Fast–tracking IP on the Japanese Highway and beyond
July 2008
Measures to increase the efficiency of patenting in Japan began in earnest with former Prime Minister Koizumi, who established the concept of a nation built on intellectual property. In addition to special measures to help SMEs become more competitive, one of the newest developments is cross-border IP highways with other major patent offices.
Former Prime Minister Koizumi established the concept of a nation built on intellectual property (IP) in his policy speech to the 154th Session of the Diet in 2002. He was the first incumbent Prime Minister to champion IP in this way, and Japanese IP practices have been changing rapidly ever since. One of the newest innovations is the concept of a cross-border IP highway, aided by the streamlining of patent applications and the fast tracking of them during the patent examination system.
These changes are enabling some of the very innovative small scale biotech sectors in Japan to patent new products more quickly to protect them from their rivals, especially in the cases of medicinal applications of newly found plants. Japan is also being affected by legally binding global agreements that are being developed to set the standard for how all drug IP will be protected.
The rise in fast tracking of IP applications
In 2004, a bill to expedite patent examination processes was introduced into the Diet session. Parallel to this bill, and to the IP drive being promoted by the Koizumi government, were the practical measures being employed by the Japan Patent office (JPO) to quicken the pace of patent examination. These began in 2004 with a five year plan to increase the number of patent examiners by 100 per year, to address the backlog of 800,000 awaiting examinations. The JPO also employed additional fixed-term patent examiners.
The JPO also moved to eliminate steps that prevented patentees from enforcing their rights from an early stage. Patent applicants now receive earlier notification after filing of whether or not their research results can be patented: this is vital for companies to decide whether their product is viable and worthy of further R&D investment.
In addition to recruiting 500 extra patent examiners over the five year period, the JPO has been expanding its capacity for outsourcing prior-art searches, and deregulating requirements for search organizations.
Other incentives offered to improve the patenting environment for applicants include:
- a reduction in fees for examination requests that include a prior-art search report
prepared by registered search organizations - improving the availability of official gazettes published via the internet
- extending the term of utility model rights from six to ten years from the filing date
- converting a utility model registration into a patent application
Special measures to assist SMEs
Small and medium enterprises (SMEs) have very particular requirements because of their size, and they can not afford to learn IP management skills through costly trial and error. The JPO has introduced a number of supportive systems to expedite their applications, which include:
- The JPO hosts explanatory meetings and IP seminars covering subjects from the introductory level to strategic acquisition and exploitation of IPR. These sessions aim to assist personnel in SMEs, such as corporate and R&D managers, to exploit their IPR quickly and efficiently. SMEs have limited cash and human resources, and the JPO assists further in making up for these deficiencies by offering expert individual consultation services on specific matters relating to industrial property rights on a national scale
- In the regional bureaus of Economy, Trade and Industry, dedicated staff members offer regular consultation services to advise SMEs on the most expeditious ways to file applications to registration and on the actual procedure for filing an application
- To further support exploitation of IPR and facilitate more rapid patenting, the National Centre of Industrial Property Information (NPIT) sends advisors who are experts in exploiting patent information to many different locations, in response to requests by prefectural governments. NPIT also provides free visiting consultation services and workshops for SMEs
- To promote efficiency in assessing whether an examination should be requested, the JPO commissions private search organizations to perform free prior art searches for patent applications of both SMEs and individuals, prior to requests for examination. The search results are delivered to the applicant by post. This support saves the SME both time and money by being free of charge and determining whether an examination should be requested or not
- In the event that an examination is necessary, the JPO allows either:
• an exemption or a 50 per cent reduction in examination fees for companies that lack funding, if the company complies with certain requirements, or
• grants a 50 per cent reduction for SMEs dedicated to R&D activities
- SME patent applicants, or individuals who are already implementing an invention or are in the process of having a patent or appeal/trial examination, can have this process accelerated if the applicant submits an explanation of the circumstances which necessitate them requiring an accelerated process
- The JPO supports more precise acquisition of rights by offering opportunities for applicants (or their agents) and the examiners/appeal examiners to meet in person to deepen their understanding of the applications and the technologies/designs
- In addition to these interview examinations and to interview appeal/trial examinations carried out at the JPO, the JPO or appeal examiners also visit locations nationwide to conduct circuit examinations, regional interview /appeal/trial examinations and circuit appeal/trials. The JPO also conducts TV interview examinations using a conference system installed at the patent offices of the respective Regional Bureaus of Economy, Trade and Industry
- Finally, the JPO allows an exemption from patent annual fees (from the first year to the third year) or a grace period of three years to individuals or companies that are lacking funds, if they comply with certain requirements. Additionally, as mentioned above, the JPO grants a 50 per cent reduction in annual patent fees (from the first to the third year) to SMEs dedicated to R&D
The new IP Highway
Japan began a unique cross border IP experiment with South Korea about three years ago in which patent applications examined in one country were accepted in the other. Such agreements were the beginning of far-sighted cross border agreements or "IP highways" as they became known. One of the most intractable global problems for patenting has been the need to patent a product or service separately in each country of the world, as each country has its own patent rules. Patent infringement on a cross-border basis is rife globally because technologies are frequently copied, changed slightly, and then filed under a new name in countries not covered by the original patent application.
On 1 April 2007, Japan established a patent prosecution highway to help rectify this problem, working with its neighbour South Korea and the Korean Intellectual Property Office (KIPO). The patent prosecution highway with South Korea has been successful. The United States Patent and Trademark Office (USPTO), European Patent Office and the Japan Patent Office (JPO) (known collectively as the Trilateral Offices) have worked together since 2003 in search exchange projects aimed at promoting the maximum mutual exploitation of search results.
These initial projects showed the potential benefit in exploiting the search results of the office of first filing (OFF) to reduce the workload in the office of second filing (OSF) and to improve the quality in the cases where the OFF performed the search in advance of the OSF working on the corresponding application. Exploiting the search results from the OFF to the OSF is critical for patenting success.
Addressing time disparity
The USPTO and JPO have created their own patent prosecution highway to address the time disparity in availability of search results between the Trilateral Offices, in the case where the JPO is the OFF. This will give applicants that file at the JPO an incentive to file a request for examination at an earlier time, as they will obtain search and examination results early from the JPO in the case where it is the OFF.
Within this framework an applicant whose claims are determined to be allowable/patentable in the OFF can request that the corresponding application filed in the OSF be accelerated with certain conditions being met. This means that the OSF would be able to exploit the search and examination results of the OFF, and the applicant may therefore be able to obtain a granted patent much faster, since the OSF application is advanced out of turn for examination.
Pilot Programmes with the US and the UK
The patent prosecution highway pilot programme was formerly announced in May 2006 at the Trilateral Technical Meeting held in Japan. In the case where the USPTO is the OFF and the US application contains claims that are determined to be allowable/patentable, the US applicant may then request accelerated examination for the corresponding application filed in the JPO as the OSF, and have a special application under the patent prosecution highway pilot programme. The PPH pilot programme is still on trial with the initial year being extend into 2008.
Building on the success to date of the USPTO/JPO programme, the latest patent prosecution highway agreement, signed in Tokyo in March 2007, has been between the UK Patent Office and the JPO. Again the main aim is to improve both the quality and the efficiency of processing applications at both the UK and Japan offices. The UK pilot will enable patent applicants who have received an examination report by either the UK or Japanese patent office to request accelerated examination of a corresponding patent application filed in the other country. To qualify for this acceleration, patent applicants will be required to submit search and examination reports prepared by the other patent office. This process will enable each office to benefit from work previously done by the other office, which in turn will reduce examination workload and improve the quality of patents.
Goals of the patent prosecution highway initiative
These highways support greater international efforts to develop work sharing arrangements on a cross-border basis. They should serve to eventually eliminate duplication of effort, and to enable patent applicants to more easily obtain patent protection in several countries. Allowing the weaknesses and strengths of cross-border systems to be worked out through cross-national cooperation will raise standards that may lead eventually to a universal standard of application. Moving towards a universal IP language — most likely English — will also encourage greater cross-border efficiency.
Acceleration of the whole examination process can only be beneficial to all countries concerned. For example in relation to businesses in the UK, the patent prosecution highway initiative will ensure that JPO patent examinations will be completed two years earlier than the average, and the quality of the examination will be enhanced by extra work on the application already carried out by the UK Patent Office.
References
Most of this material is derived from Prof. Taplin’s forthcoming book: IP and the New Japanese Global Economy, to be published soon by Routledge.
About the author: Professor Ruth Taplin
The Centre for Japanese and East Asian Studies, of which Prof. Taplin is Director, won Exporter of the Year in Partnership in Trading/Pathfinder for the UK in the year 2000. She received her doctorate from the London School of Economics and is the author/editor of 14 books and over 200 articles. The most recent include Innovation and Business Partnering in Japan, Britain and the United States (Routledge 2006), Outsourcing and Human Resource Management — An International Survey (Routledge 2007). Her next book is entitled IP and the New Japanese Global Economy, Routledge. Prof. Taplin gives many talks and this April Chaired and Moderated a panel on alternative outsourcing destinations at Outsource World. She can be reached at Ruth.Taplin@btinternet.com