On June 6, 2014, the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) reached a basic agreement that they will launch pilot programs for the JPO-USPTO cooperation in patent examination as early as April 1, 2015, including JPO’s efforts to expand its international search and international preliminary examination services as a Competent International Searching Authority or International Preliminary Examining Authority for international applications received by the USPTO under the Patent Cooperation Treaty (PCT) system.
This agreement is expected to promote harmonization of JPO’s examination procedures with those of the USPTO and improve the quality of domestic examination, as well as further increasing global trust in JPO’s examination results.
As Japanese and other countries’ businesses are accelerating the expansion of their activities in other countries, a growing number of enterprises are facing the need to acquire patent rights in the countries in which they deploy their manufacturing bases or sell their products. In the last decade, the number of patent applications filed by Japanese enterprises with overseas patent offices increased from about 120,000 to about 200,000, up by 66%.
In light of this situation, the JPO, one of the global leaders among IP offices, has been conducting a variety of efforts to enhance Japan-U.S. cooperation in patent examination, aiming to support the smooth acquisition of patent rights by Japanese enterprises that develop their business overseas, including commencement of the Patent Prosecution Highway (PPH)* with the USPTO in 2006, the first of such efforts in the world for facilitating patent examination procedures.
Meanwhile, the JPO should endeavor to further raise the quality of its patent examination and realize “the world’s fastest and highest quality” IP system. Through these efforts, the JPO aims to create an IP system under which applicants are able to succeed in acquisition of patent rights overseas once their patent rights are granted in Japan.
2. JPO-USPTO pilot programs
On June 6, 2014, the JPO and the USPTO reached a basic agreement, in Busan, Republic of Korea, that they will launch pilot programs as early as April 1, 2015, concerning the following initiatives for cooperation in patent examination:
- Concerning international patent applications received by the USPTO under the PCT system,** the JPO will conduct an international search and an international preliminary examination of such applications, namely, it will expand its international search and international preliminary examination services as a Competent International Searching Authority or International Preliminary Examining Authority for the applications received by the USPTO, focusing on:
- The priority area under the pilot program: Green technology; and
- The target number of the applications under the program: about 5,000 over three years.
- The JPO will endeavor to enhance the quality of patent examination through cooperative efforts for examination of patent applications among examiners in the JPO and the USPTO, focusing on:
- Examination of a batch of collective applications which share related technology and for which the applicant wishes to acquire patent rights in Japan and the U.S. at the same time; and
- Having the applicant provide the technical background of his/her batch of applications if necessary.
Achieving the pilot programs is expected to advance discussions for harmonizing systems or operations concerning patent examination procedures between Japan and the U.S. In addition, advancing such harmonized systems and operations through the cooperation is expected to enable applicants in Japan and the U.S to more accurately predict if they can acquire patent rights in both Japan and the U.S.
Concerning JPO’s efforts, the Japan Intellectual Property Association, one of the users of Japan’s IP system, says that it welcomes such cooperation between the JPO and the USPTO and also that cooperative efforts among examiners in both sides will enable applicants to timely acquire stable patent rights not only in Japan but also in the U.S., which raises an expectation that such cooperation will support business activities.
*1: Patent Prosecution Highway (PPH): A scheme whereby patent applicants whose applications have been assumed as patentable by a patent office are entitled to request, through a simple procedure, an accelerated examination of the corresponding applications in another patent office.
**2: PCT application: PCT applications are international patent applications filed under the Patent Cooperation Treaty (PCT). By filing a single PCT application, an applicant can achieve the effect of simultaneously filing it in multiple PCT member states that he/she designates. Since these applications are subjected to international search or international preliminary examination by the International Searching Authority or the International Preliminary Examining Authority appointed by the PCT, with the results published, patent offices can refer to official opinions presented therein during their domestic examination of corresponding applications.
June 6, 2014
Division in Charge
Administrative Affairs Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure, and Design), JPO