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Substantive Patent Substantive Patent Harmonization and Japan’s Harmonization and Japan’s
StanceStanceShinjiro ONOShinjiro ONO
Deputy CommissionerDeputy CommissionerJapan Patent OfficeJapan Patent Office
2002 High Technology Protection Summit2002 High Technology Protection Summit
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HISTORY OF SUBSTANTIVE HISTORY OF SUBSTANTIVE HARMONIZATIONHARMONIZATION
19931993 Suspension of Patent Harmonization Suspension of Patent Harmonization
2000~ Patent Harmonization on2000~ Patent Harmonization on Substantive Substantive Aspects Aspects
? ? Substantive Patent Law Treaty (SPLT) Substantive Patent Law Treaty (SPLT)
1994~ Patent Harmonization on Formative 1994~ Patent Harmonization on Formative Aspects Aspects
20002000 Patent Law Treaty (PLT) Patent Law Treaty (PLT)2000 Summit:Grace Period2000 Summit:Grace Period
2002 Summit:Substantive Harmonization2002 Summit:Substantive Harmonization
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BACKGROUND OF THE BACKGROUND OF THE SUBSTANTIVE SUBSTANTIVE
HARMONIZATIONHARMONIZATION
Development of Advanced TechnologiesDevelopment of Advanced Technologies
Rapid Growth of Patent ApplicationsRapid Growth of Patent Applications(Especially Those to Foreign Countries)(Especially Those to Foreign Countries)
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Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications
Total Number of Patent Application in the WorldTotal Number of Patent Application in the World
6 million6 million(1998)(1998)
1.9 million1.9 million(Early 1990s)(Early 1990s)
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Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications
Roots of Patent Applications to Foreign IP OfficesRoots of Patent Applications to Foreign IP Offices
5.1 million5.1 millionPatent Applications to Patent Applications to
Foreign IP OfficesForeign IP Offices
180,000180,000Original Patent Applications to Original Patent Applications to
Domestic IP OfficesDomestic IP Offices
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Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications
0
50,000
100,000
150,000
200,000
250,000
300,000
350,000
400,000
450,000
500,000Patent Applications Examination Requests
Patent Applications/Examination Requests Filed with JPOPatent Applications/Examination Requests Filed with JPO
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Rapid Growth of Patent Rapid Growth of Patent ApplicationsApplications
0
2,000
4,000
6,000
8,000
10,000
12,000
14,000
16,000
18,000
20,000
PCT Applications Filed with JPO
27%27%
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Trends in the Number of IPERsTrends in the Number of IPERs
0
5000
10000
15000
20000
25000
30000
35000
40000
45000
1995 1996 1997 1998 1999 2000 2001
JPO USPTO EPO
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Development of Advanced Development of Advanced TechnologiesTechnologies
Rise of advanced technologies Rise of advanced technologies such as information technology such as information technology and biotechnologyand biotechnology
Difficulty in examinationDifficulty in examination Lack of examination guidelinesLack of examination guidelines Growth of complex applicationsGrowth of complex applications
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GOALSGOALS
Simplified Patent Obtaining Simplified Patent Obtaining ProcessProcess
Workload ReductionWorkload Reduction
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Simplified Patent Obtaining Simplified Patent Obtaining ProcessProcess
Harmonized standards for granting Harmonized standards for granting patentspatents
Improved quality of examination Improved quality of examination standards in each Officestandards in each Office
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Workload ReductionWorkload Reduction
Reduction in duplication of workReduction in duplication of work
Balanced work sharing between Balanced work sharing between inventors/applicants and Officesinventors/applicants and Offices
13Sources: (JPO) data compiled by the JPO; (EPO, USPTO) preliminary estimates based on regular exchange of Trilateral statistical data (4/ 2001).
USPTOUSPTO EPOEPO
JPOJPO
Application Flows among Trilateral BlocsApplication Flows among Trilateral Blocs
Duplication Duplication among Trilateral among Trilateral
Offices:Offices: 158,870158,870
Total Trilateral Total Trilateral Workload:Workload:
650,804650,804
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JPO-USPTO Joint ProjectJPO-USPTO Joint Project
Near term project for the exploitation Near term project for the exploitation of the each side’s of the each side’s search resultssearch results
Separate project for the exploitation of Separate project for the exploitation of the each side’s the each side’s examination resultsexamination results
Identification of differences in each Identification of differences in each Office’s examination practicesOffice’s examination practices
Increased needs for Increased needs for substantial harmonizationsubstantial harmonization
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Needs for Substantial Needs for Substantial HarmonizationHarmonization
Range of Prior ArtRange of Prior Art
Claim SystemClaim System
Claim InterpretationClaim Interpretation
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Balanced Work Sharing between Balanced Work Sharing between Inventors/Applicants and OfficesInventors/Applicants and Offices
Inventors Inventors ApplicantsApplicants
Patent Patent OfficesOffices
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METHODOLOGYMETHODOLOGY
Deep Harmonization on Limited Deep Harmonization on Limited IssuesIssues
Incorporation of “Best Incorporation of “Best Practices”Practices”
Tackling New IssuesTackling New Issues
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Deep Harmonization on Limited Deep Harmonization on Limited IssuesIssues
Focusing on requirements for Focusing on requirements for granting patentsgranting patents
Deep harmonization covering Deep harmonization covering examination practicesexamination practices
Early conclusion of the SPLTEarly conclusion of the SPLT
Same examination results for Same examination results for the same inventionthe same invention
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Incorporation of “Best Practices”Incorporation of “Best Practices”
““Best Practices” from various Best Practices” from various
patent systems should be adoptedpatent systems should be adopted
Opportunity to improve each Opportunity to improve each
Office’s examination practicesOffice’s examination practices
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Tackling New IssuesTackling New Issues
Employing new measures to cope Employing new measures to cope with new issues, such as complex with new issues, such as complex applicationsapplications
Maintaining flexibility to cope with Maintaining flexibility to cope with future issuesfuture issues
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NEGOTIATION POINTSNEGOTIATION POINTS Technical NatureTechnical Nature
First-to-File System/First-to-First-to-File System/First-to-Invent System and Grace PeriodInvent System and Grace Period
Complex ApplicationsComplex Applications
Rearrangement of ProvisionsRearrangement of Provisions
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Technical NatureTechnical Nature
Technical nature is an indispensable Technical nature is an indispensable
requirement for patentabilityrequirement for patentability
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First-to-File System/First-to Invent First-to-File System/First-to Invent system and Grace Periodsystem and Grace Period
Expecting US efforts and European Expecting US efforts and European
flexibilityflexibility
First-to-file system is most First-to-file system is most
advantageous for applicantsadvantageous for applicants
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Complex ApplicationsComplex Applications
New measures should be sought New measures should be sought
through the Trilateral Cooperationthrough the Trilateral Cooperation
Results should be incorporated into Results should be incorporated into
the SPLTthe SPLT
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Rearrangement of SPLT ProvisionsRearrangement of SPLT Provisions
Provisions should be rearranged according to Provisions should be rearranged according to
required compulsivity, etc.required compulsivity, etc.
TreatyTreaty
RegulationsRegulations
Practice GuidelinesPractice Guidelines
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