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  5. IP5 Offices Agreed on New Cooperation on AI and Harmonization of Patent Prosecution Procedures Results of the 14th IP5 Heads of Office Meeting

IP5 Offices Agreed on New Cooperation on AI and Harmonization of Patent Prosecution Procedures Results of the 14th IP5 Heads of Office Meeting

June 24, 2021

On June 23, 2021, the 14th IP5 Heads of Offices Meeting was held via video conference, hosted by the Japan Patent Office, bringing together the heads of the five intellectual property (IP) offices, namely the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), the China National Intellectual Property Administration (CNIPA), and the Korean Intellectual Property Office (KIPO) (the “IP5 Offices”). At the meeting, the heads agreed on a roadmap for cooperating in the fields of new emerging technologies and artificial intelligence (AI), and launching new projects aimed at harmonizing patent prosecution procedures and practices. In addition, they exchanged views on various areas of future IP5 cooperation, with an eye on the post COVID-19 era and the role of IP rights in solving social issues.

1. Background

The number of patent applications filed with the IP5 Offices was around 2.73 million in 2019, accounting for around 85% of the approximately 3.22 million patent applications filed worldwide in the same year.

Since the launch of the first IP5 Heads of Office Meeting in 2007, the IP5 Offices have been holding the meetings on a regular basis to address issues such as how to mutually utilize examination results, streamline operating procedures, and improve examination quality at several working groups, namely WG1: Classification; WG2: Information Technology; and WG3: Examination; as well as at expert and working-level groups such as the Patent Harmonization Experts Panel (PHEP) and the NET*/AI Task Force.

The meeting was chaired by JPO and held via video conference.

*The term “NET” is an acronym for “New Emerging Technologies.”

2. Results of the IP5 Heads of Office Meeting

 (1) Work roadmap on cooperation in the fields of NET and AI

The IP5 Offices agreed on the work roadmap for cooperating in the fields of NET and AI. Going forward, each working group will advance specific work on legal aspects, such as by making a comparative study on examination practices in NET/AI inventions and implementing NET/AI into the services of the respective offices. With the advancement of this work, improvements are expected to be achieved in the following areas: predictability, when users intend to acquire rights to NET/AI inventions in multiple countries; efficiency and quality of services provided by the offices based on utilizing NET/AI; and subsequently, timeliness and accuracy of services provided to users.

 (2) Launch of new projects on harmonizing patent prosecution practices

The IP5 Offices agreed to launch new projects. One project aims to harmonize requirements such as the size and color/monochrome of patent drawings; and another aims to harmonize the forms of documents used to transfer patent rights. Based on these projects, it is anticipated that each office will advance the standardization of operating procedures and improving user convenience.

 (3) Future IP5 cooperation with an eye on the post COVID-19 era

The IP5 Offices reaffirmed the importance of improving user convenience by further digitizing operating procedures and expanding online communication between examiners and applicants in the post COVID-19 era. Additionally, the Offices also reaffirmed that they will continue cooperation under the IP5 framework in order to further meet the needs of users.

 (4) Role of IP rights in solving social issues

The IP5 Offices shared information on their respective initiatives towards solving social issues, reaffirming the fact that IP rights play a key role in solving such issues. Moreover, the Offices shared the importance of disseminating information on how IP rights contribute to solving social issues and how to raise public awareness of IP.

Note: Participants in the meeting:

JPO: Mr. Kasutani Toshihide, Commissioner, and other officials

USPTO: Mr. Drew Hirshfeld, Performing the functions and duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO, and other officials

EPO: Mr. António Campinos, President, and other officials

CNIPA: Dr. Shen Changyu, Commissioner, and other officials

KIPO: Dr. Kim Yongrae, Commissioner, and other officials

Observers from the World Intellectual Property Organization (WIPO): Ms. Lisa Jorgenson, Deputy Director General, and other officials

Division in Charge

International Policy Division, Policy Planning and Coordination Department, Japan Patent Office