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JPO to Commence the Collaborative Search with the USPTO-Enabling acquisition patent rights at earlier stage and simultaneously in both Japan and the U.S. -

On May 21, 2015, the Japan Patent Office (JPO) and the United States Patent and Trademark Office (USPTO) reached recognitions on matters including the commencement of US-JP Collaborative Search Pilot Program from August 1, 2015.
This enhancement of cooperation in patent examination is expected to increase global trust in the JPO’s examination results as well as enabling applicants including Japanese enterprises to acquire stronger and more stable patent rights at an earlier stage and simultaneously in both Japan and the U.S., which is expected to promote smoother international business development for entities including Japanese enterprises.

1. Background

As Japanese businesses 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 build 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%. The JPO has been providing support for the international business development of Japanese enterprises that expand their business overseas, including commencement of the Patent Prosecution Highway (PPH) program* with the USPTO in 2006.

In light of this situation, in June 2014, the JPO and the USPTO reached basic recognitions on cooperation in patent examination, in Busan, Republic of Korea, to the effect that 1) Both parties would endeavor to enhance the quality of patent examination through cooperative efforts for examination of patent applications between examiners in the JPO and the USPTO and that 2) concerning a portion of the international patent applications received by the USPTO under the Patent Cooperation Treaty (PCT) system**, the JPO would conduct international searches and international preliminary examinations for such applications.

2. Cooperation in patent examination between the JPO and the USPTO

Based on the basic recognitions described above, the JPO and the USPTO confirmed on May 21, 2015 that 1) they would commence US-JP Collaborative Search Pilot Program from August 1, 2015, and that 2) concerning a portion of the international patent applications received by the USPTO under the PCT system, the JPO would conduct international searches and international preliminary examinations for such applications (i.e. the JPO would expand its international search and international preliminary examination services), to serve as a competent International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) for the applications received by the USPTO from July 1, 2015.

1) US-JP Collaborative Search Pilot Program

US-JP Collaborative Search Pilot Program is a process concerning patents applied for in both Japan and the U.S. in which examiners in the JPO and the USPTO conduct their own searches to share search results along with their opinions, and the examiners in each Office independently, but simultaneously announce the initial examination results at an earlier stage.

Filing an application for this US-JP Collaborative Search Pilot Program enables applicants including Japanese enterprises not only to more accurately predict when they can acquire patent rights on their inventions for which they file patent applications in both Japan and the U.S. but also to acquire earlier, simultaneous, stronger and more stable patent rights based on the search results obtained through cooperation between examiners in both the JPO and the USPTO , which is expected to promote smoother international business development for entities including Japanese enterprises.

2) Addition of the U.S. to the countries for which the JPO acts as a competent ISA and IPEA

Currently, the JPO is conducting international searches and international preliminary examinations concerning international patent applications under the PCT, which seven countries including the main countries of ASEAN have accepted, and is acting as a competent ISA and IPEA for a portion of the international applications filed in these countries. At this time, the U.S. will be added to the countries for which the JPO acts as a competent ISA and IPEA, and the JPO will also conduct international searches and international preliminary examinations for a portion of the international patent applications received by the USPTO under the PCT system. This addition of the U.S. is expected not only to improve accessibility for users but also to further increase global trust in the JPO’s examination results.

Notes:
*1: Patent Prosecution Highway (PPH): A scheme whereby patent applicants whose applications have been determined 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 contracting 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 the domestic examination of corresponding applications.

Reference

Release date

May 21, 2015

Division in Charge

  • Administrative Affairs Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure, and Design), JPO
  • Examination Policy Planning Office, Administrative Affairs Division, First Patent Examination Department, JPO
  • International Policy Division, Policy Planning and Coordination Department, JPO

Related Information

Regional Affairs / United States

Ministry of Economy, Trade and Industry
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