February [General] Newsletter

Hosting of the Global Intellectual Property Strategy Forum 2025

The Global Intellectual Property Strategy Forum 2025 will be held on February 21, 2025 at Kanda Square Hall in Tokyo, co-hosted by the Japan Patent Office and the National Center for Industrial Property Information and Training (INPIT).

The Global Intellectual Property Strategy Forum has been held since 2015 with the aim of providing information that contributes to the creation of intellectual property strategies linked to business strategies. The forum has also introduced the latest topics from Japan and overseas on business and intellectual property strategies.

As with last year, the Global Intellectual Property Strategy Forum 2025 will be held on-site, and will also be streamed live and archived for a limited time after the event. To participate in the on-site event, you must apply through the website below. To watch the live and archived broadcasts, you must also apply through the website below.

"Global Intellectual Property Strategy Forum 2025" website:https://www.ip-forum2025.inpit.go.jp

The currently planned program for the Global Intellectual Property Strategy Forum 2025 is as follows:

Extension of the Japan-France Patent Prosecution Highway Pilot Programme

A Patent Prosecution Highway (PPH) trial program has been running between the Japan Patent Office and the French Institute of Industrial Property since January 1, 2021. In addition, with the aim of expanding the scope of patent applications covered by the PPH trial program, PPH MOTTAINAI and PCT-PPH have been open since July 1, 2023.

The validity period of the PPH trial program has now been extended for another five years from January 1, 2025.

It should be noted that PCT applications cannot enter the national phase directly at the French Institute of Industrial Property. Specifically, it should be noted that cases in which an accelerated examination under the PCT-PPH can be requested for an application to the French Institute of Industrial Property (hereinafter referred to as the "French application") using the international work product prepared by the Japan Patent Office are, for example, as follows: (A) to (C).

(A) When requesting accelerated examination of a French application under the PCT-PPH by utilizing the international work product of a PCT application claiming priority under the Paris Convention based on the French application.

(B) Where an accelerated examination under the PCT-PPH is requested for a French application based on a PCT application claiming priority under the Paris Convention or domestic priority, the request is made by utilizing the international work product of the PCT application.

(C) When a request for accelerated examination under the PCT-PPH is made for a French application claiming domestic priority from the French application, using the international work product of a PCT application claiming priority under the Paris Convention based on the French application.

Publication of a comparative report on "requirements for correction (amendment) after patent grant" between Japan, China, and South Korea

The Japan Patent Office (JPO) has published a report (in English and Japanese) that describes the results of a comparison of "post-grant correction (amendment) requirements" between Japan, China, and Korea at the Joint Experts Group of Trial and Appeal (JEGTA). Note that the contents of the report are based on information as of November 2023.

The above report can be downloaded from the page on the JPO website at the address below.
https://www.jpo.go.jp/news/kokusai/nityukan/nicyukan_shinpan_hikakuken.html

In addition, JEGTA has been held since 2013 with the aim of promoting cooperation in the field of appeals between the JPO, the China National Intellectual Property Administration (CNIPA) and the Korea Intellectual Property Office (KIPO), exchanging information, and analyzing differences in systems and operations to deepen mutual understanding. Another report (in English and Japanese) published before 2025 by JEGTA, which describes the results of a comparison of the appeal systems and operations between Japan, China and Korea, can also be downloaded from the page at the above address. The other report is as follows:

• "Comparative Study on Accelerated Examination" (Published in 2023)
• "Comparative Study on Oral Proceedings" (Published in 2021)
• "Comparative Study on Administrative Systems Including Judgments on the Scope of Patent Rights for Patent Dispute Resolution" (Published in 2017)
• "Comparative Study on the Practice of Patent Invalidation Trials" (published in 2016)
• "Comparative Study on Appeal Procedures Against Decisions of Refusal" (Published in 2014) 　

These reports are expected to be useful materials in the event of a request for arbitration in Japan, China or South Korea.

Revised "Formality Examination Handbook" goes into effect

The Formality Examination Handbook is revised from time to time in response to amendments to laws and the associated changes in business practices in order to ensure uniform operation of the Formality Examination. The newly revised Formality Examination Handbook has now come into effect on January 1, 2025.

The reasons for the revision of the Formality Examination Handbook and the revised items are as follows. When carrying out procedures related to the above-mentioned revisions, it is necessary to refer to the revised Formality Examination Handbook.

For specific details of the revisions, please refer to the page on the JPO website at the address below.
https://www.jpo.go.jp/system/laws/rule/guideline/hoshiki-shinsa-binran/kaitei/document/index/r604_kaitei-naiyou.pdf

The revised Formality Examination Handbook can also be downloaded from the page on the JPO website at the address listed below.
https://www.jpo.go.jp/system/laws/rule/guideline/hoshiki-shinsa-binran/index.html

Newsletter translated into English

Global IP Strategy Forum 2025

The “Global IP Strategy Forum 2025” will be held on February 21, 2025 at the Kanda Square Hall in Tokyo, co-hosted by the Japan Patent Office and the National Center for Industrial Property Information and Training (INPIT).

The “Global IP Strategy Forum” has been held since 2015 with the aim of providing information that contributes to the development of IP strategies linked to management strategies. In addition, the latest domestic and international topics related to management and IP strategy have been introduced at the Forum.

As in the previous year, the “Global IP Strategy Forum 2025” will be held on-site, and will also be streamed live and available for viewing through a limited-time archive after the event. To participate in the on-site event or to watch the live streaming and archived streaming, it is necessary to register using the website below.

– “Global IP Strategy Forum 2025” homepage: https://www.ip-forum2025.inpit.go.jp

The program of the “Global IP Strategy Forum 2025”, as currently scheduled, is as follows:

Extension of the Patent Prosecution Highway Pilot Program between Japan and France

The Patent Prosecution Highway (PPH) pilot program between the JPO and the French National Institute of Industrial Property (INPI) began on January 1, 2021. In addition, the PPH MOTTAINAI and PCT-PPH are being accepted from July 1, 2023, in order to expand the scope of patent applications eligible for the mentioned PPH pilot program.

The validity of the discussed PPH pilot program has now been extended for another five years starting January 1, 2025.

It should be noted that PCT applications cannot be directly entered into the national phase at the INPI. Specifically, for an application filed with the INPI (hereinafter referred to as “French application”), an accelerated examination under the PCT-PPH may be requested using an international work product prepared by the JPO in the following cases (A) to (C).

(A) Where the applicant requests accelerated examination under the PCT-PPH for a French application by using the international work product of a PCT application filed by claiming priority under the Paris Convention on the basis of said French application;

(B) Where the applicant requests accelerated examination under the PCT-PPH for a French application based on a PCT application and filed by claiming domestic priority or priority under the Paris Convention, by using the international work product of said PCT application;

(C) Where the applicant uses the international work product of a PCT application filed claiming priority under the Paris Convention on the basis of a French application to request accelerated examination under the PCT-PPH for a second French application filed claiming national priority on the basis of the first French application.

Publication of Comparative Study on “Requirements for Post Patent Grant Corrections (Amendments)” in Japan, China, and Korea

The Japan Patent Office (JPO) has published a report (in English and Japanese) describing the results of a comparison of “Requirements for Post Patent Grant Corrections (Amendments)” in Japan, China, and Korea at the Joint Experts Group of Trial and Appeal (JEGTA). The contents of the discussed report are based on information as of November 2023.

The discussed report can be downloaded from the JPO website at the following address.
https://www.jpo.go.jp/e/news/kokusai/nityukan/090502.html

The JEGTA has been held since 2013 to promote cooperation in the field of appeals between the JPO, CNIPA, and KIPO, to exchange information, to analyze differences in systems and practices, and to deepen mutual understanding. Other reports (in English and Japanese) published by JEGTA before 2025, which compare the appeal systems and practices in Japan, China, and Korea, are also available for download at the mentioned address. The other reports are as follows:

• “Comparative Study on Fast-track Proceedings” (published in 2023)
• “Comparative Study on Oral Proceedings” (published in 2021)
• “Comparative Study on Administrative Systems Including Consideration about the Scope of Patent Right for Patent Dispute Resolution” (published in 2017)
• “Comparative Study on the Patent Trial for Invalidation” (published in 2016)
• “A Comparative Study on Appeal against Decision of Rejection” (published in 2014)

These reports are useful resources when filing appeals in Japan, China, and Korea.

Enforcement of the Revised “Handbook of Formality Examinations”

In order to ensure uniform operation of formalities examination, the Handbook of Formalities Examinations has been revised from time to time in accordance with amendments to the law and associated changes in business operations. The newly revised Handbook of Formalities Examinations has been in effect since January 1 , 2025.

The reasons for the revision of the Handbook of Formalities Examinations and the items that have been revised are as listed below. It should be noted that when carrying out procedures related to the mentioned revisions, the procedures should be performed with reference to the revised Handbook of Formality Examinations.

Please refer to the following page on the JPO website for specific details of the revisions.
https://www.jpo.go.jp/system/laws/rule/guideline/hoshiki-shinsa-binran/kaitei/document/index/r604_kaitei-naiyou.pdf

The revised Handbook of Formalities Examinations can be downloaded from the JPO's website at the following address.
https://www.jpo.go.jp/system/laws/rule/guideline/hoshiki-shinsa-binran/index.html