we are evolving to the knowledge society, which are changing the intellectual property value in terms of quality compared to that in the industrial society. Therefore, it is necessary to promote the propatent policy with emphasis on quality much more and address intellectual property policy for pro-innovation. Mr. Hisamitsu Arai Former Secretariat-General of IP Strategy Headquarters/former Commissioner of the JPO About the Author Diego Boschetti Musskopf is an Architect and Urbanist (UFRGS 2004) and Master in Civil Engineering in the Sustainable Construction Field (UFRGS 2007). He has researched topics focusing on Distance Education, Urban Ambiance, and Thermal Comfort. He has experience in urban projects, buildings and equipment aiming at preserving the environment, and he worked in the construction market from 2002 to He began studying law in order to join the INPI (Portuguese acronym for National Industrial Property Institute ) in At present, he is a patent examiner in the Human Needs Patents Division (DINEC) from the Coordination of Patents IV (CGPAT IV), and a member of the PPH (Patent Prosecution Highway) discussion group at INPI. He is qualified in (a) applications development and technical advice for the granting of patent rights, (b) development of actions and projects for the promotion and strengthening of industrial property, and (c) conducting studies and research related to this area.

3 III ACKNOWLEDGMENTS First of all, I especially thank my family for all love they gave me all my life, and for the support they gave me here in Japan, mainly in the critical moments. I thank Professor Prof. Yoshitoshi Tanaka from the Tokyo Institute of Technology for opening my mind with rich discussions in our weekly classes and meetings, with a fruitful exchange of information and good conclusions. I thank Mr. Yoshiyuki Iwai, JPO Commissioner; Mr. Kozo Oikawa, President of JIII; and Mr. Takao Ogiya, General Director of APIC for having chosen me as researcher for this Program, as well as JPO and JIII for sponsoring my studies from October 2011 to March I thank my office, INPI, for the confidence in my work, primarily Dr. Júlio César Castelo Branco, the General Director of Patents; and Dr. Carlos Hage, the head of CGPAT IV. I am very thankful to Ms. Vivianne Cardoso Banasiak, the head of my division at INPI, for telling me to apply for this research program, as well as for all the help she gave me before and after the trip, and for keeping me updated with Brazilian information. I am thankful to the Patent Examiners in the PPH division of JPO (as well as to Ms. Kaori Ogino from International Affairs Division) for all the PPH knowledge, as well as for the review of my questionnaire and report. I thank Mr. Edi Braga, the leader of the PPH study group, and my team colleges for all the knowledge and for sharing the information with me. I thank the JPO and INPI International affairs staff for managing my trip, mainly Ms. Claudia Campos and Ms. Atsuko Watanabe, as well as Ms. Miyuki Fukaura, and patent examiners Mr. Akira Ogawa and Mr. Yusuke Okuda for the friendship and for the help with the Brazilian Patent Seminar. I am very thankful to my two coordinators, Ms. Yukiko Koyanagi- and Ms. Satoko Miyazaki for all the logistic support offered to me before I arrived in Japan and during my stay, as well as for the fast and accurate schedule of meetings, the help with translating documents, the preparing of questionnaires and tables, and so many other professional and personal things that the list will not fit in this page. I would also like to thank the native speaker Ms. Kimberly Hughes for reviewing the text. I offer thanks to all speakers in the short term courses I attended at APIC for all the knowledge about the Japanese patent system and criteria. I also thank my comrade Mr. Zhou Zheng from China and all JIII/APIC and JPO staff that have helped me during this research program by sharing experiences, providing information and emotional support as well for the good moments we had, as well to other friends that inspired or cooperated somehow with this work.

4 IV ABSTRACT INTRODUCTION: Most patent offices around the world have a work backlog, and are trying to reduce the delay in official actions through different methods. Once many corresponding applications are filed in several patent offices, they try to share the work in order to tackle the problem. At the same time, the PPH agreement shrinks the backlog and mitigates its negative effects because it is based in a strong work-sharing framework and accelerates examinations abroad. Although, the number of PPH users and signatory countries is increasing, it still low. There are several background reasons why companies use or do not use the program. METHODOLOGY: We conducted a questionnaire survey in order to better understand the PPH-user stakeholders (Japanese companies and patent law firms), with the final goal being that of improving PPH usability. CONCLUSIONS: We could see that the respondents are worried about the backlog, and they consider solutions related to work-sharing (like PPH) as the best. There is no clear PPH-user profile concerning IPC fields. But we can barely say that companies with more patent applications try to use it, or that patent firms with more patent agents recommend it more often. Most of the PPH features described in the background are clear, and the stakeholders discerned, except for the ones related to costs and burdens. The short time and application type restrictions are new features we found that can be improved. The companies main focuses are to have the patent granted as fast as possible, and in as many countries as possible. They also want to reduce costs and burdens. Patent firms want their clients patents granted quickly, and they want options and flexibility to offer service and information to support their clients decisions. Patent offices must consider the implementation of the accelerated examination system (or make it more user-friendly) in order to allow domestic applicants to fulfill PPH requirements. The PPH program is a new framework and its chances are increasing its acceptability. Although some features are still not clear to the stakeholder and PTOs, the increase number of users and signatory countries, as well as the number of pilot programs that are becoming permanent, are a good clue to say that the PPH can be good option and have a huge potential.

5 V TABLE OF FIGURES Figure 1: PPH Composition... 2 Figure 2: Graph showing number of world applications (WIPO, 2011)... 7 Figure 3: Different levels of work-sharing (JPO, 2011) Figure 4: Graph of the number of petitions for accelerated examination in JPO per year (JPO, 2011) Figure 5: PPH network (PPH Portal, 2012) Figure 6: PPH Requirements (JPO, 2012) Figure 7: PCT-PPH Requirements (JPO, 2012) Figure 8: Workflow of Requirements (JPO, 2012) Figure 9: Graph of average examination pendency time in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012) Figure 10: Graph of average rate of allowance in JPO in months when the OLE is the JPO, as of Jul-Dec 2011 (PPH Portal, 2012) Figure 11: Graph of average number of claims per applications for US-JP PPH applications when the OLE is the JPO, as of the end of September 2011 (PPH Portal, 2012) Figure 12: Graphs of users opinions about the PPH in August 2007 (JIPA, 2008) Figure 13: Graphs of nonusers opinions about the PPH in August 2007 (JIPA, 2008) Figure 14: Graph of PPH merits and demerits as pointed out by the 81 companies with experience in the JPO-USPTO PPH (Maeda, 2011) Figure 15: Graph of the reasons for not using the PPH as pointed by the 460 nonuser companies (Maeda, 2011) Figure 16: graph of companies behavior on using the PPH and Patent Law firms behavior on recommending it Figure 17: Graph of number of Patent Law Firms per Number of Attorneys Figure 18: Graph of number of Companies per average number of applications from 2007 to Figure 19: Graph of number of companies per technical field Figure 20: Graph of opinion about JPO time to grant a patent Figure 21: Graph of opinion about how to solve the backlog problem Figure 22: Graph of user s knowledge about PPH types... 40

6 Figure 23: Graph of level of satisfaction with PPH information Figure 24: Graph of main sources of PPH information Figure 25: Graph of level of satisfaction with the PPH members Figure 26: Graph of expected behavior if Brazil signs the PPH agreement Figure 27: Graph of opinion about the kind of applications accepted as PPH Figure 28: Graph of opinion about the possibility to choose the OFF Figure 29: Graph of behavior of first filing Figure 30: graph of opinion about the importance to accelerate examination in order to fulfill the PPH requirements Figure 31: graph of behavior on using the accelerated examination in JPO Figure 32: Graph of opinion about the possibility of an OSF be the OEE Figure 33: Graph of opinion about the PPH burdens compared to other applications Figure 34: Graph of opinion about the time to prepare PPH documentation Figure 35: Graph of opinions about the homogenous understanding of patentability criteria Figure 36: Graph of opinion about the time to answer the documentation Figure 37: Graph of opinion about the variation of the granted claim scope Figure 38: graph of opinion about the foreign examiner independence when JPO is the OEE Figure 39: graph of opinion about the JPO examiner independence when the foreign PTO is the OEE Figure 40: Graph of opinion about the examination quality in a foreign PTO when JPO is the OEE Figure 41: Graph of opinion about the examination quality in JPO when a foreign PTO is the OEE Figure 42: Graph of opinion about the time to have a patent granted in several countries Figure 43: Graph of behavior on using the accelerated examination abroad (except the PPH) Figure 44: Graph of opinion about the PPH costs compared to other applications Figure 45: Graph of opinion about the PPH costs VI

7 VII TABLE OF TABLES Table 1: Table of main measures to tackle the backlog problem... 8 Table 2: PPH users and non-users Table 3: core of questions Table 4: correlation between companies questions Table 5: correlation between Patent Law Firms questions Table 6: Factor extraction from companies opinions (major factor method) Table 7: Companies main factor matrix results after rotating Table 8: Factor extraction from Patent Law Firms opinions (major factor method) Table 9: Patent Law Firms main factor matrix results after rotating Table 10: Variables related to companies opinions about the JPO backlog Table 11: Variables related to patent law firms opinions about the JPO backlog... 69

8 VIII TABLE OF CONTENTS 1. Introduction Rationale and objectives Methodology Hypotheses Lineation backlog and efforts to reduce it Strategies to reduce the backlog or mitigate its negative effects International Agreements and Work-Sharing Accelerated examination USPTO JPO EPO: Canada: Brazil: Germany Korean United Kingdom PPH - Patent Prosecution Highway PPH outline PPH (or Paris-route-PPH) PPH-PCT PPH MOTTAINAI Examination Procedures PPH Merits How to take maximum advantage of the PPH PPH: Critiques and Changes PPH User Survey Users survey background Observation from the PPH Survey results... 35

9 IX Backlog awareness and best solutions Awareness about the PPH Program OFF and CUP-Priority Time to make the first action (OFF x OEE) Period of time to prepare PPH documentation Reduction of notices of reasons for refusal Period of time to answer the OLE reports Examiner Independency Examination Quality / Patent Quality Period of time to have the patent granted General opinion about costs Statistical analysis Pearson's Correlation between answers from two different questions Factor analysis Multiple Regression Analysis Conclusions Bibliography... 75

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11 Page: 1 1. INTRODUCTION On March 19, 2011, President Barack Obama was in Brazil to negotiate a series of treaties between the two countries, including the Patent Prosecution Highway (PPH) Program. As reported by the Agência Brasil: A pilot cooperation agreement on patents [PPH] will be signed this weekend during the visit to Brazil by the President of the United States, Barack Obama (EBC, 2011). The Brazilian domestic industry was not aware about the agreement, and several groups representing Brazilian entities were against the PPH program. Among other criticisms, they pointed out that (a) the agreement was negotiated without transparency; (b) the examination quality is expected to run down in Brazil because the criteria of patentability in U.S. law is different from Brazil s; (c) the deal will seriously affect Brazilian examiners independence and sovereignty, as they would be pressured not to redo prior art search; (d) foreign applications will run in a parallel line and take advantage over domestic ones. (Simões, 2011). This information led to great social pressure, and the Brazilian government has decided that a further analysis of the [PPH] patent agreement [ ] is necessary. As result, the agreement was not signed (Gandra, 2011). Such claims show that the PPH was discussed little in Brazilian society, and the way the news was reported misled people s opinions. The information disclosed said the treaty would be signed by the respective country presidents [if so, it would have law enforcement] (EBC, 2011). In fact, until today, most PPH agreements were signed by patent office CEOs (PPH Portal, 2012). Currently, the PPH is one of the actions that the INPI structured in order to reduce its delay in office actions (the so-called backlog ) to four years. INPI intends to achieve this goal in Furthermore, Dr. Jorge Ávila said that Brazil would have signed similar agreement with China and Europe during the second half of 2011 (Simões, 2011). It shows that, although the dealing of the PPH agreement with the U.S. has been postponed, INPI is interested in closing bi-lateral agreements or multilateral agreements in order to reduce its backlog. What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

12 Page: Rationale and objectives With the advancement of economic globalization, there has been an increased demand in protection of industrial rights around the world. This has led to an increasing number of correspondent applications filed in several countries. Accordingly, the rapid increase of foreign applications in most countries has resulted in a backlog (Maeda, 2011). There are several ways to reduce the backlog or mitigate its negative effects. One is through work-sharing. The need for international-work sharing in the field of patent examinations has been growing in many countries, and is even considered very important by the patent offices of developed countries (JPO, 2008). On the other hand, the accelerated examination can be a good strategy to mitigate the backlog problem, mainly to those businesses that need the patent granted. We propose a new definition of the PPH. In our opinion, the PPH is an international agreement based in a framework with a high level of work-sharing among patent offices where the office of Later Examination (OLE) can use the prior-art searches and judgments from the office of Early Examination (OEE) in applications that have any claim determined as patentable to assist its decision and mitigating its Backlog at the same time that improve the patent standard and quality worldwide. Moreover, the PPH reduces the backlog negative effects once it provides an accelerated examination in the OLE with a simple procedure upon the applicant s request (Figure 1). Figure 1: PPH Composition The PPH is a relatively new work-share framework, having begun in There are three different types and its requirements were eased a few times to make the program more Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

13 Page: 3 user-friendly. It means they can vary slightly in each bilateral agreement (PPH Portal, 2012). Most changes are spurred by meetings among the patent offices (PTOs) or between PTOs and industry associations (JIPA, 2011). The PPH program has proven to be an important step toward the harmonization of patent systems and examination standards, as well as consistency in examination quality (including thinking process, etc.) (JPO, 2011). Many companies from different countries are taking advantage of PPH Program benefits, as are many patent offices, which are striving to extend these benefits. Until today, 25 countries have already signed the agreement, including some BRIC countries (Russia and China) (PPH Portal, 2012). These 3 different types and the requirements variation can bring good opportunities to stakeholders business, but it also can bring problems that can prevent its usage. The main reason to conduct this study is to check users point of view about these opportunities and issues, and its final goal is to improve PPH usability. We believe the survey is the best way to obtain data about the knowledge and usability of the PPH, as well to grasp the ways in which users utilize the different systems. We also believe that several improvements can be extracted from answers in terms of what applicants hope to see, as well as users latent new needs. Furthermore, it is possible to distinguish secondary objectives such as: 1. Understanding applicants and attorneys opinions about the delay in office actions, and how to tackle the problem; 2. Verifying PPH-related knowledge on the part of companies and patent law firms; 3. Understanding how stakeholders use the PPH types ; 4. Understanding the level of certain PPH features relevance to the stakeholder s business; 5. Verifying whether some PPH steps prevent the stakeholder from using it; and 6. Understanding stakeholders opinions about some features when a foreign company or firm requests the PPH in JPO. 1.2 Methodology The background discloses several surveys about the PPH agreement, with most of them focused on users X non-users companies and on a list of vantages X disadvantages of What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

14 Page: 4 PPH. Just like the background, we divided the company s answers in the same way, aiming to comparing the results with previous research, but in fact going even further. We did not find references in the background surveys about patent attorneys or patent law firms opinions. On the other hand, many companies do not have their own group of patent attorneys. This means that the patent agents are the interface between several companies with the patent office. For this reason, we consider it important to also include the patent law firms in the survey. In this case, we divided the patent law firms between those that indicated the use of PPH to its clients, and those that did not. The addition of the patent agent opinion is the first difference from this study when compared to the background. The questions diverge slightly between companies and patent law firms, but the core is the same. We aimed to allow comparisons between the answers from both stakeholders. The responses of a survey can be divided into three degrees of depth. In the first level, we identify the main characteristics (e.g. "Why do you use the PPH?"). Once we have identified the critical characteristics, it becomes necessary to identify how relevant they are to the user (e.g. "How important is it to accelerate the examination to your business?"). This means that the intermediate degree identifies how those characteristics are important or not. The third level is the deepest, indicating the reasons why the respondent believes this important feature (e.g., "Why is important to accelerate the examination to your business?"). (Wikipedia, 2012) Most surveys about PPH users opinions carried out until today indicate the PPH features that are responsible for whether or not companies use it (level 1). For this reason, we try to expand the understanding of PPH by observing how each feature is relevant to the business of the respondent (level 2) and sometimes the reason (level 3). Another difference is that the questionnaire makes questions about the steps of PPH prosecution. The questions were ordered to correspond to the PPH stages (e.g. file first application request for accelerated examination at the OSF (or OEE) fulfillment of the PPH requirements, etc.). The fourth difference is regarding the respondents behaviors. They were asked to indicate perceptions from between two different points of view. In case 1, the situation was the following: They work in the inventor s company (or they are the inventor s patent attorney). Because the company wants to ensure the patent right as soon as possible and in as many countries as possible, they have decided to use the PPH. In case 2, companies Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

15 Page: 5 were asked to imagine that a competitor company is using the PPH at JPO; and patent agents were asked to imagine that a foreign patent firm wants to use the PPH in JPO and wants a partnership. The questionnaire survey was conducted by: 1. sending one questionnaire to the 223 companies with the biggest number of applications filed in JPO in 2011; 2. sending another (but similar) questionnaire to the 55 largest patent law firms in Tokyo by number of patent agents; and 3. distributing both questionnaires among the 232 people who attended the Brazilian Patent Seminar held at GRIPS (Tokyo, Japan) on January 31 st. The results of the surveys were analyzed and studied. We then divided the respondents into four different groups: User companies, users patent law firms, non-user companies and non-user patent firms. After that, we created tables and graphs in order to facilitate the comparisons between different groups. In the first analysis, we compared each group s answer for each question. Secondly, we arranged the questions by main topic and extracted conclusions by matching similar answers for 2 or 3 questions. Thirdly, we used the SPSS and made three statistical analyses: (a) Pearson's correlation between answers from two different questions, (b) factor analysis, and (c) multiple regression analysis. 1.3 Hypotheses We believe the usage and awareness of the PPH is growing among Japanese companies and patent law firms. We also believe that most of them are unsatisfied with the time to grant a patent, and that work-sharing among PTOs may be suggested as the best solution. Both stakeholders may recognize the PPH main features of the different PPH types, but some of its potential (described in the background) may not be considered. We also believe that other additional PPH features (opportunity or threat) will be identified because (a) we add another stakeholder (patent law firms); (b) we split the PPH process; and (c) we request the stakeholder to change its point of view. We expect to identify the level at which these features (new and old) are important to each stakeholder. We also believe we can grasp the stakeholders behavior when comparing the results through the SPSS software. We think we will be able to relate the respondent s answer What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

16 Page: 6 from two different questions, identify the reason, and better understand their opinions. We also believe we can parse several variables and underlying constructs or factors that each better explains its variation thereby helping us to understand the main need for each stakeholder. 1.4 Lineation In chapter 2, the PPH is contextualized as a backlog reduction strategy through the division of labor between offices, and as a system to mitigate the problem through accelerated examination. Several other examples of work-sharing and accelerated examination are reviewed. In chapter 3, the most relevant literature related to PPH is reviewed. The focus is the key stakeholders, with the main advantages and disadvantages identified for each. Several PPH critics and changes over the time are pointed out. In chapter 4, the results from the survey are exposed and analyzed. The data is compared with former PPH surveys stipulating users and non-users, as well as companies and patent law firms. In chapter 5, the main conclusions are summarized. Some considerations are made regarding PPH use, as well as some recommendations made about its future studies. Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

17 Page: 7 2. BACKLOG AND EFFORTS TO REDUCE IT The expansion of global activities among business entities has resulted in the growing need for the acquisition of patent rights in a plurality of countries (Figure 2). This has led to the tendency to file the same invention with various patent offices and an upsurge in the number of patent filings worldwide. This results in two problems: (a) an increase in the duration of the examination period; and (b) a heavy increase in the workload on examinations at each patent office. (METI, 2011). This delay is called a backlog. Figure 2: Graph showing number of world applications (WIPO, 2011) The workload of patent examinations has increased every year due to the following four reasons: (1) the complex and sophisticated content of applications, (2) the increase in the number of accumulated documents covered by prior art searches, (3) the increase in the number of international search reports to be established within the time limit set by the treaty, and (4) the increase in the examination workload per PCT application with the introduction of the Enhanced International Search System (JPO, 2011). 2.1 Strategies to reduce the backlog or mitigate its negative effects Several countries are making efforts to reduce the backlog or mitigate its negative effects. Some measures are described as desired but still only on paper. The main measures described in the background are described in the Table 1 (Arai, 1999) (IP5, 201_) (JPO, 2008) (Phillips, 2010) (Sajewycz, et al., 2010) (Taplin, 2010) (Thomas, 2011). These measures focus on reducing the backlog, except the expedited examination. The accelerated examination itself is not an action to mitigate the problem. But it can help What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

18 Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012 Page: 8 foreign patent offices and it brings benefits to business that need the patent granted in order to happen (see 2.3 下の ). The main measures to tackle the backlog problem: mitigate negative effects: accelerate examination limiting applications: limited the number of claims limited the ability of applicants to re-file their applications (USPTO continuing application). ask for wider participation classification; among actor (applicants state of art search made by certified companies; and third parties); third parties to present possible anteriority, interviews; Stimulating the abandonment or expedited review of one patent application when the applicant agrees to withdraw another; withdrawn of application: recover fees; outsource: classification; prior art search; examination and judgment; work- sharing among offices (e.g. PCT and PPH); nonreciprocal / unilateral recognition of patents (e.g. MSE); mutual recognition of patents between patent offices; a world recognition of patent (ultimate goal); Increasing and improving hiring examiners assistants; prosecution: hiring more examiners; examiner reviewing the application before the trial; Table 1: Table of main measures to tackle the backlog problem Roland Grossenbacher [Director of the Swiss Federal Institute of Intellectual Property in 2010] described [ ] measures to help the problem. A 'classical' measure would be to hire more examiners, but he said young scientists should put their talent towards innovation and not become patent examiners. Also, the multiplication of hyper-specialized patent examiners would be hard for patent offices to manage, he said. A second, bolder measure [ ] would be a global patent. But at this stage when there is no sign of a European Community Patent [ECP], it seems Utopian, he said, although the PCT has the potential to grow in that direction. Another idea would be mutual recognition between patent offices, but this is dangerous if prior conditions are not met. For the moment, that would probably reduce patent quality, he said. Alternative solutions have been developed like sharing work among offices, but this can be very controversial, he said. An example of work sharing is the Patent Prosecution Highway [PPH], a pilot program which involves close cooperation between some IP offices, such as the Canadian Intellectual Property Office, the United States Patent and Trademark Office [USPTO] and the Japan Patent Office [JPO]. It is meant to accelerate the examination of patents in collaborating national offices. There is also the idea of asking wider participation of other actors, such as requesting the applicant

19 Page: 9 to give thorough information on the state of the technology, or third parties to present possible anteriority, prior use (Taplin, 2010). The agency (USPTO) has launched a number of initiatives in recent years to address perceived concerns over the patent-granting process, including: (a) The Patent Application Backlog Stimulus Reduction Plan, which allows an individual who has filed multiple applications to receive an expedited review of one patent application when he agrees to withdraw another, unexamined application; (b) The Patent Prosecution Highway, which allows certain inventors who have received a favorable ruling from the USPTO to receive an expedited review from foreign patent offices; and (c) The Enhanced First Action Interview Pilot Program, which allows applicants to conduct an interview with patent examiners early in the review process (Thomas, 2011). Hiring efforts are not sufficient to reduce the Patent Application many observers are of the view that [d]ue to both monetary and infrastructure constraints, the USPTO cannot simply hire examiners to stem the tide of applications. The USPTO also proposed rules with respect to claims and so-called continuing applications that were designed to reduce its examination burdens. These rules would have limited the number of claims that could be filed in a particular patent application, unless the applicant supplied the USPTO with an Examination Support Document in furtherance of that application. They would have also limited the ability of applicants to re-file their applications an opportunity more technically termed a continuing application absent a petition and showing by the patent applicant of the need for such an application. These rules never came into effect due to a temporary court ruling enjoining their implementation. In the face of considerable opposition to these rules by many members of the patent bar and innovative firms, the USPTO announced on October 8, 2009, that it was rescinding the rules package entirely (Thomas, 2011). In the first step in a JPO trial, the patent examiner from the examination period can review its opinion. This examiner is taken to be the person with the best knowledge about the matter, and it is easier for this person to review his or her opinion than another. It also reduces the need for two more patent examiners (JPO, 2011). 2.2 International Agreements and Work-Sharing For Roland Grossenbacher, [ ] one of the main issues is the work overload in patent offices around the world. This overload jeopardizes the whole patent system, he said. This What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

20 Page: 10 challenge could be addressed with a new dimension of international cooperation, he added (Taplin, 2010). Moreover, the internet access and cloud computing have long ago bypassed the old notion that each national office has to have its own databases of local patent applications and prior art physically present in its own territory (Phillips, 2010). There are several levels of work-sharing among patent offices. This can be divided into three major groups (Figure 3). In the first level, patent offices share information about the prior-art search only, which reduces the time of prior-art search in the OLE. In the second level, the PTOs also share judgments. In addition to only using results, they are therefore able to learn logical structures from each other and increase the harmonization of patentability criteria. In the third level, they also share the final judgment, allowing an inclusive read of the final claim scope (JPO, 2011). Figure 3: Different levels of work-sharing (JPO, 2011) Programs such as the PPH are seen by the TC as steps towards the ultimate goal, which is that each of the TOs would give full faith and credit to the examination results of the other offices. If this were ever achieved, then if a patent were granted in the USPTO, for example, a corresponding patent would be granted by the EPO or the JPO without further examination. However, it is clear that this goal cannot be reached until there is harmonization of the legal system in Europe, Japan, and the USA, in particular the US changes to a first-to-file system (Grubb, 2007). The meaning of patent system harmonization and standardization are closely related with Patent Quality. Quality patents are said to enhance predictability within the marketplace, by clarifying the ownership and scope of private rights associated with particular inventions. When inventors, investors, managers, and other stakeholders possess confidence that patents are reliably enforceable, they are said to have increased incentives to innovate, to finance research and development, and to bring new technologies into the marketplace. In Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

21 Page: 11 contrast, poor patent quality may encourage activity that is not socially productive. Private parties may be required to engage in extensive due diligence efforts in order to determine whether individual issued patents would be enforced by a court or not. Entrepreneurial speculators may find it easy to obtain patents that can then be enforced against manufacturers and service providers (Thomas, 2011). Increasingly complex technologies appear to have resulted in patent applications that are both lengthy and potentially more difficult for examiners to parse. In addition, technological innovation is today a global phenomenon that is occurring at an increasingly rapid pace. As compared to previous years, USPTO examiners may face more difficulty in locating the most pertinent documents that describe the state of the art. Of course, the increasing number of patent applications along with a large backlog of unexamined applications also potentially impacts the ability of the USPTO to maintain high levels of patent quality (Thomas, 2011) Hisamitsu (1999) explains that the final goal of work-sharing can be seen as a World Patent. It does not represent one certificate issued by one world office, but one common understanding about the patent system. It is possible to achieve this goal through an agreement under WIPO with a world decision, but this has been proving a hard mission. In Hisamitsu s (1999) opinion, the TC (Trilateral Cooperation between USPTO, EPO and JPO) has a four-step alternative approach: (1) Sharing prior-art search; (2) Recognizing each other patents; (3) TC patents; (4) Worldwide extension (Arai, 1999). From that time until now, another group was created with the TC countries with China and Korea called IP5. Nowadays, about 90% of the world applications are filed in these five offices, sharing their prior-art search and dossier (wrapper) data (IP5, 201_). However, they still don t recognize each others patents as previewed, perhaps because of the lack of confidence between examiners. In this framework, the PPH can act as a catalyst to enhance examiner confidence, as they can read others work and learn one from another (as better described in title 3 下の ). 2.3 Accelerated examination Each country has a different policy to accelerate the examinations, although the number of expedited examinations is still low around the world. In 2009, accelerated processing was requested in around 7% of cases undergoing examination in the EPO (Sajewycz, et al., What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

22 Page: ). This seems to be attributable to the fact that applicants carefully selected their applications when petitioning for accelerated examination, as the target of the system is limited to working-related applications and the system requires applicants to conduct a prior art search before petitioning (JPO, 2011). Since the Office of First Filing has the potential to provide the examination results most efficiently and appropriately, it is preferable that the Office of First Filing provides the search/examination results at the very first, and that other offices utilize the results. By establishing various bidirectional work-sharing frameworks in which the Office of First Filing provides the search/examination results at the very first and the Office of Second Filing makes the most use thereof, the examination workload of the duplicate application among patent offices is alleviated so that examination efficiency is promoted all over the world. (JPO, 2008) USPTO The USPTO offers several ways to accelerate the examination of a patent application. The goal is to have a final disposition within one year, as follows: 1. An applicant may file a petition to make its application special at the filing date. The subject does not matter. Several circumstances are considered onerous and cumbersome. The applicant must conduct a pre-examination search, including patents and non-patent literature. The search must include the claimed invention (including dependent claims) and disclosed features (that may be claimed). It is also necessary to include an Examination Support Document (ESD), with the Disclosure Statement citing each reference deemed to be the most closely related to the subject matter of the claims, an identification of all of the limitations in the claims that are disclosed by the reference specifying where the limitation is disclosed in the cited reference, a detailed explanation of how each of the claims is patentable over the references cited, a concise statement of the utility of the invention, a showing of where each limitation of the claims finds support in the specification, and an identification of any cited references that may be disqualified as prior art. A fee is required (except if the subject is related to environmental quality, development or conservation of energy resources, or countering terrorism). 2. It is also possible to make the application special based on age or health. The applicant must be 65 years old or more, or with health "such that he or she might Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

23 What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey Page: 13 not be available to assist in the prosecution of the application if it were to run its normal course". There is neither fee nor any other requirement unless the USPTO requests further evidence. (Sajewycz, et al., 2010). 3. The Patent Prosecution Highway (better explained in title 3 下の ). 4. Recently, the USPTO adopted the Three-Track Initiative, under which an application JPO would be placed into one of three queues: prioritized examination, traditional examination, or delayed examination (Codd, 2011). In most cases, the applicant is required to conduct a prior art search and explain the difference between the claimed invention and prior arts. In the case of individuals and SME-related applications, however, applicants are not required to conduct a prior art search, but rather to simply disclose any prior arts of which they are aware. There is no additional fee. (Sajewycz, et al., 2010). The rate of accelerated petitions is about 3.14% in JPO (Figure 4) (JPO, 2011). In an effort to quickly support global economic activities and utilize R&D results, the JPO has implemented the accelerated examination process in response to the submission of written explanation of the needs of the accelerated examination with respect to: 1. Applications relating to inventions that have already been put into practice or are planned to be put into practice within two years (working-related applications), 2. Applications that have foreign patent families (internationally filed applications), 3. Applications filed by SMEs and venture businesses, or 4. Applications filed by universities/tlos and public research institutions that are expected to contribute their results to society (JPO, 2011). Moreover, JPO has other ways to accelerate the examination: 5. The super accelerated examination system targets more important applications, which meet both the requirements for "working-related applications" and the requirements for "Internationally filed applications" out of the requirements for the conventional accelerated examination system. 6. Green-related applications became eligible for consideration under the accelerated examination process in order to protect the achievements of R&D activities conducted on environmental technologies, reward them as quickly as

24 Page: 14 possible, and promote further R&D activities in this area. This system was launched in November 2009 as a pilot program (JPO, 2011). 7. JP-FIRST is a framework within which the JPO prioritizes the examination of patent applications for which the examination has been requested within two years from the filing date, among the patent applications which are the bases for priority under the Paris Convention (applications which are the bases for the PCT applications are not subject to JP-FIRST). The JPO conducts the examination in principle within six months from the later date of the examination request date and the publication date, and no later than 30 months after the filing date (JPO, 2011). Figure 4: Graph of the number of petitions for accelerated examination in JPO per year (JPO, 2011) 8. Through discussion on the possibility of fusing the international phase procedures and the national phase procedures at the maximum level in a long term view, the written opinion was to be made together with the international search report for the applications filed after January The JPO has been conducting a measure in which the PCT international search and the Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

25 Page: 15 examination of the national application are processed simultaneously in the case where the same invention is filed nationally prior to the PCT application and the national application is being requested for examination (JPO, 2011, p. 58). 9. Application filed those sustaining damage from the Great East Japan Earthquake (Provisional program began Aug. 1st, 2011) 10. The PPH Program (better explained in title 3 下の ) EPO: Many applicants can bypass the EPO backlogs by requesting accelerated processing. The EPO provides a dedicated accelerated prosecution program for its applications called PACE. Accelerated examination can be requested at any time for European or Euro-PCT applications. No reasons need to be given; accelerated prosecution simply starts on written request. When accelerated examination is requested, the EPO makes every effort to issue the first examination communication within three months. It then aims to produce subsequent examination communications within three months of receipt of the applicant's reply. Accelerated applications are expected to be granted within 12 months. There is no fee required for a PACE request (Sajewycz, et al., 2010) Canada: Accelerated examination of a patent application may be requested under Rule 28(1) of the Patent Rules. The applicant must make a statement establishing that failure to advance the application is likely to prejudice the applicant's rights. Examples of the requisite prejudice for triggering accelerated examination include the presence of potentially infringing behavior by a competitor or a fee of C$500 ($487). While examination typically takes about two to three years to commence in the normal course after requesting examination, a request for expedited examination can reduce this delay to one to two months. If the request for expedited examination occurs before 18 months after the earliest priority date, a request for early publication must also accompany the request (Sajewycz, et al., 2010) Brazil: The INPI Resolution 191/2008 explains how to accelerate examinations in its 2nd to 5th articles. The requirement for priority examination of patent applications can be done by (I) the depositor when (a) he/she is 60 (sixty) years old or older; (b) the object of the patent What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

26 Page: 16 application is being reproduced by third parties without his/her permission, or (c) the grant of the patent is mandatory for obtaining financial assistance from sponsor agencies or national credit institutions, and the financial assistance will be available in economic grants, funding or participation; (II) a third party, when he/she is been accused by the applicant of counterfeit reproduction of the applied object without its permission. Patent applications will have priority examination (III) (ex officious) when the matter is included in any federal executive act that declares a national emergency or public interest, or (IV) when the Ministry of Health request it because the application is related to drugs that are regularly purchased by the SUS Germany The acceleration of the proceedings can be requested at any time after the request for examination. There is no official fee, but any reason for the request must be given. The guidelines state that the proceedings will be accelerated if the expected duration of the proceedings will be significantly disadvantageous to the applicant (DPMA, 2004). It is possible to make informal calls to GPTO examiners to move the application to the top of their stack of files and to issue the next substantive communication within a few months or even weeks. The office's examiners are usually quite cooperative in this (Sajewycz, et al., 2010) Korean The Korean Intellectual Property Office (KIPO) offers expedited examination under certain circumstances. The applicant can request an accelerated examination only with or after the normal requested for examination. Expedited examination is eligible when (1) a third party is practicing the claimed invention commercially in Korea after the invention has been laid-open; (2) PPH; (3) The applicant requests a prior art search to an independent prior art search institute designated by KIPO at its own cost and requires that the search result is notified to the KIPO Commissioner; (4) there is the necessity for expediting examination of an application within the following categories (the petitioner should submit its own prior art search results): (a) the application is directed to subject matter relating to the defense industry; (b) the application is directly related to green technology; (c) the applicant is practicing or preparing to practice the invention commercially in Korea; (d) the application is directed to electronic transactions; and (e) the application qualifies for certain Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

27 Page: 17 requirements mostly applying to applicants that are domestic entities. The fee is proportional to the number of claims (Sajewycz, et al., 2010) United Kingdom Initially, there was only one route to the early grant of a British patent application. However, in recent years, the UKIPO has developed a range of methods: 1. Through the separate acceleration of the search procedure and a subsequent examination procedure, through the submission of a request together with convincing reasons for the need for acceleration. 2. It is also possible to request a Combined Search and Examination (CSE) together on filing without any reason. In this case, the UKIPO issues the search report along with a written examination report (similar to the combined search report and written opinion of an International Searching Authority) with a statutory reply deadline. The UKIPO aims to produce a CSE report within four months of receipt of a request. It is possible to combine the CSE with the earlier publication request (below), in order to see a British patent granted quickly. The possibility exists to obtain patents granted in fewer than 12 months by filing using the CSE procedure (Sajewycz, et al., 2010). 3. The UKIPO permits a request for early publication without any reasons for such a request. The application must meet the formal requirements before the early publication. The UKIPO has an agency target to publish a patent application for which an early publication request has been made, within six weeks of the request. 4. It is also possible to accelerate the search and/or examination on request by applicant by request with reasons. No additional fee is payable. An examiner will consider the merits of the request. The UKIPO does not prescribe an exhaustive list of acceptable reasons. 5. The patent prosecution highway (see below). 6. Inventions related to environmental benefit also can be accelerated under the socalled green channel (Sajewycz, et al., 2010). What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

28 Page: PPH - PATENT PROSECUTION HIGHWAY The PPH is a set of providing initiatives for accelerated patent prosecution procedures by sharing information between some patent offices. It also permits each participating patent office to benefit from the work previously done by the other patent office, with the goal of reducing examination workload and improving patent quality" (Wikipedia, 2011). The PPH is a procedure that will accelerate examination, have greater efficiency, decrease costs of prosecution, reduce pendent time, and have no fee petition (USPTO, 2011). The PPH outline is a framework in which an application whose claims have been determined to be patentable in the Office of First Filing (OFF) is eligible to go through an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon an applicant s request. The PPH, through the exploitation of all the search/examination-related information of the OFF, (1) supports applicants in their efforts to obtain stable patent rights efficiently around the world, and (2) reduces the search/examination burden and improves the quality of the examination of the major patent offices in the world (PPH Portal, 2012). According the PPH Web Portal, the program started based on a pilot bilateral agreement with the U.S. in May, These results led to the full program implementation in January, 2008, and the expansion of the agreements with other countries. This first type is called only PPH. Two others were created later: the PCT-PPH and the PPH-MOTTAINAI (better described above). The Figure 5 shows the current PPH Network. All three types are under expansion (PPH Portal, 2012). There are two explanations for the PPH creation, both related to the backlog. One is related is related to work-sharing and moving forward the discussion on patent law and practicing harmonization (described in title 2.2 上の ). Through this point of view, the PPH can be seen as a catalyst to enhance examiner confidence. As we will see in detail below, the second examiner can read and learn (or understand) how the first examiner thinks and proceeds before granting the patent. The second reason is related to mitigate the backlog negative effects in foreign countries where is difficult to accelerate application, because it is too complicated, burdensome or expansive. It is clear to say that PPH is not mutual recognition or transfer of rules or practices. Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

29 Page: 19 Figure 5: PPH network (PPH Portal, 2012) Inside the JPO, the PPH is one variation among other accelerated examination methods (describe in the title 上の ), and it has the same processing priority with an average pendency of two months. Like other accelerated examinations, although the number of requests for PPH has been increasing, it is still low compared to the total number of patent applications being filed in the world. PPH participating offices have been discussing ways to promote the utilization of PPH programs (PPH Portal, 2012). The PPH is a system that is still in the process of being developed. While expecting further improvement of practices and expansion of the number of eligible countries from each office, users should probably understand the latest system practices and work out an effective and practical method according to each business strategy of the users (Nagano, 2010). What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey

30 Page: PPH outline As said before, the PPH has three types. There are small differences between the requirements and outlines for each, and all are still in use and expansion PPH (or Paris-route-PPH) This is the first PPH launched between US and Japan, and is the one with the largest number of signatory countries at present. Once it is based in bilateral agreement, there are some differences related to requirements. This presents the simplest framework. Suppose an applicant files an application A first in one PPH-member patent office. This office receives the title of Office of First File (OFF). Second, the applicant files a corresponding application in several other countries. The corresponding applications can be: 1. An application which validly claims priority under the Paris Convention to the corresponding OFF application(s); 2. A PCT national phase application without priority claim (direct PCT application); 3. An application which validly claims priority under the Paris Convention to the PCT application(s) without priority claim; If any of these countries are also Paris-route-PPH signatories, it will be called the Office of Second File (OSF). The applicant will be able to request an accelerated examination in one or more OSFs if (Figure 6): 1. The OFF determines there is at least one patentable claim; 2. The examination has not begun in the OSF 1 ; 3. The OSF application has a particular relationship with the OFF application (e.g. the application claims Paris Convention priority in the OSF); 4. All claims in the OSF application sufficiently correspond or all the claims are amended to sufficiently correspond to the allowable/patentable claims in OFF applications. It is important to highlight that it is not necessary to have the patent granted. Neither office action must be the decision to grant a patent to be qualified to use PPH Program in all patent offices. In several agreements, it is possible if the office action identifies the claims 1 Some PPH-Paris agreements allow the applicant to request accelerated examination even if the exam has already started in the OSF (e.g. Korea, Denmark, Finland, Austria, Hungary and Spain). Diego Boschetti Musskopf. Tokyo: JIII/APIC, 2012

31 Page: 21 that are allowable/patentable. For example, the office action of the JPO may be a notification of reason for refusal, but it includes the standard expression no reason for refusal is found for the invention claimed in the Claim(s) Figure 6: PPH Requirements (JPO, 2012) Claims are considered to sufficiently correspond where (a) they are the same or have a similar scope as those determined as patentable/allowable in the latest OFF office action (except for differences due to translations and format); (b) the claims of the application are narrower in scope than those determined as patentable/allowable in the latest office action. Claims which introduce new or different categories of claims to those determined as patentable/allowable in the latest office action are NOT considered to sufficiently correspond (e.g. product claim vs. process claim). If all the requirements are met, the applicant must submit to the OSF: 1. A copy of all claims and its translations; 2. A copy of the OFF office actions and its translation; 3. Copies of all cited documents; 4. A claims Correspondence Table. Several patent offices do not require a copy of claims and its translations, nor a copy of the OFF actions and its translation if one (or both) documents are provided by the Dossier Access System. The applicant is not required to submit the cited document in most offices if they are patent documents. However, the applicant may be asked to submit these What Japan can teach us about PPH: Important Features Extracted from Questionnaire Survey