June 17, 2019
On June 13, 2019, the 12th IP5 Heads Meeting was held in Incheon, Republic of Korea, bringing together the heads of the five intellectual property (IP) offices of Japan, Europe, Republic of Korea, China, and the U.S.
The major outcome of the meeting follows
- The Heads of the IP5 Offices agreed to launch a New Emerging Technologies and Artificial Intelligence (NET/AI) taskforce for discussion on the impact of NET/AI and preparations for it, including examination guidelines for AI-related inventions.
- They endorsed the final outcomes of patent harmonization projects for these five years, and agreed to start work on new topics.
- They reached an agreement on the definition of metrics for evaluating the benefit of the PPH scheme.
- They appreciated the JPO’s initiative to conduct a pilot program for improving users’ access to examination-related information.
The number of patent applications filed with the IP5 Offices was 2.68 million in 2017, accounting for around 85% of all 3.17 million patent applications filed worldwide in the same year.
In light of this situation, since the launch of the IP5 Heads Meeting in 2007, the IP5 Offices have held meetings regularly to address issues including mutual utilization of examination results, simplification of prosecution procedures and improvement of examination quality in several working groups and the experts panel (WG1: Classification, WG2: Information Technology, and WG3: Examination, PHEP: patent harmonization experts panel, etc.).
On the sideline of the IP5 Heads Meeting, the Heads of Office meet with representatives of industry groups from the five regions to exchange views on specific issues. This allows for focus on users’ needs in building their global patent portfolio in a better, faster and cheaper manner.
2. Summary of the results of the 12th IP5 Heads Meeting
(1) Founding of a NET/AI taskforce for discussion on the impact of NET/AI and preparations for it, including examination guidelines for AI-related inventions.
As NET/AI has been developing quickly and the volume of patent applications on it has grown, the IP5 has discussed getting ready for NET/AI. At this meeting, the Heads reached an agreement to launch a NET/AI taskforce for discussion about the IP system related to NET/AI including examination guidelines for AI-related inventions. From now on, the IP5 will continue to debate NET/AI-related challenges on IP systems beyond each working group.
(2) The final outcomes of patent harmonization projects for these five years, and efforts for selecting new topics.In order to reduce the burden of users due to discrepancies of each office’s patent system, the IP5 has worked on three patent harmonization projects (*1) for five years. At this meeting, the Heads appreciated the final results of those projects and endorsed their completion. They also agreed that the IP5 will select new topics for patent harmonization projects by this autumn.
Notes *1: current patent harmonization projects and their outcomes
- Unity of invention: Reaching a common way of raising non-unity minimum objections in the PCT international phase
- Citation of Prior Art: The start of a scheme to reduce the applicants’ burden of submitting prior art cited in prosecution processes at the first office to the second office, through the second office’s retrieving citation data via OPD
- Written description/sufficiency of disclosure: Publishing the case studies on clarity and support requirement, using hypothetical cases and being analyzed from five offices’ and user’s viewpoints
All outcomes are to be published on IP5 website soon.
(3) Definition of metrics for assessing the benefit of the PPH (*2) scheme
With the goal of making the PPH program among the IP5 more helpful to users, the IP5 have discussed the criteria to evaluate the PPH’s results. At this meeting, the Heads reached an agreement on the definition of metrics to assess the PPH’s benefit, such as on time savings and the grant rate. From now on, according to this definition, the IP5 will exchange each office’s statistics related to PPH applications, evaluate the PPH’s merit, and identify points to be improved.
Notes *2: The Patent Prosecution Highway, or PPH, is a scheme to enable an application whose claims have been determined to be patentable in the first office to undergo an accelerated examination in the second office with a simple procedure upon request from an applicant
(4) JPO’s action to improve users’ access to examination-related information
With the goal of encouraging users to utilize the examination-related information, the IP5 has been working for the improvement of services on OPD (*3). At this meeting, the Heads appreciated the JPO’s initiative to conduct a pilot program for opening the API to users. API allows users to access the examination-related information more freely, and manage and analyze the patent information more easily. Furthermore, this project is expected to contribute to creating new business utilizing examination-related information.
Notes *3: “One Portal Dossier”, or OPD, enables the one-stop display of dossier information on related applications at each office by connecting its IT system.Notes *4: “Application Program Interface”, or API, enables to use the OPD’s service and data via other program. It allows users to access the examination-related information via the program which users develop individually.
3. Summary of the results of the 12th IP5 Heads Meeting
The IP5 Heads of Office and the representatives of industry groups from the five regions exchanged their views on IP5 cooperation on NET/AI and the future interaction between industry groups and offices.
Participants of the meeting:
JPO: Ms. Naoko MUNAKATA, Commissioner, and other officials
EPO: Mr. Antonio CAMPINOS, President, and other officials
KIPO: Dr. PARK Wonjoo, Commissioner, and other officials
CNIPA: Dr. SHEN Changyu, Commissioner, and other officials
USPTO: Mr. Andrei IANCU, Under Secretary, and other officials
Observers from WIPO: Dr. Francis GURRY, Director General, and other officials
Group photo of the heads of the IP5 offices
(From left to right) Commissioner Shen, Under Secretary Iancu, Commissioner Park, Commissioner Munakata, President Campinos and Director General Gurry
Division in Charge
International Policy Division, JPO