JPO IP Strategy Yoshiyuki Iwai Commissioner Japan Patent

JPO IP Strategy Yoshiyuki Iwai Commissioner Japan Patent Office

A-RI-GA-TO Outbreak of the Great East Japan Earthquake Request for Bail-out Measures JPO made requests to all the IP Offices in countries and regions where applications were filed over the last three years from Japan (a total of 90 Offices and institutions) to take bail-out measures 46 IP offices and institutions including KIPO, announced bail-out measures for the Japanese applicants and agents who were not able to carry out prescribed procedures or contact them due to the Earthquake 1

Background - Trends in Global Patent Filings (1) In 1995, three quarters of total global applications were filed to IP offices in Japan, the US, and Europe, the so-called “Trilateral Offices. ” In recent years, with the expansion of the emerging market, the number of applications filed to Korea and China rapidly increased in particular. As a result, the leading offices in the IP world shifted from the “Trilateral” to the “IP 5. ” Number of Patent Applications to Various Countries 2. 0 mill. 1. 6 mill. Other Korea China Europe Japan US Korea & China 24% 1. 2 mill. Korea & China 9% Japan, US and EPO 60% 0. 8 mill. Japan, US and EPO 73% 0. 4 mill. 0 1995 Total: 1. 05 mill. Applications filed to the IP 5 offices in Japan, Korea, US, Europe and China account for 84% of the total global applications. 2008 Total: 1. 91 mill. 2

Background - Trends in Global Patent Filings (2) The number of filings of the world is increasing along with the globalization of business activities. In particular, the number of applications filed to foreign countries has remarkably increased. (36% to 44%) Japanese applicants greatly increased their filings abroad. (17% to 34%) Change in filing behavior of Japanese applicants World-wide trend in patent applications (thousand) （thousand） (thousand) Total: 1. 91 mil 2000 1800 1600 Foreign Appl. 海外出願 Total: 502 thou. Domestic Appl. Domestic 自国出願Appl. 44. 0% 1400 Total: 1. 05 mil. 1200 Total: 1. 05 mil. File abroad Total: 405 thou. 34% File abroad 17% 1000 800 35. 6% 600 400 56. 0% File in Japan 64. 4% 83% 200 File in Japan 66% 0 1995 Source: JPO 2000 2004 （Filing year） 2008 （Filing year） Source: JPO 3

Background - Patent Examination Situation in Various Countries The tendency to file applications to more than one country for an invention became stronger and the number of global patent applications increased. As a result, the burden of conducting examinations increased for the four IP offices. Shortening the waiting period for examinations is a common issue for the Four IP offices Changes in Waiting Period for Examinations Changes in Number of Examiners (Num. of Examiners) Europe US China Korea US Korea Europe Waiting period for examinations Japan Final decision period Japan Ø JPO increased approximately 600 examiners (of which 490 are fixedterm examiners) from 2001 to 2010. Ø KIPO increased approximately 300 examiners from 2001 to 2009. Ø USPTO increased approximately 3, 000 examiners from 2001 to 2010. Ø EPO increased approximately 1000 examiners from 2001 to 2009. Ø SIPO increased approximately 3, 000 examiners from 2001 to 2010. (including assistant examiner) Source: Trilateral Statistical Report, Four Office Statistics Report USPTO Performance and Accountability Report 　　　　　　KIPO / SIPO　Annual Report 4

JPO’s Measure: Establishing an Efficient Patent Examination System Increase in the number of Patent Examiners FY 2003　1, 126　→　FY 2010　1, 703 (including 490 fixed-term examiners) Realized an efficient operational structure exceeding those of the Western countries through expanding outsourcing of prior art searches* and introducing an paperless system for the first time in the world. * There are nine search organizations as of February 2011. The outsourcing rate was approximately 64% in FY 2009. The Western countries are not outsourcing to the private sector. Changes in the Number of Outsourced Prior Art Searches On-line Filing Rate 100% 97% 80% 99% 98% 92% 91% 82% 60% 40% 43% 20% 0% Dec. 1990 2009 US Europe FY 2009 Patent/Utility Model ※ ※ Report submitting style is an outsourcing method where search results are reported by submitting search reports. Dialogue style is a method where search results are reported through an interview between an examiner and the searcher. Design Trademark 2009 Appeals/Trials In Japan, on-line filing is implemented using mainly text data, while in the US and Europe, image data is mainly used. 5

The 4 th IP 5 Heads of Office meeting Increase of number of patent applications worldwide due to globalization (1. 1 million in 1995 to 1. 9 million in 2008). Among the applications, 80% are filed among the five Offices (Japan, Korea, US, EPO, China). Recent increase of the ratio of Chinese and Korean applications. Start the IP 5 framework in 2007, with the aim to decrease the duplication of examination, to enhance the efficiency and quality of examination, and to acquire stability of patent rights. Results of the meeting Patent Law Harmonization Ø The Heads of Office reaffirmed the importance of technical and substantive patent law harmonization and emphasized the necessity of making it clear that it does not limit the freedom of each country to determine whether or not to grant a patent to each claimed invention: Ø Agreed to participate in harmonization talks at various international fora including IP 5: Ø Agreed on conducting a study, making the most of existing works to provide a base for such harmonization discussions. Work-sharing Ø Recognized that the essence of IP 5 cooperation was to establish an optimal environment enabling our Offices to utilise each other's work to the benefit of each office but also to the benefit of the applicants and the patent system at large. Common Hybrid Classification Ø Agreed to greatly accelerate the Common Hybrid Classification project following the results of the comparative study of the existing local schemas in order to identify the areas that could be easily harmonized. Machine Translation Ø Acknowledged that machine translation would help us overcome the language barriers and provide enhanced accessibility to patent documents not only for examiners but also for users, and agreed to exchange information on approaches in machine translation aiming at improvement of machine translation quality, and to promote IP 5 cooperation in this field. 6

Promoting Harmonization of Patent Systems The Necessity and Current Status of Harmonization of Patent Systems n Amid the globalization of business activities, international harmonization of patent systems and practices will be conducive to increasing the predictability of obtaining patent rights abroad, promoting smooth business/investment activities and entry into markets abroad, and maintaining/ensuring Japan’s competitiveness that is supported by technical strength. n Although discussions on harmonization of systems have been held several times since the 1980 s, the discussions are stagnant due to the North-South confrontation and North-North confrontation. n At a time when systemic reform is gaining momentum in the US, now is a good opportunity to resume discussions on harmonization of systems. Discussions between developed countries and developing countries The developing countries strongly opposed to the discussions on harmonization of systems as further imposition of system by developed countries. Discussions became stagnant as a result. Discussions among the developed countries The US could not realize a revision of the U. S. Patent Law in favor of the harmonization of systems. Meanwhile, Europe could not reach an agreement within the region. Discussions became stagnant as a result. Activities exploring ways to stimulate discussions ○ Asia-Pacific Patent Cooperation Forum (March 2011) (USA) 　Heads of the IP Offices in the Asia Pacific Region met to confirm the importance of harmonization of patent systems led by Japan and the US, as well as actively exchanged views on comprehensive and practical items that apply to the entire system based on discussion paper prepared by external experts. 　 ○ The U. S. Senate passed the patent reform bill in March 2011 and the House passed the bill in June 2011. Heads of the five IP Offices (Heads of Japan, Korea, US, Europe and China) agreed to start Discussions towards harmonization of patent system at IP 5 Heads Meeting in June 2011 7

Measure for Work Sharing - Patent Prosecution Highway (PPH) With the globalization of business activities, an invention is filed to more than one country, resulting in duplicated examinations in various countries. For an application that was accepted as patent in the OFF, when the OSF uses its examination information, it is expected that the examination burden will be reduced and accelerated acquisition of rights abroad will be facilitated for applicants. In May 2011, JPO and SIPO agreed to start a “pre-pilot” program to verify effectiveness of PPH program, sharing its potentiality of mutual benefits. 8

Patent Documents in the World n Due to the increase of patent filings in developing countries, the percentage of Japanese patent documents out of the total patent documents in the world has decreased. n On the other hand, the percentage of patent documents published only in Chinese or Korean is rapidly increasing these past few years. Patent Documents in the World Chinese/Korean patent documents are rapidly increasing 39% Other China 9% Korea Europe US 65% Source: JPO Data 24% With regard to patent documents published in more than one country for an application that was filed with a number of countries, when a patent document in Japanese is available, it is considered as Japan’s patent document. When a Japanese version is not available, priority is given in order of the US (English), Europe (English; French; German), Korea (Korean), and China (Chinese) in determining the country/region (language) the patent document belongs to. The percentage of patent documents that can only be read in Chinese or Korean was 9% in 1996. In 2009, the percentage rapidly increased to 39%. Diagram of the priority according to language Japan Eng. Fr. , Ger. Japanese English 中国 Chinese Korean 9

Developing a Search System that Accommodates Multiple Languages It is necessary to fully search Korean and Chinese patent documents when conducting examinations, in order to protect rights that are globally stable. It is important to create a new “Common Patent Classification” in cooperation with other IP offices, in order to to be able to thoroughly search patent documents in the world. An environment where companies can easily find Korean and Chinese patents related to their own technology in providing against risks involved in expanding business overseas is necessary. Japan’s Future Efforts (specific measures) Establishing a Common Patent Classification The IP 5 and WIPO will advance the establishment of a global standard “Common Patent Classification” mainly based on the classification of JPO and EPO. Once the new “Common Patent Classification” is established, the existing Japanese patents will be reclassified in accordance with the relevant international agreements. Developing a Search System for Foreign Patent Documents Construction of a database foreign patent documents utilizing machine translations (Korean to Japanese, Chinese to Japanese, etc. ) and developing a search system for efficiently searching those foreign patent documents. Realize an environment where users are able to exhaustively search patent documents in the world including Korean and Chinese patent documents, through Common Patent Classification or machine translations. 10

JPO’s Course of Action Issues to be faced l Has achieved positive results through implementing structural reform of patent applications/examination requests and promoting accelerated and efficient examinations in the past. l On the other hand, what course of action should the Japanese Patent System take, after achieving the goal of first action (FA) in 11 months? r prompt, low-priced, and solid” sought patents are ü Further prompt – By achieving the goal of FA in 11 months, realize the world’s earliest grant of rights ü Further low-priced – By lowering the examination request fees, enable the least burdensome acquisition of rights ü Further solid – This should be once again reviewed from the perspective of globalization 　→ Aim at realizing an environment where after stable rights are granted in Japan, rights are promptly obtained globally based on the rights obtained in Japan. 11

ありがとうございました!! 감사합니다!! Thank you!! 12