Registered Search Organizations~ Collaborators in expediting the patent examination process with JPO~

Dr. Keiichi IKEGAMI
Senior Executive Officer

AIRI Co., Ltd.
Workshop on the TOYOTA Foundation project in Kyoto, July 11-12, 2024 (partially revised)
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AIRI Co., Ltd., a registered search organization
AIRI is the largest private registered searchorganization in Japan.
Founded in 2006 by Dr. Teruo Kodama, the former Director-Generalof a prestigious national institute under the Ministry of Economy, Tradeand Industry (METI), AIRI was established with the aim of tackling
two significant societal challenges. The first is to expedite the patentexamination process, thereby contributing to the advancement ofJapanese industry. The second is to provide employment
opportunities for senior engineers and researchers, who often faceinadequate recognition and support within Japanese society.
AIRI began with a modest group of just 13 members and has sincegrown to encompass over 400 members, which includes a cadre ofmore than 300 seasoned engineers and researchers.

Presently, AIRI's scope of operations has broadened to include patent
search and advisory services for a diverse array of clients, both
domestic and international (companies, governmental organizations).
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Dr. Teruo KODAMA
Chairman, Representative Director
AIRI Co., Ltd.
1999 Director-General, ElectrotechnicalLaboratory, (Present: Nat. Inst. Adv.
Ind. Sci. Tech.)2001 Technical advisor, Osaka Gas Co.,Ltd.
2003 Senior Managing Director, KRI. Inc.
2006 established AIRI Co., Ltd.

1

Self-introduction
1985

Master of Science (Graduate School, University of Tokyo)

1985~ 2010 Researcher in the chemical physics field, specifically studying Langmuir-Blodgett films offunctional molecules; worked at Electrotechnical Laboratory, METI, Centre de recherche Paul Pascal,CNRS (France) and National Institute of Advanced Industrial Science and Technology (AIST);
published ca. 100 scientific papers and obtained 12 patent rights including 1 USA patent.
1993

Ph. D. (Graduate School, University of Tokyo)

2005~2007 Director of R&D Planning Investigation, Research and Development Division, METI
2010~2015 Deputy Director, Nanosystem Research Institute, AIST
2014

Visited National Nanotechnology Center of Thailand (Prof. Sirirurg Songsivilai, Dr. Chalong
Laochariyakul) and Chiang Mai University (Prof. Somsorn Singkarat, Prof. Dheerawan Boonyawan)

2015~2019 Deputy Director, Regional Collaboration Promotion Department, AIST

2019~2021 Deputy Director, Tohoku Research Center, AIST
2021

Moved to AIRI Co., Ltd.

2023~Senior Executive Officer, AIRI Co., Ltd.

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2

Outline
Registered Search Organizations◆Why Collaboration?

◆What Collaboration?
◆Search Business◆Conclusion

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3

Why Collaboration?

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Japanese patent policy in early 2000s
2002 Prime minister Mr. Koizumi declared that the government would vitalize
Japan by utilizing intellectual properties (IPs).
2005 Mr. Koizumi issued “Intellectual Property Promotion Plan 2005”➢ At that time, the waiting period for patent examinations reached approximately 26 months.
This was expected to worsen due to a surge in the number of examination requests, driven by
two factors: the reduction in the period for requesting examinations (from 7 to 3 years), and ashift in Japanese corporates’ policy towards emphasizing IPs.
➢ Despite such circumstances, the government set a goal to reduce the waiting period for thefirst action of the patent examination process (FA) to less than 30 months on average by
2008, and further aimed to reduce it to 11 months by the end of the fiscal year 2013.
➢ The most significant issue was the shortage of manpower in the Japan Patent Office (JPO).
In 2004, the number of cases handled per examiner in Japan was 205, compared to 83 in theUnited States and 42 in Europe.
Reference) https://www.kantei.go.jp/jp/singi/titeki2/kettei/050610.html#2-1; D. Megro, Gijutsukon 293 (2019) 50.
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Acceleration of patent examination was required
2006 Ministry of Economy, Trade and Industry installed “Headquarters for thePromotion of Acceleration and Efficiency of Patent Examinations”➢ Hurdle: Japanese national finances could afford no significant increase in the number ofregular patent examiners.
➢ Approach 1: hiring fixed-term patent examiners.
➢ Approach 2: enhancing support to patent examiners by expanding outsourcing in the searchfor prior art literature.
→ Besides the Industrial Property Cooperation Center (IPCC), a semi-public organization,
established to support Japanese patent administrations in 1985, purely private companies
were also permitted (and encouraged) to enter this business field, as registered searchorganizations.

Reference) https://www.jpo.go.jp/system/laws/sesaku/document/honbu_patent_jinsokuka/01.pdf
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6Outsourcing in the search for prior art literature300

20 organizations

Reference) D. Megro, Gijutsukon 293 (2019) 50.

Cases (× 1000)

250

200
10150
10050

Number of registeredsearch organizations

Delivery type cases

Cases with foreign literature search
Dialogue type cases

0Fiscal year

0IPCC
Private sectors
AIRI
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Further demands
2014

Cabinet Office Intellectual Property Strategy Headquarters issued “Intellectual propertypromotion plan 2014”➢ FA10: the waiting period for the first action of the patent examination process (FA) should be reduced
to 10 months by the FY2023, on average.
➢ STP14: By the same fiscal year, the period from the request for examination of the application to theacquisition of patent rights, referred to as Standard Total Pendency (STP), should be reduced to 14
months, which is half of the averaged value in 2012. (This does not apply if the applicant makesamendments, etc.)

Reference) https://www.kantei.go.jp/jp/singi/titeki2/kettei/chizaikeikaku2014.pdf
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STP14 and FA10 have been accomplishedThe goals have been accomplished through the collaboration
between JPO and registered search organizations.
months

Waiting period for
the First Action (FA)Standard Total
Pendency (STP)
STP14 and FA10
have beenaccomplishedReference) https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/chizai_bunkakai/document/18-shiryou/03.pdf
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What Collaboration?

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Patent system in JapanThe objective of the patent system is to stimulate economic growth and enhance
the welfare of citizens via technological innovation.
A patent is a form of intellectual property that provides its owner with legal protection for
their invention for a limited period (20 years), in exchange for the publication of acomprehensive public disclosure of the invention.
➢ Invention: defined as the creation of advanced technical ideas utilizing natural laws.

➢ Protection: serves as an incentive for inventors by preventing others from commerciallymaking, using, selling, importing, or distributing the patented invention without permission.
➢ Public disclosure and limitation of the protection period: may encourage the public to
use the inventions through licensing contract, and potential competitors of the inventors tocreate improved inventions.
Reference) https://www.jpo.go.jp/news/shinchaku/event/seminer/text/document/2019_syosinsya/1_2_1.pdf
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11Patent examination
Since patents grant the owners strong exclusive rights, the interests of all parties (i.e., theinventors, the public, and society as a whole) should be well balanced in order to promote
innovation and technological progress, leading to economic growth and the welfare of citizens.
Therefore, patent examination should be rigorous to ensure that patents are granted only
for inventions that fully meet all the legal requirements for patentability.

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Major legal requirements for patentability➢ Industrial Applicability:
An invention must be capable of industrial application. Methods of surgery, treatment, or diagnosis performedon humans, methods that are solely for academic or experimental purposes, and methods that are clearly
impractical to implement cannot be patented.

➢ Novelty:
Inventions that become publicly known before the application cannot be patented, even if the invention is theapplicant’s own.

➢ Inventive step:
Even if the invention is not known, if it is a minor improvement over prior art or a simple combination of
known technologies that could be easily conceived by a person with ordinary knowledge in the field, it cannot
be patented.

➢ Subject matter:
The invention must fall within the “patentable subject matter” as defined by law. Abstract ideas, natural
phenomena, and mathematical formulas, for example, cannot be patented.
Reference) https://www.jpaa-tokai.jp/media/detail_471.html#:~:text=特許要件とは、発明,という要件のことです。
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Patent examination process

In order to expedite the substantive
examination phase, an indispensable
part of the patent examination process,the Japan Patent Office (JPO)
outsources the task of searching forprior art literature.

Reference) https://www.jpaa.or.jp/intellectual-property/patent/
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Search for prior art literature➢ Although the search for prior art literature is an indispensable part of the patent examination process,it is administratively less important when compared to judging patentability based on the searcheddocuments. The time of the patent examiners, who are government officials, should be better
allocated to the latter task, which is a type of exercise of public power. In contrast, the former, which
is a time-consuming task due to the vast amount of relevant literature, can be executed by private
sectors, specifically registered search organizations, to reduce the examiners’ duties and accelerate
the patent examination process. Reference) D. Megro, Gijutsukon 293 (2019) 50.
➢ Searchers in registered search organizations search for candidates for three types of literature:• “X” document: A document that can deny the novelty or inventive step of the patent application
without referring to other documents.
• “Y” document: A document that can deny the inventive step of the patent application byreferring to another Y document(s).
• “A” document: A document that cannot deny the novelty or inventive step of the patentapplication but is closely related to them.
Reference) https://www.inpit.go.jp/content/100881807.pdf
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Search Business

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Searchers➢ Workers engaging in the search for prior art literature are referred to as “searchers.”➢ Searchers have to obtain a national certificate of searcher’s qualification issued by The National
Center for Industrial Property Information and Training (INPIT), by taking a special course andpassing all related examinations administered by INPIT. This course is defined by "Act on Special
Provisions for Procedures related to Industrial Property Right".
➢ Only engineers and researchers with 4 years work experience are permitted to take that course.
➢ AIRI’s searchers are fully trained engineers and researchers with extensive experience of working at
major companies, universities, or national institutes.
Reference) https://www.inpit.go.jp/jinzai/kensyu/searcher/about_searcher.html
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Search flowReceive anapplication
to beexamined

Comparison
in detailUnderstandtheapplication

Selectcandidates
for X and Y
documents

Createsearch
formulasLiterature
surveyWrite thereport

Oralpresentation
to theexaminer

Screening

Followadditional
instructions(sometimes)➢ Searchers execute 6 to 10 cycles of the above flow in a month.

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Environment for search execution➢ The searchers in registered search organizations utilize a special patent search system that isdirectly connected to the JPO database via a dedicated line. As a result, they can efficiently andsecurely conduct their search activities.
➢ Their offices are completely separated from other spaces, and their usage is strictly limited toJPO-related activities. While standard PCs are also provided to the searchers, their usage is similarly
restricted to JPO-related tasks. When searchers conduct searches for private companies orgovernmental institutes other than JPO, they must use different PCs and offices specificallydesignated for that purpose. These restrictions are implemented by JPO to ensure information
security.

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19Registration of search organizations➢ JPO categorizes patent applications into 39 distinct fields, referred to as “kubun,” based on their coretechnologies. The INPIT certification for searchers is specific to a chosen “kubun,” which candidates
select prior to commencing their training.
Reference) https://www.inpit.go.jp/jinzai/kensyu/searcher/about_searcher.html➢ Registration of search organizations by JPO is also organized by “kubun.” To be eligible foroutsourced search tasks within a specific “kubun,” a search organization must employ at least ten
certified searchers for that category. Additionally, they must have established a positive track record
through preliminary outsourced projects.
Reference) https://www.jpo.go.jp/system/patent/gaiyo/sesaku/toroku/document/touroku_chousa/01.pdf➢ JPO recognizes registered search organizations as “professional groups of the search for prior art
literature.”
Reference) https://www.jpo.go.jp/system/patent/gaiyo/sesaku/toroku/touroku_chousa.html

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Registered search organizationsFirst registration
Date*

Organization

Registered “kubun”*

Industrial Property Cooperation Center (IPCC)(est. in 1985)

1-39, 40 (classification)

Techno Search, Inc.

March 11, 2005

10-20, 23, 25, 29, 39

Japan Association for International ChemicalInformation

March 11, 2005

30

Technology Transfer Service Corp.

June 5, 2006

1, 3, 6-8, 10, 14, 15, 17, 18, 19,
23-25, 27, 29, 31-36, 39

AIRI Co., Ltd.

March 22, 2007

1-39

Pasona Group Inc.

February 14, 2008

1-3, 6-10, 14, 15, 17, 19, 20-29,
31-39

Kogasoken Co., Ltd.

March 28, 2008

20-23, 25, 26

MIRAI Intellectual Property And Technology
Research Center Co., Ltd.

November 9, 20108, 10, 14, 15, 17, 18, 23, 31-39

Jet Patent Search Co., Ltd.

May 26, 20148*https://www.jpo.go.jp/system/patent/gaiyo/sesaku/toroku/document/touroku_chousa/07.pdf
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Conclusion

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Conclusion (1)Through the collaboration between JPO and registered search organizations, thegovernmental objectives established in 2013, namely FA10 and STP14, wereachieved in the fiscal year 2023. Moreover, it is anticipated that FA10 and STP14
will continue to be met in the future.
➢ Unlike patent policy formulation and patentability assessment, which are functions
grounded in national authority and ought to be conducted by government officials, thesearch for prior art is a task whose outcomes are minimally affected by the searchers'
individual traits and does not necessarily require execution by government personnel.
➢ Given that the search for prior art literature is a labor-intensive endeavor, outsourcing thistask to the private sector, particularly to registered search organizations, can lead to morestreamlined operations. This outsourcing enables patent examiners to reallocate their timeto duties of greater administrative significance.

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Conclusion (2)➢ Some features of the private sector may have contributed to this outcome. For instance,
private entities have the flexibility to hire experienced engineers and researchers, including
retirees, as searchers without being constrained by national personnel regulations, which
often favor hiring younger individuals through rigorous general knowledge examinations.
It is important to recognize that developing fully-qualified patent examiners, who possessboth in-depth technological expertise and a keen administrative acumen, is a time-intensiveprocess.

➢ On another note, the caliber of registered search organizations and the searchers they
employ is paramount. To ensure high standards, JPO has instituted stringent measures:
searchers must obtain certification from INPIT; search organizations are expected tomaintain quality of reports and oral explanations subjected by their searchers; and they
have to sustain adequate staffing levels in each technological domain “kubun” theyspecialize in. Furthermore, these organizations are mandated to establish and maintainrobust information security systems.
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24Thank you

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