Shinjiro Ono, Japan Patent Office

Good morning, ladies and gentlemen. I’ll be punctual because, as I said yesterday, I think JPO is very, very punctual to keep the deadline and the time limit to prepare the PCT — (laughter). Thank you. Okay. Here, I’d like to introduce the further reform discussed so far. At the Assembly of the PCT Union in 2002, it was agreed that the outstanding proposals and further proposals for reform should be discussed. Under this agreement, the working group for discussing further PCT reform should be held twice before the Assembly in 2003. The third session of the working group on PCT reform was held in November 2002 for discussion over the future direction. The working group agreed that further discussion on international search and preliminary examination will be made. During this working group discussion, JPO suggested a greater accommodation of the possibility to process an international application and the corresponding national application simultaneously. I would like to outline the simultaneous process of international and national applications, which JPO is now contemplating. Generally, PCT international applications are filed with claiming a priority right. This is the case for around 90 percent of applications received by JPO. More than 50 percent of them, are filed without self-designation and with intention to use their basis application for the patent examination in Japan. On the other hand, those with self-designation are entering into the national phase. At the national/regional offices, acting as the International Authorities, therefore, three

applications can be pending in one Office for process at most, namely, one as a PCT application in the international phase, another in the national phase, and the other one as its basis application. This means that searches and examinations must be repeated in regard to substantially same inventions.

Our proposal is to reduce this duplicated workload, by processing an international application and its corresponding national application simultaneously. It goes along with the objectives of the PCT reform. However, this simultaneous process should be introduced as an option because we have to take into account the applicants’ diversity of filing strategy. As a consequence of the simultaneous process, we could provide the results of the national process together with the ISR, if any IPER to any designated Offices. This additional information would increase the reliability of the output from the International Authorities. To process the international applications and national applications simultaneously, the express request under Article 23 (2) of the PCT by an applicant would be required for the early entry into the national phase at the timing synchronized with the preparing of the International Search. In this case, a simultaneous process would be available when the early entry is made before the International Search. On the other hand, a consecutive process would be available if the early entry is made after the International Search studied by an applicant for reconsideration on further process.

This simultaneous process has many expected advantages. Firstly, accelerated national examination would be achieved. Secondly, usability of a final decision with settled claims would increase. As you may see, although claims may change during the procedure before the Office, this final decision is made with settled claims and considered more reliable to the second Office. Thirdly, it would promote harmonizing of examination standards between the national Offices through encouraging movement of the national examination practices at the International Authorities toward the PCT guideline. Fourthly, higher efficiency of process at the International Authorities would be expected.

Here, I would like to explain the first advantage in more detail. By proceeding international application and national application simultaneously, the first action for the national application and the ISR would be made simultaneously. As for the case in JPO, the first action is currently made 22 months on average after the request for examination. On the other hand, the ISR is required to be established around 16 months from the priority date. If the first action for a national application would be delivered at the timing of ISR, it would result in earlier first action of the national application and shorter pendency for the national examination. The JPO is currently establishing the ISR 100 percent within the time limit. Considering this fact, the simultaneous procedure would be more likely to cause an accelerated national examination.

I’d like to explain the second advantage. As I told you before, an early national/regional examination would bring an early final decision, which could likely be obtained before entry into national phase. This would be more highly foreseen since by the revision of the PCT Article 22, the time limit for entry into the national phase has been extended to 30 months. By presenting this final decision to designated Offices as a reference, in case a demand has been made, with IPER, designated Offices would have a stronger confidence for the patentability. The more information, including the supporting material designated Offices would receive, the higher reliability the output of the International Authority acquires. By introducing the EISR system which take effect on January 1, 2004, applicants will miss chances to rebut a written opinion of the ISA unless they demand an International Preliminary Examination. But if the simultaneous process would be introduced, an applicant would be able to submit rebutting communication and amendments between him and the Office during the national examination, which would have occurred parallel to the international process. In view of this point, the simultaneous process benefits the applicants. While English translation by the International Bureau for outputs of the international phase, namely, a Written Opinion of the ISA and an IPER, a final decision of the national examination is made with settled claims.

By putting both advantages together, we could provide designated Offices, both much useful and much reliable information. I would like to point out additional

information. The Japanese patent documents account to 36 percent of the world patent documents in one year. Among them, 75 percent of the Japanese patent documents cited by the JPO have no patent family in any foreign language and could be accessed only in Japanese. I believe that the PAJ and machine translations would help to make the effective use of the search results of the JPO.

I would like to explain the third advantage. Simultaneous process of a national application and an international application would facilitate to examine those two applications in accordance with the same examination standard. While searches and examinations for international applications are carried out in accordance with a single standard of PCT guideline, it would be expected that national examinations at the International Authorities will also be carried out in accordance with standards close to the PCT standard, if both processes would be carried out simultaneously. Namely, double-standard examinations would be discouraged. Harmonization of patent systems are discussed at the WIPO SCP thus far, but reaching the conclusion may take long time. A simultaneous process would promote and facilitate national examinations accorded with the PCT guidelines, which could be the de facto standard and contribute to harmonization of patent systems.

I would like to explain the fourth advantage. By use of simultaneous process, examiners could process an international application and a corresponding

national application simultaneously. The two applications could be searched and examined at the same time, which reduces the duplicated work. For example, it reduces duplicated work regarding reading or understanding of the descriptions and the prior art documents. And, in many cases, technical understanding and assessment of patentability could be proceeded at once. Thus the simultaneous process would nearly halve the workload in the International Authorities.

There are two main methods to realize this simultaneous process. The first method would be designing domestic system to promote the early request for examination on the basis application or early entry of the international application that meets the timing of International Search. One promoting measure would be the fee reduction applied to those early request or early entry. The second method could be designing international system to facilitate the simultaneous process. For example, the time limit for the international search and other procedures in the international phase could be modified.

Lastly, I’d like to conclude my presentation. Simultaneous process of international and national applications could contribute to simplification of the system and streamlining of procedures and have many advantages. The simultaneous process is related to one of the discussion points for the further reform with regard to integration of search and examination procedures. This simultaneous procedure could also be one of the important approaches to greater

integration of international and national procedures. Thank you for your kind attention. (Applause)