On June 6, 2014, the Seventh Meeting of the IP5 Heads of Office was held in Busan, Republic of Korea (ROK), organized by the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the State Intellectual Property Office of the People’s Republic of China (SIPO), and the Korean Intellectual Property Office (KIPO). At the meeting, based on requests for patent harmonization from related industries, the IP5 offices deliberated and agreed on the areas to be prioritized in discussions on achieving the harmonization of their patent examination practices.
In addition, the JPO proposed a policy on streamlined common recognitions among the IP5 offices, under which users are able to access the results of examination in a timely manner, and the offices agreed.
The number of patent application filed with the IP5 offices, namely, the JPO, the USPTO, the EPO, the SIPO and the KIPO, now reaches about 1.88 million, accounting for nearly 80% of all the 2.35 million patent applications filed worldwide. In response to this situation, the offices have been holding meetings of the IP5 Heads of Office since 2007, aiming to lead global efforts in the intellectual property field. Under this framework, they have been cooperating in handling various issues, including the offices’ mutual access to examination results, simplifying application procedures, and enhancing examination quality.
This year, the seventh meeting was held in Busan, ROK. Taking advantage of this opportunity, a separate meeting with patent users was held and participants proactively exchanged views regarding harmonization of the patent examination practices.
2. Summary of the 7th meeting
1) Harmonization of the patent examination practices
Based on requests from the industries, the IP5 offices deliberated on the areas to be prioritized in discussions on achieving the harmonization of their patent examination practices. As a result of the deliberation, IP5 agreed that the following three areas should be prioritized in discussions toward such harmonization under the framework of the IP5 offices: written description and sufficiency of disclosure,* citation of prior art, ** and unity of invention.***
This agreement will facilitate the global harmonization of the patent examination practices through comparative studies and sorting out the issues to be discussed by the area of priority. Consequently, it is expected that patent rights granted in Japan will also be smoothly granted in other offices overseas.
*1: The term “written description and sufficiency of disclosure” refers to requirements that applicants should satisfy when they file application documents, including the claims, which describes the scope of patent rights, and the written description, which explains the details of the claimed invention. For example, such requirements include a clear technical description of the scope of the claims, and a statement sufficient to enable a third party to work the invention.
**2: The term “citation of prior art” refers to the system under which a patent office requires an applicant to disclose information on prior art that the applicant has obtained at the time of filing the application, so that the patent office can utilize such prior art information for reference during patent examination. This requirement enables patent examiners to efficiently examine applications, as well as enabling applicants to have stable patent rights.
***3: The term “unity of invention” refers to a system under which two or more inventions are collectively examined once the applicant files as a single application. This system gives applicants benefits in terms of cost and reduction of procedural burden by enabling them to file a single application for several inventions that are closely related from a technical viewpoint, rather than filing such inventions separately.
2) Policy on timely examination
At the 7th meeting, the JPO proposed a policy on streamlined common recognitions among the IP5 offices, under which users are able to access the results of examination in a timely manner, and the IP5 offices agreed. Based on the proposal, the offices confirmed the importance of conducting examinations in a timely manner from the filing of applications to the granting of patent rights. It is expected that the offices will endeavor to establish a new framework contributing to sharing work among the offices, taking account of the policy as a guide.
3) IP5 offices’ mutual access to and provision to the general public of patent examination information
As progress made since the 6th meeting last year, it was reported that [i] the IT system under which examiners in the IP5 offices are able to refer to patent examination information stored in the IP5 offices by one-stop access launched in July 2013, and [ii] the JPO and the World Intellectual Property Organization (WIPO) jointly advanced the effort to expand the IT system to offices in addition to the IP5 Offices, and, in March 2014, succeeded in establishing an IT system with Australia, Canada, the United Kingdom, so as to share patent examination information between Japan and these counterparts, ahead of the rest of the IP5 offices.
At the 7th meeting, participants exchanged views concerning the development of a global IT system under which examiners are able to conveniently refer to such information so as to promote the effort of work-sharing to patent examination among the offices.
The development of such IT system in the future is expected to establish an environment in which applicants are able to swiftly acquire stable patent rights in any country and region worldwide.
3. Future efforts
The JPO will promote the initiatives for expanding patent use, including examiners’ mutual access to patent examination information and providing users with such information, under the framework of the IP5 offices, and will also encourage cooperation that provides users with a more convenient system that they can enjoy when they wish to gain patent rights, including the harmonized operations of patent examination practices. By doing so, the JPO will endeavor to appropriately reflect the needs of users in Japan in IP policies in other offices overseas.
Participants of the meeting
JPO: Mr. Hideo Hato, Commissioner, and other officials;
USPTO: Ms. Michelle K. Lee, Deputy Director, and other officials;
EPO: Mr. Benoît Battistelli, President, and other officials;
SIPO: Mr. Shen Changyu, Commissioner, and other officials;
KIPO: Mr. Kim Young-min, Commissioner, and other officials Observer:
WIPO: Mr. Yoshiyuki Takagi, Assistant Director General, and other officials
June 6, 2014
Division in Charge
International Policy Division, Policy Planning and Coordination Department, JPO