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Results of the Eighth Meeting of the IP5 Heads of Office Held in Suzhou, China

On May 22, 2015, the 8th Meeting of the IP5 Heads of Office was held in Suzhou, China, 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 8th Meeting, in order to achieve the harmonization of the IP5 Offices’ patent examination practices, the operational situation and other details regarding unity of invention, citation of prior art, and written description/sufficiency of disclosure at each Office were reported, and the IP5 Offices will continue to deepen discussions among them. Also, schedules for the commencement of services that collectively provide users with information on patent applications were reported. In addition, the IP5 Offices reached common recognition on plans on collaborative new IT-related collaborative services through the IP5 Offices. Furthermore, documents that summarized the past outcomes obtained through IP5 cooperation as well as the future goals of this cooperation and efforts toward these goals were compiled.

1. Background

The number of patent applications filed with the IP5 offices, the JPO, the USPTO, the EPO, the SIPO, and the KIPO, reached about 2.08 million in 2013, accounting for nearly 80% of all 2.57 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. On May 22, 2015, the eighth meeting was held in Suzhou, China. Taking advantage of this opportunity, a separate meeting with users was held on May 21, 2015, and participants proactively exchanged views regarding harmonization of patent examination practices.

2. Summary of the 8th Meeting

(1) Harmonization of patent examination practices

In order to achieve harmonized operations in patent examination practices, the IP5 Offices have been discussing issues on the unity of invention (*1), citation of prior art (*2), and written description/sufficiency of disclosure (*3). As for the unity of invention and citation of prior art, matters including current law provisions and operations at each Office were reported, and the IP5 Offices confirmed that they would continue to further deepen the discussions. As for written description/sufficiency of disclosure, in response to users’ requests for the IP5 Offices to conduct case-based studies, the JPO suggested that the IP5 Offices aim to start case studies focusing on the issues which users consider particularly important.

In addition, at a separate meeting with patent users, opinions were stated on six key issues, namely the grace period, 18-month publication, treatment of conflicting applications, prior user rights, prior-art, and unity of invention, for which harmonization had been requested by trilateral users.

The global harmonization of patent examination practices through summarizing the main issues and comparative studies to be discussed, will be facilitated in the future. Consequently, it is expected that patent rights granted in Japan will also be smoothly granted in other offices overseas.

*1: The term “unity of invention” refers to a system under which two or more inventions are collectively examined when the applicant files using a single application. This system is beneficial to applicants 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 for such inventions separately.

*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 “written description and sufficiency of disclosure” refers to requirements that applicants should satisfy when they file application documents, including the claims, which describe 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 use the invention.

(2) Patent Prosecution Highway (PPH)

In response to requests from users to expand the Patent Prosecution Highway (PPH) program to more offices and improve the operation of the PPH, related issues based on these requests have been discussed. At the Meeting, they reached common recognition on cooperating on and discussing PPH initiatives by the IP5 with the aim of improving accessibility for users.

(3) Collective provision of information on patent applications and examinations for users and new IT-related collaborative services

Patent users have requested that they be provided with the services for the collective provision of the IP5 Offices’ information on patent applications and examinations that the patent examiners at the IP5 Offices have used. In response to the request, the IP5 Offices have developed systems for such services, and at this meeting, the commencement time for the services provided on each website of the IP5 Offices was reported.
Also, in response to users’ requests to substantialize new IT-related collaborative services through the IP5 Offices, the IP5 Offices reached common recognition on visions regarding the five items for which especially prioritized initiatives were requested (Legal Status (*4), Alerting (*5), XML Based documents (*6), Proof of Concept: Applicant Initiated Inter-Office Document Exchange (*7), and Applicant Name Standardization (*8)).

It is expected that this enhancement of the service environment in the future will produce an environment in which applicants will be able to acquire stable patent rights in an accelerated manner in any country or region worldwide.

*4: The term “Legal Status” refers to the concept to provide information on the current status of a patent application included in a certain patent family in each country, i.e. under examination, granted, dead or alive, expired etc.

*5: The term “Alerting” refers to services to notify their users such as patent examiners, applicants, attorneys, and third parties of status changes in file wrapper information.

*6: The term “XML Based documents” refers to the endeavors of all IP5 Offices to provide file wrapper documents including application documents and the other documents for procedures in an XML format. The file wrapper documents mentioned above include not only those that applicants submit to patent offices but also those that patent offices send to applicants.

*7: The term “Proof of Concept: Applicant Initiated Inter-Office Document Exchange” refers to demonstration tests to investigate legal and technical issues regarding whether or not a certain practical model actually works. The assumed model is that when a user submits a document requesting change of their address in a certain office, the information of the change is shared with other offices through the IT system and the change of its address is automatically deemed to be effective .

*8: The term “Applicant Name Standardization” refers to the effort to identify the single applicant’s name from written variations of the name for the same applicant, which might be achieved by name verification using applicant’s code and attribute information of the applicant such as phone numbers, addresses etc.

(4) Joint statement by the IP5 Offices

A document that summarized 1) the outcomes that had been achieved since the commencement of IP5 cooperation in 2007, 2) the goals that should be achieved under the framework of the IP5 Offices in order to provide better services for users and the public in the future (including promoting the utilization of patent information and improving the accessibility of the intellectual property system), and 3) efforts to be made in order to achieve these goals (including development of infrastructure to strengthen work-sharing, enhancement of cooperation to improve the quality of examinations, and sharing experience among the IP5 Offices) was compiled.

3. Future efforts

The JPO, under the framework of the IP5 Offices, will continue to endeavor to provide more enhanced services for users in Japan through cooperation in various fields such as cooperation on improving accessibility when attempting to acquire patent rights including provision of information on patent examination, efforts toward the introduction of new IT-related services, improvements in PPH operations, and discussions on the harmonization of patent examination practices.

Participants in the meeting

JPO: Yoshitake Kihara, Deputy Commissioner, and other officials
USPTO: Russell Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director, and other officials
EPO: Benoît Battistelli, President, and other officials
SIPO: Changyu Shen, Commissioner, and other officials
KIPO: Donggyou Choi, Commissioner, and other officials
Observer: WIPO: John Sandage, Deputy Director General, Patents and Technology Sector, and other official

From the left, John Sandage, Deputy Director General, Patents and Technology Sector (WIPO), Yoshitake Kihara, Deputy Commissioner (JPO), Benoît Battistelli, President (EPO), Changyu Shen, Commissioner (SIPO), Donggyou Choi, Commissioner (KIPO), Russell Slifer, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director (USPTO)

Yoshitake Kihara, Deputy Commissioner (JPO)

Release date

May 25, 2015

Division in Charge

International Policy Division, Policy Planning and Coordination Department, JPO

Ministry of Economy, Trade and Industry
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