table of contents
December Issue [General] Newsletter
4th Japan-ASEAN Patent Experts Meeting
On March 13, 2024, the 4th Japan-ASEAN Patent Experts Meeting was held online by the Japan Patent Office (JPO) and the intellectual property offices of the Association of Southeast Asian Nations (ASEAN) countries. At the above meeting, East Asia and ASEAN members regarding the study on patent examination operations in the field of advanced technology (second phase), which was reported at the 13th Japan-ASEAN Patent Office Commissioners Meeting held in Singapore on September 6, 2023. Discussions were held based on the final report of the Economic Research Institute (ERIA).
Specifically, in the above discussion, JPO introduced (i) case studies related to AI-related inventions, and (ii) initiatives related to AI examination support teams.
Additionally, in the above discussion, discussions were held toward improving the transparency and predictability of patent examination in the field of advanced technology. In this discussion, comments were made that it is important to develop human resources to increase the expertise of each country's intellectual property office in the field of cutting-edge technology.
Therefore, in the future, for the purpose of developing the above-mentioned human resources, it is thought that exchanges, such as technical guidance, will be promoted between the intellectual property offices of each country.
In addition, at the above meeting, regarding the problem of mistranslation of patent specifications, there was a discussion on a system for correcting patent specifications, such as correcting mistranslations, after rights have been obtained. At that time, participants from intellectual property offices in ASEAN countries commented that they would like to refer to the JPO's system when introducing post-rights correction systems in their countries.
Therefore, if a correction system after obtaining intellectual property rights is introduced in the future in ASEAN countries, it is likely that the system will be similar to the correction system after obtaining rights, such as the JPO's correction trial system. it is conceivable that.
Trial period updated for Japan-Morocco PPH trial program
The trial period of the Japan-Morocco Patent Prosecution Highway (PPH) pilot program, which was implemented for a three-year trial period from April 1, 2021, has been extended and renewed to April 1, 2024. The trial period of the extended Japan-Morocco PPH pilot program will be indefinite.
In the future, it is predicted that Japanese companies will further develop their business in Morocco.
However, it should be noted that the PPH trial program may be terminated due to reasons such as (a) and (b) below. When the above PPH trial program ends, it will be announced publicly.
(a) Agreement between the Japan Patent Office and the Moroccan Intellectual Property Office (Moroccan Industrial and Commercial Property Office).
(b) The number of PPH applications exceeds a manageable level.
It should also be noted that the above PPH trial program does not apply to applications filed at the Moroccan Industrial and Commercial Property Office based on utility models filed by the Japan Patent Office.
Start of operation of system for resuming examination after suspension of examination of divisional applications
In Japan, from April 1, 2023, pre-examination of the original application can be carried out at the request of the applicant or his/her agent in a divisional application filed in conjunction with a request for appeal against the decision of refusal after the decision of refusal of the original application. Alternatively, a system has been started in which the examination of divisional applications is suspended until the outcome of the trial is known.
If the request to suspend the examination of the divisional application is approved, the examination of the divisional application will be suspended for a predetermined period (hereinafter referred to as the "suspension period"). Specifically, the suspension period is a period of three months after any of the following (1) to (3) is implemented in the original application.
(1) Service of the decision to grant a patent to the applicant in preliminary examination.
(2) Serving a certified copy of the first trial decision to the applicant in an appeal against the decision of refusal. Here, the "copy of the first trial decision" does not include the trial decision in the appeal against the examiner's decision of refusal, which is reopened as a result of a lawsuit to revoke the trial decision.
(3) Appeal against decision of refusal or cancellation, dismissal, etc. of the original application. Here, normally, after the suspension period ends, the examination is started after a period of waiting for examination as in a normal application.
On the other hand, from April 1, 2024, a system has been put in place that allows the examination of divisional applications to be resumed at the request of the applicant before the end of the suspension period.
A request for resumption of examination of a divisional application is made in accordance with (A) and (B) below.
(A) Submission of a written statement stating that the applicant wishes to restart the examination.
(B) Dedicated form (https://mm-enquete-cnt.jpo.go.jp/form/pub/jpo20/bunkatsu_saikai) sends a request to restart the review.
If the request for restarting the examination is approved, the examination of the divisional application can be restarted without passing through the examination waiting period.
Furthermore, after applying for resumption of the aforementioned examination of a divisional application, it is not possible to apply for suspension of examination again.
By making it possible to apply for the resumption of the examination of divisional applications, it is thought that the examination of divisional applications whose examination has been suspended will become more expedited.
Therefore, with the start of operation of the application system for restarting the examination of the divisional application, even if a request for suspension of the examination of the divisional application is made, the examination of the divisional application will be more expedited, and the divisional application will be filed sooner. It becomes possible to obtain patents related to. Therefore, the system for requesting suspension of examination of a divisional application becomes easier to use. Therefore, it is thought that the number of applications for suspension of examination of the aforementioned divisional applications will increase.
Newsletter translated into English
4th ASEAN-Japan Patent Experts Meeting
On March 13, 2024, the Japan Patent Office (JPO) and the intellectual property offices of countries of the Association of Southeast Asian Nations (ASEAN) held the 4th ASEAN-Japan Patent Experts Meeting in an online format.
At the above meeting, discussions were based on the final report of the Economic Research Institute for ASEAN and East Asia (ERIA) on the Study on Patent Examination Operations in the Field of Advanced Technology (Phase II), which was reported at the 13th ASEAN -Japan Patent Office Directors General Meeting held in Singapore on September 6, 2023.
Specifically, in the discussed discussion, the JPO introduced (i) case studies on AI-related inventions and (ii) efforts related to the AI examination support team.
The discussed discussions also looked at how to improve the transparency and predictability of patent examination in the field of advanced technology. The comment was made that it is important to develop human resources to enhance the expertise of IP Offices in each country in the field of advanced technology.
Therefore, in the future, it is expected that exchanges among IP Offices of all countries in, for example, technical guidance will be promoted for the purpose of developing the above-mentioned human resources.
In addition, at the above meeting, a discussion was held on a system for correcting mistranslations of patent specifications and other documents after the grant of patent rights. At that time, a participant from an intellectual property office of an ASEAN country commented that they would like to refer to the JPO's system when they introduce a post-grant correction system in their country in the future.
Thus, if a post-grant correction system for IPRs is introduced in ASEAN countries in the future, it is highly likely that the system will be similar to the post-grant correction system such as the correction trial system in the JPO.
Renewal of Trial Period of PPH Pilot Program between Japan and Morocco
The trial period of the Patent Prosecution Highway (PPH) pilot program between Japan and Morocco, which began on April 1, 2021 and scheduled to run for three years, was extended on April 1, 2024. Morocco after the extension is indefinite.
In the future, it is expected that Japanese firms will be more progressive in their business development in Morocco.
However, it should be noted that the above PPH pilot program may be terminated for reasons such as (a) and (b) below. If the above PPH pilot program is terminated, a public announcement will be made to that effect.
(a) Agreement between the JPO and the Moroccan Intellectual Property Office (Moroccan Industrial and Commercial Property Office).
(b) The number of PPH applications exceeds a manageable level.
It should be noted that the above PPH trial program does not apply to applications filed at the Moroccan Industrial and Commercial Property Office based on utility models at the Japanese Patent Office.
Start of System for Resumption of Examination of Divisional Applications after Suspension of Examination
In Japan, as of April 1, 2023, a system has been in operation whereby the examination of a divisional application, when filed in conjunction with a request for an appeal against a decision of refusal issued regarding the original application, may, upon request by the applicant or the applicant's agent, be suspended until the result of the preliminary examination or the appeal in the original application is known.
If the request for suspension of examination of said divisional application is granted, the examination of said divisional application is suspended for a predetermined period of time (hereinafter referred to as the “suspension period”). months after any of the following (1) through (3) is implemented in the original application.
(1) Issuance to the applicant of a decision to grant a patent in a preliminary examination.
(2) Issuance to the applicant of a copy of the first trial decision in an appeal against the examiner's decision of refusal. Here, “a copy of the first trial decision” does not include a trial decision in an appeal against the examiner's decision of refusal. refusal which was reopened as a result of a suit for dismissal of the trial decision.
(3) Cancellation, dismissal, etc. of an appeal against decision of refusal or of the original application.
Normally, after the mentioned suspension period has ended, examination will begin after a waiting period, as in the case of a regular application.
Now, as of April 1, 2024, the operation of a system that allows the examination of divisional applications to be resumed upon application by the applicant before the expiration of the mentioned suspension period has begun.
A request to reopen examination of a divisional application may be made according to (A) and (B) below.
(A) Submission of a written request to reopen the examination.
(B) Submission of a request to resume the examination through the dedicated form (https://mm-enquete-cnt.jpo.go.jp/form/pub/jpo20/bunkatsu_saikai).
If the request for reopening examination is granted, examination of the divisional application may be reopened without going through the waiting period.
It is not possible to file another application for suspension of examination after the mentioned application for reopening examination of a divisional application has been filed.
The above-mentioned system of application for reopening examination of divisional applications is now available, which is expected to speed up the examination of divisional applications whose examination has been temporarily suspended.
Therefore, with the system for requesting the resumption of examination of divisional applications now in operation, the examination of said divisional applications will be expedited and patents related to said divisional applications can be obtained earlier, even when a request for suspension of examination of said divisional applications is made. Accordingly, the system of requesting suspension of examination of a divisional application has become easier to use, and the number of applications for suspension of examination of divisional applications is expected to increase.