GSC IPR Working group meeting 20th April, 2015 Cooperation between SSO and JPO through use of standardization documents in patent examination Yu Kochi Deputy Director Administrative Division Japan Patent Office ([email protected]) Contents １．Use of standardization documents in patent examination Benefit of the cooperation Importance of standardization documents as prior art Impact of standardization documents to patent examination Opinions of user of patent system ２．Necessary condition to use standardization documents Publicly-available Status of standardization documents Access to standardization documents 1 １．Use of standardization documents in patent examination 2 Benefit of the cooperation Both SSOs and JPO can obtain benefits when JPO use standardization documents as prior art for patent examination. Benefit for SSOs and its members - Suppression of the number of SEPs through patent applications that do not have novelty or inventive step are rejected - Contributors to standard development can take part in standard setting process without worries Benefit for JPO and user of patent system - Quality assurance in patent examination 3 Importance of standardization documents as prior art Flow of time Filing application (not published) Patent applications filed by true inventors New technology A Not Prior art Patent applications filed by third parties Prior art Contributions or proposals for standards by true inventors Publication of application (at 18 months from the filing) Standardization document Draft standards for new technology A (published) New technology A Not Prior art Filing application for A´ Similar technology A’ Patent application A’ is refused by the standardization document 4 Impact of standardization documents to patent examination (1) Number of standardization documents cited in decision of refusal with examiner’s opinion in JPO Result of patent examination as total in JPO (2013) 1,200 others (IEEE,Wi-Fi) 400,000 ETSI 1,000 4,090 IETF 350,000 ITU-T 800 3GPP Withdrawal/Aband onment 60,356 300,000 48,198 600 250,000 Decision of refusal due to lack of reply from applicants in designated period 200,000 400 150,000 260,046 200 Decision of refusal with examiner's opinion 100,000 Decision of patent 0 2007 2008 2009 2010 2011 2012 2013 2014 ※ It is rare that multiple standardization documents are cited in a decision of refusal, so this statistics is almost equivalent to the number of rejected patent applications with examiner’s opinion by standardization documents. 50,000 0 5 Impact of standardization documents to patent examination (2) In JPO, in a year, with approximate estimation, ・The number of decision of refusal with examiners opinion is about 50000 ・1000 in 50000 refusals are based on standard documents ⇒ 1000/50000 = 2 % of refusals are based on standardization documents Share of communication technology in number of patent application in JPO (2013) Communication 5% In the technical field of communication, Others 95% ・Share of communication field in total patent application is about 5% ・The number of refusal in communication field is estimated to 2500 (5% of 50000) ・Most of standardization documents that JPO use is related to communication technology ⇒ 1000/2500 = 40% of refusals are base on standardization documents 6 Opinions of major patent applicants JPO interviewed 10 Japanese company as major patent applicants as well as participants of SSOs about use of standardization documents for patent examination The result is, ・10 in 10 company agreed that JPO promotes to use standardization documents ・Some company answered that standardization documents in the field of ICT is important for patent examination 7 2. Necessary condition to use standardization documents 8 Publicly-Known Status of standardization Documents (1) In order to use standardization documents for patent examination as prior art that can deny patentability of someone’s application, ・Publicly-available Status in Japanese patent Act should be confirmed ・The date of issue should be shown 9 Publicly-available Status of Standard Documents (2) Validity of publicly-available Status Condition Publicly-available Status On free website anyone can access Yes On sale for anyone Yes Member of the SSO only, but anyone can be a member Documents are distributed in SSO meeting. Anyone can join the meeting and obtain the documents Yes Documents are confidential No Yes Note: This table shows concept, but actually the publicly-available status of each document is carefully considered in case by case basis 10 Access to standardization documents For standardization documents that have “publicly-available status”, it can be used in patent examination as prior art. JPO would like SSOs to provide us the access to documents for patent examination. 11 Thank you very much. 12
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