A Report on JPO/IPR Patent Practical and Tailored Training Program for Fiscal 2013 for Brazil, India (PPTT)

Transcription

1 A Report on JPO/IPR Patent Practical and Tailored Training Program for Fiscal 2013 for Brazil, India (PPTT) Held at Japan Patent Office (JPO), Asia-Pacific Industrial Property Center (APIC) Japan Institute of Promoting Invention and Innovation (JIPII) and HIDA: Tokyo Kenshu Center Submitted by MANGESH L. MOKASHI EXAMINER OF PATENTS & DESIGNS PATENT OFFICE, MUMBAI 1

2 ACKNOWLEDGEMENTS My sincere thanks to Shri. Chaitanya Prasad, I.A.S, Controller General of Patents, Designs, Trademarks, Office of the CGPDTM, Bouddhik Sampada Bhavan, S.M. Road, Antop Hill, Mumbai who has nominated me after 10 years of service as Examiner of Patents and Designs in Patent Office for the Patent Practical and Tailored Training Program (PPTT Program) for fiscal 2013 for Brazil, India. I am grateful to the Officials of the Department of Industrial Policy & Promotion (DIPP), Ministry of Commerce & Industry, Ministry of External Affairs, Govt. of India for necessary approval, permission and timely arrangements for the successful tour to Tokyo, Japan. I take this opportunity to thank the officials and coordinators of the JPO for their invitation, support and hospitality extended to me during the training program. I also wish to thank to APIC-Japan Institute of Promoting Invention and Innovation (JIPII) and The HIDA-Tokyo Kenshu Center (TKC) for their financial support and hospitality extended to me during the stay in Tokyo which helped me immensely in making the training program a successful one. 2

3 INDEX Sr. Title of Topic Page No 1. Introduction 4 2. Organization Structure 6 3. Extra-Departmental Body of the JPO Human Resource Management Patent Act and Utility Model Patent Examination Training Schedule at APIC/JPO Interaction with JIPA ON JOB Training at JPO and Industrial Visits Suggestion and Recommendations 52 Conclusion 58 3

4 Chapter 1: Introduction The program was sponsored, funded and managed by Asia-Pacific Industrial Property Center (APIC)- Japan Institute of Promoting Invention and Innovation (JIPII) and Japan Patent Office (JPO), Tokyo, Japan. The objective was to provide in-house training at JPO, APIC and offering insights into best practices of JPO, sharing experiences and perspectives from companies, research institutes and Intellectual Property Attorneys. This program includes lectures from eminent lawyers, professors from various law firm and Universities, JPO Examiners and practical sessions followed by industrial visits to Japanese companies. Program Schedule: Patent Practical and Tailored Training Program (PPTT) for Fiscal 2013 for Brazil and India. 17th September - 29th November, Location: HIDA-TKC, Japan Patent Office (JPO), Asia-Pacific Industrial Property Center (APIC) and Japan Institute of Promoting Invention and Innovation (JIPII) 4

5 Participants: 2 Examiners from India and 3 Examiners from Brazil. The PPTT program was designed by JPO especially for the senior Examiners from India and Brazil. The course was attended by totally 5 participants wherein 3 were from Brazil and 2 from India. The Indian Patent Examiner 1) Mangesh Laxmanrao Mokashi (Myself). 2) Mr.V.A.AMBIGAPATHY The Brazilian Patent Examiners: 1) Mr.Alexandre Gomes Ciancio, 2) Mr. Francisco Cavalcante Fabio Barros 3) Mr.Edi Olivera Braga The PPTT program for Fiscal 2013 for Brazil and India was conducted from 17th September to 29th November, 2013 and the program was divided into three phases. The first phase was designed to be conducted in theories from 17th September to 16th October. The second phase was designed with practical exercises from 17th October to 15th November,2013.The third phase was designed with case studies in Patent Examination, On-the- Job Training (OJT),Trial and Appeal cases from 18th November to 29th November,2013. The Details for above Program is attached herein as Annexure A. The PPTT program was designed by the JPO especially for the senior Examiners from India and Brazil. The course was attended by 5 participants in total wherein 3 were from INPI, Brazil and 2 were from IPO, India. 5

6 Chapter 2.: Organization Structure of JPO Organization Structures 6

7 Examination Department Hierarchy in JPO Chief Patent Examiner (18 year and above Examination Experience) Senior Patent Examiner (12 year and above Examination Experience) Appeal Examiner Patent Examiner (4 to 12 Years Examination Experience) Assistant Patent Examiner (0 to 4 Years Examination Experience) 7

8 Organization Structure of CGPDTM 8

9 Comparative Statement for JPO and IPO Organization Structure Sr. Japan Patent Office CGPDTM 1. Head of JPO 1) Head of JPO is Commissioner selected from Highest Administrative Services of Japan 2) No administrator other than these Administrative Services can be appointed as Commissioner 2 Deputy Head of 3) Deputy Commissioner is head JPO of JPO and Single Post 4) Deputy Commissioner is from only Patent Office having Technical and Scientific Experience along with administration means must have experience of Patent Examination 3 Policy Planning 5) JPO has Policy Planning and and Coordination Department Coordination Department 6) Activities for Human Resource Management,Legislative affaire, Information Technology and Patent 1) Head of CGPDTM is selected from Highest Administrative Services of India 2) Still not clear in India and no such written Guidelines 3) There are multiple Deputy Controller in IPO 4) No such criteria is there in IPO. 5) IPO does not have any Policy Planning and Coordination Department. 6) **No Human resource management Division **No Legislative affaire Division, 9

10 4 Trademarks and Customer relationship Department Information management, Budget and Accounts, Research division for Policy planning, Information Dissemination and Policy Promotion and International Policy are carried out through each separate division. 7) JPO has Trademarks and Customer Relationship Department **No Information Technology and Patent Information management Division, ** No Budget and Accounts Division, **Research division for Policy planning, **Information Dissemination and Policy Promotion Division, ** International Policy division. 7) No opinion Drawn 5. Technical Department 8) JPO has four Main Departments and each having Director as Head **Physics, Optics, Social Infrastructure and Design **Mechanical Technology **Chemistry, Life Science and Material Science **Electronic Technology. 10 8) IPO has only Four Groups like Biochemistry, Chemistry, Mechanical and Electronics

11 6. Trial and Appeals Department 9) Each Four Departments has been divided in to 40 Divisions. 10) To become director i.e head of Department in JPO, one must have experience of at least 25 Years of Examination 11) In JPO Trial and Appeals Department is under JPO administration 12) Examiner having experience of atleast years of Patent Examination can work as Appeal Examiner. 13) Appeal Examiner in Appellate Body can work as Examiner or Chief Examiner in Examination Department 9) In IPO, Four Groups i.e Biochemistry, Chemistry, Mechanical and Electronics has not been divided to any divisions. 10) Head of Group in IPO is known as Group Leader and to become Group leader no such criteria has laid down 11) In IPO System, Trial and Appeals, IP Appellate Board is not under CGPDTM. 12) In India, technical Member of IPAB can be administrative person who does not have experience of Patent Examination as Examiner 13) No Such facility is available to Technical Member in IPAB 11

12 7 Hierarchy in Technical Examination Department 14) Hierarchy in Examination Department is from Assistant Examiner to, Examiner, Senior Examiner and Chief Examiner 15) Examiner, Senior Examiner and Chief Examiner of JPO all carry out Examination and same report is communicated to Applicant of Patent 16) Only Assistant Patent Examiner having Experience of 0 to 4 years are prohibited to communicate Report of Examination to Applicant 14) Hierarchy in Examination in IPO is from Examiner to assistant Controller, Deputy Controller and Joint Controller and Senior Joint Controller 15) Assistant Controller, Deputy Controller and Joint Controller and Senior Joint Controller of IPO no one carry out substantial Technical Examination 16) All Examiners whatsoever experiences they may be having are prohibited to communicated examination report to Applicant. 12

13 Chapter 3.: Extra-Departmental Body of the JPO Sources and Origin of Extra-Departmental Body of the JPO The various specific provisions and objectives have been defined and made in Japanese Intellectual Property Law which is not even mentioned in INDIAN IP Laws (1) Promotion of Research and Development (Article 12) (2) Promotion of transfer of Research and Development results, etc.(article 13) (3) Prompt granting of right (Article 14) (4) Effective and prompt legal proceedings (Article 15) (5) Measures against infringement of right (Article 16) (6) Establishment of international systems (Article 17) (7) Protection of intellectual property in new fields (Article 18) (8) Development of an environment for the exploitation of intellectual property (Article 19) (9) Provision of information (Article 20) (10) Securing and nurturing of human resources (Article 22) 13

14 To meet above objectives and provisions of the Japanese Intellectual Property Law following Extra Departmental Bodies have been created from Funding and Grant in aid by Government of Japan 14

15 1) INPIT INPIT is an Independent Administrative Agency to provide information services and human resources development services. It also provides consultation services on industrial property and information dissemination services. Budget and Funding is allocated by Japan Patent Office. It has following two main functions a) Training for JPO Staffs b) Training for Personnel other than JPO Staffs Training for JPO Staffs i) Training of Examiners and Appeal Examiners: Training carried out according to Basic Policies of JPO Training, Training Plans, and other principles in order to develop abilities of JPO official including training for qualification of Examiners and Appeal Examiners ii) Training for Fixed-term Examiners: Candidates undergo two-year training (ordinarily, four-year training) to be an Examiner. iii) Technical training: Training conducted to offer knowledge about most advanced technologies, such as life science, information communication, environment science and nanotechnology iv) Expert training: Training conducted to provide JPO officials with knowledge and know-how they should have to support intellectual property activities of small and medium enterprises and others 15

16 Training for Personnel other than JPO Staffs Training for personnel other than JPO staff. In these programs and materials, training actively provided the personnel with knowledge, experience and know-how acquired by JPO and INPIT staff. i) Training for Searchers working for registered search organizations (RSO) ii) Training for Search Expert iii) Training for Intellectual Property Specialists iv) Supporting SMEs and Venture Enterprises v) Training for Government Officials vi) Providing E-learning programs and other materials 16

17 2) IPCC IPCC (Industrial Property Cooperation Center) was established for the purpose of prior art search Aside from IPCC, there are 9 private sectors that are registered as search organizations Thus functions of IPCC Includes following 1) Receiving raw data from Japan Patent Office 2) Selection Allotment and classification of Patent Applications 3) Making file wrappers for Patent Applications received. 4) Searching of Patent and preparation of search report for patent applications 5) Sending search report for patent applications to JPO 17

18 3) JAPIO JAPIO was established for the purpose of patent information dissemination and to provide comprehensive patent information services to JPO to be a entrusted governmental businesses. Main Activities of JAPIO are i) Patent information processing ii) iii) iv) Operation of IPDL Trademark examination support Other activities JAPIO undertakes overall management of the Industrial Property Digital Library (IPDL), the official web-based Japanese patent information database. Operation & maintenance System development and Helpdesk 18

19 4) JIPII JIPII is Japan Institute for Promoting Invention and Innovations having its objective as i) Through the nationwide network of its branch offices: ii) Encourage inventions and promote programs designed to foster the IP system; and iii) Make important contributions to the development of science and technology in Japan and the growth of the industrial economy 19

20 JIPII Support for Small and Medium Enterprises and Ventures IP Awareness Patent Office of each Regional Bureau of Economy, Trade and Industry Counseling on the IP rights, systems of foreign countries Introductory meetings on the IP rights system (for introductory and advanced levels/ on law revision) Industrial Property Rights experts Support for Idea Industrial Property Digital Library (IPDL) Installation of PCs designed to support electronic applications Patent technology trends survey Support for IP Protection & Acquisition Examination request, examination, appeal and registration Deferred payment of examination request fees Reduction of examination request fees and annual patent fees Refund system of examination request fees Accelerated examinations/appeal and trial examinations Circuit appeal/trial examinations Regional interview appeal/trial examinations TV interview examinations 20

21 JIPII Support IP Comprehensive Assistance Consultation Main Features of IP Comprehensive Assistance Consultation are 1) Intellectual property comprehensive assistance consultation counters, which provide comprehensive consultations regarding intellectual property problems of small/medium-sized enterprises, have been established in 47 prefectures. 2) Consultation assistance personnel can provide resolution on the spot, while assistance is also given regarding the utilization of intellectual property and new business projects in collaboration with various specialists and assistance organizations. JIPII also Assist in 1) Small/Medium-sized organizations, JETRO, commerce and industry associations chambers of commerce and industry, financial institutions, etc.) 2) Providing links with small/ medium-sized assistance organizations so that may effectively utilize intellectual property 3) To use our company s technology in a business project. 4) To protect the results of our R&D. 5) To have the specifications of our patent application checked. 6) To deal with foreign counterfeits. 7) To effectively acquire a patent based on our business model. 21

22 Comparative Statement for Extra-Departmental Body JPO and IPO Sr. Topic Japan Patent Office Indian Patent Office 1. Provisions in IP Law 2. Extra Departmental Bodies of JPO In Japanese IP System there are provisions for Establishment of international systems (Article 17), Protection of intellectual property in new fields (Article 18), Development of an environment for the exploitation of intellectual property (Article 19), Provision of information (Article 20), Securing and nurturing of human resources To meet above objectives and provisions of the Japanese Intellectual Property Law following Extra Departmental Bodies have been created from Funding and Grant in aid by Government of Japan In Indian IP System, many Specific provisions are missing In Indian IP System, there is no provision for Extra Departmental Body 3 INPIT INPIT is an Independent Administrative Agency for Training for JPO Staffs Training for Personnel other than JPO Staffs RGNIIPM is not Independent Administrative Agency 22

23 4 IPCC IPCC (Industrial Property Cooperation Center) was established for the purpose of prior art search. Aside from IPCC, there are 9 private sectors that are registered as search organizations for Patent Searching 5 JAPIO JAPIO was established for the purpose of patent information dissemination and to provide comprehensive patent information services to JPO to be a entrusted governmental businesses. JAPIO undertakes overall management of the Industrial Property Digital Library (IPDL), the official web-based Japanese patent information database. Operation & maintenance System development 6 JIPII JIPII is Japan Institute for Promoting Invention and Innovations having its objective as 1)Through the nationwide No external Searching agency with Indian Patent Office. Neither Government Agency not Private Agency No such Extra Departmental agency with Indian Patent Office. Indian Patent Office does not have any extra departmental organization with objectives and functions like JIPII of 23

24 network of its branch offices: Japan Patent Office 2)Encourage inventions and promote programs designed to foster the IP system; and 3)Make important contributions to the development of science and technology in Japan and the growth of the industrial economy. IP Awareness Support for Idea Support for IP Protection & Acquisition 24

25 Chapter 4.: Human Resource Management JPO ( As per Annual Report 2013) Number of Patent Applications Examined for First Examination Report in JPO 3,69,679 INDIA ( As per Annual Report ) FY As on 31 st March, 2013 Regular Examiner of Patents 60 Plan Post Examiner of Patents 141 Total Strength of Examiner 201 Number of Patent Applications Examined for First Examination Report in Indian Patent Office 12,268 25

26 Comparative Statement for JPO and IPO Human Resource Management Sr. Japan Patent Office CGPDTM 1. Total Patent Examiner Strength 2. Regular Patent Examiner 3. Number of Administrator from Highest Administrative Services 4. Recruitment of Regular Patent Examiner/Year 5. Recruitment of Plan Post Patent Examiner/Year 6. Human Resource/ Personnel Division One ( Commissioner of JPO) About 60 Patent Examiners are recruited per Year as mandatory process in JPO About 100 Patent Examiners are recruited per Year as mandatory process in JPO Under General Administration, policy planning coordination department Personnel Division is established headed by Director of Personnel Division and supervisor of Personnel Division One (CGPDTM) No mandatory process to recruit Regular Patent Examiners per year in Indian Patent Office No mandatory process to recruit Regular Patent Examiners per year in Indian Patent Office. Recruitments of Patent Examiners were carried out in 2002, 2003, 2009 and No Specific Personnel Division is present. One Assistant Controller from Examination Division i.e Dr. B.K. Singh looking after all matters

27 Chapter 5.: Patent Act and Utility Model Japanese Patent Law Japanese Patent Law is substantially dealing with matters like Application for Patent Request and Specification, Specifications and Scope of the Claim Unity of Statements within the Specification and Application Exceptions to Lack of Novelty in Inventions Applications with Priority Claim under the Paris Convention Applications with Internal (or Domestic) Priority Claim Applications in Foreign Languages Amendments to Specifications, the Extent of Patent Claims or Drawings Time Limits to an Amendment Limitations on the Scope of Amendments Division of Application Conversion of Application It is also dealing with matters pertaining to Principle of Examination, Laying open of Applications, System for Laying open Applications, Time for the Laying open of Applications and the Content thereof Effects of Laying open Applications, Request for Examination,System of Request for Examination Period for a Request, Parties Requesting an Examination, Request Procedures, Examination System Examiner,Documentary Examination Ex Officio Principle System of Preferential Examination,Notification of Reasons for Refusal Declining Amendments, Examiner s Decision, Decision to Grant a Patent, Decision of Refusal, Patent Right System for Extending the Term of Patent Rights 27

28 Japanese Patent Law is also dealing with Trials, Trial System, Kinds of Trial, Contents of the Trial, Trial against an Examiner s Decision of Refusal, Trial for Invalidation of Patent,Trials for Correction, Composition of a Trial, Formal Requirements for Demands for Trial, Reconsiderations by examiners before appeals and Advisory Opinion on the Technical Scope of a Patented Invention It is also dealing with Suit against Trial Decision and Supreme Court Appeals Retrial, Patent Law and Administrative Litigation The utility model system in Japan The utility model system has the closest relationship to the patent system. In the patent system or industrial countries, the creation of a technical idea is protected only under patent law whereas it is protected under two separate laws in Japan, i.e., the Patent Law and the Utility Model Law. The Patent Law and the Utility Model Law in Japan had very similar legal systems and was in general closely related. However, the present Utility Model Law incorporated a non-examination registration system in its revision in 1993, which made the two legal systems very different. A utility model system is a system which has been developed to complement a patent system in Japan where so-called petty inventions are 28

29 not given proper consideration and often refused patents under patent law yet such inventions needs to be actively protected and promoted from an industrial viewpoint. The Japanese patent system was established in Through its operations, it was later found that the technical level of Japanese inventions was low compared with the majority of inventions relating to the improvement of basic technologies introduced from abroad. From an industrial viewpoint, the necessity was raised to separately establish a utility model system which can actively protect and promote petty inventions. In 1905, the Japanese Utility Model Law was adopted based on the German Utility Model Law. The law was then revised in 1909 and In 1959, the present Utility Model Law was adopted. From 1960, the year after the adoption of the Utility Model Law, to 1980, the number of utility model applications continued to surpass that of patent applications. In 1981, the relationship between utility model applications and patent applicants reversed with the number of utility model applications dropping in 1993, less than one quarter of patent applications totaling 366,486 in that year. To counter this, the Utility Model Law was revised in 1993 in which all revisions were to be put into effect as from January 1, 1994 the new system excludes a substantive examination when registering. 29

30 Comparative Statement for Utility Model Sl. No. Issues Japan India 1. Subject matter Devices relating to shape or Constructions No provisions for Utility Model Protection 2. Novelty Relative No provisions 3. Inventive step Yes but lower No provisions 4. Exclusions Specific No provisions 5. Protection Term 10 Years No provisions 6. Grace period 6 months No provisions 7. Examination formal No provisions 8. Conversion Yes from patent or Ind. Design No provisions 9. Priority One year No provisions 10. Dual protection No No provisions 11. Opposition NO but invalidation No provisions 12. Technical /search report Post registration Technical opinion No provisions 13. Publication Post- registration No provisions 14. Amendments During registration and invalidation No provisions 30

31 Chapter 6.: Patent Examination 31

32 Most of the Patent application filed in Japan Patent office, are by domestic companies and the individual inventors The Examination process in JPO is highly organized and methodical wherein the examiners were given training for 36 months prior to the discharge of official duties and were tested after every 12 months to evaluate their skills. The Assistant examiners work under the supervision of a supervisor or senior examiner only for 4 years, so that they can learn easily with proper guidance. After completing 4 years in JPO as Assistant examiner, every Assistant examiner is promoted as Patent Examiner and works independently without any supervision/ under supervisor Examiner. Formal examination procedures are taken care of by the administrative section. The application is sent to the examiner only if all the formal requirements are met by the applicant / agent. Examiner undertakes only technical examination of patent applications. JPO treats each patent application systematically and in organized manner. They have their own classification database and perform thorough classification of the application apart from the international classification. After the Primary examination, a notice of allowability is sent to the applicant and all the further correspondences are entered online in their respective databases. They are moving towards a completely paperless office. 32

33 The JPO has a feature of out sourcing by which the search techniques for identifying the novelty, inventive step and industrial applicability are determined by an organization IPCC (Industrial Property Cooperation Centre ). The IPCC searcher undertakes the search processes and reports to the concerned examiner whereby the IPCC searcher explains the examiner about the search key words used, the number of relevant documents obtained, the strategies involved in refining the search, various combinations of the keywords used and finally the relevant prior art documents which are considered to be identified in the report and the logic involved in considering the combinations of various documents. The examiner upon having an interview with the IPCC searcher either accepts the report as such or asks the searcher to repeat the search again with additional key words. Upon satisfactory search, the examiner prepares a report based on the search, to be sent to the applicant / agent. It is now a practice that IPC, International Patent Classification, and F-term references are given to each patent application by IPCC once an application is filed. Physical files are maintained in the office but they are aiming towards a complete paperless office in the near future. All examination and filing procedures are done online. 33

34 Comparative Statement for Examination Section Sr. Topic JPO Indian Patent Office 1. Subject Specialized Groups in Examination Section 40 Specialized Group of Examination Section based in IPC Classification 2 IPC Classification IPC Classification for Patent Application is carried out by IPCC which is associated Organization of JPO and Specialized External Agency 3 Patent Search Patent Search is compulsorily carried out by External Searching Agency for 4. Interview with Patent Searcher JPO Patent Searcher are interviewed by Patent Examiner. 5. Searching Agency There are multiple external searching Agency employed based on field and IPC classification of Patent Application 6. Formal examination Formal examination procedures are taken care of by the administrative Staff in JPO. 34 Only 4 Group of Examination Section based in IPC Classification which are very Generalized IPC Classification for Patent Application is carried out by Patent Examiners in Patent Office No provisions for External Search/external Searching Agency No provisions for interview with external Searcher There is no single external searching Agency further having multiple external Searching Agency is beyond Vision. Formal Examination is taken care by Patent Examiner in Examination Section

35 7. Other Requirement of Examination 8. Assistant Examiner Only Technical Requirements which is not met by Applicant or Agent undertaken by Patent Examiner Assistant Examiner works for 4 year under supervisory Examiner and communicate requirements through Supervisory Examiner 9 Patent Examiner After completing 4 years as Assistant Examiner, he/she is promoted as Patent Examiner and carry out technical Examination independently and communicate the same to Applicant/ Agent directly 10 Communication with Applicant/ Patent Agent 11 Final Action to Grant /Reject Application Every Patent Examiner are communicating the First Examination Report/ First Action to Applicant /Patent Agent Patent Examiners are involved in Final Action to Grant or Reject Patent Application Every requirement which is not met are forced to undertaken by Patent Examiner There is no provisions for Assistant Examiner Patent Examiner in Indian Patent Office always works under supervision of Assistant Controller and carry out technical Examination supervision of Assistant Controller unless he/she promoted as Assistant Examiner Only Assistant Controllers are eligible to communicate with Applicant/ Patent Agent Patent Examiners are not authorized to final Action to Grant or Rejection of Patent Application 35

36 12 Authority to Grant or reject Application 12. Online Filing Paperless system 13. Examination in paperless system 13. Database related to Examination 14 Hearing / interview with Applicant/ Agent Only Patent Examiner is Final Authority to Grant or reject Patent Application Most of the patent applications are filed through online filing Examiner is provided with two monitor computer system and lot of recycled print papers Database related to Examination and online filed documents are maintained by Private Parties like Hitachi etc Hearings/ interviews with Applicant/Patent Agent care carried out by telephonically as well as face to face in JPO in Very specific Hearing Rooms 36 No role of Examiner in Grant or Rejection of Application. In Indian Patent Office, Patent Examiner object for Technical/ Formal Requirement whereas Assistant controller FIX the matter. Most of the patent applications are filed through Physical filing No such system is available with IPO Database related to Examination and online filed documents are maintained by Govt. Authority NIC only Hearings/ interviews with Applicant/Patent Agent care carried out by as face to face in anywhere in Indian Patent Office at interest of hearing officer /or at ease of hearing officer even in Examination Section 15. Hierarchy in There are four level There can be four

37 Examination Section 16. Performance in Examination Position of Examiner like Assistant Examiner, Examiner, Senior Examiner, Chief Examiner and all of Four Carry out Substantial Technical Examination As every Authority in Examination Section is carrying out Substantial Technical Examination over all output is high. 17. Patent Manual Patent Manual of JPO is highly substantive, methodological and elaborative. Example: The term Novelty has been extensively substantively, methodological elaborated in JPO Patent Manual level position in Examination Section and these are Examiner of Patents, Assistant Controller of Patent, Deputy Controller of Patents, Joint Controller of Patents out of which only Examiner of Patents Carry out Substantial Technical Examination and others FIX it. Only Patent Examiners are carrying out Substantial Technical Examination and hence overall output is less by half over strength of Examiners Patent Manual of Indian Patent Office is not substantive, methodological and elaborative. Example: The term Novelty has not been extensively substantively, methodological elaborated 37

38 Chapter 7: Training Schedule at APIC/JPO First Phase of training (17th September to 16th October) The first phase started with country report presentation from Indian and Brazilian participants. The first phase was designed to be conducted in theories. The first phase covered Japan Intellectual Property Basic Act, IP national strategy in Japan, outline of Utility model law. There was detailed lectures followed by discussion about Examination Guidelines related to Industrial applicability, Novelty, Specification and description requirement of Patents claims, Identity and Inventive step. Prof.Hiroshi KATO s lecture was helpful in understanding the social trends in IPR. We came to know that prior to 2002 though Japan was an IP based country; it was only in its pre-nacent level. There was only IP filing and no proper IP strategy existed. In India, there do not exist any Utility model protection and the lecture about the Utility model was helpful in understanding the concept about the new protection mode in Japan. I also came to know that the applicants had a chance to convert their Patent application into a design/utility model for quick processing. The lectures by various professors and Patent Attorney were helpful in understanding the examination guidelines of the JPO and also we had an opportunity to know how much effort the JPO has put in to update the examination guidelines from time to time. The examination guidelines were periodically reviewed depending on the situation like systematic revision, 38

39 new court decisions, development of new technology and changes of international circumstances. There was a discussion about the amendment requirement as per Japan Patent Act. In Indian Patent Act sec 59 gives the provision for amending the specification. In Japan article 17 bis (3) was provided with respect to the amendments of the specification. Most of the provision related to amendment is same in both Japan and India. This session was included with many exercises. There was also a discussion related to computer software related Invention and Bio and medical Inventions. In 1975 itself JPO has framed the guidelines for computer software related inventions. There was a lecture about International Application (Paris convention, PCT). This was one of the excellent session wherein we learnt in depth about the International patent system and the time line for PCT and International scenario related to PCT application. There was another good discussion about the product-by-process claims in Japan, India and Brazil. Use claims were allowed in JPO i.e., the expressions defining products by their functions/characteristics/use/manufacturing processes. Isolation of microorganisms from the soil/nature is patentable in Japan. Regarding Software related inventions; program source codes were not allowable even though they grant software patents. Also they grant patents for the surgical/diagnosing methods involving only animals. In India we don t grant software patents which come under Section 3(K) and also we don t grant 39

40 any process for the medicinal, surgical of both the human beings and animals -Section 3(i). About 20 years back medicine is not at all a subject matter of grant in Japan. We had been thought about IPR management of companies, IPR management in Universities and overview of Appeals and Trial system and Role of Patent Attorneys. The lecture about the IPR management gave intense knowledge about managing the IPR efficiently in companies. The lecturers from the Nissan Motor Co. Ltd discussed the anti-counterfeiting measures taken by them in various countries. We also had an opportunity to learn about the role of Patent Attorneys in JPO.We discussed in detail about the membership, the training given by Japan Patent Attorneys Association (JPAA) to become Patent Attorney and also the examination conducted by JPAA. After 7 years of working as Examiner they are eligible to become Patent Attorneys. The lecture about the concept of Patent map was useful in understanding the Information management of companies. The lecture given by the Prof. Kenichi Hatori was helpful in understanding the management of IPR in universities. He also gave a talk about academic-industrial collaboration/technology Transfer. Also we discussed about Bay-Dole Act in detail. The Act was introduced in Japan in 1999.The Ministry of Education began support for universities in 2003 for the IP dept. In Japan there was a provision for super accelerated examination. However 40

41 they charge no additional fee for the accelerated examination apart from the normal examination. We came to know that Articles 29 and 39 are important Articles in Patent Law of Japan. Article 29 talks about the patentability of inventions and Article 39 is related to First-to-file rule. It is interesting to know that article 39 comes into picture when two or more patent applications relating to the same invention are filed on the same date, only one such applicant agreed upon after mutual consultation among all the applicants may obtain a patent. It is more interesting to know that in trademark for the same scenario if no agreement is arrived among the applicants then a lottery system is being followed to choose one applicant. In Japan there is no pre-grant and post grant opposition. Invalidation can be asked only by the parties and not by the third parties. The discussion about the examination practices conducted by Mr.Takao OGIYA, Director General, APIC was thought provoking. Everyone of us presented a self-examined case from our respective countries. At the end of the presentation the comments given by Mr.Takao OGIYA was helpful in improving our examination standard and he gave insights in approaching the claims of an invention. That day the morning session was cancelled due to a Typhoon in Tokyo and we were able to attend the afternoon session only. 41

42 Second Phase (17th October to 15th November, 2013) The second phase was designed to give in depth practical exercises to the participant related to the topics such as Inventive step, Novelty and requirement for description and claims, Identity and amendments. We were given an extensive exercise in search tactics in F and FI terms especially designed in JPO for JPO examiners. We also learnt the role of the Examiners and Utilization of IPDL (PAJ searches), Utilization of commercial databases. IPDL is managed by an extra departmental body of the JPO. It was work with fun during the extensive exercise in search tactics in F and FI terms especially designed by JPO for JPO examiners. We also learnt about the role of JPO Examiners, their working style, no. of Examiners (fixed and temporary), the structure of JPO, utilization of IPDL (PAJ searches) and about the utilization of commercial databases. It was a great surprise to know that JPO Examiners had gone through a 5% cut in their salary after the Tsunami. During this phase we visited IP High court and had a discussion with the IP Judge. The visit to the IP High court and the concerned lectures rendered the structure, allocation and handling of cases with the IP High Court. This makes us to understand the need for a IP High Court for the Fast and Reliable Decisions for IP related disputes.7 Examiners from JPO assist the Judge in the Appeal Division. There was also a visit to Japan Patent Information Organization (JAPIO). 42

43 Introduction about JAPIO Japan Patent Information Organization (JAPIO) was established on August 1, 1985 with capital fund of 1.1 billion Yen with annual budget of 4.8 Billion Yen (FY2012). Business of JAPIO: Patent information processing Operation of IPDL Trade mark examination support Information utilization support Other activities Patent information processing Standardization of JPO s official patent information in XML/SGML form Translation and production of patent abstract of Japan (PAJ) Marking Japanese language abstracts from the US/EP patent documents. Operation of IPDL Overall management of IPDL Operation and maintenance System development Helpdesk Other activities Copying services of documents in the JPO file Wrappers and other literature Prior art search for SME 43

44 Research and development on Patent information and technical Japanese There was training in patent search session that focused mainly on the techniques related to search methodologies. The trainers elaborated on the available features like FI and F Term and PAJ in the JPO site. The prior art documents were thus easily mined using PAJ or FI and F-Terms. The F- Terms were specific key word indices developed by the JPO examiners based on their vast experience. They were dependent on the file index which in turn was based on the IPC. The other methodology adopted by the Japanese examiners included key words search with the help of Patents Abstract of Japan (PAJ). There were lots of sessions explaining the usage of IPDL and AIPN. The session also focused on the importance of specification reading and identifying the problem and the invention in a specification. The trainers supported each concept with examples and practice sessions. Many sessions were devoted to the real time search of prior art documents. The trainers also gave a list of free and commercial non- patent literature sites and taught the way of using the same. The trainers also informed about various free websites for accessing patent information. The speaker showed the database of various countries, especially US, EPO and India. Finally the second phase completed with the overall discussion with Mr. Takao OGIYA, Director General, APIC. In this discussion each of the participants presented their ideas on the respective topics which were followed by a question and answer session after which there was a group discussion among the members present. 44

45 During the second phase we were taught about the International cooperation for search results (PPH). The Patent Prosecution Highway is a framework in which an application whose claims have been determined to be patentable in the office of first filing is eligible to go through an accelerated examination in the office of second filing with a simple procedure upon an application s request. Japan patent office started patent examination highway (PCT-PPH) program using international phase works of the PCT application on January 29, The lecture related to the Patent Map, a graphical model of patent visualization, was helpful in knowing how the companies identify the patents in a particular technology space, verify the characteristics of these patents and identify the relationships among them to see if there are any zones of infringement. Third Phase (17th October to 15th November, 2013) The third phase was really interesting and mind blowing. There was an exchange of opinion with JIPA members. JIPA is a non-profit, nongovernmental organization, which has approximately 1190 members. It represents industries and users of the intellectual property (lp) system, and provides related institutions all around the world with well-timed, suitable opinions on improvement of their IP systems and their utilization. JIPA is actively conducting the following activities: Strengthening ties around the world between organizations/ institutions that deal with counterfeits; in particular, creating an alliance between non- 45

46 governmental organizations in Japan, Europe and the U.S. Encouraging an active participation in activities conducted by the International Intellectual Property Protection Forum (IIPPF) in Japan. Substantial Harmonization in the IPR systems: The standardization of patent application forms, usage of the same prior arts, and standardization of the examination criteria and the undertaking of simultaneous examinations achieve substantial harmonization. As a first step, it seems important to use and approve the results of examinations carried out by patent offices in Japan, Europe and the U.S. JIPA is aiming to form a world IP user federation in order to encourage cost reductions for patent applications and create substantial harmonization. In this regard, since February 2004, JIPA held several meetings with the nongovernmental organizations in Europe and the U.S. As the result of those meetings, they handed a resolution concerning the standardization of application forms to the Trilateral Patent Offices. As the next step, they are now consulting on "One Search with them. 46

47 Chapter 8: Interaction with Japan Intellectual Property Association Japan Intellectual Property Association (JIPA) is a non-profit, nongovernmental organization, which has 1,234 members. It represents industries and users of the intellectual property (IP) system, and provides related institutions all around the world with well-timed, suitable opinions on improvement of their IP systems and their utilization. JIPA's stance with regard to the major IP issues at the present time Recently, JIPA prepared "Course for developing New-IP-Leaders" which creates the human resources who may lead IP management to a success, and "Course for developing IP-Strategic-Staffs" which creates the human resources who can find out the concrete subject on the vision of IP section and propose the creative policy for achieving such subject. Some of the questions raised by the JIPA members to Indian participants were: Question 1: Following figure shows Information u/s 146 (Working of Patents) in dynamic patent utility. Now, we can search some information based on Form 27 filed as the year If next year, you have tw0 years information year 2012 and year 2013 in the data base. 47

48 How will you design database and search method about the Working of Patents? Question 2: If you need to access a foreign patent document, its current states and its file history (patent family data) during examination of an Indian patent application, how do you access/fined them? Question 3: In the document of Indian Patent Office as International Preliminary Examining Authority (see this URL The document said that, Subject matter that will not be examined: 48

49 The subject matter specified in items (i) to (vi) of PCT Rule 67.1 with the exception of subject matter which is examined under the Patents Act, 1970 administered by the Indian Patent Office. Question is that If Indian Patent Office receive a patent application about section 3d subject matter(such as medicine, drug material) in its claim set, how the examine is proceeding? The discussions with the JIPA members lasted for around one hour. We explained about the Indian Patent Office and described the overall patenting system in India and the present challenges faced by Indian examiners with respect to patentable subject matter. This helped them to make out the difference between the patentable systems in both the countries. We clarified all their doubts especially in the areas of Sec 8(1) and sec 8(2) and also about Section 3(d), Compulsory license and Traditional knowledge. We also raised some questions regarding JIPA s activities and their role in the JPO and their country. The session was very lively. 49

50 Chapter 9: ON JOB Training at JPO and Industrial Visits During the third phase we had an On-the-job training with JPO examiners for two days in Japan Patent Office. The top most experience during the training program was gained in these two days On-the-Job Training (OJT) given by the Patent Examination Dept. of the JPO. There I was given training by the Examiners of the Environmental Chemistry Division since my technical field was related to Chemical Engineering. This division is part of the First Patent Examination department. There I had an intense training in choosing keywords, search terms from the patent specification and as to how to use F and FI terms by utilizing IPDL database. A patent application related to photographic lens was provided to me. I had good interaction with Mr. KANDA kazuteru, Senior Patent Examiner at JPO. This session gave me a good understanding as to how the JPO examiners were performing examination and to what extent they have been using the IPDL and other data bases for the search. Hantei system (unique system for Japan) of The Japan Patent Office, having a high degree of expertise in technology, design and goods, will render an official Hantei in a strictly neutral manner regarding whether the subject article falls under the technical scope of the patented invention in 50

51 question within three months from the time of filing of the Hantei demand. The importance of Hantei system is for avoiding/reducing the infringement activities by getting the technical scope finely defined. In between the classroom sessions we had a great opportunity to visit the various companies and institutions in Japan like Terumo Corporation, Thomson Reuters, Japan Aerospace Exploration Agency (JAXA) Tsukuba Space Centre, National Institute of Advanced Industrial Science and Technology (AIST), FujiXerox, Toppan Printing Ltd and SME like Soken Chemical and Engineering Co. Ltd. The company visits were helpful in understanding as to how they manage their IPRs especially maintaining of Patent, Design, Trademark portfolios internally and externally. Third phase ended with an overall presentation by Prof. Hiroshi KATO and an exchange of opinion with the International division of JPO/APIC followed by the closing ceremony. The training program at the JPO concluded on 29th November by each of us giving a final presentation on what we had learned and how we are intended to apply it on returning to India and we were given certificates of completion of the program. Throughout the course the lectures given in Japanese language by the Professors, Patent Attorneys and JPO Examiners was well translated by the interpreter Ms.Yoko OKAZAKI. 51

52 Chapter 10: Suggestions and Recommendations I sincerely take this opportunity to give some suggestions and recommendations based on my training and experience: 1) In past, JPO had faced huge pendency of unexamined Patent Applications. But systematic and continuous recruitment of Patent Examiners every Year has made JPO as one of the Best and Efficient Patent Office. Hence I recommend to make strategy to recruit atleast Patent Examiners on regular post every year in Indian Patent Office beside the planned post of Examiner of Patents. 2) JPO has various departments for systematic and organized working. These departments under JPO are like Policy Planning and Coordination Department which deals with Activities for Human Resource Management,Legislative affaire, Information Technology and Patent Information management, Budget and Accounts, Research division for Policy planning, Information Dissemination and Policy Promotion and International Policy are carried out through each separate division. Hence I recommend to form Policy Planning and Coordination Department and its various divisions along with specialized post therein 52