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Shunichi DOIDirector General
Second Patent Examination DepartmentJapan Patent Office
November 2, 2011
National IP Strategy for Innovation Promotion-Experience of Japan-
1
Changes in Environment Surrounding Intellectual Property
IP Strategy in JPO -for Improvement of IP Infrastructure-
University-Industry Collaboration-Current Situation and Support Programs-
Outline
2
2
Global Growth in Patent Filings
Patent filings are growing in number worldwide. Especially foreign filings are rapidly increasing.Foreign filings by Japanese companies are also increasing. Worksharing for examinations are becoming increasingly important between the IP offices.
Number of Patent Filings in the World
Source: WIPO Industrial Property Statistics
Number of Patent filings by Japanese Applicants
JP83%
0
200
400
600
800
1000
1200
1400
1600
1800
2000
1995 2000 2004 2008(Year of filing)
(in thousands)
Foreign filings
National filings
(Year of filing)
334 330
71172
0
100
200
300
400
500
600
1995 2008
Foreign filings
National filings
Filed abroad 17%
(in thousands)
JP66%
35%40%
42%
44%
Filed abroad 34%
3
Overseas production sites of Japanese companies
米欧以外25%
(1.8万件)
欧州19%
(1.3万件)
米国56%
(4.0万件)1995年7.1万件
Trends in Global Patent FilingsJapanese applicants have increased their filings to foreign countries other than US and Europe. (25% to 36%)Filings are increasing in countries such as China, Korea, ASEAN countries and India in line with companies expanding their production sites overseas.
米国48%
(8.2万件)
米欧以外36%
(6.2万件)
欧州16%
(2.8万件)
2008年17.2万件
Change in filing destinations by Japanese applicants
Note: The ASEAN in the graph refer to Singapore, Thailand, Indonesia, Malaysia and the Philippines.Source: “2009 (21st) Survey on Overseas Direct Investment” by the Japan Bank for International Cooperation (JBIC)
Source: JPO
US
56%
40thou.
US
48%
82thou.
EUROPE
16%
28thou.
OTHER
36%
62thou.
OTHER
25%
18thou.
EUROPE
19%
13thou.Source: JPO
0
10
20
30
40
50
60
70
2003 2004 2005 2006 2007
(Thou.)
China Korea Asian Countries (*) India Brazil Russia
(*)Thailand, Singapore, Malaysia, Vietnam
Trend in filing abroad by Japanese applicants
China
North America
India, Vietnam and other Asian Countries
199571thou.
2008172thou.
3
4
0
50
100
150
200
250
2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
(FY)
(thousand)
Report submitt ing styleDialog styleNo . of outsourced searches
Increase in the number of Patent ExaminersFY2003 1,126 FY2010 1,703 (including 490 fixed-term examiners) Achieved an efficient operational structure exceeding those of Western countries through
increasing outsourcing of prior art searches* and introducing a paperless system for the first time in the world.
43%
97%91%
98%
0%
20%
40%
60%
80%
100%
Dec. 1990
Patent/Utility Model Design Trademark Appeals/Trials
US Europe
43%
97%92%
81%
99%
60%
0%
20%
40%
60%
80%
100%
2009
In Japan, on-line filing is done by using mainly text data, while in the US and Europe, image data is mainly used.
82%
FY2009 2009
Number of Outsourced Prior Art Searches On-line Filing Rate
Report submitting style is an outsourcing method where search results are reported by submitting search reports. Dialogue style is a method wheresearch results are reported through an interview between an examiner and the searcher.
* There are nine search organizations as of October 2011. The outsourcing rate was approximately 64% in FY2009. Western countries are not outsourcing to the private sector.
JPO’s Steps: Establishing an Efficient Patent Examination System
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Linguistic Diversity of Patent Literature
Patent literature published in Japanese language has been relatively decreasing. (40% to 20%) Non-English patent literature, in particular Chinese patent literature is rapidly increasing.
>>> Need to read more and more non-English patent literature as prior art documents
0
200,000
400,000
600,000
800,000
1,000,000
1,200,000
1,400,000
1,600,000
1,800,000
2,000,000
1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009
others
IN
BR
RU
CN
KR
CH
FR
DE
CA
WO
EP
GB
US
JP
Patent Literature in Different Languages
Source: Created by JPO using WPI data
Number of publications
*The data are provisional.* *
4
6
Changes in Environment Surrounding Intellectual Property
IP Strategy in JPO -for Improvement of IP Infrastructure-
University-Industry Collaboration-Current Situations and Support Programs-
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METIMETI(JPO)(JPO) MICMEXT MAFF
(Private)Companies,Universities …
・・・・・・
IP Strategy HeadquartersIP Strategy Headquarters
Headed by: The Prime Minister
Headquarters members:All the Ministers and10 experts
Headed by: The Prime Minister
Headquarters members:All the Ministers and10 experts
Implementation
Formulated every year
Intellectual Property Strategic Program 2011
1. Strategy for Enhancing International Standardization2. Strategy for Innovating IP Infrastructure3. Strategy for IP on Cutting-edge Digital Network4. Strategy for Promoting the “Cool Japan”
Extracted from the Intellectual Property Strategic Program 2011
IP Strategic Program
・IP Strategy Headquarters formulate the “IP Strategic Program” every year. Government ministries and agencies implement measures based on the programs.
・On June 3th 2011, IP Strategic Program 2011 was formulated.
Intellectual Property Strategic Program
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Patent Strategy of Japan Patent Office
Goal
Midterm goal
Harmonization of Patent System
Achieving an International Patent Network
Moving forward discussions on Patent Law/Practice Harmonization
Trilateral& IP5
Accelerating discussions on Harmonization
WIPOOther fora
Granting stable rights that will be valid worldwide
Developing foreign patent document search system
Establishing a Common Classification
Establishing examination system that responds to globalization
PCT144 Countries
Accelerating of an International
Patent Network
Enhancing cooperation with Asian countries
PPH21 Countries/Orgs
Gaining mutual understanding on patent systems and practices
(1)(3)(2)
(4)
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Patent Prosecution Highway (PPH )
Search /Examination
Allowable
Request for PPH
Request for PPHApplication
OFF (Office of First Filing)
Application
Paris Route
Accelerated Exam.
OSF (Office of Second Filing)
S/E results can be utilized
National/Regional Phase
PCT International Phase National/Regional Phase
PCT Application WO or IPER
Positive Opinion
PCT Work Products Request for PPH
Request for PPH Accelerated
Exam.
S/E results can be utilized
Applicants eligible for accelerated examination at OSF, based on search & examination results at OFF.OSF benefits from reduced workload in search/examination.
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10
Expanding the PPH Network
As of 1st of November, 2011
IP Australia(Australia)
DPMA(Germany)
DKPTO (Denmark)
EPO(Europe)
ROSPATENT(Russia)
JPO (Japan)
UKIPO(UK)
KIPO(Korea)
USPTO(USA)
CIPO (Canada)
HIPO(Hungary) APO
(Austria)
SPTO(Spain)
IPOS(Singapore)
IMPI(Mexico)
INPI(Portugal)
PRV(Sweden)
ILPO(Israel)
NPI(Nordic)
NBPR(Finland)
TIPO(Taiwan)
NIPO(Norway)
SIPO(China)
: PPH: PCT-PPH: PPH MOTTAINAI
http://www.jpo.go.jp/ppph-portal/
To support applicants who file patent applications globally, the Patent Prosecution Highway (PPH) should be further expanded to various countries.
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Patent Harmonization & IP5
Momentum of Patent Harmonization
Progress in the Patent Reform Act in the U.S. which includes First to File system.
Through the PPH, recognize the necessity of patent law and practice harmonization.
Patent filing & IP5
Among applications worldwide (1.9 Million), 80% are filed among the Five Offices (Japan, US, EPO, China, Korea).
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 inventionAgreed to participate in harmonization talks at various international fora including IP5Agreed on conducting a study, making the most of existing works to provide a base for
such harmonization discussions
Results of the meetingResults of the meetingAt the 4th IP5 Heads Meeting held in Tokyo in June, 2011
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Mutual understanding on Patent Systems and Practices is beneficial for Patent HarmonizationMutual understanding can facilitate forming of an International Patent Network
Expansion of Examiner Exchange Program
JPO’s experience in examiner exchanging programs
KIPO
USPTO
EPO
dispatch 236accept 185
SIPO
Trilateral Examiner Exchangedispatch 28
accept 12 respectively from EPO and USPTO
dispatch 7accept 8
dispatch 23accept 22
DPMA (Germany)
dispatch 32accept 25
Rospatent(Russia)
dispatch 4accept 3
UKIPO (England)
dispatch 8accept 5
CIPO (Canada) dispatch 2
PRV (Sweden)
dispatch 5accept 2
IP5 Workshop (from 2009)Dispatch 6
Harmony Visit (classification)dispatch 69
accept 8 from EPO, 3 from USPTO
JPO
TIPO(Taiwan)
dispatch 4accept 4
CGPDTM(India)
dispatch 2
IP Australia accept 2
DKPTO (Denmark) accept 1
SPTO(Spain)
dispatch 2
KIPO
USPTO
EPO
dispatch 236accept 185
SIPO
Trilateral Examiner Exchangedispatch 28
accept 12 respectively from EPO and USPTO
dispatch 7accept 8
dispatch 23accept 22
DPMA (Germany)
dispatch 32accept 25
DPMA (Germany)
dispatch 32accept 25
Rospatent(Russia)
dispatch 4accept 3
Rospatent(Russia)
dispatch 4accept 3
UKIPO (England)
dispatch 8accept 5
UKIPO (England)
dispatch 8accept 5
CIPO (Canada) dispatch 2
CIPO (Canada) dispatch 2
PRV (Sweden)
dispatch 5accept 2
PRV (Sweden)
dispatch 5accept 2
IP5 Workshop (from 2009)Dispatch 6
Harmony Visit (classification)dispatch 69
accept 8 from EPO, 3 from USPTO
JPO
TIPO(Taiwan)
dispatch 4accept 4
CGPDTM(India)
dispatch 2CGPDTM(India)
dispatch 2
IP Australia accept 2IP Australia accept 2
DKPTO (Denmark) accept 1
DKPTO (Denmark) accept 1
SPTO(Spain)
dispatch 2SPTO(Spain)
dispatch 2
As of end of October, 2011
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At a time when differences in examination results need to be resolved in each country and create stable rights that are globally acceptable, the JPO needs to work more quickly on multitiered measures.
Developing a foreign patent document search system
Strengthening the examination system that responds to
globalization
It is necessary to strengthen the examination system in order to conduct a thorough search of patent documents in the world and make appropriate decisions internationally. Improving quality management Acquiring the required number of examiners
Taking account of the fact that Chinese and Korean documents are increasing, it is necessary to develop a foreign patent document search system equipped with the function of translating Chinese and Korean into Japanese. Developing foreign patent document search system using machine translation (for Chinese, Korean, etc.) Utilizing private sector’s machine translation technology
Granting Stable Rights Acceptable Worldwide
It is necessary to establish a common patent classification system which is a search tool that is independent of languages, in order to enable batch searching of the increasing patent documents of various countries. Establishing world standard common patent classification system
Establishing a common patent classification system
Harmonizing systems and practices
It is necessary to harmonize the patent systems and examination practices of various countries so as to resolve the difference in examination results among the countries. Expanding the examiner exchange program Promoting studies aimed at harmonizing of patent systems at the working level
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14
JPO’s Specific Measures for Strengthening Cooperation
Strengthening Cooperation with Asian and Emerging Countries
Sending IP experts for examination cooperation and improving IP protection Providing technical assistance that meets the needs of Asian and emerging
countries in cooperation with the WIPO and the JICA
Providing training on examination practices Implementing training programs for examination practice targeted at examiners
in the Asian region
Providing examination results Providing JPO’s examination results using the Advanced Industrial Property
Network (AIPN) Holding seminars on how to use the AIPN
Continue providing technical assistance that meets the needs of countries in the Asian region.Continue providing support of human resources development to countries in the Asian region.Provide JPO’s examination results for free.
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Changes in Environment Surrounding Intellectual Property
IP Strategy in JPO -for Improvement of IP Infrastructure-
University-Industry Collaboration-Current Situation and Support Programs-
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Research Funding Spent in Universities
Number of Researchers in Universities
18 %
Total Research Funding
18.8 trillion yen
Total Japanese Researchers
84 million researchers
Source: Survey Report of Research & Development (2009)
In the field of IP, Universities are expected to produce human resources who play key roles in building an IP-based nation in order to promote R&D based on university-industry collaboration and incorporate their research results into society.
What is Expected of Universities
Citation Frequency(natural science & engineering)
NO.1 US 44.6%
GB 11.0%DE 10.5%
JP 8.0%
FR 6.9%
CN 5.5%No.6
others
No.4
36 %
CN 9.1%DE 8.2%GB 7.8% JP 8.4%
Number of Research Papers (natural science & engineering)
others No.1 US 29.5%
No.2FR 6.0% No.3No.4No.5
No.6
No.5
No.2No.3
17Source: The JPO Annual Report (FY2011)
Patent Applications Filed by Japanese Universities
The IP infrastructure was built at major universities, which resulted in an increase in patent filings until 2005. At present, the number of filing patent applications remains stable.
Trend in Patent Applications Filed by Universities
10891527
1979
2775
4604
7859
71516909
73527569 7601
0
1000
2000
3000
4000
5000
6000
7000
8000
9000
2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010
(Year)
Examination Results of Patent ApplicationsFiled by Universities
*The grant rate of all patent applications were 50% in 2008, 50% in 2009, and 55% in 2010.
242 208 379 535 744 8861321
2330
253364
1058
1748
149101 111 153
589501
57%56%60%
69%
58% 60% 60% 60% 60%
0
500
1000
1500
2000
2500
3000
3500
4000
4500
2002 2003 2004 2005 2006 2007 2008 2009 2010
0%
20%
40%
60%
80%
100%
Number of Grants Number of Refusal/ Withdrawal/ AbandonmentRate of Grants
(Year)
10
18Source: The JPO Annual Report (FY2011)
The number of technology transfers from universities to industry through license agreements is increasing.Industry, in commercializing university-originated inventions, expects these inventions be strictly protected by patent rights.
185477
1,283
2,872
4,390
5,3065,489
0
1,000
2,000
3,000
4,000
5,000
6,000
2003 2004 2005 2006 2007 2008 2009
(FY)
Licensee of Patents Owned by TLO
as of the end of March 2009
Changes of Technology Transfer from University to Industry through License Agreements
Source: The National Center for Industrial Property Information and Training(INPIT)
Utilization Status of University-Originated Patents in Industry
large companies39%
individuals0%
association etc.
1%
TLO0%
1%
SMEs
58%
public technical center
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Collaboration(e.g. Support for System
Building, University IP Liaison Conference, Joint Training
University Network IP Advisors are sent to regional-based or discipline-based inter-university networks in order to raise the standard of IP activities among all the universities within the network through building and enhancing IP management, ultimately aiming to expand the framework of university-industry collaboration.
A Univ.B Univ.
C Univ.
D Univ.
Experts with Experience in IP Management or University-
Industry Collaboration (University Network IP Advisors )
Regional University Association, Discipline-Based Inter-Academic Collaboration, Industry Cluster etc.
Inter-Academic Network
Network Expanding by including new participants
JPO, INPIT
University Support Program: Sending IP Advisors
Sending
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Universities R&D Consortia
Public Institutes
UniversitiesCompanies
Innovative technologies
IP-Specialized Experts with Experience in Business Development and IP Business in Private sector
Project Closing(confirmation about
management and utilization of IP rights)
to establish research themes in unexplored fields, and to modify them if necessary, through collection and analysis of patent-related information, and academic papers
to determine a standardized format for research reports or notes that enable to be evaluated for the degree of contribution to invention
to obtain a strong group of patents aimed at business development, including development overseas, and to build a robust IP network
to establish a policy for managing and utilizing of IP rights when dissolving the consortium
Project Initiation(establishment of R&D
strategy and IP strategy)
Project Execution(formation of IP-based consolidated groups)
Project Evaluation (business development)
Sample Roles of IP ProducersOutline of IP Producer Dispatch Program
“IP Producers,” experts specialized in IP management, are sent to university-based or R&D consortia, to support building a strategy for potential innovative technologies aimed at acquiring and utilizing IP rights
Support for University-Industry Collaboration: Sending IP Producers
JPO, INPIT
Sending
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Thank you for your kind attention!
JPO Homepagehttp://www.jpo.go.jp/index.htm
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