JPO’s Efforts in Patent Harmonization

Yuichiro NAKAYA

Deputy Director

International Affaires Division

Japan Patent Office

21th Annual Intellectual Property Law & Policy Conference

Fordham University School of Law April 4-5, 2012

Table of Contents

1.Over View of Patent Harmonization Talks

1) Revitalizing patent harmonization talks

2) Progress made by Tegernsee Group

2. Revision of GP in Japan

1) Issues before revision

2) Revision

3) Analysis on Implementing New GP system

- Statistical survey

- Questionnaire survey

3. Results of User Surveys in Japan on Tegnernsee Initiatives

2011 2012 2013

Revitalizing Patent Harmonization Talks

May 2011

Revision of Japan Patent Act

Sep 2011

Enactment of AIA

Jun 2011

IP5 Heads

Meeting in

Tokyo

Jul 2011

1st Tegernsee

Heads Meeting

Jun 2012

IP5 Heads

Meeting in

France

Dec 2012

IP5 Patent

Harmonization

Expert Panel

Meeting

Apr 2012

2nd Tegernsee

Heads Meeting

Sep 2012

3nd Tegernsee

Heads Meeting

Jan 2013

Start of User

Consultations

Tegernsee Group

(Since 2011)

Patent offices of

JP, US, UK,DE,FR, DK

and EPO

IP5 (since 2007)

EPO, JPO, KIPO, SIPO, USPTO

Progress made by Tegernsee Group

Jul. 2011, 1st Tegernsee Heads meeting Starting Fact-Finding Study on Key issues

Apr. 2012, 2nd Tegernsee Heads meeting Identifying 4 issues and Starting In-depth Studies

Sep. 2012, 3rd Tegernsee Heads meeting Adopting Report on the Study of 4 Issues

Agreeing to consult users (Questionnaire surveys/round-table discussions

Jan.-Mar. 2013 Consulting with Users on 4 issues in each country/region

Tegernsee Group’s Key Issues “ ” : Tegernsee 4 issues

“ ” : Progress made by AIA

★

First to File vs. First to Invent

Grace Period★

Definition of Prior Art

Conflicting Application★

Novelty & Inventive Step

Best Mode

18 month Publication★

Prior User Right★

Problems concerning GP before revision

- Does not cover all users’ needs.

- Creates imbalances depending on mode of disclosure.

<Examples>

Internet : covered TV : not covered

Designated academic societies: covered

Non-designated academic societies: not covered

Product brochures: covered

Presenting product for marketing research: not covered

Scope based on preset list of items

Testing in public,

Presenting in printed publications

Presenting through Internet

Presenting at Designated

academic conferences

Displaying at Designated or

Government-hosted Exhibitions

Problems concerning GP based on “preset list of items”

Complicated and not user friendly !!

Revision of Japanese Patent Act in 2011

Revision came into effect on April 1st, 2012.

＜Scope of GP Expanded＞

Disclosure as a result of an act conducted by

a person having the right to obtain a patent

“Preset list” scope

“Comprehensive”

scope

After Revision

Before Revision

Enhancing user-friendliness

Facilitating industry-academia

collaboration

0

500

1000

1500

2000

2500

3000

FY2009 FY2010 FY2011 FY2012

Statistical Survey - 1

No. of Applications invoking GP

between FY2009 and FY 2012

Number of Applications invoking GP increased by about

70% after patent law was revised.

*1 No. of applications for full-year FY2012 is estimated based on no. of applications filed

between Apr - Sep of 2012

（*１）

University/Public Research Institute 236(88)

31.0%(25.2%)

268(106)

20.6%(18.0%)

Joint Applicaint (including

University/Public Research Institute)197(89)

25.9%(25.5%)

235(100)

18.1%(17.0%)

SME 70(34)

9.2%(9.7%)

265(130)

20.4%(22.1%)

Large Company 170(90)

22.3%(25.8%)

352(169)

27.1%(28.7%)

Joint Applicaint (excluding

University/Public Research Institute)47(24)

6.2%(6.9%)

120(54)

9.2%(9.2%)

Other 42(24)

5.5%(6.9%)

58(29)

4.5%(4.9%)

Total 762(349)

- 1298(588)

-

Apr - Sep of 2011 Apr - Sep of 2012

Statistical Survey - 2

Number of Applications by SMEs invoking GP increased

times; by large companies, 2 times

Breakdown in Number of Applications Requesting GP

between Apr – Sep of 2011 and 2012 [Type of Applicant]

3.8 times

2 times

Numbers in parentheses indicate the numbers of applications for which GP

was requested between Apr – Jun of 2011 and 2012

Statistical Survey - 3

Breakdown in No. of Applications Invoking GP, Apr – Sep of 2011 and 2012

[Type of Disclosure & Type of Applicant]

・・・ Newly Added ・・・ Expanded （Abolition of Designation ）

Numbers in parentheses indicate the numbers of applications for which GP was requested between Apr

– Jun of 2011 and 2012

2011 2012 2011 2012 2011 2012 2011 2012 2011 2012 2011 2012 2011 2012

Printed Publication 23(10)

29(14)

11(7)

24(11)

16(8)

43(19)

39(30)

57(29)

7 23 6 6 102 182

Internet 21(6)

40(14)

13(5)

28(14)

7(1)

46(18)

15(14)

90(48)

2 14 8 6 66 224

TV/Radio ―(―)

2(2)

―(―)

1(0)

―(―)

4(1)

―(―)

0(0)

- 0 - 1 0 8

Academic Meeting(including disclosure though

collection of papers for such

meeting)

181(69)

180(67)

166(73)

160(69)

29(15)

29(15)

105(41)

100(51)

28 28 20 18 529 515

Other Meeting ―(―)

1(0)

―(―)

3(0)

―(―)

9(5)

―(―)

11(7)

- 2 - 2 0 28

Exhibition/Fair 8(2)

14(7)

4(2)

16(5)

15(6)

61(34)

10(2)

53(22)

8 25 5 18 50 187

Test 0(0)

0(0)

0(1)

0(0)

2(2)

8(3)

1(1)

0(0)

1 7 0 0 4 15

Sale ―(―)

0(0)

―(―)

0(0)

―(―)

45(21)

―(―)

27(8)

- 15 - 4 0 91

Other Working of

Invention―(―)

0(0)

―(―)

3(1)

―(―)

12(8)

―(―)

11(2)

- 5 - 2 0 33

No Data Entry 3(1)

2(2)

3(1)

0(0)

1(2)

8(6)

0(2)

3(2)

1 1 3 1 11 15

Total 236(88)

268(106)

197(89)

235(100)

70(34)

265(130)

170(90)

352(169)

47 120 42 58 762 1298

Joint Applicaints( excluding

University / Public

Research Institute)

Other Total

University /

Public Research

Institute

Joint Applicaints(including University /

Public Research Institute)

SME Large Company

Statistical Survey - 4

・Granted: 32 applications

The reason of refusal has no relation to the request for GP.

Final Examination Results of Patent Applications invoking GP

[applications filed between Apr – Sep 2012]

・Refused : 1 application

All 32 applications were granted based on evoking GP.

7 applications out of 32 applications were the result of expanding the scope of

GP, which were based on the revision to the Paten Law.

The ratio of applications requesting accelerated examination

among applications invoking GP is 3.6 times as many as that

for all applications.

[applications filed between Apr – Sep of 2012]

Questionnaire Survey - 1

18

81

24

29

5

4

4

4

1

4

2

14

33

14

134

0% 10% 20% 30% 40% 50% 60% 70% 80% 90% 100%

Good Good, but not enogh Bad Premature to evaluate

Most respondents gave a favorable evaluation of the

expanded scope of GP.

Evaluation of the 2011 revision made to the Patent Law Headquarters of

industry-academia

collaboration and IP in

universities

University Teachers

and Researchers

SME supporters

Large Companies

※ Extracted from Tegernsee Report on GP

Questionnaire Survey - 2

Typical tendency in invoking GP

・Universities tend to make presentations before filing patent applications

even though working hard to file patent applications before making

presentations at academic conferences as far as possible

・Enterprises without sufficient fund and high awareness on the importance of

patent rights cannot obtain patents rights before selling their inventions.

・Quite a lot of SMEs come to seek patents only after sales of their invented

products have increased.

・Large companies could not help but use GP as a relief measure when

inventions were disclosed before filing due to miscommunications with patent

firms and errors of deadline management .

Universities : Frequently use

SMEs

Large companies : Seldom use

Questionnaire Survey - 3

Grace Period system saved different types of applicants.

・“As to an invention related to method of dyeing at normal temperature for

timbers, a notification for that has been made before the disclosure, but filing a

patent application for that was not in time. Accordingly, we used the grace

period system and obtained patent rights for that. Thanks to this patent, we

successfully made a license agreement with business enterprises and gained

the license income. ”

Universities :

・“We received a report from an inventor after a presentation of the invention

had been made at academic conferences, and filed a patent application for

that in Japan requesting the application of GP. Some enterprises showed

interest in the presentation material and offered a request for a license

agreement in Japan. We hastily made preparations to file patent applications

abroad, but gave up the patent applications to some countries due to lack of

GP.”

※ Extracted from Tegernsee Report on GP

Questionnaire Survey - 3

SMEs

・“One small company had sold its product without an intention of filing

patent applications, but received high reputation for the product, and then,

it reconsidered patent applications for it by using GP.”

・“One small company has conducted a joint-research with a public research

and development institute, but the institute made presentations for the joint-

research. Therefore, the company obtained patent rights for that by using GP.

Currently, although it’s a very small scale, the company is manufacturing the

products and selling them to trading companies.”

Large companies

・“After submitting an article on an invention on a catalyst for a fuel cell in an

academic magazine, we found that patent application for the invention was

not filed. We filed a patent application in a hurry and acquired a patent by

using GP.”

・“Although we considered that there is no need to file an application at first,

we filed the application in a hurry by using GP because there was a huge

public reaction when presentation was made at an academic conference.”

Grace Period system saved different types of applicants. ※ Extracted from Tegernsee Report on GP

Questionnaire Survey - 3

SMEs

・“One small company had sold its product without an intention of filing

patent applications, but received high reputation for the product, and then,

it reconsidered patent applications for it by using GP.”

・“One small company has conducted a joint-research with a public research

and development institute, but the institute made presentations for the joint-

research. Therefore, the company obtained patent rights for that by using GP.

Currently, although it’s a very small scale, the company is manufacturing the

products and selling them to trading companies.”

Large companies

・“After submitting an article on an invention on a catalyst for a fuel cell in an

academic magazine, we found that patent application for the invention was

not filed. We filed a patent application in a hurry and acquired a patent by

using GP.”

・“Although we considered that there is no need to file an application at first,

we filed the application in a hurry by using GP because there was a huge

public reaction when presentation was made at an academic conference.”

Grace Period system saved different types of applicants. ※ Extracted from Tegernsee Report on GP

Questionnaire Survey - 3

SMEs

・“One small company had sold its product without an intention of filing

patent applications, but received high reputation for the product, and then,

it reconsidered patent applications for it by using GP.”

・“One small company has conducted a joint-research with a public research

and development institute, but the institute made presentations for the joint-

research. Therefore, the company obtained patent rights for that by using GP.

Currently, although it’s a very small scale, the company is manufacturing the

products and selling them to trading companies.”

Large companies

・“After submitting an article on an invention on a catalyst for a fuel cell in an

academic magazine, we found that patent application for the invention was

not filed. We filed a patent application in a hurry and acquired a patent by

using GP.”

・“Although we considered that there is no need to file an application at first,

we filed the application in a hurry by using GP because there was a huge

public reaction when presentation was made at an academic conference.”

Grace Period system saved different types of applicants. ※ Extracted from Tegernsee Report on GP

Tegernsee User Consultations in Japan

1) Tegernsee Questionnaire Survey Number of responses: 412 Large Corporation :147

SME :120

Corporation (size:unknown): 6

Univ/Research Institute :71

Patent Attorney :64

Unkown : 4

2) Roundtable Discussions

Osaka: 70 participants / Feb.28, 2013

Tokyo: 140 participants / Mar.12, 2013

Both roundtable discussions were about 4 Tegernsee issues.

Panelists:

2 from Large Corporation,

1 from SME, 1 from University,

1 from Patent Attorney

ありがとうございました。

Ari-Gatou-Gozaima-Shita

Thank you!