JPO s initiatives on work-sharing. Yukio ONO International Policy Division Japan Patent Office Dec 2017

Transcription

1 JPO s initiatives on work-sharing Yukio ONO International Policy Division Japan Patent Office Dec 2017

2 Outline 1. Growing Demand for Work Sharing 2. Utilization of Search & Examination Results 3. Japan s Initiatives on Work Sharing A) Patent Prosecution Highway (PPH) B) Dossier Information Sharing System C) US-JP Pilot Program on Collaborative Search 1

3 1. Growing Demand for Work Sharing The number of Patent Applications by non-residents is increasing. Redundant work among IP offices is also on the rise Number of Applications (Unit : hundred thousand) Applications filed by foreign applicant is increasing. Number of Patent Applications Filed in the World Search Examine Redundant work Same Invention Search Examine Year Applications by Non-resident Applications by Resident *Source: WIPO Industrial Property Statistics Importance of Work Sharing 2

4 2. Utilization of Search & Examination Results (1) Work-sharing in patent examination: Utilization of search & examination results of Office Work Sharing Search Examine Search & Examination Results Same Invention Less workload for Search & Examination Examination workload can be reduced. 3

5 2. Utilization of Search & Examination Results (2) Utilization of Foreign Examiner s work can reduce workload and improve patent quality at the office of second filing. complete Workload at first office Workload at second office complete start Reduction of workload start Workload without using work done at other office Workload using work done at other office 4

6 3. A) Patent Prosecution Highway (PPH) - Outline The PPH is a framework in which an application determined to be patentable in the Office of Earlier Examination (OEE) is eligible to have an accelerated examination in the Office of Later Examination (OLE) based on simplified procedures, upon the applicant s request. OEE (Office of Earlier Examination) Application A1 Grant The JPO proposed the patent prosecution highway (PPH) and put it into action with the United States in 2006 for the first time in the world. OLE (Office of Later Examination) Claims correspondence OEE Examination History Work Sharing OLE examination workload can be reduced Benefit to offices Corresponding Application A2 PPH Request Accelerated Examination Benefit to applicants 5

7 3. A) PPH Reduces Workload OEE Exam. Scope Original Claim OLE Original Claim Normal Patentable in OEE PPH Claim Correspondence Exam. Scope Amended Claim As a result.. PPH OLE Examination starts from this scope. Utilization of OEE examination results Focused exam. scope Examiner Examiner Exam. Scope Focused Workload Reduced For OLE Examination results and focused claims contribute to reducing workload

8 3. A) PPH Benefits of PPH for applicants High Grant Rate 2. Reduced Examination Period 3. Cost saving % Grant Rate UP! JP* US KR CA *JP all applications: Jan.-Dec.2014 First Action Allowance Average Pendency from PPH request to FA Month % Rate UP! DOWN! JP* US ** KR CA JP US KR CA *JP all applications: Jan.-Dec **US all applications: Jul.-Dec All applications PPH applications (Period : Jul.- Dec. 2016) 7

9 3. B) Dossier Information Sharing System Dossier information sharing system enables work sharing. Linkage was established between IP5 s OPD and WIPO-CASE. WIPO-CASE participants can retrieve dossier information of IP5 and WIPO-CASE providing offices. WIPO-CASE system is provided free of charge by the WIPO. One Portal Dossier (OPD) JPO WIPO-CASE EPO KIPO USPTO SIPO Linkage WIPO s Dossier information sharing system In addition to IP5 Offices; 25 IP offices participate as of Nov AU, CA, GB, IL and WIPO (PCT) provide their dossier information for examiner use. AU, CA, WIPO (PCT) also provide their dossier information for public use. Participating offices except IP5 Offices: AU, AZ, BN, KH, CA, CL, CR, EG, GB, GE, IN, ID, IL, LA, MY, MN, NZ, PG, PH, PT, SG, TH, VN, EAPO, WIPO 8

10 3. C) US- JP Pilot Program on Collaborative Search (CSP) On August 1 st, 2015, the JPO and the USPTO launched a pilot program to collaborate on searches, namely the Collaborative Search Pilot Program (US-JP CSP). Applicants can acquire stronger and more stable rights in Japan and the U.S. earlier and simultaneously. Request for CSP Search results and opinions are shared between the two Offices First Office Actions are dispatched simultaneously Filing an application Prior art search Opinion on patentability First Office Action Filing an application Prior art search Opinion on patentability First Office Action 9

11 3. C) US-JP CSP User Opinions Compared with non-csp applications, consistencies in terms of novelty and non-obviousness increased. Matching rate of the cited documents is also increased. ->A policy for both offices to issue the same responses decreases applicants costs for responses to office actions.

12 Thank you!