Advantages and Limitations of the PCT System from the User … · 2010-11-22 · Topic5 Advantages...
Transcript of Advantages and Limitations of the PCT System from the User … · 2010-11-22 · Topic5 Advantages...
Topic5 Advantages and Limitations of the PCT System from the User Perspective
November 12, 2010November 12, 2010Japan Intellectual Property AssociationJapan Intellectual Property AssociationCommittee on international patent #2Committee on international patent #2Chairperson : Chairperson : TakaeTakae OtaOta
Creating IP Vision for the World
Creating IP Vision for the World 1
ContentsContents
Present State of using PCT
Special Features of PCT system
Advantages of PCT system
Introduction of JIPA
Limitations of PCT system
Conclusion
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1. Introduction of JIPA1. Introduction of JIPA
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Article 1 of JIPA CharterThe Association aims at contributing to the business of its
Members by endeavoring to make full utilization of intellectual property systems and to improve them.It also aims at contributing thereby to the sound progress of
technology and development of Japanese industry.
Objectives of JIPAObjectives of JIPA
JIPA is Nongovernment and Nonprofit Organization
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899
290
767816
10 30
109
315
508
609
867887 898
97145
192231
266
0
100
200
300
400
500
600
700
800
900
1000
1938 '5
0
'60
'70
'80
'90
2000
2002
2004
2006
2008
2010
Regular MemberAssociate Member
Member
F/Year
(As of May 12, 2010)(As of May 12, 2010)
Transition of Transition of JIPAJIPA’’ss MembershipMembership
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Analysis of JIPA Regular Member Corporations Analysis of JIPA Regular Member Corporations according to different Industries and Tradesaccording to different Industries and Trades
RegularMembers
899
Chemistry-39%
Electric/Electronics-33%
Metal/Machinary-22%
Construction/trading Companies-6%
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Policy on JIPA Activity in F/Y 2010Policy on JIPA Activity in F/Y 2010
(1) Study of Future IP System, as it ought to be(2) Study of Future Multilateral Industry Meeting based on Trilateral
Industry Meeting(3) Propulsion of Green Technology Package Program(4) Initiative Role on Anti-counterfeiting(5) Suggestion of Opinions to relative organizations(6) Training to IP Human Resources(7) IP contributing Corporate Management, especially relation ship
between Business and Standardization of Technology (8) Assist to IP Activities in IP SME(9) 10th JIPA IP Symposium
1) Cope with Globalization of IP & Corporate Activities2) Establishment of User-friendly IP System3) Assist to IP Activities in Member Corporations3) Publishing & Transmitting of Message & Information on the above
Activities
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Main Activities of JIPAMain Activities of JIPA
1. Policy & Strategy Project & Special Committee Activities (4 PJs & 3 Committees)
Strategic Studies and Researches on Offer of IP Policy
2. Standing Committee Activities(20 Committees, 701 Members -‘10)
Professional Studies and Researches → Feed-back to JIPA MembersOffering JIPA’s Opinions and Suggestions to Outside Communities.
3. Training Activities(78 Regular Courses, 12 Extra-ordinary Courses, 2 OverseasCourses, IP Leader Course, Strategic Staff Course & Junior ExpertCourse, Total: 13,002 Trainees -’09)
IP Education / Training to Employees of JIPA Members.
4. PublicationMonthly Bulletin (3,850 Circulation), Investigation & Study Reports
5. OthersCommunication/Coordination with various IP Related Institutions and Organizations.
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Study Report
Project etc.(7) Committee (20)
Recommendation & Position PaperJPO, Minister(Economy, Justice), Supreme Court, Political Party
Policy Making
PJ on Strategy to Asian RegionPJ on Strategy to Asian RegionPJ on Propulsion of Green PJ on Propulsion of Green
Technology Package ProgramTechnology Package ProgramPJ on Corporate Cooperation PJ on Corporate Cooperation
between Japan & Chinabetween Japan & ChinaCommittee on Trilateral Industry Committee on Trilateral Industry
Meeting & Propulsion of Patent Meeting & Propulsion of Patent System Harmonization in the System Harmonization in the WorldWorld
Committee on Relationship Committee on Relationship between Business and between Business and Standardization StrategyStandardization StrategyEtc.
Committee on Patent #1, #2Committee on International Patent #1, #2, #3Committee on Industrial DesignCommittee on Trademark Committee on License #1, #2Committee on Software PatentCommittee on IP Management #1, #2 Committee on Biotechnology PatentCommittee on Digital ContentsCommittee on IP Information systemEtc.
cooperation
Study &Research
Main Activities of JIPAMain Activities of JIPA
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Activities in Standing CommitteeActivities in Standing Committee
21
3117
22
44
2234
34
24
47
21
37
47
29
21
42
33
47
65
63
Public & Publication
Training
General Affairs & Plannning
Fair Trade
Trademark
Industrial Design
License2
License1
Digital Contents
IP Information Search
IP Information System
IP Management #2
IP Management #1
Software
Biotechnology
International Patent #3
International Patent #2
International Patent #1
Patent #2
Patent #1
(F/Y2010)Total:701
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Questionnaire Survey for Questionnaire Survey for PCTPCT system system
BackgroundConfirm Advantages and Limitations of the PCT System
TimeSeptember 2010
SubjectMembers in Committee on International Patent #1,2,3
•These committees study the patent prosecution, practical utilization and etc. in the foreign patent system
Electronics : 57 , Chemical : 42 , Machinary/Metal : 23
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2. Present State of using 2. Present State of using PCTPCT
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0
20000
40000
60000
80000
100000
120000
140000
160000
180000
78 80 82 84 86 88 90 92 94 96 98 00 02 04 06 08
Source : WIPO
The number of PCT Publications in 2009The number of PCT Publications in 2009
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The number of PCT applications by applicantsThe number of PCT applications by applicants’’ country country in 2009in 2009
0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
40,000
45,000
50,000
US JP DE KR CN FR GB NL CH SE IT CA FI AU IL
Source : WIPO
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• JP : Big User for PCT
Distribution of PCT application by country of originDistribution of PCT application by country of origin
30
195
5
30
US
JP
DE
KR
CN
All others
Source : WIPO
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Share of PCT National Phase Entries in Total Filing Share of PCT National Phase Entries in Total Filing Abroad in 2008Abroad in 2008
0
10
20
30
40
50
60
70
80
US DE Average IN CN JP KR
Source : WIPO
• JP : Still use “Paris Convention Route” for filing abroad
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3. Special Features of 3. Special Features of PCTPCT systemsystem
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Basic demand of Japanese Users for foreign application
Cost reduction for patent prosecution and etc.
High quality
Same quality among the patent offices
Getting patent immediately when users want
Patent Cost
Quality of Search & Examination Timeliness of Patent Issue
Demand
and
Reduction of workload for Users
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Special Features of Special Features of PCTPCT system in the view of Userssystem in the view of Users
(month)
International filing
120 30
ISRWO/ISA
16 18
InternationalPublication
(option) Request for
IPE
Priority date
National Phase Entry
22 28
(option)IPRP
1. Term for entering National Phase (30 months)
2. International Search (and IPE )
3. Amendment in International Phase
4. Simplification of Filing Procedure
Amendment
Amendment
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4. Advantages of 4. Advantages of PCTPCT systemsystem
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Advantages of Advantages of PCTPCT systemsystem
Ascertaining the value of inventionPatentability
• Users ascertain it based on ISR (WO/ISA) & IPRP(Ⅱ)
Business strategy and R&D strategy
• Users ascertain their change in International Phase Ex. 1) Standardization of technology
Is the invention included in it?
2) Early stage in R&D
Is the invention available?
Is there any preferable alternative invention?
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Ascertaining the value of inventionUsers can thoroughly think over the strategy of
National Phase Entry
Advantages of Advantages of PCTPCT systemsystem
International Phase
Value of Invention Strategy for National Phase Entry
・
Which country entered into・
Timing for entry, request for
exam, etc.・
Amendment in Claim
・
etc.Business R&D
Patentability
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Stability of PatentQuality of examination by DOs is higher, because DOs
can examine referring to ISR or IPRP(Ⅱ) in National Phase
Advantages of Advantages of PCTPCT systemsystem
Preparation for TranslationUsers have enough time to translate from Japanese to
Third Language (through English) in International Phase
Users can save cost for Translation, because they can select countries entered into based on the value of invention
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Saving Cost and Reducing Workload for corresponding OA in National Phase
Amendments in International Phase (§19, §34)
MSE referring to Product of ISA and IPEAMSE (Modified Substantive Examination): The examination system that the
national patent office examines using practically the result of search or examination by a foreign patent office for the national patent application corresponding to the foreign patent application granted by the foreign patent office
Advantages of Advantages of PCTPCT systemsystem
Rectification for Mistranslation in National Phase
ex. In China
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Advantages of Advantages of PCTPCT systemsystem
Easy to file PCT ApplicationSimplification of filing procedure
• One set of documents
• One Receiving Office, One Formality Examination
• One Language : Japanese
PCT International Filing Date = National Filing Date (§11(4))
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Special Features Special Features -- AdvantagesAdvantages
Term for Entering National Phase
International Search
Amendment in international Phase
others
Ascertaining the value of invention
Stability of Patent
Preparation for Translation
Saving Cost and Workload
others
Special Features
Advantages
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5. Limitations of 5. Limitations of PCTPCT systemsystem
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PCT is ideal for users and patent offices in the view of system, but …
Limitations of Limitations of PCTPCT systemsystem
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CostMore than 1,000 USD in Official Fee compared to “Paris
Convention Route”
• Although some DOs (CN, EP and JP) discount the examination fee for the national application via PCT
Furthermore it costs Attorneys Fee in International Phase
Limitations of Limitations of PCTPCT systemsystem
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CostIt is difficult to compute the cost merit of the advantages
in PCT system clearly
Non PCT users think
Cost demerit of PCT system > Advantages of PCT system
Limitations of Limitations of PCTPCT systemsystem
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Quality of IS or IPESurvey of Quality for ISR by JIPA
Limitations of Limitations of PCTPCT systemsystem
NationalPhase
ISA
RATE : One of prior arts in OA by DO is involved in prior arts in
ISR
RATE : examination by DO is severer than ISR
or WO/ISA
JPO USPTO EPO JPO USPTO EPO
JPO ― 52% 62% 21% 40% 44%
USPTO 41% ― 45% 24% 37% 38%
EPO 66% 53% ― 9% 38% 14%
※severe: 1) more related prior art is found in National Phase
2) different from decision for patentability by ISA (ex. Change from Y to X)
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Quality of IS or IPECaused by the difference of Search and Examination
among ISAs, DOs
Some applicants think the product of ISA or IPEA is not always helpful for them
Limitations of Limitations of PCTPCT systemsystem
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MiscellaneaUnity of Invention
Application format
etc.
These are caused by the difference of Substantive Patent Law
Limitations of Limitations of PCTPCT systemsystem
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6. Conclusion6. Conclusion
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Improvement of Quality of IS and IPEApproaching “Same Search” , “Same Examination”
• Including Harmonization of Substantive Patent Law
Making Quality of IS and IPE Visible
Conclusion : Expectation from Users PerspectiveConclusion : Expectation from Users Perspective
It leads
• Reduction of workload for Users
• Reduction of workload for Patent Offices ⇒Timeliness of Patent Issue
• Saving cost
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Improvement of Quality of IS and IPE
Improving Quality of IS and IPE
Reducing Workload in Search & Exam
Timeliness of Patent Issue
Reducing Workload in Prosecution
Amendment and Using IPE
Increasing PCT application
USER PO
Win-Win
Conclusion : Expectation from Users PerspectiveConclusion : Expectation from Users Perspective
Valuation of Quality
Saving Cost
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MiscellaneaRectification for mistranslation
• Permitting and Making it into a rule in the national patent law
• Opportunity : After receiving Office Action
Expanding the use of ISR and IPRP(Ⅱ) in National Phase
• MSE makes use of affirmative ISR (WO/ISA) as well as IPRP(Ⅱ)
• PCT-PPH
Conclusion : Expectation from Users PerspectiveConclusion : Expectation from Users Perspective
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MiscellaneaDisclosing Information outside the country
• Actual condition for use of ISR and IPRP(Ⅱ) by DOs in National Phase
• Statistics about the national application via PCT
• National Patent Law, especially concerned with PCT application
E-Filing (XML)
• After PCT filing in International Phase
• In National Phase
Conclusion : Expectation from Users PerspectiveConclusion : Expectation from Users Perspective
Thank you for your attention !
Creating IP Vision for the World