21th Annual Intellectual Property Law & Policy Conference Fordham University School of Law April 4-5, 212 JPO s Efforts in Patent Harmonization Yuichiro NAKAYA Deputy Director International Affaires Division Japan Patent Office
Table of Contents 1.Over View of Patent Harmonization Talks 1) Revitalizing patent harmonization talks 2) Progress made by Tegernsee Group 2. Revision of GP in Japan 1) Issues before revision 2) Revision 3) Analysis on Implementing New GP system - Statistical survey - Questionnaire survey 3. Results of User Surveys in Japan on Tegnernsee Initiatives
Revitalizing Patent Harmonization Talks May 211 Revision of Japan Patent Act Sep 211 Enactment of AIA 211 212 213 Jul 211 1st Tegernsee Heads Meeting Tegernsee Group (Since 211) Patent offices of JP, US, UK,DE,FR, DK and EPO Apr 212 2nd Tegernsee Heads Meeting Sep 212 3nd Tegernsee Heads Meeting Jan 213 Start of User Consultations Jun 211 IP5 Heads Meeting in Tokyo IP5 (since 27) EPO, JPO, KIPO, SIPO, USPTO Jun 212 IP5 Heads Meeting in France Dec 212 IP5 Patent Harmonization Expert Panel Meeting
Progress made by Tegernsee Group Jul. 211, 1st Tegernsee Heads meeting Starting Fact-Finding Study on Key issues Apr. 212, 2nd Tegernsee Heads meeting Identifying 4 issues and Starting In-depth Studies Sep. 212, 3rd Tegernsee Heads meeting Adopting Report on the Study of 4 Issues Agreeing to consult users (Questionnaire surveys/round-table discussions Jan.-Mar. 213 Consulting with Users on 4 issues in each country/region Tegernsee Group s Key Issues First to File vs. First to Invent Grace Period Definition of Prior Art Conflicting Application : Tegernsee 4 issues : Progress made by AIA Novelty & Inventive Step Best Mode 18 month Publication Prior User Right
Problems concerning GP before revision Scope based on preset list of items Testing in public, Presenting in printed publications Presenting through Internet Presenting at Designated academic conferences Displaying at Designated or Government-hosted Exhibitions Complicated and not user friendly!! Problems concerning GP based on preset list of items - Does not cover all users needs. - Creates imbalances depending on mode of disclosure. <Examples> Internet : covered TV : not covered Designated academic societies: covered Non-designated academic societies: not covered Product brochures: covered Presenting product for marketing research: not covered
Revision of Japanese Patent Act in 211 Revision came into effect on April 1st, 212. Before Revision Preset list scope <Scope of GP Expanded> After Revision Comprehensive scope Enhancing user-friendliness Facilitating industry-academia collaboration Disclosure as a result of an act conducted by a person having the right to obtain a patent
Statistical Survey - 1 Number of Applications invoking GP increased by about 7% after patent law was revised. 3 No. of Applications invoking GP between FY29 and FY 212 25 2 15 1 5 FY29 FY21 FY211 FY212 *1 No. of applications for full-year FY212 is estimated based on no. of applications filed between Apr - Sep of 212 (*1)
Statistical Survey - 2 Number of Applications by SMEs invoking GP increased times; by large companies, 2 times University/Public Research Institute Joint Applicaint (including University/Public Research Institute) SME 3.8 times Large Company Joint Applicaint (excluding University/Public Research Institute) Other Breakdown in Number of Applications Requesting GP between Apr Sep of 211 and 212 [Type of Applicant] Total 2 times Apr - Sep of 211 Apr - Sep of 212 236 (88) 197 (89) 7 (34) 17 (9) 47 (24) 42 (24) 762 (349) 31.% (25.2%) 25.9% (25.5%) 9.2% (9.7%) 22.3% (25.8%) 6.2% (6.9%) 5.5% (6.9%) - 268 (16) 235 (1) 265 (13) 352 (169) 12 (54) 58 (29) 1298 (588) Numbers in parentheses indicate the numbers of applications for which GP was requested between Apr Jun of 211 and 212 2.6% (18.%) 18.1% (17.%) 2.4% (22.1%) 27.1% (28.7%) 9.2% (9.2%) 4.5% (4.9%) -
Statistical Survey - 3 Breakdown in No. of Applications Invoking GP, Apr Sep of 211 and 212 [Type of Disclosure & Type of Applicant] Printed Publication 23 211 212 211 212 211 212 211 212 211 212 211 212 211 212 (1) Internet 21 TV/Radio Academic Meeting (including disclosure though collection of papers for such meeting) Other Meeting (6) () 181 (69) () Exhibition/Fair 8 Test Sale Other Working of Invention () () No Data Entry 3 (1) Total 236 (88) University / Public Research Institute 29 (14) 4 (14) 2 18 (67) 1 14 (7) 2 268 (16) Joint Applicaints (including University / Public Research Institute) 11 (7) 13 (5) () 166 (73) () 4 (1) () () 3 (1) 197 (89) 24 (11) 28 (14) 1 16 (69) 3 16 (5) 3 (1) 235 (1) 16 (8) 7 (1) () 29 (15) () 15 (6) 2 () () 1 7 (34) SME Numbers in parentheses indicate the numbers of applications for which GP was requested between Apr Jun of 211 and 212 43 (19) 46 (18) 4 (1) 29 (15) 9 (5) 61 (34) 8 (3) 45 (21) 12 (8) 8 (6) 265 (13) Large Company Newly Added Expanded (Abolition of Designation ) 39 (3) 15 (14) () 15 (41) () 1 1 (1) () () 17 (9) 57 (29) 9 (48) 1 (51) 11 (7) 53 (22) 27 (8) 11 3 352 (169) Joint Applicaints ( excluding University / Public Research Institute) Other Total 7 23 6 6 12 182 2 14 8 6 66 224 - - 1 8 28 28 2 18 529 515-2 - 2 28 8 25 5 18 5 187 1 7 4 15-15 - 4 91-5 - 2 33 1 1 3 1 11 15 47 12 42 58 762 1298
Statistical Survey - 4 Final Examination Results of Patent Applications invoking GP Granted: 32 applications [applications filed between Apr Sep 212] All 32 applications were granted based on evoking GP. 7 applications out of 32 applications were the result of expanding the scope of GP, which were based on the revision to the Paten Law. Refused : 1 application The reason of refusal has no relation to the request for GP. The ratio of applications requesting accelerated examination among applications invoking GP is 3.6 times as many as that for all applications. [applications filed between Apr Sep of 212]
Questionnaire Survey - 1 Extracted from Tegernsee Report on GP Most respondents gave a favorable evaluation of the expanded scope of GP. Headquarters of industry-academia collaboration and IP in universities Evaluation of the 211 revision made to the Patent Law 29 4 4 13 University Teachers and Researchers 24 4 2 14 SME supporters 81 4 4 33 Large Companies 18 5 1 14 % 1% 2% 3% 4% 5% 6% 7% 8% 9% 1% Good Good, but not enogh Bad Premature to evaluate
Questionnaire Survey - 2 Typical tendency in invoking GP Universities : Frequently use Universities tend to make presentations before filing patent applications even though working hard to file patent applications before making presentations at academic conferences as far as possible SMEs Enterprises without sufficient fund and high awareness on the importance of patent rights cannot obtain patents rights before selling their inventions. Quite a lot of SMEs come to seek patents only after sales of their invented products have increased. Large companies : Seldom use Large companies could not help but use GP as a relief measure when inventions were disclosed before filing due to miscommunications with patent firms and errors of deadline management.
Questionnaire Survey - 3 Grace Period system saved different types of applicants. Universities : Extracted from Tegernsee Report on GP As to an invention related to method of dyeing at normal temperature for timbers, a notification for that has been made before the disclosure, but filing a patent application for that was not in time. Accordingly, we used the grace period system and obtained patent rights for that. Thanks to this patent, we successfully made a license agreement with business enterprises and gained the license income. We received a report from an inventor after a presentation of the invention had been made at academic conferences, and filed a patent application for that in Japan requesting the application of GP. Some enterprises showed interest in the presentation material and offered a request for a license agreement in Japan. We hastily made preparations to file patent applications abroad, but gave up the patent applications to some countries due to lack of GP.
Questionnaire Survey - 3 Extracted from Tegernsee Report on GP Grace Period system saved different types of applicants. SMEs One small company had sold its product without an intention of filing patent applications, but received high reputation for the product, and then, it reconsidered patent applications for it by using GP. One small company has conducted a joint-research with a public research and development institute, but the institute made presentations for the jointresearch. Therefore, the company obtained patent rights for that by using GP. Currently, although it s a very small scale, the company is manufacturing the products and selling them to trading companies. Large companies After submitting an article on an invention on a catalyst for a fuel cell in an academic magazine, we found that patent application for the invention was not filed. We filed a patent application in a hurry and acquired a patent by using GP. Although we considered that there is no need to file an application at first, we filed the application in a hurry by using GP because there was a huge public reaction when presentation was made at an academic conference.
Questionnaire Survey - 3 Extracted from Tegernsee Report on GP Grace Period system saved different types of applicants. SMEs One small company had sold its product without an intention of filing patent applications, but received high reputation for the product, and then, it reconsidered patent applications for it by using GP. One small company has conducted a joint-research with a public research and development institute, but the institute made presentations for the jointresearch. Therefore, the company obtained patent rights for that by using GP. Currently, although it s a very small scale, the company is manufacturing the products and selling them to trading companies. Large companies After submitting an article on an invention on a catalyst for a fuel cell in an academic magazine, we found that patent application for the invention was not filed. We filed a patent application in a hurry and acquired a patent by using GP. Although we considered that there is no need to file an application at first, we filed the application in a hurry by using GP because there was a huge public reaction when presentation was made at an academic conference.
Questionnaire Survey - 3 Extracted from Tegernsee Report on GP Grace Period system saved different types of applicants. SMEs One small company had sold its product without an intention of filing patent applications, but received high reputation for the product, and then, it reconsidered patent applications for it by using GP. One small company has conducted a joint-research with a public research and development institute, but the institute made presentations for the jointresearch. Therefore, the company obtained patent rights for that by using GP. Currently, although it s a very small scale, the company is manufacturing the products and selling them to trading companies. Large companies After submitting an article on an invention on a catalyst for a fuel cell in an academic magazine, we found that patent application for the invention was not filed. We filed a patent application in a hurry and acquired a patent by using GP. Although we considered that there is no need to file an application at first, we filed the application in a hurry by using GP because there was a huge public reaction when presentation was made at an academic conference.
Tegernsee User Consultations in Japan 1) Tegernsee Questionnaire Survey Number of responses: 412 Large Corporation :147 SME :12 Corporation (size:unknown): 6 Univ/Research Institute :71 Patent Attorney :64 Unkown : 4 2) Roundtable Discussions Osaka: 7 participants / Feb.28, 213 Tokyo: 14 participants / Mar.12, 213 Both roundtable discussions were about 4 Tegernsee issues. Panelists: 2 from Large Corporation, 1 from SME, 1 from University, 1 from Patent Attorney
ありがとうございました Ari-Gatou-Gozaima-Shita Thank you!