Japan Patent OfficeJPO and ISO Agreed to Cooperate in the Fields of Patents and Standardization
The Japan Patent Office (JPO) and the International Organization for Standardization (ISO) agreed to cooperate on an initiative whereby the ISO comprehensively offers its standards documents to the JPO and the JPO uses the documents for patent examinations. On May 12, 2014, Mr. Rob Steele, ISO Secretary-General, and Mr. Hideo Hato, Commissioner of the JPO, signed a consensus document, as the first such attempt in the world with a patent office.
Japanese enterprises usually submit their technical documents to standard-setting organizations, e.g., ISO, in order to strategically make their important technologies global standards. The newly-agreed initiative will enable patent examiners to broadly make use of documents that are submitted by Japanese private enterprises and entities to the ISO, including a process for formulating new standards. Furthermore, the initiative will help JPO examiners determine true inventors deserving of patent rights and prevent the examiners from granting patent rights to people other than true inventors. The JPO expect that this effort will contribute to appropriate granting of patent rights as well as to the realization of the world’s fastest and highest quality IP system, an important aim for Japan.
The ISO establishes technical standards as regulations to secure product safety, quality, and compatibility. In the process of formulating a standard, many technical documents are created, namely, documents that enterprises and entities submit to the organization to explain the performance of technology or drafts for adopting a proposed standard, some of which require payment or are provided only to restricted number of parties or for limited periods, when such enterprises apply to have their technology globally standardized. In 2012, for example, about 1,500 standardization projects were newly established in the ISO, and about 19,000 standards have been issued by the organization to date.*
In recent years, Japanese enterprises have been pursuing global standardization of their technology. For this purpose, many technical documents related to the examination of their technology have been submitted to the ISO. Considering this fact, the newly-agreed initiative will enable patent examiners to broadly make use of documents that are submitted by Japanese private enterprises and entities to the ISO, including a process for formulating new standards. Furthermore, the initiative will help JPO examiners determine true inventors deserving of patent rights and prevent the examiners from granting patent rights to people other than true inventors. The JPO expect that this effort will contribute to appropriate granting of patent rights as well as to the realization of the world’s fastest and highest quality IP system, an important aim for Japan.**
*1: ISO Annual Report 2012
**2: Related report created by the Japanese Industrial Standards Committee (JISC) in March 2012
http://www.jisc.go.jp/policy/kenkyuukai/chizaiwg/swg2houkokusyo.pdf (in Japanese)
2. Cooperation between the JPO and the ISO
Under the cooperation between the JPO and the ISO, both sides will test an initiative whereby the ISO will provide its technical documents to the JPO and the JPO will store the documents in a database exclusively for patent examiners to enable the examiners to use such documents for patent examination. This process will be tested in five technical fields, including video compression and HTML-related technologies.
This initiative will enable the JPO to access the technical documents that the ISO issues before any other country, and will enable patent examiners to make use of such documents as prior art documents during patent examination. In addition to standards documents, it will also allow patent examiners to conduct examinations by using technical documents submitted by enterprises to the ISO for formulating new standards, which have hardly been available.
Furthermore, through this cooperation, when applicants receive notification of refusal on the basis of an ISO document, they will have access to a copy of the document. Such ISO documents are also expected to be utilized for examining patent applications overseas through the Patent Prosecution Highway (PPH)*** and the Advanced Industrial Property Network (AIPN).****
The JPO will further enhance cooperation with the ISO and also endeavor to study the potential of cooperation with other standards-setting organizations, similar to this effort, so as to improve the quality of patent examinations in fields related to standardization of technology.
***3: Patent Prosecution Highway (PPH) is an agreed upon framework among patent offices, under which, when an application for a patent is determined to be patentable in the office of earlier examination (OEE), it is able to receive an accelerated examination in the office of later examination (OLE) through a simple procedure, based on the request of the applicant. The JPO has concluded an agreement for this system with 28 countries, and about 21,000 applications have already been filed for examination under this system.
****4: Advanced Industrial Property Network (AIPN) is a system under which overseas patent offices are able to use information on the search results for an examination of patent documents filed with the JPO. Currently, patent offices in 64 countries are able to access the system.
May 12, 2014
Division in Charge
Administrative Affairs Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure, and Design), JPO