Fordham IP Conference April 29 2011 IP issues

Fordham IP Conference April 29, 2011 IP issues from the viewpoint of the JPO Ken-Ichi MOROOKA The Japan Patent Office 1

Overview 1. Patent Prosecution Highway (PPH) 2. Amendment of the Japanese Patent Act 2

Overview 1. Patent Prosecution Highway (PPH) v v v The PPH scheme Expanding PPH network Number of PPH requests Plurilateral PPH Portal Website 2. Amendment of the Japanese Patent Act 3

The PPH scheme OFF (Office of First Filing) Paris Route Application OSF (Office of Second Filing) Search / Examination Request for PPH Application PCT International Phase PCT Work Products of Trilateral Offices or NBPR PCT Application WO or IPER Positive Opinion Allowable National/Regional Phase A Examination PPH (Paris Route) PCT-PPH Allowable Request for PPH Ｂ Ｃ Accelerated Exam. Request for PPH Accelerated Exam. Claiming priority to application to Office “A” PPH Request to Trilateral Offices or NBPR 4

Expanding PPH network JPO USPTO (Japan) (USA) IMPI KIPO (Korea) (Mexico) UKIPO SPTO (UK) (Spain) HIPO CIPO (Hungary) (Canada) APO DPMA (Austria) (Germany) ROSPATENT (Russia) IP Australia （Australia） NBPR (Finland) DKPTO IPOS (Singapore) EPO (Europe) (Denmark) ：　 PPH ：　 PCT-PPH As of 4 th of April, 2011 5

Number of PPH requests 6

Plurilateral PPH Working Level Meeting : Jan. 18 -19, Tokyo, Japan Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U. S. A. Main topics 1. Relaxing priority requirements 2. Simplifying / Streamlining filing requirements 3. Providing users information of the different practices between Offices 4. Enhancing user outreach 7

PPH Portal Web Site - Access PPH Portal Web Site for more information Provision of various statistical data Provision of the PPH guidelines of different countries Provision of the PPH request forms of different countries Provision of the pamphlets of PPH of different countries http: //www. jpo. go. jp/ppph-portal/index. htm 8

Overview 1. Patent Prosecution Highway (PPH) v v v The PPH scheme Expanding PPH network Number of PPH requests Plurilateral PPH Portal Website 2. Amendment of the Japanese Patent Act v The aim of the amendment v Points of the amendment 9

The Aim of the Amendment v To cope with “Open innovation”. v To deal with the acceleration of innovation, and the short life-cycle of products. v To improve user convenience. 10

Points of the Amendment (1) Increasing user-friendliness (2) Appropriate protection of inventors in relation to the results of joint researches etc. (3) Enhancing protection of license agreements (4) Revising the trial examination system to expeditiously and efficiently solve disputes 11

Points of the Amendment (1) Increasing user-friendliness Extension of the patent fee exemption period from 3 to 10 years (for small- and medium-sized Enterprises). 12

Points of the Amendment (1) Increasing user-friendliness (continued) Expanding the mode of disclosure eligible for the grace period. (Present) Conducting an experiment, Presentations made in a printed publication, Presentations made through electric telecommunication lines, Presentations made in writing at a study meeting held by scientific organizations etc. (Amended) Disclosures made by the inventor himself / herself regardless of the mode of disclosure. 13

Points of the Amendment (1) Increasing user-friendliness (2) Appropriate protection of inventors in relation to the results of joint researches etc. (3) Enhancing protection of license agreements (4) Revising the trial examination system to expeditiously and efficiently solve disputes 14

Thank you 15