Goals to Be Achieved by the JPO in Fiscal Year 2017

Transcription

1 Goals to Be Achieved by the JPO in Fiscal Year 2017 The Government of Japan set a target of Promoting Intellectual Property/Standardization Strategies to Succeed in Industry 4.0, i.e. the Fourth Industrial Revolution, in its Japan Revitalization Strategy 2016 Revised Version that was approved by the Cabinet on June 2, 2016). To achieve this, the Ministry of Economy, Trade and Industry of Japan (METI) has been working on establishing an intellectual property system that supports creating innovations and enhances support to intellectual property activities being conducted by small and medium-sized enterprises (SMEs). As a part of these measures, the Japan Patent Office (JPO) set goals that are to be implemented according to Item (ii) of Paragraph (6) of Article 16 of the Basic Act on Central Government Reform. They have been released for public viewing. The JPO revised the following three points in its goals for fiscal year 2017: I. Enhancing Quantitative Goal Items that Will be Important for Users After reviewing all of its business operations and work flows, the JPO increased the number of items for which it set quantitative goals. The goals deal with processing time for procedures, focusing on those that users inquired about the most. (FY2016: 18 items FY2017: 31 items) II. Setting Quantitative Goals for the Quality Items of Examinations on Patents, etc. The JPO aims to both speed up the examination process and enhance its examination quality at the same time. To achieve this, the JPO set new quantitative goals for quality aspects involved with examination. Such quality aspects include the level of user satisfaction on communications with examiners; and circuit interview examinations and videoconferencing interview examinations for SMEs located in local areas. (FY2016: Qualitative goals only FY2017: Quantitative goals are newly set for 6 items) III. Expanding the Scope of Quantitative Goals from Examinations and Trials/ Appeals to the Entire Business Operations in Administering Intellectual Property The JPO added aspects of its quantitative goals in terms of its operations and activities. They include support for SMEs to increase their productivity and revitalize local economies; and cooperation with developing countries in responding to globalization. (FY2016: Qualitative goals only FY2017: Qualitative goals are newly set for 7 items) 1

2 1.Patents (1)Examination Pendency for Patent Applications The average period to issuing the first action, should be 9 to 11 months. For applications eligible for which accelerated examinations 1 are requested, the average period from requesting the accelerated examinations to issuing the first action should be less than 3 months. For applications for which super accelerated examinations 2 are requested, the average period from requesting the super accelerated examinations to issuing the first action should be less than 1 month. The total pendency period 3, should be 14 to 16 months. (2)Quality of Patent Examinations For the level of user satisfaction on communications, 4 the ratio of higher level should be more than 60 %. The number of on-site interview examinations and video-conferencing examinations are to be more than Designs (1)Examination Pendency for Design Applications The average period to issuing the first action 5 should be 5 to 7 months. For applications for which accelerated examinations 6 are requested, the average 1 This includes cases in which (1) applicants or licensees are working on their inventions, such as when they have commercialized the inventions; (2) applicants are also filing applications before foreign IP offices; and (3) applicants are individuals or SMEs. 2 This includes cases in which applicants or licensees are working on their inventions and are also filling applications before foreign IP offices. (Nonetheless, only on-line applications are eligible for super accelerated examinations.) 3 Excluding cases in which the JPO requests an applicant to respond to the second notification of reasons for refusal and where the applicant performs procedures they are allowed to use, such as requests for extension of the period of response and for an accelerated examination 4 Questionnaires are sent to major users. Among the satisfaction levels 5: Satisfied, 4: Somewhat satisfied, 3: Neutral, 2: Somewhat unsatisfied, and 1: Unsatisfied, the ratio of the top two levels, i.e., 5: Satisfied and 4: Somewhat satisfied is tallied. 5 Excluding international applications filed to register designs under the Hague Agreement. 6 This includes cases in which (1) there is an urgent need for applicants to acquire design rights, such as when third parties are using similar designs; and (2) applicants are also filing applications overseas. 2

3 period from requesting the accelerated examinations to issuing the first action 7 should be less than 3 months. The average total pendency period 8 should be 6 to 8 months. (2)Quality of Design Examinations For the level of user satisfaction on communications, the ratio of higher level should be more than 60 %. The number of on-site interview examinations and video-conferencing examinations are to be more than Trademarks (1)Examination Pendency for Trademark Applications The average period to issuing the first action 9 should be 5 to 7 months. For applications for which accelerated examinations 10 are requested, the average period from requesting the accelerated examinations to issuing the first action should be less than 3 months. The average total pendency period 11 should be 6 to 8 months. (2)Quality of Trademark Examinations For the level of user satisfaction on communications, the ratio of higher level should be more than 60 %. The number of communications examiners make with users before any final decisions are made should be more than 1,000. Such communications include sending notices to, 7 Excluding cases in which (1) there are deficiencies in filing procedures; and (2) supplements to Written Explanation of Circumstances are needed. 8 Excluding international applications filed to register designs under the Hague Agreement, as well as cases in which applicants are required to respond to the second notices from the JPO for amendments submitted by the applicants within a certain period of time. 9 Excluding applications for registering non-traditional trademarks, such as sound trademarks, and regional collective trademarks. 10 This includes cases in which (1) applicants are already using, or preparing to a considerable extent to use, their claimed trademarks for their designated goods and/or services; and (2) there is an urgent need for applicants to acquire trademark rights, such as when (i) third parties are using similar marks, and (ii) applicants are also filing applications overseas. 11 Excluding applications for registering non-traditional trademarks, such as sound trademarks, and regional collective trademarks, as well as cases in which applicants are required to respond to the second notices from the JPO for amendments submitted by the applicants within a certain period of time. 3

4 making phone calls, and conducting interview examinations with individuals, SMEs, and applicants or rights holders of regional collective trademarks. 4.Trials and Appeals 12 (1)Appeals against examiners decisions of refusal The average pendency of examinations for appeals against examiners decisions of refusal for patents 13 should be 11 to 13 months. The average pendency of examinations for appeals against examiners decisions of refusal for designs 14 should be 4 to 6 months. The average pendency of examinations for appeals against examiners decisions of refusal for trademarks 15 should be 5 to 7 months. (2)Accelerated examinations for appeals against examiners decisions of refusal 16 The average pendency of accelerated examinations for appeals against examiners decisions of refusal for patents, designs and trademarks 17 should be 2 to 4 months. (3)Trials for invalidation The average pendency of examinations for trials for invalidation for patents, designs and trademarks 18 should be 8 to 10 months. (4)Oppositions The average pendency of examinations for oppositions 19 should be 8 to 10 months for 12 From FY2017, the JPO changed its definition of calculating the pendency of examinations for procedures for all appeals being conducted at the JPO; that was done to uniformly indicate each of the actual pendency periods, i.e. pendency periods after formality checks, etc. are completed. (Excluding periods due to reasons of demandants, etc.) 13 Excluding cases in which (1) demandants, etc. conduct permitted procedures, such as when demandants, etc. are requested to respond to the JPO, as a result of amendments submitted by demandants, etc., and when demandants, etc. request for extension of time limit for responding to an office action; (2) examinations are suspended or interrupted; and (3) there are some difficulties for the JPO to service documents, such as service by public notices, etc., to concerned parties. 14 Excluding cases concerning international applications filed to register designs under the Hague Agreement and cases indicated in footnote Excluding cases concerning non-traditional trademarks, such as sound trademarks, etc., and regional collective trademarks; and cases indicated in footnote Refer to footnotes 1, 6 and 10 as for appeal cases for which accelerated examinations are conducted. 17 Pendency period for examinations after accelerated examinations are requested. 18 Excluding the cases which are indicated in footnotes 13 to Excluding cases in which (1) right holders, etc. conduct permitted procedures, such as when right holders, etc. are requested to respond to the JPO, as a result of corrections, etc. submitted by right holders, etc. in response to notices of reasons for revocations (advance notices of trial decisions) and when right holders, etc. request for extension of time limit for responding to an office action; (2) 4

5 patents and 5 to 7 months for trademarks. 5.Applications and Registrations (1)Electronic Filing System The JPO readily accepts electronic applications 24 hours a day, 365 days a year, even if there are electrical power failures or large-scale disasters. 20 (2)Formality Examinations for Applications The JPO conducts formality examinations of on-line filings for patents, designs and trademarks on the same day on which the applications are received. 21 (3)Establishing Registrations of Rights for Patents, Designs, and Trademarks (i) Establishing Registrations of Rights The time it takes from when applications filed to register rights for patents, designs, and trademarks are received, until the registrations are recorded in the Register of Japan, should be 10 days or less. 22 (ii) Registration of Transfer of Rights The time it takes from when applications filed to transfer rights are received, until the transfer is recorded in the Register of Japan, should be 10 days or less. 21 (4)Publication of Gazettes of Patents, Designs, and Trademarks In principle, the time it takes from when rights are registered, until gazettes of patents, designs, and trademarks are issued, should be within 3 to 4 weeks. (5)Response to Inquiries about Applications and Registrations, etc. When responding to inquiries by phone, the JPO, in principle, answers immediately or returns calls on the same day. When responding to inquiries by s, the JPO replies examinations are suspended or interrupted; and (3) there are some difficulties for the JPO to service documents, such as service by public notices, etc., to concerned parties. 20 Excluding time periods for conducting maintenance of the systems and switching to the back-up center. 21 Excluding cases in which there are deficiencies in filing procedures. 22 Excluding cases in which (1) hard-copy applications are filed; and (2) there are deficiencies in filing procedures. 5

6 to s within 2 business days, in principle. 6. Support for SMEs in Dealing with Globalization (1)Support for SMEs The JPO, working in collaboration with the National Center for Industrial Property Information and Training (INPIT), is aiming to achieve its quantitative goals for support to SMEs as follows; The total number of consultations at the IP Comprehensive Support Counters across Japan should be more than 83,000. The total number of support services by experts, such as patent attorneys or lawyers, at the IP Comprehensive Support Counters across Japan should be more than 13,000. The total number of consultations at the IP Comprehensive Support Counters across Japan, in collaboration with the General Support Bases that have been set up by the Small and Medium Enterprise Agency, should be more than 1,000. The total number of financial institutions that provide financing support based on intellectual property should be more than The number of SMEs that file applications for patents, etc. for the first time should be more than 11,000. (2)FA Pendency in Japan under the PPH Program 24 For applications for which the Patent Prosecution Highway (PPH) program is requested, the average period from requesting the PPH program to issuing the first action should be less than 3 months. (3)JPO s Training Programs that welcome Trainees from Emerging Countries and Developing Countries, who are involved in Administrating Intellectual Property 23 The number of financial institutions means financial institutions that provided financing based on SMEs intellectual property by making use of the JPO s IP business valuation reports. 24 The pendency period from when applicants request examinations in Japan for patent applications of which claims have been determined to be patentable at the office of first filing (OFF) until the JPO issues the first action. Nonetheless, this does not include the pendency of time needed to send the necessary documents from the OFF to the JPO. 6

7 The number of invited trainees should be more than

8 Reference: Utilization of AI Technology With a view of sophisticating and streamlining operations at the JPO, the JPO has started a demonstration from fiscal year 2016 towards utilizing artificial intelligence (AI) technology for its operations. In fiscal year 2017, the JPO is to enhance its demonstration of utilizing AI technology to the operations at JPO, as well as to expand the scope of the demonstration and verification to operations that are outsourced to private organizations. Based on the results of the demonstration, the JPO will formulate and publicize an action plan for regular utilization of AI technology to its operations in future. 8