U.S. Bar/JPO Liaison Council Met On June 24, 2014

The U.S. Bar/JPO Liaison Council held its 24^th annual meeting in Washington, D.C. on June 24, 2014. In attendance was the new Japanese Commissioner, Mr. Hideo Hato, who recently took over as the Commissioner of the Japanese Patent Office (JPO). With Mr. Hato were a number of other representatives from the JPO, especially those from the International Policy Division. Also in attendance were representatives from United States bar associations, including the ABA-IPL Section, AIPLA, IPO, and many regional patent bar associations.

Among the major items discussed by JPO was that, beginning with next year, the JPO has arranged with the United States PCT Receiving Office for the JPO to be a Competent International Searching Authority for U.S. applicants. They will also be available as an International Searching Authority (ISA) for ASEAN countries.

Currently, applicants using the United States Patent Office as their PCT Receiving Office can select as their ISA from among the USPTO, the EPO, the Korean Patent Office (KIPO), the Russian Patent Office, or for limited technology fields, the Australian Patent Office. Most U.S. applicants choose the United States, Europe, or Korea. Although the Russian Patent Office is the least expensive, it is used to a very limited extent by U.S. applicants.

The JPO indicated that they expected their search fee for an International Search Report to be less than the Russian fees. Furthermore, they indicated that they are training specialized Japanese examiners with English language competency, and these examiners will be able to communicate with U.S. applicants in the English language. These examiners will also have capability with Korean and Chinese languages. JPO believes it will be able to handle about 5,000 such applications to start.

Another announcement made by the JPO was that they are going to reintroduce an opposition system into the Japanese patent law. Many years ago, the Japanese patent system had both an opposition system as well a patent invalidation trial procedure. The opposition system was available immediately after a Japanese patent application was granted, while the invalidation trial was available for the life of the patent. Both procedures were administrative procedures within the patent office. In 2003, JPO merged the two procedures by essentially doing away with the opposition system and only providing for invalidation trials. Over the past years, however, it was found that while the opposition system previously had been used for about 5,000 cases a year, the merged system (essentially similar to the previously existing invalidation trial system) was used for about 300 cases a year. Furthermore, under the merged system, a trial for invalidation can be brought by anyone for the life of the patent and therefore provided a somewhat unstable situation relating to the validity of patents.

Accordingly, beginning next year, the JPO will reintroduce an opposition system and also provide limitations on the trial for invalidation. The new opposition system will be open to anyone and will be available for a six month period after the granting of the patent. The new trial for invalidation system will still be available for the life of the patent, but it will be only available to interested parties. Additionally, the new opposition system will be based only upon documentary proceeding. The new trial for invalidation, however, will still require oral proceedings.

The JPO also provided a statistical analysis of their current activities. The number of applications filed went down in 2013, although the number of PCT applications filed with the Japanese Receiving Office increased slightly. The first action pendency on cases has been dramatically reduced. Currently, from the date of request for examination, the first actions are provided at about 10.4 months.

The JPO also indicated that they are currently improving the accuracy of machine translation of Chinese patent documents and by next year expects to be able to provide full text searching of all Chinese patent documents.

Currently, JPO is reviewing its exanimation guidelines, especially in the area of description requirements. This review will address support requirements for claims, enablement requirements, and requirements for adequate description of the application. JPO is also working on improving their quality management system for patent examination practices. They have established a special Quality Management Office and a Quality Management Committee to review the examination process, and to measure the effectiveness of their current quality management process.

IP5 Met in Busan, Korea in June 2014

The heads of the IP5 patent office met in Busan, Korea in June 2014 for their annual meeting. The five patent offices involved were: China (which is now the largest patent office), the United States, Japan, Korea, and Europe. The meeting included a joint meeting with industry representatives from these five countries, including ALIPA and IPO from the United States, Business Europe, Japan Intellectual Property Law Association from Japan, the Korean Intellectual Property Association from Korea, and PPAC from China.

One of the major projects being undertaken by the IP5 is the global dossier project. This project is comprised of a passive component and an active component. The passive component, also referred to as one portal dossier, will provide a single portal through which examiners and applicants will be able to obtain information on the patent prosecution of any application being prosecuted around the world. Initially, the IP5 countries will be part of the system. In the future, other countries will be added. An individual will be able to access the system using any application number or patent number of any one of the members of a patent family. They will then be able to obtain information on the entire file history in each country and obtain copies of office actions, responses, references, and any other items in the file history. The document will originate from the actual patent office in which it was filed, but will be available in a translated form in the language of inquiry. For example, a U.S. applicant will be able to enter the system and obtain information on the full prosecution history of an application or patent in a particular patent family and all of the information will be translated into the English language.

Initially the global dossier will be available for use by examiners. Thereafter, it will be expanded for use by applicants for their own patent portfolio and ultimately, it will be available to the public, but only for matters in the public domain after 18 months of publications. The active portion of the global dossier relates to cross filing of applications from one country to another. As the bibliography information relating to a patent filing is already available in the priority country, the system will permit use of that information to directly file in other countries of the world without the need for repetitive entry of information. It is envisioned that common forms would be utilized to simplify the procedure in each patent office and would harmonize the filing procedures to reduce cost and simplify foreign filing.

It is also envisioned that when completed, an applicant will be able to enter this active part of the global dossier, get a drop down menu of countries in which he wishes to file his priority application, and by selecting the countries on screen, the applications will automatically be filed in all the those selected countries.

Additionally, currently the World Intellectual Property Organization (WIPO) is making available an electronic national phase entry system whereby PCT applicants completing the international phase will be able to enter into the national phase in the countries of choice electronically through a single portal using ePCT.

Another major project addressed by the IP5 is the Patent Harmonization Expert Panel (PHEP) which was established to seek harmonization in various practical areas. As a result of discussions with the IP5 industry, the PHEP is focusing on practical prosecution areas in which they can achieve harmonization. Three areas have been selected by industry for initial review by the PHEP. These include unity of invention, citation of prior art, and written description/sufficiently of disclosure. In all three areas, the industry groups are working on proposals for harmonizing the procedures in all the five patent offices to make it easier and more uniform to handle international patent prosecution in these five offices.

In work on the global dossier as well as the PHEP, industry will be providing input to the IP5 patent offices, and at the beginning of 2015 a joint meeting will take place between industry and the patent offices to further develop details and progress in both of these areas.

JPO to Introduce Design Protection for GUIs

JPO plans to include design protection for new and original graphic user interfaces (GUI). They will be working on a design search system which will allow for companies to more easily register the designs into the system. Currently, a working group is being formed to establish standards on how to address these new measures. The new design protection will cover not only mobile or smart phone GUIs, but will also cover apps for computers.

EPO Statistics

The European Patent Office presented its annual results for 2013, showing an overall increase in patent filings by 2.8% as compared to 2012, bringing the total filings in 2013 to 266,000. The United States was the largest single country with 24% of the total filings, followed by Japan at 20%. Some of the newer countries, such as China and South Korea, still have low numbers but showed a very large increase in filings of about 15%.Among the European filers, the Netherlands increased the most, by 17%, Denmark increased by 8%, and Sweden by 7.5%. German, Italy, Switzerland, and the U.K. were slightly lower percentage-wise than in the previous year.

Of the technical fields that generated the most applications, medical technology, electronic machinery, energy, computer technology, and transport all increased. Digital communications decreased slightly.

German Patent Office Announces Electronic File Inspection

The German Patent Office, the largest national patent office in Europe, has announced that they are now offering a new service allowing electronic inspection of the German patent and utility model files. For now, only those patents and applications published on or after January 2013 are available for online inspection. However, they will gradually be going further back.

Available for such inspection are the office actions, decisions, and search reports, as well as other communications relevant to the prosecution. The information service is available free of charge and can be accessed through the relevant file number in the German registry.