Call for a Pro-Innovation

Transcription

1 Infrastructure for Promotion of Work Sharing in Patent Examination Koichi MINAMI Deputy Commissioner Japan Patent Office WIPO High Level Forum on March 1, 21 (Theme One (b)) Call for a Pro-Innovation Global IP Infrastructure Policy Recommendation: Policy y Committee on Innovation and Intellectual Property, Japan Patent Office, August 28 Statement of the Chair: Meeting of APEC Ministers Responsible for Trade (MRT), July 29 1

2 Points of Presentation Growing Needs for Work Sharing in Patent Examination What Infrastructure for Work Sharing? 2 Growing Needs for Work Sharing The total number of worldwide patent filings has been increasing. 8, patent applications of 1,85, (4%) are filed by non-residents Total number of worldwide patent applications by year Non-Resident (PCT National Phase Entry) Non-Resident (Direct) Resident (source) WIPO Statistics Non- resident approx. 4% 3

3 Growing Needs for Work Sharing Certain number of patent applications are filed by non-residents in USPTO, JPO, SIPO, KIPO, EPO. 5, 4, Non-Resident Resident 3, 2, 1, USPTO JPO SIPO KIPO EPO (Source) WIPO Statistics 28 4 Growing Needs for Work Sharing The total number of patent filings has been increasing in Brazil, Russia and India. Considerable amount of applications are filed by non-residents. Brazil Russia India 3, Non-Resident 5, Non-Resident 25, Resident Resident 2, 4, 15, 3, 1, 2, 5, 1, , Non-Resident 35, Resident 3, 25, 2, 15, 1, 5, (source) WIPO Statistics (source) WIPO Statistics (source) Annual Report

4 Growing Needs for Work Sharing Improvement of efficiency of search/examination Better search/examination quality Effective utilization of search/examination information of other Patent Offices is important. Each Patent Offices can decide whether they utilize search/examination information of other Patent Offices or not. 6 INFRASTRUCTURE 1: AIPN (Advanced d Industrial Property Network) - Facilitate Inter-Office Collaboration The AIPN is the JPO s Internet-based information service for the other IP Offices in the world. The AIPN provides IP Offices with the JPO s examination-related information, including: (1) Patent family data; (2) Cited documents; (3) Full text of publications; and (4) File wrapper information (such as office actions) Information is provided in English, using the machine translation function wherever necessary. 7

5 Registered IPOs The AIPN started on 12 October 24. It is used in 37 IPOs all over the world now. Canada USA Mexico Denmark Brazil Kazakhstan Sweden Netherlands UK EPO France Spain Morocco Romania Slovakia Poland Hungary Switzerland Austria Greece Norway Czech Germany India Sri Lanka Pakistan Vietnam Malaysia Russia China Finland Republic of Korea Taiwan Philippinesi Thailand JPO Indonesia Australia 8 INFRASTRUCTURE 2: JP-FIRST (JP Fast Information Release STrategy) Administrative Arrangements for Timely Examination to promote Inter-Office Collaboration The JPO provides its First Action results to the Office of Second Filing (OSF) before the OSF s examinations. JPO (OFF) OSF 3 months Application FA Corresponding Application The JPO prioritizes examination of first filings. Final Examination FA Results FA 12 months (Paris Priority) The OSF will be able to utilize FA results of the JPO. 9

6 Actual Results of JP-FIRST JPO analyzed 9,111 applications satisfying the JP-FIRST conditions that were examined from April 28 to February 29. Of these 9111 applications, - 77 were filed to the USPTO were filed to the EPO were filed to the KIPO. 92% (6462 of 77) were examined in the JPO before USPTO first office action. 85% (147 of 1721) were examined in the JPO before EPO first examination report. 51% (887 of 1721) were examined in the JPO before European Search Report. 79% (1378 of 1638) were examined in the JPO before KIPO first office action. In summary, the OSFs can utilize the JPO s FA results in most cases at the time of their substantive examination, even though the JPO provides most of its FA results after 18 months from the filing date, i.e. after the publication. 1 INFRASTRUCTURE 3: PPH (Patent Prosecution Highway) Institutional Framework for Inter-Office Collaboration If a patent application has been determined to be patentable in the first filing office, the corresponding application is qualified for accelerated examination in second filing offices with a simple procedure. Office of First Filing (OFF) Application Office Action Office of Second Filing (OSF) Corresponding Application Patented OSF utilizes search and examination result of OFF. Request for PPH Accelerated Exam. 11

7 イメージを表示できません メモリ不足のためにイメージを開くことができないか イメージが破損している可能性があります コンピュータを再起動して再度ファイルを開いてください それでも赤い x が表示される場合は イメージを削除して挿入してください Expanding PPH Network ROSPATENT UKIPO IP Australia DKPTO NBPR Jul. 29 USPTO EPO Jan. 21 APO JPO CIPO DPMA HPO KIPO IPOS : full implementation : pilot implementation i : under consideration 2 73 Number of PPH Requests At JPO as OSF Total Number At JPO as OFF (~21/1/26) USPTO DPMA KIPO UKIPO NBPR USPTO KIPO DPMA UKIPO Russia Total Number *1 *1 *2 *3 *4 *1: ~21/1/22 *3: ~29/11/5 *2: ~21/1/2 *4: ~29/7/31 13

8 Advantages of PPH - Speed and Quality - Reduced pendency and High grant rate Expeditious examination and Improvement of predictability of examination result Average Pendency from FA to Final Action (CY29) Grant Rate (CY29) Applications under JP-US PPH Applications claiming priority to US application Applications under JP-US PPH Applications claiming priority to US application (months) ( % ) 14 Work sharing in Patent Examination Implementation of actions for work sharing ex.aipn, JP-FIRST, PPH, ASPEC, SHARE, etc. Advancement in effective utilization of search/examination information of other patent offices For Improvement of efficiency of search/examination For better search/examination quality Each Patent t Offices can decide whether they Utilize search/examination information of other Patent offices or not. 15

9 Thank you 16