Patent Strategy in Japan: Increased Grant Rate And Reduced Rate of Invalidated Patents JPAA...

Patent Strategy in Japan: Increased Grant Rate And

Reduced Rate of Invalidated PatentsJPAA International Activities Center

Nobuo Sekine

October 21-22, 2014 AIPLA Annual Meeting

IP Practice in Japan Committee Pre-Meeting

Disclaimer

The views expressed in this presentation are those of the author and do not necessarily reflect the views of JPAA or the author’s firm. This presentation is for general informational purposes only and should not be taken as legal advice.

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(Source) Japan Patent Office Annual Report 2014

JPO’s Statement

JPO states that they are working for:

Speedy Examination

and

Stable Patent Right.

Result …?

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Speedy!

(Source) Japan Patent Office Annual Report 2014

Months before first office action

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High patent grant rate!Patent Grant Rate*

Patent Grant Rate* = Number of Patent Grant/(Number of Patent Grant + Number of Final Rejection + Number of Patent Application Withdrawn or Abandoned after First Office Action ）

(Source) Japan Patent Office Annual Report 2014

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Stable!

Patent Maintained Rate* of Invalidation Trial Decision

Patent Maintained Rate* = Number of Trial Decision maintaining ALL claims / (Number of Trial Decision maintaining ALL claims + Number of Trial Decision invalidating at least one claim)

(Source) Japan Patent Office Annual Report 2014

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Summary

- JP patent prosecution procedure is as speedy and applicant friendly as the other main patent offices.

>>> Is there any way to expedite examination?

- JP patent is stable once granted.

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Strategy

Expedited Examination

First Office Action is issued in about two months from filing request for expedited examination (2013).

(Source) Japan Patent Office Annual Report 2014

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Becoming popular!Number of Request for Expedited Examination

(Source) Japan Patent Office Annual Report 2014

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Requirements for Expedited Examination

If the JP patent application is the national phase of a PCT application claiming priority from a prior US patent application, …

differences between the invention of the JP patent application and references cited in PCT ISR can be explained.

>>> Concise explanation is usually sufficient.

>>> No official fee!

2 to 6 months(Expedited

Examination)

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Then, PPH-MOTTAINAI(PARIS route)

US Appln.

EP, CN, KR, TW, MY, IL, GB, DE, RU, AU, CA, AU Applins.

etc.

PPH-MOTTAINAI

PPH-MOTTAINAI

Soon!

JP Appln. Patent Grant

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Then, PPH-MOTTAINAI(PCT route)

US Appln.

EP, CN, KR, MY, IL, GB, DE, RU, AU,

CA, AU Applins. etc.

PPH-MOTTAINAI

PPH-MOTTAINAI

Soon!

2 to 6 months(Expedited

Examination)

JP Appln. Patent Grant

PCT

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Importance of JPO Examination

Number of Published Patent Documents

(Source) Japan Patent Office Annual Report 2014

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Importance of JPO Examination

JP(6.0M)

US(2.6M)

EP(0.3M)

KR(1.3M)

CN(4.0M)

Others(2.4M)

Number of Cumulative Published Patent Documents(from 1997 to 2012)

(Source) Japan Patent Office Annual Report 2014

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Nobuo Sekine SEIWA PATENT & LAW

Toranomon37 Mori Bldg. 10F 3-5-1 Toranomon, Minato-ku

Tokyo 105-8423, JAPANhttp://www.seiwapat.jp/en

nsekine@seiwapat.co.jp

THANK YOU