Japan Patent Office IP5 Offices Agreed on the IP5 Joint Statement in Tokyo 2016 (Tokyo Statement) Results of the Ninth IP5 Heads Meeting
On June 2, 2016, the world’s five largest intellectual property (IP) offices (IP5 Offices), namely the Japan Patent Office (JPO), the European Patent Office (EPO), the Korean Intellectual Property Office (KIPO), the State Intellectual Property Office of the People's Republic of China (SIPO), and the United States Patent and Trademark Office (USPTO) held the Ninth IP5 Heads Meeting in Tokyo.
At the meeting, the heads of the IP5 Offices agreed on the IP5 Joint Statement in Tokyo 2016, which stipulates the three future directions at which the cooperation among the IP5 Offices should aim: [i] enhancement of relationship with users, [ii] providing high-quality and reliable examination results; and [iii] exploring the IP Offices’ readiness to respond to emerging technologies. In addition, they also reported that the basic functions of the system for providing examination-related information in the IP5 Offices have been completed, and they agreed on the launching of a pilot framework under which the IP5 Offices will collaboratively prepare international search reports involving PCT international applications.
The number of patent applications filed with the IP5 Offices was 2.2 million in 2014, accounting for around 80% of all patent applications of 2.68 million being filed worldwide in the same year.
To address this situation, since the launch in 2007 to take a lead in global-level efforts in the field of IP, the IP5 Offices have been holding the heads meetings on a regular basis to provide broad cooperation in overcoming challenges, including mutual utilization of examination results as well as streamlining procedures therefor and improvement of examination quality. This was the ninth meeting. Furthermore, on June 1, 2016, the day before the IP5 Heads Meeting, the IP5 Offices held an exchange meeting with IP5 users, and participants proactively exchanged views on issues, including harmonization of patent practices.
2. Outline of the results of the Ninth IP5 Heads Meeting
1) Outline of the IP5 Joint Statement in Tokyo 2016
The IP5 Offices agreed on the IP5 Joint Statement in Tokyo 2016 (Tokyo Statement) stipulating the three future efforts as directions at which the cooperation among the IP5 Offices should aim. The outline of the efforts is as follows.
Enhancement of the relationship with users
The IP5 Offices will further expand public relations activities for IP5 initiatives and strive to incorporate the opinions of a broader range of users. Also, the IP5 Offices will enhance user satisfaction by sharing best practices of user services of each Office in order to identify areas of potential improvement.
Providing high-quality and reliable examination results
The IP5 Offices will work to strengthen their cooperation so as to enable their users to obtain high-quality and reliable examination results through deepening of work sharing, quality and patent harmonization initiatives.
Exploring the IP Offices’ readiness to respond to emerging technologies
The IP5 Offices will explore cooperation on office responses to emerging technologies, such as the Internet of Things (IoT) and Artificial Intelligence (AI). This may be accomplished through sharing of information, exchanging of opinions, or studies on the effects of these technologies.
2) Outline of the achievements resulting from the joint projects
Provision of information on patent applications and examinations (Dossier information)
The IP5 Offices confirmed the completion of basic functions in the system for providing Dossier information: (1) providing the information to examiners of the IP5 Offices, (2) providing the information to the public, and (3)linkage with the WIPO CASE system.* They agreed on the operational details of the five issues** that users have requested to be preferentially addressed for further improvement of services.
Pilot program among the IP5 Offices for collaboratively preparing international search reports involving PCT international applications
The IP5 Offices agreed that they will launch a pilot framework under which they will collaboratively prepare international search reports and opinions, aiming to ascertain related user needs and effectiveness. Through this framework, the IP5 Offices expect users to access more globally-reliable international search reports and other related documents.
Patent Prosecution Highway (PPH)
The IP5 Offices agreed on the extension of the IP5 Patent Prosecution Highway (IP5 PPH) pilot program. Aiming to make the IP5 PPH more user friendly, they also agreed to prepare common instructions on the PPH request forms and to streamline the operational guides in each office and publicize the results on their websites or PPH website.
Harmonization of patent practices
Concerning the description requirements, the IP5 Offices reported the progress in the hypothetical case studies in which the IP5 Offices are currently engaging, and they agreed to continue adding new case examples on this issue and to discuss future directions toward which the description requirements are harmonized, based on the results of the case studies. In addition, concerning the unity of invention, they reached the consensus that they will firstly harmonize operational procedures in the international phase of the PCT international applications. Furthermore, concerning the requirement for disclosure of information on prior art documents, *** the IP5 Offices agreed to move toward reducing the users’ burden through the maximum utilization of the existing IT systems.
*1: WIPO CASE system: A network provided by the World Intellectual Property Organization (WIPO) for sharing Dossier information
**2: Five issues: introducing application documents, procedure documents and other related documents in the XML format; demonstration tests concerning document exchange among IP offices; alert functions; introducing consistent names of applicants; and legal status
***3: Under the system of the requirement for disclosure of information on prior art documents, applicants are required to disclose their own information on prior art documents. This enables examiners to utilize the information for examination and contributes to swift completion of examination and ensuring of stable patent rights.
3. Future actions
Along the lines of the directions agreed in the IP5 Joint Statement in Tokyo 2016, the JPO will endeavor to make progress in the development of global patent system by which users of such patent practices in Japan and overseas countries will be able to acquire patent rights with high quality and high predictability throughout the world.
Participants of the meeting:
JPO: Mr. Hitoshi Ito, Commissioner, and other officials:
USPTO: Ms. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, and other officials:
EPO: Mr. Benoît Battislelli, President, and other officials:
SIPO: Dr. He Zhimin, Deputy Commissioner, and other officials:
KIPO: Mr. Choi Donggyou, Commissioner, and other officials:
WIPO (observer): Dr. Francis Gurry, Director General, and other officials
From the left
Dr. Francis Gurry, Director General, WIPO; Mr. Benoît Battislelli, President, EPO; Mr. Choi Donggyou, Commissioner, KIPO; Mr. Hitoshi Ito, Commissioner, JPO; Ms. Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, USPTO; and Dr. He Zhimin, Deputy Commissioner, SIPO
Mr. Hitoshi Ito, Commissioner, JPO
June 3, 2016
Division in Charge
International Policy Division, Policy Planning and Coordination Department, Japan Patent Office