Statistics regarding Recent Trend of Japanese Practice

JAPAN PATENT ATTORNEYS ASSOCIATION Contents

Speed of Examination ...... 3 High Patent Grant Rate (Examination Stage)...... 4 High Patent Grant Rate (Trial Stage) ...... 5 Security of Patent Right ...... 6 Location of Offices ...... 7

Japan Patent Office (JPO) issues an annual report every year, including statics such as patent grant rate, duration of waiting time for substantial examination, etc.

In this brochure, the recent trend of Japanese patent practice is summarized on the basis of the report.

［ 2 ］ Statistics regarding Recent Trend of Japanese Patent Practice

Speed of Examination

(Months) Months before first office action 35.0

29.1 28.7 USPTO 30.0 28.5 25.9 JPO 25.0 24.4 25.1 25.7 25.9 KIPO 23.6 20.1 20.0 21.8 SIPO 20.2 16.8 19.6 19.0 18.5 EPO 15.0 12.1 15.4 11.6 11.4 14.8 11.5 10.0 11 months 9.1 5.0

0.0 2008 2009 2010 2011 2012 2013

(Source) JPO Annual Report 2014 Figs. 1-1-5 and 1-1-25

n the past, the JPO had a huge backlog of applications and thus the waiting time for examination was as long as about two and half years until 2009. However, due to an increase in the number of Examiners, etc., the waiting time has decreased dramatically - the waiting time was eleven months at the end of 2013. This is a short time compared to other Patent Offices such as the US Patent Office (USPTO), the Korea Patent Office (KIPO), the Chinese Patent Office (SIPO), and the European Patent Office (EPO).

urther, if you wish to further expedite the examination procedure, an expedited examination system is available. Under the expedited examination system, a first Office Action is issued in about two months (Ave.) from the filing of a request for expedited examination. In order to request an expedited examination, only a brief explanation of the differences between the invention of an application and prior art is required, with no official fee.

［ 3 ］ High Patent Grant Rate (Examination Stage)

Patent Grant Rate*

(％) 80

69.8 USPTO 70 67.6 68.9 64.5 62.7 66.8 60.4 65.6 JPO 60 63.3 61.2 60.5 KIPO 50.2 50.2 54.9 49.8 50 49.5 42.1 42.5 47.4 EPO 44.0 40 42.0 2008 2009 2010 2011 2012 2013

Patent Grant Rate* = Number of Patent Grants/ (Number of Patent Grants + Number of Final Rejections + Number of Patent Applications Withdrawn or Abandoned after First Office Action）

(Source) JPO Annual Report 2014 Figs. 1-1-10 and 1-1-28

n the past, the JPO had a very strict stance regarding patentability, especially inventive step. However, this is no longer the case. The patent grant rate at the JPO increased steadily from 2009, finally reaching about seventy percent in 2013. This number is high compared to other Patent Offices such as the US Patent Office (USPTO), the Korea Patent Office (KIPO), and the European Patent Office (EPO). While there may be various reasons for this increase, it is apparent that recent patent owner / applicant-friendly IP high court decisions at least affect the attitude of the JPO.

［ 4 ］ Statistics regarding Recent Trend of Japanese Patent Practice

High Patent Grant Rate (Trial Stage)

100％ 90％ ■ Trial Decision Adverse to Applicant 80％ 70％ ■ Withdrawal/Abandon 60％ 50％ ■ Trial Decision Favorable 40％ to Applicant 30％

20％ ■ Pretrial Examination Decision Favorable to 10％ Applicant 0％ 2008 2009 2010 2011 2012 2013

(Source) JPO Annual Report 2014 (Statistics) p. 5

he patent owner / applicant-friendly attitude of the JPO is evident not only in the examination stage, but also in a trial stage. In 2013, even if patent applications were rejected in the examination stage, about half thereof were allowed in a pretrial examination, which is preliminarily conducted by the original Examiner after a patent application has been amended. Further, even if patent applications are rejected in a pretrial examination stage, about half thereof are subsequently allowed in a trial examination. Therefore, in total, about seventy five percent of patent applications rejected in the examination stage are later allowed in a pretrial examination or trial examination stage.

［ 5 ］ Security of Patent Right

Patent Maintenance Rate* as result of Invalidation Trial Decision

90％ 80％ 76％ 66％ 70％ 61％ 60％ 56％ 51％ 50％ 50％ 43％ 44％ 37％ 34％ 40％ 35％ 35％ 31％ 30％ 20％ 10％ 0％ 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013

Patent Maintenance Rate* = Number of Trial Decisions maintaining ALL claims / (Number of Trial Decisions maintaining ALL claims + Number of Trial Decisions invalidating at least one claim) (Source) JPO Annual Report 2014 (Statistics) p. 7

f granted are not secure, i.e. they are liable to be easily invalidated, then a high patent grant rate has little meaning. However, along with an increase in the patent grant rate, the rate of patents being maintained as a result of invalidation trial decisions has increased. The patent maintenance rate as a result of invalidation trial decisions, i.e. the rate of invalidation decisions maintaining ALL claims, was about thirty to forty percent in 2002 to 2008. However, this rate increased steadily from 2009, and finally reached seventy six percent in 2013. In other words, among all invalidation trial decisions issued in 2013, only twenty four-percent of decisions invalidated at least one claim. In turn, this means that patent rights are generally secure in the face of patent infringement lawsuits, since a large percentage of invalidation trials relate to infringement lawsuits, and judges assessing the merits of an infringement lawsuit usually refer to a co-pending invalidation trial decision relating to the same case.

［ 6 ］ Statistics regarding Recent Trend of Japanese Patent Practice

Location of Offices

The Headquarters of the JPAA is located in central next to the JPO building as shown in the map below.

NANBOKU-LINE

Parliament

KOKKAI-GIJIDO MARUNOUCHI-LINE

KOKKAI-GIJIDO CHIYODA-LINE The JPAA has nine branch offices across the

TAMEIKESANNO Cabinet country, located in Kanto (Tokyo), Hokkaido Office Prime Inner Circular Route Minist. of Minister Finance

Office (Sapporo),Tohoku (Sendai), Hokuriku TAMEIKESANNO

Financial Services (Kanazawa), Tokai(Nagoya), Kinki (Osaka), Agency KantoKanto BranchBranch HIBIYA-LINE -Kaikan GINZA-LINEBenrishi-Kaikan Kasumigaseki Bldg. Chugoku (Hiroshima),Shikoku (Takamatsu) Japan JPAAJPAA OfficeOffice Patent Office TokyoTokyo ClubClub and Kyushu (Fukuoka). These branch offices BuildingBuilding SOTOBORI St. (Headquarters)(Headquarters) TORANOMON provide support and information concerning IP rights not only to members SHOSEN-MITSUI Bldg. of the JPAA, but also to any persons who

Benrishi-Kaikan have concerns that live in these areas. 3-4-2 Kasumigaseki Chiyoda-ku Tokyo100-0013 JAPAN TEL +81-3-3581-1211 FAX +81-3-3581-1205 ●Hokkaido Branch Email [email protected] 3rd Fl. KDX Sapporo Bldg., 4-1-2 Kita 7 Nishi, Kita-ku, Sapporo 060-0807 Hokkaido TEL: +81-11-736-9331 FAX:+81-11-736-9332 http://www.jpaa.or.jp/ ●Tohoku Branch 5th Fl. Taiyo Seimei Sendai Honmachi Bldg., 3-4-18 Honmachi, Aoba-ku, Sendai 980-0014 Miyagi TEL: +81-22-215-5477 FAX: +81-22-215-5478 ●Hokuriku Branch 2nd Fl. Ishikawaken Seni Kaikan, 2-2 Kuratsuki, Kanazawa 920-8203 Ishikawa TEL: +81-76-266-0617 FAX: +81-76-266-0618 ●Kanto Branch 2nd Fl. Benrishi Kaikan Bldg., 3-4-2 Kasumigaseki, Chiyoda-ku, 100-0013 Tokyo TEL: +81-3-3519-2751 FAX: +81-3-3581-7420 ●Tokai Branch 8th Fl. Nagoya-CCI Bldg., 2-10-19 Sakae, Naka-ku, Nagoya 460-0008 Aichi TEL: +81-52-211-3110 FAX: +81-52-220-4005 ●Kinki Branch 25th Fl. Meiji Yasuda Life Osaka Umeda Bldg., 2-3-20 Umeda, Kita-ku, Osaka 530-0008 Osaka TEL: +81-6-6775-8200 FAX: +81-6-6775-5133 ●Chugoku Branch 4th Fl. Shin Hiroshima Bldg., 13-14 Nobori-cho, Naka-ku, Hiroshima 730-0016 Hiroshima TEL: +81-82-224-3944 FAX: +81-82-224-3945 ●Shikoku Branch 2nd Fl. Takamatsu Symbol Tower Sunport Business Center, 2-1 Sunport, Takamatsu 760-0019 Kagawa TEL: +81-87-822-9310 TEL: +81-87-822-9311 ●Kyushu Branch 8th Fl. Fukuoka Asahi Bldg., 2-1-1 Hakata Ekimae, Hakata-ku, Fukuoka 812-0011 Fukuoka TEL: +81-92-415-1139 FAX: +81-92-415-1169

［ 7 ］ JAPAN PATENT ATTORNEYS ASSOCIATION

Benrishi-Kaikan 3-4-2 Kasumigaseki Chiyoda-ku Tokyo100-0013 JAPAN TEL +81-3-3581-1211 FAX +81-3-3581-1205 Email [email protected] http://www.jpaa.or.jp/

as of March 2015