Substantive Patent Harmonization and Japan’s Stance

1. 2002 High Technology Protection Summit Substantive Patent Harmonization and Japan’s Stance Shinjiro ONO Deputy Commissioner Japan Patent Office

2. HISTORY OF SUBSTANTIVE HARMONIZATION 1993 Suspension of Patent Harmonization 1994~ Patent Harmonization on Formative Aspects 2000 Patent Law Treaty (PLT) 2000 Summit:Grace Period 2000~ Patent Harmonization onSubstantive Aspects ? Substantive Patent Law Treaty (SPLT) 2002 Summit:Substantive Harmonization

3. BACKGROUND OF THE SUBSTANTIVE HARMONIZATION Rapid Growth of Patent Applications(Especially Those to Foreign Countries) Development of Advanced Technologies

4. Rapid Growth of Patent Applications Total Number of Patent Application in the World 1.9 million (Early 1990s) 6 million (1998)

5. Rapid Growth of Patent Applications Roots of Patent Applications to Foreign IP Offices 5.1 million Patent Applications to Foreign IP Offices 180,000 Original Patent Applications to Domestic IP Offices

6. Rapid Growth of Patent Applications Patent Applications/Examination Requests Filed with JPO

7. Rapid Growth of Patent Applications PCT Applications Filed with JPO 27%

8. Trends in the Number of IPERs

9. Development of Advanced Technologies • Rise of advanced technologies such as information technology and biotechnology • Difficulty in examination • Lack of examination guidelines • Growth of complex applications

10. GOALS • Simplified Patent Obtaining Process • Workload Reduction

11. Simplified Patent Obtaining Process • Harmonized standards for granting patents • Improved quality of examination standards in each Office

12. Workload Reduction • Reduction in duplication of work • Balanced work sharing between inventors/applicants and Offices

13. Application Flows among Trilateral Blocs Duplication among Trilateral Offices:158,870 JPO Total Trilateral Workload:650,804 EPO USPTO Sources: (JPO) data compiled by the JPO; (EPO, USPTO) preliminary estimates based on regular exchange of Trilateral statistical data (4/ 2001).

14. JPO-USPTO Joint Project • Near term project for the exploitation of the each side’s search results • Separate project for the exploitation of the each side’s examination results • Identification of differences in each Office’s examination practices • Increased needs for substantial harmonization

15. Needs for Substantial Harmonization • Range of Prior Art • Claim System • Claim Interpretation

16. Balanced Work Sharing between Inventors/Applicants and Offices Inventors Applicants Patent Offices

17. METHODOLOGY • Deep Harmonization on Limited Issues • Incorporation of “Best Practices” • Tackling New Issues

18. Deep Harmonization on Limited Issues • Focusing on requirements for granting patents • Early conclusion of the SPLT • Deep harmonization covering examination practices • Same examination results for the same invention

19. Incorporation of “Best Practices” • “Best Practices” from various patent systems should be adopted • Opportunity to improve each Office’s examination practices

20. Tackling New Issues • Employing new measures to cope with new issues, such as complex applications • Maintaining flexibility to cope with future issues

21. NEGOTIATION POINTS • Technical Nature • First-to-File System/First-to-Invent System and Grace Period • Complex Applications • Rearrangement of Provisions

22. Technical Nature • Technical nature is an indispensable requirement for patentability

23. First-to-File System/First-to Invent system and Grace Period • Expecting US efforts and European flexibility • First-to-file system is most advantageous for applicants

24. Complex Applications • New measures should be sought through the Trilateral Cooperation • Results should be incorporated into the SPLT

25. Rearrangement of SPLT Provisions • Provisions should be rearranged according to required compulsivity, etc. Treaty Regulations Practice Guidelines

26. Thank You