Report of 2015 JPO Meeting 1

R E P O R T O F J P O - F I C P I M E E T I N G 1 3 N O V E M B E R 2 0 1 5

JPO Representatives: Mr. Shintaro TAKAHARA Director, International Policy Division Mr. Shunsuke SHIKATO Deputy Director, International Policy Division – Patents Mr. Kazuhiro KIMURA Deputy Director, International Policy Division – Trade Marks and many others as listed in the report FICPI Delegation Mr. Douglas Deeth President Mr. Julian Crump Vice President Mr. Robert Watson Vice-President, Work and Study Commission (CET), Europe Members

Commission Ms. Lena Shen Chair, CET Group 9 Mr. Shogo Ohnishi President FICPI-JP Mr. Yoshikazu Tani Past President, FICPI-JP Mr. Kazuaki Takami Secretary General, FICPI-JP Mr. Kenji Sugimura Deputy Secretary General, FICPI-JP

1 / 4

Report of 2015 JPO Meeting 2

JPO-FICPI Meeting 2015

The visit to the JPO began with a brief meeting with Commissioner Ito in his office. Mr. Ito was accompanied by Mr. Shintaro Takahara (Director, International Policy Division) and Mr. Shunsuke Shikato (Deputy Director, International Policy Division).

Commissioner Ito welcomed the FICPI delegation, and thanked FICPI for its work. He explained the interest of the JPO in the harmonization of IP systems, driven by a desire to make life easier for Japanese applicants abroad. He commented on the JPO’s involvement with the Trilateral and IP5 as well as with the ASEAN group of patent offices. With this involvement he characterized the JPO as a bridge between the systems of the developed and developing countries. Commissioner Ito also mentioned the leadership position of the JPO in the IP world, as demonstrated by projects such as the PPH. During the conversation the President, Doug Deeth, emphasized FICPI’s support for harmonization in IP as well as its emphasis on quality of drafting, examination, and enforcement.

The meeting continued with an in depth discussion on topics of interest. This latter part of the meeting was opened by the Deputy Commissioner, Mr. Masayuki Koyanagi, who thanked FICPI for inviting the JPO to the Cape Town Congress, as well as for FICPI’s input at the B+ meeting and to the IP5 open consultation. He said that user input is very important to the JPO and that they would continue to seek FICPI’s views.

Detailed PowerPoint slides were provided (annexed to this report). The following notes highlight key elements in the presentations and record questions raised during the discussion, as well as the answers given.

Status Report of the JPO [Presentation 1]1

The key approach of the JPO is to make examination faster and to improve the quality of examination. The Collective Examination System was explained. There have been 89 applications to use this system so far, covering 1136 cases. The PPH and Collaborative Search Projects were mentioned briefly, as were the efforts being made to provide Japanese translations of Chinese and Korean literature.

The surprising number of non-traditional Trade Marks filed since the new law came into force on 1 April 2015 was highlighted, particularly when compared to the number of filings of similar marks in the US and OHIM.

FICPI Update (Robert Watson)

Mr. Watson presented FICPI’s recent resolutions on:

• Follow on Patents in the Pharmaceutical Area • Patent figures in colour • Double Patenting • Office Cooperation and User Input

Regarding Double Patenting Examination, Mr. Ishihara said that Article 39 of the Japanese Patent Law prohibits double patenting. He asked if it was an issue after grant. The FICPI delegation felt it was not, as the matter would be handled by the court when hearing an infringement action.

1 The presentations are located at the end of this meeting report.

2 / 4

Report of 2015 JPO Meeting 3

Regarding Involvement in the IP5 and similar groups, Mr. Takahara said the JPO recognized the need for closer user cooperation for all of the IP5, TM5 and ID5. He explained that each of these fora have their own histories, but the JPO would continue to work on getting user input to these groups.

Revision of Japanese Patent Law (Mr. Igarashi) [Presentation 2]

The revised patent and trade mark laws will come into effect in April 2016, and this will then allow Japan to accede to the Patent Law Treaty and the Singapore Trade Mark Law Treaty

Outline of fee revision (Mr. Mikasa) [Presentation 3]

The JPO is planning to reduce the fees for most of its activities by 10-25%; these changes should be in force by spring 2016. Mr. Deeth congratulated the JPO for reducing fees while at the same time improving the speed and quality of examination.

Development of the PPH (Manabu NIKI, Examination Policy Planning Office) [Presentation 4]

It was explained that there are now 36 offices in the PPH system. Japan has agreements with all except Nicaragua. There are now 21 members of Global PPH. Vietnam will enter into a bilateral PPH with Japan next year, and it is aimed to have all the ASEAN countries in a PPH with Japan as soon as possible. As is to be expected, the first action allowance rate with PPH is higher, and examination is much faster. The JPO would like FICPI to promote the availability of PPH, as they think is not as widely known as it should be. The PPH portal site (www.jpo.go.jp/ppph-portal) includes statistical information in English.

US-JP Collaborative Search Pilot Program (Manabu NIKI, Examination Policy Planning Office) [Presentation 5]

This pilot program was explained. It provides for the sharing of search results between the two offices, where requested by the applicant, and for the simultaneous issuance of the first office actions by the two offices. They consider it to be more flexible for amendments compared to PPH, slower than PPH, but faster than the normal examination process. The take up of the scheme has been very low, and the JPO would like more people to use this pilot. Mr. Deeth asked whether the opinion on patentability would always be the same in each office. It was explained that it could be different owing to differing laws.

Development of the Hague Agreement (Masatoki Toyama) [Presentation 6]

The Hague Agreement only entered into force in Japan in May 2015. The JPO highlighted that multiple design applications via the Hague system are treated as separate applications in Japan. 914 Hague designations of Japan have occurred to date, many of which are from Europe (Hague statistics are available on the WIPO website). There have been no registrations yet, but the issues expected to arise with Japanese designations are their specific drawing requirements. They believe a close co-ordination with WIPO will be needed as the system develops.

Developments in Patent Harmonisation (Shunsuke Shikato) [Presentation 7]

A summary of the progress to date was given. FICPI was thanked for sending delegates to the recent Group B+ meeting. The next Group B+ plenary meeting will be in 2016. Attention was drawn to the Group B+ webpage hosted by the EPO.

3 / 4

Report of 2015 JPO Meeting 4

Development of IP5 Matter [Presentation 8]

The One Portal Dossier allows a one-stop reference for Examiners – a public version of this will be launched in July 2016 to complement the Global Dossier. Mr. Deeth emphasized that FICPI would like the availability of such systems to allow the elimination of the requirement for applicants to supply documents cited by one office to another office. The JPO explained that Working Group 3 is discussing this problem. On the possibility of cross-filing, Mr. Watson emphasized the need to have ability to appoint a representative in each country during this process. The IP5 Global Dossier taskforce would be meeting next in February 2016. Mr. Deeth emphasized the need to obtain input from all users, pointing out the ability of FICPI to provide input on behalf of a wide range of user groups. In response to a question by Mr. Takami, the JPO confirmed that co-ordination between ePCT and the Global Dossier is being discussed.

Robert Watson Vice President, CET

[End of document]

4 / 4