Download Morooka - Fordham IP Conference

Fordham IP Conference
April 29, 2011
IP issues from the
viewpoint of the JPO
Ken-Ichi MOROOKA
The Japan Patent Office
1
Overview
1. Patent Prosecution Highway (PPH)
2. Amendment of the Japanese Patent Act
2
Overview
1. Patent Prosecution Highway (PPH)





The PPH scheme
Expanding PPH network
Number of PPH requests
Plurilateral PPH
PPH Portal Website
2. Amendment of the Japanese Patent Act
3
The PPH scheme
OFF (Office of First Filing)
Paris Route
Application
OSF (Office of Second Filing)
Search /
Examination
Request
for PPH
Application
PCT International Phase
PCT Work Products of
Trilateral Offices or NBPR
PCT
Application
WO or IPER
Positive
Opinion
Allowable
National/Regional Phase
A
Examination
PPH (Paris Route)
PCT-PPH
Allowable
Request
for PPH
Ｂ
Ｃ
Accelerated
Exam.
Request
for PPH
Accelerated
Exam.
Accelerated
Exam.
Claiming priority to
application to Office “A”
PPH Request to Trilateral
Offices or NBPR
4
Expanding PPH network
JPO
USPTO
(Japan)
(USA)
IMPI
KIPO
(Korea)
(Mexico)
UKIPO
SPTO
(UK)
(Spain)
HIPO
CIPO
(Hungary)
(Canada)
APO
DPMA
(Austria)
(Germany)
ROSPATENT
(Russia)
IP Australia
（Australia）
NBPR
(Finland)
DKPTO
IPOS
(Singapore)
EPO
(Europe)
(Denmark)
： PPH
： PCT-PPH
As of 4th of April, 2011 5
Number of PPH requests
6
Plurilateral PPH
Plurilateral PPH Working Level Meeting : Jan. 18-19, Tokyo, Japan
Plurilateral PPH Heads of Office Meeting : Mar. 9, Alexandria, U.S.A.
Main topics
1. Relaxing priority requirements
2. Simplifying / Streamlining filing requirements
3. Providing users information of the different practices between
Offices
4. Enhancing user outreach
7
PPH Portal Web Site
- Access PPH Portal Web Site for more information Provision of various statistical data
Provision of the PPH guidelines of
different countries
Provision of the PPH request
forms of different countries
Provision of the pamphlets of
PPH of different countries
http://www.jpo.go.jp/ppph-portal/index.htm
8
Overview
1. Patent Prosecution Highway (PPH)





The PPH scheme
Expanding PPH network
Number of PPH requests
Plurilateral PPH
PPH Portal Website
2. Amendment of the Japanese Patent Act
 The aim of the amendment
 Points of the amendment
9
The Aim of the Amendment
 To cope with “Open innovation”.
 To deal with the acceleration of innovation, and
the short life-cycle of products.
 To improve user convenience.
10
Points of the Amendment
(1) Increasing user-friendliness
(2) Appropriate protection of inventors in
relation to the results of joint researches etc.
(3) Enhancing protection of license agreements
(4) Revising the trial examination system to
expeditiously and efficiently solve disputes
11
Points of the Amendment
(1) Increasing user-friendliness
Extension of the patent fee exemption period from
3 to 10 years
(for small- and medium-sized Enterprises).
12
Points of the Amendment
(1) Increasing user-friendliness (continued)
Expanding the mode of disclosure eligible for the grace period.
(Present)
Conducting an experiment,
Presentations made in a printed publication,
Presentations made through electric telecommunication lines,
Presentations made in writing at a study meeting held by
scientific organizations etc.
(Amended)
Disclosures made by the inventor himself / herself regardless of
the mode of disclosure.
13
Points of the Amendment
(1) Increasing user-friendliness
(2) Appropriate protection of inventors in
relation to the results of joint researches etc.
(3) Enhancing protection of license agreements
(4) Revising the trial examination system to
expeditiously and efficiently solve disputes
14
Thank you
15