Introduction of JPO and its Function as a Receiving Office ...

Introduction of JPO and its Function as a Receiving Office Under the PCT

September 2019Japan Patent Office

1. Introduction(1) Introduction of the Japan Patent Office (JPO)(2) PCT Statistics

2. JPO’s Function as a Receiving Office (RO) under the PCT(1) Office for International Applications under the PCT(2) Processing International Applications in RO/JP(3) JPO’s Customer Service

3. Time limit management as an ISA

Table of Contents

1

– Patent Law (Invention)– Utility Model Law (Device)– Design Law (Industrial Design)– Trademark Law (Trademark, Service mark)– Copyright Law (Copyright)– Unfair Competition Prevention Law– Law concerning the Circuit Layout of Semiconductor

Integrated Circuits– Seed and Seedlings Law– Geographical Indications

2

Intellectual Property related laws in Japan

Agency of NaturalResources and Energy

Japan Patent Office

Ministry ofEconomy,

Trade and Industry

Small and MediumEnterprise Agency

Organization structure of the METI

3

National Center for Industrial Property

Information and Training（INPIT）

Policy Planning and Coordination Dept.

Patent and Design Examination Dept.(Physics, Optics, Social Infrastructure and Design)

Patent Examination Dept.(Mechanical Technology)

Patent Examination Dept.(Chemistry, Life Science and Material Science)

Patent Examination Dept.(Electronic Technology)

Japan Patent Office

Trial and Appeal Dept.

Trademark and Customer Relations Dept.

Organization structure of the JPO

4

Total: 2,792 (2019FY)

Clerical Officials

539Administrative

Judges

383

Examiners

1,870

Patents/Utility model

1,682

Designs

48

Trademarks

140

Personnel organization of the JPO

5




Table of Contents

6

PCT

appl

icat

ions

and

ISRs

41,292 43,097 44,49547,425 48,630

40,076

43,569 44,31845,948

47,934

2014 2015 2016 2017 2018

Source: WIPO IP Statistics Data Center

Applications filed with the JPO/RO

ISR established by the JPO/ISA

Number of PCT Applications Filed with JPO

7

Data for 2018Source: WIPO PCT Yearly Review 2019

80,780

52,038 47,934

24,138 21,109

3,912 2,395 2,149 1,588 1,319

EPO China Japan Republic ofKorea

U.S. RussianFederation

Australia Canada India Israel

ISRs

Searching Authorities for ISRs

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Table of Contents

9

Director

Administrative Affairs Section

Specialists for Formality Examination

Specialist for Electronic Data Management

Senior Analyst for Intellectual Property Information

Policy Planning and Research Affairs Section

Office for International Applications under the PCT

(…)

(…)

Organigram

10

l In the capacity of RO/JPü receives international applications, other subsequent documents,

and fees from applicants and the IB;

ü checks formal requirements under the PCT. When necessary, invites applicants to correct defects and sends notifications to applicants, the IB, and other Offices (ISAs);

ü sends documents and fees to the IB and other Offices (ISAs) before the due date.

l In the capacity of ISA/JP and IPEA/JPü receives search copies of IAs, demand forms, other documents and

feesü sends reports, notifications, invitations and fees to applicants and

the IB.

Functions

11

RO/JP WIPOInternational Bureau (IB）

InternationalApplication

Formal Check

International Search ReportInternational Search O

pinion

PCT Application

12 16 18 22 30

Priority Date

InternationalPublication

International Prelim

inary Examination

National Document

(months)

48,630 ApplicationsReceived in 2018

National Phase

Translation ofInternationalApplication

ISR/JP IPER/JP47,934 Reports

in 20182,131 Reports

in 2018

Timeline of PCT international applications

Source: JPO12

p Patent Cooperation Treaty (PCT)p Regulations under the PCTp Administrative Instructions under the PCT, including Annexesp RO Guidelines p PCT Applicant’s Guidep PCT Newsletterp Other Resources on the WIPO PCT Website.

＊＊＊p National Laws and RegulationsØ provide for procedures between the JPO and applicants

p Internal Operations Manuals

n Complying with Requirements

n Uniform Processing of All International Applications

To Perform Proper Functions as RO

13

p Intensive Internal Training Course Specialized for Specialists for Formality Examinationü Laws; Regulations; Exercises

p On-the-Job Trainingü Small Teams Consisting of Seniors/Veterans and New Comers

To Perform Proper Functions as RO (Cont’d)

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Table of Contents

15

1. Receiving

（2）前方式

（３）DE

3. Digitizing

2. Pre Formal Check

4. Full Formal Check

（３）DE

6. Transmittal

5. TimeManagement

Processing International Applications in RO/JP

16

RO/JPreceives international applications and other accompanying documents/items

1. Receiving

2. Pre Formal Check

3. digitizing

(1) through e-filing system

(2)(a) by mail

(2)(b) at the JPO reception desk

Processing International Applications in RO/JP (Cont’d)

17

e-filing （JPO-PAS） paper formLanguage JP, EN JP, EN

Filing Methods Character coded formatover Internet

Mailing Service and Reception Desk

Operating / Opening Time 24/7 09.00 to 17.00

Only on WeekdaysFee Reduction 300 CHF -

99%

1% e-filing

paper


18

RO/JP

n checks international applications on paper only, before the next step of digitizing; and

n If necessary, corrects defects ex officio or invites the applicant to replace sheets containing the defects

1. Receiving

2. Pre Formal Check

3. Digitizing


19

RO/JP

n Converts paper documents to text data and image files;

n Stores the data and image files in the JPO’s internal system; and

n Assigns the international application number

1. Receiving

（３）DE

2. Pre Formal Check

3. Digitizing


20

RO/JP

n Checks whether formal requirements under the PCT are complied with and whether the required fees have been fully paid;

n if necessary, invites the applicant to correct defects.

n (when the applicant responds to the invitation,) checks whether the response satisfies the requirements and was timely filed.


6. Transmittal

5. Time Management


21

RO/JP

n has only a couple of weeks to complete all the steps 1 to 6

• the RO shall transmit the record copies of international applications in time for them to reach the IB by the expiration of the 13th month from the priority date, but

• most of the applications are filed at the last minute during 12 months after the priority date

n needs to check due dates for applicants to reply to invitations to correct international applications.


6. Transmittal

5. Time Management


22

RO/JP, once every week,

n transmits record copies, search copies, invitations and other documents to the IB, an ISA and applicants/representatives.


6. Transmittal

5. Time Management

ü for applications on electronic form, transferring data by electronic means; or

ü for applications on paper by mail.


23




Table of Contents

24

(i) the applicant residing in Japan;(ii) the applicant who is a national of Japan; and(iii) two or more applicants at least one of which resides in Japan or is a national of Japan.

n RO/JP is competent to receive international applications filed by

n Natural person or legal entity

natural person,

531

legal entity, 48,099

No. of IAs in 2018

natural person legal entity0% 50% 100%

legal entity

natural person

with agent without agent

n For many applications, agents are appointed In 2018

Who are RO/JP’s Customers?

Source: JPO

JPO’s Customer Service

25

- Receives documents and does a quick check on formal requirements

- Advises how to fill in forms and how to properly write letters to the IB

- Provides guidance on the PCT System

Face-to-face Consultation at the JPO Reception Desk

9:00a.m – 5:00p.m

Consultation by telephone, E-mail and FAX9:00a.m – 6:15p.m

JPO’s Customer Service (Cont’d)

26

Visitor Reception System

Touch

Touch

Touch

Touch

Touch

Touch

Touch

Touch


27

Seminars for Practitioners

n For practitioners

n In 3 major cities in Japan (Tokyo, Osaka and Aichi) every year

n Presentation concerning PCT international applications and other related documents, includingØhow to fill in the request form and other documents;Øpractical advice and things to pay attention to


28

Materials for Users in Japaneseü Material for practitionersü Leaflet for beginnersü Information on the JPO website


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Table of Contents

30

Examiner Z

Managers

Examiner A

Examiner B

Management Support Section

Within 1 weekWithin 2 weeksWithin 3+ weeks

PCT

PCTPCT

PCT

PCT

PCT

Examination Division

Receiving Office (JPO)

PCT

PCTPCT

once a week

Ensuring that rapidly increasing PCT applications are appropriately processed in a timely manner.

PCT applications are distributed by Managers to Examiners with Schedule management sheets.Managers receive a consolidated schedule management sheet once a week.Top Management also receive it at the same time.

Top Management

31

Alert warning on the drafting system

Drafting System (Sample)

32

Overview of time limit management as ISA

n Examiner LevelØ Self-management using a schedule management sheetØ The drafting system generates an alert warning when the time limit for

establishing ISR for an application is approaching.

n Examination Division LevelØ Schedule management by managers

n JPO LevelØ A consolidated schedule management sheet is sent to and shared within the

JPO including the Top Management once a week.

Management of timeliness as ISA is executed at several levels in the JPO.

As a result, the JPO has achieved timeliness in compliance with the Regulations under the PCT.

33

Application Number

ＰＣＴ／ＪＰ２０１４／９９９９９９

０１．０６．２０１４

　　（２Ｋ）Optical Device Division

０１．０６．２０１３

　　　（△△△△）□□　□□ 　　　（△△△△）□□　□□

１３．０６．２０１４

International Filing Date

Examination Division Schedule Manager

Priority Date Received Date of the Search Copy

Examiner

Schedule Management SheetDate　： 13.06.2014

Process

ISR and Written Opinion of the ISA

Start Invitation Decision on Protest ISR

Written Opinion of the ISA

13.06.2014 27.06.2014 22.08.2014 29.08.2014 29.08.2014 13.09.2014

Schedule

ISR Completion

Deadline

Schedule management sheet

Schedule managementü Schedule management sheetü Consolidated schedule management sheetShort-term fluctuation in demand and backlogü Assigning multiple numbers of examiners to be in charge of the same

classification.Medium-to long-term fluctuation in demand and backlogü Changes in examiner’s technical fields or transfer.

-NOTE-The ISA must establish the ISR within 3 months of receiving a copy of the application (the “search copy”), or 9 months from the priority date (or, if no priority is claimed, from the international filing date), whichever expires later. 34

Thank You!

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