national ip strategy for innovation promotion -experience ... · national ip strategy for...

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Shunichi DOIDirector General

Second Patent Examination DepartmentJapan Patent Office

November 2, 2011

National IP Strategy for Innovation Promotion-Experience of Japan-

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Changes in Environment Surrounding Intellectual Property

IP Strategy in JPO -for Improvement of IP Infrastructure-

University-Industry Collaboration-Current Situation and Support Programs-

Outline

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2

Global Growth in Patent Filings

Patent filings are growing in number worldwide. Especially foreign filings are rapidly increasing.Foreign filings by Japanese companies are also increasing. Worksharing for examinations are becoming increasingly important between the IP offices.

Number of Patent Filings in the World

Source: WIPO Industrial Property Statistics

Number of Patent filings by Japanese Applicants

JP83%

0

200

400

600

800

1000

1200

1400

1600

1800

2000

1995 2000 2004 2008（Year of filing）

(in thousands)

Foreign filings

National filings

(Year of filing)

334 330

71172

0

100

200

300

400

500

600

1995 2008

Foreign filings

National filings

Filed abroad 17%

(in thousands)

JP66%

35%40%

42%

44%

Filed abroad 34%

3

Overseas production sites of Japanese companies

米欧以外25%

(1.8万件)

欧州19%

(1.3万件)

米国56%

(4.0万件)1995年7.1万件

Trends in Global Patent FilingsJapanese applicants have increased their filings to foreign countries other than US and Europe. (25% to 36%)Filings are increasing in countries such as China, Korea, ASEAN countries and India in line with companies expanding their production sites overseas.

米国48%

(8.2万件)

米欧以外36%

(6.2万件)

欧州16%

(2.8万件)

2008年17.2万件

Change in filing destinations by Japanese applicants

Note: The ASEAN in the graph refer to Singapore, Thailand, Indonesia, Malaysia and the Philippines.Source: “2009 (21st) Survey on Overseas Direct Investment” by the Japan Bank for International Cooperation (JBIC)

Source: JPO

US

56%

40thou.

US

48%

82thou.

EUROPE

16%

28thou.

OTHER

36%

62thou.

OTHER

25%

18thou.

EUROPE

19%

13thou.Source: JPO

0

10

20

30

40

50

60

70

2003 2004 2005 2006 2007

（Thou.）

China Korea Asian Countries (*) India Brazil Russia

(*)Thailand, Singapore, Malaysia, Vietnam

Trend in filing abroad by Japanese applicants

China

North America

India, Vietnam and other Asian Countries

199571thou.

2008172thou.

3

4

0

50

100

150

200

250

2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

(FY)

(thousand)

Report submitt ing styleDialog styleNo . of outsourced searches

Increase in the number of Patent ExaminersFY2003 1,126 FY2010 1,703 (including 490 fixed-term examiners) Achieved an efficient operational structure exceeding those of Western countries through

increasing outsourcing of prior art searches* and introducing a paperless system for the first time in the world.

43%

97%91%

98%

0%

20%

40%

60%

80%

100%

Dec. 1990

Patent/Utility Model Design Trademark Appeals/Trials

US Europe

43%

97%92%

81%

99%

60%

0%

20%

40%

60%

80%

100%

2009

In Japan, on-line filing is done by using mainly text data, while in the US and Europe, image data is mainly used.

82%

FY2009 2009

Number of Outsourced Prior Art Searches On-line Filing Rate

Report submitting style is an outsourcing method where search results are reported by submitting search reports. Dialogue style is a method wheresearch results are reported through an interview between an examiner and the searcher.

* There are nine search organizations as of October 2011. The outsourcing rate was approximately 64% in FY2009. Western countries are not outsourcing to the private sector.

JPO’s Steps: Establishing an Efficient Patent Examination System

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Linguistic Diversity of Patent Literature

Patent literature published in Japanese language has been relatively decreasing. (40% to 20%) Non-English patent literature, in particular Chinese patent literature is rapidly increasing.

>>> Need to read more and more non-English patent literature as prior art documents

0

200,000

400,000

600,000

800,000

1,000,000

1,200,000

1,400,000

1,600,000

1,800,000

2,000,000

1996 1997 1998 1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009

others

IN

BR

RU

CN

KR

CH

FR

DE

CA

WO

EP

GB

US

JP

Patent Literature in Different Languages

Source: Created by JPO using WPI data

Number of publications

*The data are provisional.* *

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University-Industry Collaboration-Current Situations and Support Programs-

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METIMETI(JPO)(JPO) MICMEXT MAFF

(Private)Companies,Universities …

・・・・・・

IP Strategy HeadquartersIP Strategy Headquarters

Headed by: The Prime Minister

Headquarters members:All the Ministers and10 experts

Headed by: The Prime Minister

Headquarters members:All the Ministers and10 experts

Implementation

Formulated every year

Intellectual Property Strategic Program 2011

1. Strategy for Enhancing International Standardization2. Strategy for Innovating IP Infrastructure3. Strategy for IP on Cutting-edge Digital Network4. Strategy for Promoting the “Cool Japan”

Extracted from the Intellectual Property Strategic Program 2011

IP Strategic Program

・IP Strategy Headquarters formulate the “IP Strategic Program” every year. Government ministries and agencies implement measures based on the programs.

・On June 3th 2011, IP Strategic Program 2011 was formulated.

Intellectual Property Strategic Program

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Patent Strategy of Japan Patent Office

Goal

Midterm goal

Harmonization of Patent System

Achieving an International Patent Network

Moving forward discussions on Patent Law/Practice Harmonization

Trilateral& IP5

Accelerating discussions on Harmonization

WIPOOther fora

Granting stable rights that will be valid worldwide

Developing foreign patent document search system

Establishing a Common Classification

Establishing examination system that responds to globalization

PCT144 Countries

Accelerating of an International

Patent Network

Enhancing cooperation with Asian countries

PPH21 Countries/Orgs

Gaining mutual understanding on patent systems and practices

(1)(3)(2)

(4)

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Patent Prosecution Highway (PPH )

Search /Examination

Allowable

Request for PPH

Request for PPHApplication

OFF (Office of First Filing)

Application

Paris Route

Accelerated Exam.

OSF (Office of Second Filing)

S/E results can be utilized

National/Regional Phase

PCT International Phase National/Regional Phase

PCT Application WO or IPER

Positive Opinion

PCT Work Products Request for PPH

Request for PPH Accelerated

Exam.

S/E results can be utilized

Applicants eligible for accelerated examination at OSF, based on search & examination results at OFF.OSF benefits from reduced workload in search/examination.

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Expanding the PPH Network

As of 1st of November, 2011

IP Australia（Australia）

DPMA(Germany)

DKPTO (Denmark)

EPO(Europe)

ROSPATENT(Russia)

JPO (Japan)

UKIPO(UK)

KIPO(Korea)

USPTO(USA)

CIPO (Canada)

HIPO(Hungary) APO

(Austria)

SPTO(Spain)

IPOS(Singapore)

IMPI(Mexico)

INPI(Portugal)

PRV(Sweden)

ILPO(Israel)

NPI(Nordic)

NBPR(Finland)

TIPO(Taiwan)

NIPO(Norway)

SIPO(China)

： PPH： PCT-PPH： PPH MOTTAINAI

http://www.jpo.go.jp/ppph-portal/

To support applicants who file patent applications globally, the Patent Prosecution Highway (PPH) should be further expanded to various countries.

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Patent Harmonization & IP5

Momentum of Patent Harmonization

Progress in the Patent Reform Act in the U.S. which includes First to File system.

Through the PPH, recognize the necessity of patent law and practice harmonization.

Patent filing & IP5

Among applications worldwide (1.9 Million), 80% are filed among the Five Offices (Japan, US, EPO, China, Korea).

The Heads of Office: Reaffirmed the importance of technical and substantive patent law harmonization and

emphasized the necessity of making it clear that it does not limit the freedom of each country to determine whether or not to grant a patent to each claimed inventionAgreed to participate in harmonization talks at various international fora including IP5Agreed on conducting a study, making the most of existing works to provide a base for

such harmonization discussions

Results of the meetingResults of the meetingAt the 4th IP5 Heads Meeting held in Tokyo in June, 2011

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Mutual understanding on Patent Systems and Practices is beneficial for Patent HarmonizationMutual understanding can facilitate forming of an International Patent Network

Expansion of Examiner Exchange Program

JPO’s experience in examiner exchanging programs

KIPO

USPTO

EPO

dispatch 236accept 185

SIPO

Trilateral Examiner Exchangedispatch 28

accept 12 respectively from EPO and USPTO

dispatch 7accept 8


DPMA (Germany)


Rospatent(Russia)

dispatch 4accept 3

UKIPO (England)

dispatch 8accept 5

CIPO (Canada) dispatch 2

PRV (Sweden)

dispatch 5accept 2

IP5 Workshop (from 2009)Dispatch 6

Harmony Visit (classification)dispatch 69

accept 8 from EPO, 3 from USPTO

JPO

TIPO（Taiwan）

dispatch 4accept 4

CGPDTM(India)

dispatch 2

IP Australia accept 2

DKPTO (Denmark) accept 1

SPTO（Spain）

dispatch 2

KIPO

USPTO

EPO


SIPO

Trilateral Examiner Exchangedispatch 28

accept 12 respectively from EPO and USPTO

dispatch 7accept 8


DPMA (Germany)


DPMA (Germany)


Rospatent(Russia)

dispatch 4accept 3

Rospatent(Russia)

dispatch 4accept 3

UKIPO (England)

dispatch 8accept 5

UKIPO (England)

dispatch 8accept 5



PRV (Sweden)

dispatch 5accept 2

PRV (Sweden)

dispatch 5accept 2

IP5 Workshop (from 2009)Dispatch 6

Harmony Visit (classification)dispatch 69

accept 8 from EPO, 3 from USPTO

JPO

TIPO（Taiwan）

dispatch 4accept 4

CGPDTM(India)

dispatch 2CGPDTM(India)

dispatch 2

IP Australia accept 2IP Australia accept 2



SPTO（Spain）

dispatch 2SPTO（Spain）

dispatch 2

As of end of October, 2011

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At a time when differences in examination results need to be resolved in each country and create stable rights that are globally acceptable, the JPO needs to work more quickly on multitiered measures.

Developing a foreign patent document search system

Strengthening the examination system that responds to

globalization

It is necessary to strengthen the examination system in order to conduct a thorough search of patent documents in the world and make appropriate decisions internationally. Improving quality management Acquiring the required number of examiners

Taking account of the fact that Chinese and Korean documents are increasing, it is necessary to develop a foreign patent document search system equipped with the function of translating Chinese and Korean into Japanese. Developing foreign patent document search system using machine translation (for Chinese, Korean, etc.) Utilizing private sector’s machine translation technology

Granting Stable Rights Acceptable Worldwide

It is necessary to establish a common patent classification system which is a search tool that is independent of languages, in order to enable batch searching of the increasing patent documents of various countries. Establishing world standard common patent classification system

Establishing a common patent classification system

Harmonizing systems and practices

It is necessary to harmonize the patent systems and examination practices of various countries so as to resolve the difference in examination results among the countries. Expanding the examiner exchange program Promoting studies aimed at harmonizing of patent systems at the working level

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JPO’s Specific Measures for Strengthening Cooperation

Strengthening Cooperation with Asian and Emerging Countries

Sending IP experts for examination cooperation and improving IP protection Providing technical assistance that meets the needs of Asian and emerging

countries in cooperation with the WIPO and the JICA

Providing training on examination practices Implementing training programs for examination practice targeted at examiners

in the Asian region

Providing examination results Providing JPO’s examination results using the Advanced Industrial Property

Network (AIPN) Holding seminars on how to use the AIPN

Continue providing technical assistance that meets the needs of countries in the Asian region.Continue providing support of human resources development to countries in the Asian region.Provide JPO’s examination results for free.

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University-Industry Collaboration-Current Situation and Support Programs-

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Research Funding Spent in Universities

Number of Researchers in Universities

18 %

Total Research Funding

18.8 trillion yen

Total Japanese Researchers

84 million researchers

Source: Survey Report of Research & Development (2009)

In the field of IP, Universities are expected to produce human resources who play key roles in building an IP-based nation in order to promote R&D based on university-industry collaboration and incorporate their research results into society.

What is Expected of Universities

Citation Frequency（natural science & engineering)

NO.1 US 44.6%

GB 11.0%DE 10.5%

JP 8.0%

FR 6.9%

CN 5.5%No.6

others

No.4

36 %

CN 9.1%DE 8.2%GB 7.8% JP 8.4%

Number of Research Papers (natural science & engineering)

others No.1 US 29.5%

No.2FR 6.0% No.3No.4No.5

No.6

No.5

No.2No.3

17Source: The JPO Annual Report (FY2011)

Patent Applications Filed by Japanese Universities

The IP infrastructure was built at major universities, which resulted in an increase in patent filings until 2005. At present, the number of filing patent applications remains stable.

Trend in Patent Applications Filed by Universities

10891527

1979

2775

4604

7859

71516909

73527569 7601

0

1000

2000

3000

4000

5000

6000

7000

8000

9000

2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010

（Year）

Examination Results of Patent ApplicationsFiled by Universities

*The grant rate of all patent applications were 50% in 2008, 50% in 2009, and 55% in 2010.

242 208 379 535 744 8861321

2330

253364

1058

1748

149101 111 153

589501

57%56%60%

69%

58% 60% 60% 60% 60%

0

500

1000

1500

2000

2500

3000

3500

4000

4500

2002 2003 2004 2005 2006 2007 2008 2009 2010

0%

20%

40%

60%

80%

100%

Number of Grants Number of Refusal/ Withdrawal/ AbandonmentRate of Grants

（Year）

10

18Source: The JPO Annual Report (FY2011)

The number of technology transfers from universities to industry through license agreements is increasing.Industry, in commercializing university-originated inventions, expects these inventions be strictly protected by patent rights.

185477

1,283

2,872

4,390

5,3065,489

0

1,000

2,000

3,000

4,000

5,000

6,000

2003 2004 2005 2006 2007 2008 2009

（FY）

Licensee of Patents Owned by TLO

as of the end of March 2009

Changes of Technology Transfer from University to Industry through License Agreements

Source: The National Center for Industrial Property Information and Training(INPIT)

Utilization Status of University-Originated Patents in Industry

large companies39%

individuals0%

association etc.

1%

TLO0%

1%

SMEs

58%

public technical center

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Collaboration(e.g. Support for System

Building, University IP Liaison Conference, Joint Training

University Network IP Advisors are sent to regional-based or discipline-based inter-university networks in order to raise the standard of IP activities among all the universities within the network through building and enhancing IP management, ultimately aiming to expand the framework of university-industry collaboration.

A Univ.B Univ.

C Univ.

D Univ.

Experts with Experience in IP Management or University-

Industry Collaboration (University Network IP Advisors )

Regional University Association, Discipline-Based Inter-Academic Collaboration, Industry Cluster etc.

Inter-Academic Network

Network Expanding by including new participants

JPO, INPIT

University Support Program: Sending IP Advisors

Sending

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Universities R&D Consortia

Public Institutes

UniversitiesCompanies

Innovative technologies

IP-Specialized Experts with Experience in Business Development and IP Business in Private sector

Project Closing（confirmation about

management and utilization of IP rights）

to establish research themes in unexplored fields, and to modify them if necessary, through collection and analysis of patent-related information, and academic papers

to determine a standardized format for research reports or notes that enable to be evaluated for the degree of contribution to invention

to obtain a strong group of patents aimed at business development, including development overseas, and to build a robust IP network

to establish a policy for managing and utilizing of IP rights when dissolving the consortium

Project Initiation（establishment of R&D

strategy and IP strategy）

Project Execution（formation of IP-based consolidated groups）

Project Evaluation (business development)

Sample Roles of IP ProducersOutline of IP Producer Dispatch Program

“IP Producers,” experts specialized in IP management, are sent to university-based or R&D consortia, to support building a strategy for potential innovative technologies aimed at acquiring and utilizing IP rights

Support for University-Industry Collaboration: Sending IP Producers

JPO, INPIT

Sending

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Thank you for your kind attention!

JPO Homepagehttp://www.jpo.go.jp/index.htm

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