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Feature Reducing pendency times

Cooperation the key to reducing pendency times

As most of the world’s applications are filed through the Trilateral offices, it falls to them to work out how the current pendency time crisis can be solved

Office of Second Filing (OSF) in a timely By Shinjiro Ono manner, the workload of the OSF decreased while patent quality rose. The present crisis that the international Of course, to achieve these benefits it is patent system is facing with respect to necessary for the OFF to conduct its search protracted pendency and increasing patent in advance of the OSF commencing application backlogs is unprecedented. examination on the corresponding Indeed, it has reached a point where it is application. Unfortunately, the JPO’s request questionable whether major patent offices for examination system that allows applicants will be able to maintain a substantive to defer patent examination for up to three examination system that satisfies the years (prior to 2001, the deferral could be up requirements of applicants, especially those to seven years) severely limited the JPO’s who seek global patent protection. ability to send search results on to the other While many patent offices have patent offices in a timely manner. It was experienced pendency and backlog found that when the JPO was the OFF, less problems, the Trilateral Patent Offices – the than 10% of direct applications (international United States Patent and Trademark Office applications using the Paris route) had (USPTO), the (EPO) received a search by the JPO in time and the (JPO) – are to commence an examination in the OSF. especially affected since more than 80% of This timing issue of course poses a major global patent applications were filed in these stumbling block in Trilateral cooperation. offices. Interestingly, though, among patent One proposed solution to the timing applications filed in Trilateral Offices, about issue was to increase the number of 210,000 were filed at a minimum of two of Japanese applicants making use of the PCT the three offices, thus indicating a large route. By doing so, a search report with an number of duplicate applications. In total, opinion is made available to the OSF much duplicate patent applications represent sooner than if the application were filed nearly 25% of all applications these offices directly. To this end, the JPO and Japan received (see Chart 1). Intellectual Property Association (JIPA) have The overlap in patent applications among been taking steps to promote the use of the the Trilateral Offices clearly presents an PCT system by Japanese applicants. Their opportunity for mutual benefit through efforts have resulted in a rise in Japanese cooperation. Recognising this, the USPTO, applicants using the PCT route, in total EPO and JPO have engaged in projects about 30% of all Japanese applications filed testing the feasibility of Trilateral internationally. However, further analysis cooperation, through the establishment of a suggests that, at most, only 50% of technical and procedural framework aimed Japanese applicants filing internationally primarily at sharing prior art search and would ultimately make use of the PCT examination results. These test projects system. Therefore, a new approach demonstrated that if an Office of First Filing consisting of three pillars has been (OFF) could provide search results to an developed to solve this timing issue.

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Pillar one: development of dossier access Department of Commerce (DOC) and Japan’s system with machine translation Ministry of Economy, Trade and Industry (METI) The first pillar is the development of an issued a joint DOC-METI Initiative for Enhanced infrastructure used for accessing dossier US-Japan Cooperation on IPR Protection and information of patent applications at the JPO. A Enforcement. This joint initiative includes two dossier access system is an online file-wrapper measures for establishing an effective inspection system, use of which enables each mechanism to address the timing issue: (1) a office to obtain examination documents such Highway; and (2) a New as office actions issued by other offices. In Legal Framework. this regard, the USPTO and EPO provide public web services called PAIR and Epoline file Patent Prosecution Highway (PPH) inspection, respectively. In October 2004, the pilot programme JPO launched its own publicly available dossier The USPTO and JPO jointly announced the access system called Advanced Industrial PPH pilot programme at the 22nd to 24th Property Network (AIPN). May 2006 Trilateral technical meeting held in The AIPN serves the same functions as Japan. The PPH pilot programme began on PAIR and Epoline, but with one crucial 3rd July 2006 and will last for a period of difference: the AIPN also provides machine one year. The PPH pilot programme permits translation of all dossier documents. As the an applicant whose claims are determined to JPO employs Japanese as its official working be allowable/patentable in the OFF to have language, it is necessary to translate the corresponding application advanced contents of a file history, such as reason for ahead of other applications in the OSF, while rejection, into English for use by other at the same time allowing the OSF to exploit offices. Thus, the JPO incorporated a the search and examination results of the machine translation system, already in use OFF. This scheme also provides Japanese in the Intellectual Property Digital Library applicants with an added incentive to file a (IPDL), which provides translation of request for examination earlier, because the Japanese patent documents into English. accelerated examinations will only require a Additionally, the Trilateral offices are statement of correspondence of claims and cooperating to improve the functionality of not a detailed discussion of how claimed AIPN, such as the quality of translation, by subject matter is patentable over references, creating and improving technology-specific as is currently required (see Chart 2). dictionaries and by optimising a system of feedback usable by examiners at the EPO Establishing a new legal framework and the USPTO. Such efforts culminated in There have been two proposals put forward the launch of an upgraded version of AIPN in addressing the establishment of a new legal March 2006, which has an interface framework that would take international common to that of the USPTO and the EPO. cooperation well beyond the PPH; one by the With this common interface, the Trilateral USPTO and one by the JPO. While the USPTO Japan offices are now able to share data with each proposal is still early in its development, the other at an unprecedented level. JPO proposal presents a detailed and The success of the machine translation significant new route to file patent and common interface components of the applications internationally. JPO’s new-generation dossier access system The proposed New Route for applications has sparked interest in its application in other filed abroad is an innovative framework 22,00 patent offices. For instance, the JPO is within which the search and examination 21,000 working with the Korean Intellectual Property results of the OFF are transmitted to the OSF 0 Office (KIPO) in developing a similar dossier in accordance with an internationally 23,000 access system, with a view to cooperating in coordinated timeframe. Under US 65,000 mutual exploitation of search/examination this new framework, complete results with the Trilateral offices. Further, the mutual exploitation of an JPO and KIPO have begun sharing information application will be achievable. 33,000 Europe concerning their dossier access systems with Following are the basic 52,000 China’s State Intellectual Property Office concepts of the New Route: (SIPO), also with a view to the future inclusion • An application filed with the of SIPO in a similar sharing scheme. OFF through the New Route is deemed to have been filed with the OSF Pillar two: new framework for enhancing on the filing date in the OFF. A New mutual exploitation Route application filed with the OFF has Chart 1: Patent applications in On 30th March 2006, the United States the same status as a regular domestic Trilateral offices

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Chart 2: Patent Prosecution Highway (PPH) flowchart examination results among the various patent offices. For instance, the Examiner Office of First Filing (OFF) Exchange Programme is already underway and is of prime importance in attaining harmonisation of patent office practices, and developing mutual confidence in examination Application Office Amendment Granted results provided by other offices. Further A action Claim efforts at tackling harmonisation of substantive patent law have taken place under the auspices of WIPO. In an effort to address the inconsistencies in substantive patent law in the international arena, the US Office of Second Filing (OSF) and Japan, on behalf of WIPO’s B-Group, submitted a Reduced Package proposal to Petition for Statement of the Standing Committee on Patent Law and accelerated correspondence examination on the General Assembly in 2004. The Reduced Application the basis of Package proposal is focused on harmonising Claim Claim B Prosecution Additional four key areas of substantive patent law: (1) Claiming Highway X X search and priority examination prior art; (2) grace period; (3) ; and (4) non-obviousness/inventive step. Claim X Accelerated examination Unfortunately, the proposal has stalled at WIPO and no consensus has yet been reached on harmonisation based on the application in the OSF (one application). Reduced Package. • Once a New Route application is filed, No patent office alone can cope with this the national/regional search and crisis and only international cooperation examination by OFF is conducted as the among patent offices with respect to rational first step. No redundancy exists for the work sharing will be able to solve the problem. international phase examination and the Coupled with the currently stalled negotiation national/regional phase examination at WIPO and the increasing difficulty in (unlike the PCT, the New Route does not obtaining a consensus with developing nations distinguish between the international regarding patent law reforms, it is imperative phase and the national/regional phase). that the USPTO, JPO and EPO lead the way in • The time limit for an applicant to submit developing a multilateral approach to the a translation is 30 months from the filing pending patent office crisis. These three date/priority date. Further, the search patent offices are in the best position to take and examination result made by the OFF the initiative to explore and pursue ambitious is issued well in advance of the 30- solutions with the guidance and support of the month deadline, so that the applicant majority of users of the patent systems in can fully examine the necessity of each of these countries. continuing/discontinuing prosecution in the OSF (30-month moratorium).

The New Route is designed to be a multilateral framework established by an agreement among a number of countries and is intended to complement currently available filing routes. It can be said that this New Route is a combination of the best parts of both the Paris route and the PCT route. The Trilateral offices, especially the USPTO and the JPO, will consult with their users and consider the proposal further in the light of such consultations.

Pillar three: harmonisation of patent laws and practices Shinjiro Ono is a patent attorney and a Harmonisation of substantive patent law and partner of Yuasa and Hara, Tokyo. He is a practices stands as an urgent goal if there former Deputy Commissioner of the Japan will be full mutual exploitation of search and Patent Office

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