6 Future Patent System for Timely Patent Acquisition (*)
At the 17th meeting of the Intellectual Property Policy Committee of METI's Industrial Structure Council
held on March 30, 2012, it was stated that "it is necessary to examine the possibility of establishing a system thatallows applicants to choose the timing of examination based on their respective business strategies and IP
strategies. The system should be designed with reference to corresponding systems in other countries, aiming for abalance between the applicants' needs and the third parties' burden of monitoring."
In order to enhance Japan's international competitiveness, it is necessary to establish a system that allows
users to obtain a patent within a reasonable timeframe based on their respective IP strategies. It is therefore
necessary to discuss the future of the patent system as a whole, including the current accelerated examination
system, to allow each applicant to choose when to commence examination based on, for example, the merits anddemerits of the system, international trends and harmonization, and the effects of the system on society, theeconomy, and public well-being.
In this research study, we identified Japanese users' specific needs in relation to timely patent acquisition,
analyzed similar systems in other countries, and discussed a future system in Japan that would allow applicants tochoose when to commence examination.

I

Introduction

1

Background of this Research StudyThe JPO has been enacting various measures
to issue Office Actions to applicants in an efficientmanner, such as adopting a fixed-term examiner
system and outsourcing prior-art document
searches. In 2013, the JPO set out to shorten the
period from when an examination request is filed
to when the applicant receives the first Office
Action to 11 months. To this end, the JPO must
improve efficiency when preparing the first Office
Action in response to each patent application filed
in all technical fields, and it expects to achieve
this goal of shortening the period to 11 months.
However, the applicants' needs vary in terms ofthe desirable timing for receiving an Office Action
and acquiring a patent, because each applicant has
to take into account such factors as the nature of
the invention, unique circumstances to thetechnical field, and the business plan for the useof the invention.
At the 17th meeting of the Intellectual
Property Policy Committee of METI's Industrial
Structure Council held on March 30, 2012, it waspointed out that "it is necessary to examine thepossibility of establishing a system that allows
applicants to choose the timing for examination
based on their respective business strategies andIP strategies. The system should be designedwith reference to the corresponding systems inother countries, aiming for a balance between theapplicants' needs and the third parties' burden ofmonitoring."
In this increasingly globalized world, in orderto provide services that are in line with Japaneseusers' IP strategies, it is necessary to examine
the possibility of introducing a system that allows
applicants to choose when to commence
examination so that their diverse needs for patentacquisition are satisfied.
2

Purpose of this Research Study

The purpose of this research study is to
examine the specific needs of Japanese users
from the perspective of desirable timing of patentacquisition, to analyze similar systems in othercountries, to discuss a future system that allows
applicants to choose when to commence
examination in order to meet the diverse needs ofJapanese users, and to identify potential issues
that could arise with the introduction of such a
new system. The findings of this research will bemade available as basic data for discussions on afuture system reform, etc.
3

Method of this Research StudyIn this research study, we have conducted thefollowing activities and compiled our findings intoa research report:(i) Meetings held by a committee of 8 members,
namely, 2 experts with relevant knowledge(*) This is an English translation of the summary of the FY2012 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●

IIP Bulletin 2013 Vol.22

1 ●and experience, 5 experts from the industrial
circle, and 1 patent attorney (4 meetings in
total);(ii) Domestic questionnaire survey on 1,057
users, of which 521 users replied (Response
rate: 49.3%);(iii) Domestic interview survey on 20 users
selected from the users subject to thedomestic questionnaire survey;(iv) Questionnaire survey with the USPTO, theEPO, the KIPO, and the IPOS;(v) Interview survey with the USPTO, the EPO,
and the KIPO; and(vi) Researchonthepublicly
available
information concerning the timeframe forcommencing examination.

Ⅱ Timeframe for Commencing
Examination in Japan1

Measures Taken in Japan

In order to facilitate work-sharing among
patent offices, Japan has been promoting earlysharing of JPO's examination results by taking
such measures as the PPH (Patent Prosecution
Highway) and the JP-FIRST (JP-Fast Information
Release STrategy).
2

Acceleration of commencement of theexamination

To accelerate examination, Japan has theprioritized examination system, the accelerated
examination system, the super accelerated
examination system, and the accelerated trial
system. Currently, the prioritized examination
system is rarely used probably because users
favor the accelerated examination system instead.
3

Deferment of commencement of the
Examination

In Japan, any user who wants to defer
commencement of the examination may use theexamination request system and defer theexamination request’s filing.

Ⅲ Timeframe for Commencementof Examination in Other Countries

Acceleration ofcommencementof theexamination

Deferment ofcommencementof theexamination

EPO
PACE
- Accelerated
search- Accelerated
examination

KIPO- Prioritized
examination- Superaccelerated
examination- None- Deferredexamination
requestsystemThe three patent offices differ in terms ofapplication criteria, the effects of the systems,
etc.
The USPTO's deferred examination system
is designed to defer the issuance of an Office
Action during the period designated by theapplicant by up to three years from the priority
date.
The KIPO's deferred examination request
system is designed to allow each applicant todesignate when to commence examination withina maximum five-year window (within theexamination request period) from the application
filing date.
The number of cases in which the USPTO'sdeferred examination system or the KIPO'sdeferred examination request system has beenused is not very high.

Ⅳ Timeframe for Commencementof Examination1

Acceleration of commencement of the
Examination

We have discussed the following issues
related to acceleration of commencement of theexamination:(Issue 1)
The need to continue accelerated
examination, etc.;(Issue 2)
The need to establish a statutory
provision for accelerated
examination, etc.;(Issue 3)
Necessary improvements to accelerated
examination, etc.; and(Issue 4 ) The need to issue the final Office Action
earlier
Each issue is explained in the following
sections.
(Issue 1)

The USPTO, the EPO, and the KIPO havethe following systems to allow each applicant tochoose the timeframe for commencing examination.
●

USPTO- Accelerated
examination- Track 1- Dependingon age andhealth- Deferredexamination
systemThe need to continue accelerated
examination, etc.

The domestic questionnaire survey has
2 ●IIP Bulletin 2013 Vol.22

revealed that, as far as accelerated examination isconcerned, the recognition ratio and thefrequency of use are extremely high.
On the other hand, the super accelerated
examination system is well known, but rarely
used. Many respondents have explained that thereasons they do not use the system are that noneof their applications have fulfilled the application
criteria and they are satisfied with the speed of
the ordinary examination system or theaccelerated examination system. The 72.2% of
respondents who said that they have not used thesuper accelerated examination system or thatthey were not aware that such a system existed
also replied that they would like to use the super
accelerated examination system when they have aqualifying application. This indicates that, as far
as the super accelerated examination system isconcerned, while the current use rate is low,
there are many potential users.
The domestic interview survey has revealed
that applicants use the accelerated examination
system mainly because they have decided to orplanned to conduct business by using theinvention claimed in the application or because
they consider the claimed invention to beimportant technology.
The committee has not expressed any
negative view on the accelerated examination
system itself, but found the system to bebeneficial.
Other countries also have a system toaccelerate
patent acquisition. From theperspective of promoting work-sharing among
patent offices, it is beneficial that the JPO has theaccelerated examination system, etc., designed to
speed up the issuance of an Office Action.
(Issue 2)

The need to establish a statutory
provision for accelerated examination,etc.

Other countries have laws and regulations
specifying systems to accelerate patentexamination, such as the accelerated examination
system. On the other hand, Japan does not have
any law, regulation, etc. specifying theaccelerated examination system and the super
accelerated examination system. But it does havea statutory provision specifying the prioritized
examination system.
The domestic questionnaire survey and thedomestic interview survey have not revealed any
concerns or dissatisfaction about not having astatutory
provisionfortheaccelerated●

IIP Bulletin 2013 Vol.22

examination system, etc.
The committee has stated that, although it
may be desirable to establish a statutory
provision from the perspective of system stability,
it would not make much difference to the current
practice of accelerated examination because there
is a trusting relationship between the JPO andusers in Japan.
Given the absence of a call for theestablishment of a statutory provision, thecontinuation of the current practice without astatutory provision would not raise any issues.
(Issue 3)

Necessary improvements to accelerated
examination, etc.

We have discussed necessary improvements
to the accelerated examination system, etc., fromthe following two perspectives: the perspective of
the expansion of the applicability of theaccelerated examination system (the application
criteria for accelerated examination) andsimplification of the documents explaining thesituation, and the perspective of possible
measures against patent registration prior to
publication under the accelerated examination
system. 1- The expansion of the applicability of theaccelerated
examination
systemandsimplification of the documents explaining thesituation
In the domestic questionnaire survey, in
response to the question about necessary
improvements, some respondents have requested
expansion of the applicability of the accelerated
examination system and simplification oromission of the documents explaining thesituation.
The domestic interview survey has revealed
that most of the respondents use the accelerated
examination system because of applications
claiming foreign priority and have notexperienced an undesired inability to fileapplications caused by not satisfying theapplication criteria.
On the other hand, some respondents havementioned that the "application for an invention
being worked or to be worked" is an inconvenient
application criterion for accelerated examination.
This is because the filing of an application under
this category would reveal to third parties thatthe invention claimed in the application iscurrently being worked (or to be worked). In
3 ●particular, in the case of the super accelerated
examination system, since the "application for an
invention being worked or to be worked" is an
essential application criterion, some respondents
requested the omission of "application for an
invention being worked or to be worked" from theapplication criteria.
Regarding issues related to the submissionof documents explaining the situation, while some
respondents pointed out that the number of
documents required to be submitted should be
reduced, some mentioned that the submission ofsuch documents explaining the situation ispreferable because it would prevent abuse of theaccelerated examination system.
The committee has stated that the complete
abolishment of the application criteria for
accelerated examination would lead every
applicant who requests examination to file anapplication for accelerated examination. The
committee also mentioned that this situation
would
renderaccelerated
examination
meaningless and, therefore, that it would benecessary to impose certain requirements, suchas fees.
The survey results described above indicatethat users are somewhat satisfied with thecurrent accelerated examination system and thecurrent super accelerated examination system.
However, since some users request an
expansion of applicability of the systems andsimplification or omission of application
documents, it is necessary to discuss whether or
not any measures should be taken to satisfy such
requests in light of the objectives of theaccelerated examination system, etc.
- Patent registration prior to the publication of
the application under the accelerated
examination system
In response to the survey question onwhether the respondents had ever had problems
with the registration of another person's
invention under the accelerated examination
system prior to the publication of the application,
most respondents answered that they had not.
However, some respondents pointed out that,even though they hadn’t actually experienced thisproblem, it should be found problematic that apatent registration could be made without
providing third parties with an opportunity tosubmit information in advance. Some respondents
have requested early publication in the case of an
application subject to the accelerated examination●

system and the establishment of a review systemthat may be used after the patent grant.
The committee has stated that it would benecessary to take measures against patentregistration prior to the publication of theapplication under the accelerated examination
system.
(Issue 4)

The need to issue the final Office
Action earlier

The domestic questionnaire survey revealed
that most of the respondents are satisfied withthe timing of the receipt of an Office Action. The
relatively high level of satisfaction is probably
attributable to the fact that the wait time forreceiving the first Office Action has beenshortened thanks to the JPO's measures. On theother hand, some respondents pointed out that
there is a need to shorten the wait time evenfurther.
Regarding the importance of the timing of
the receipt of the first Office Action and thetiming of the receipt of the final Office Action,
while some respondents answered that they caremore about the timing of the receipt of the first
Office Action, a larger number of respondents
replied that they care more about the timing of
the receipt of the final Office Action or about thetiming of the receipt of both the first Office
Action and the final Office Action.
The committee stated, "When we discussed
the time frame for commencing examination witha certain industry group, some attendants
requested a system that would allow eachapplicant to control the timing for receipt of the
final Office Action rather than a system to control
when to commence examination, such as theaccelerated examination system and the deferredexamination system.”As described above, we have identified aneed to prioritize the timing for receipt of the
final Office Action.
In view of the fact that there is a need toissue the final Office Action earlier, it would benecessary to examine what measures can betaken within the framework of the current
practice in consideration of the maintenance offairness, transparency, etc.
2

Deferment of commencement of theexamination

We discussed the following issues related todeferment of commencement of the examination:
4 ●IIP Bulletin 2013 Vol.22

(Issue 1)(Issue 2)(Issue 3)

The need for deferment ofcommencement of the examination;
The examination request system;2andThe need for the deferred examination
systemEach issue is explained in the following
sections.
(Issue 1)

The need for deferment ofcommencement of the examination

The domestic questionnaire survey has
revealed that there are both a need to defer thetiming for receipt of the first Office Action and aneed to defer the timing for receipt of the final
Office Action.
In the domestic interview survey, therespondents were asked to name cases for which
they hoped to defer the commencement of
examination. Their answers may be roughly
categorized into the following:(a) Cases in which they want to delay thedecision-making about whether to seek
patent prosecution (an invention about which
they are uncertain about the future workingof the invention in their business because
the invention is related to basic research);and(b) Cases in which they hope to delay
determining the scope of claims despite adecision to seek prosecution (e.g., they want
to determine the scope of claims after seeing
the related standards established or aftermonitoring the moves of other companies).
The committee presented these example
cases in which applicants wanted to defer
examination due to a patent infringement lawsuit
and in which the applicant wanted to keep anapplication that could bring a broad patent thatwould be useful in licensing negotiations.
(Issue 2)

The examination request system

In the domestic questionnaire survey, many
respondents answered that they change thetiming of filing an examination request inaccordance with their respective IP strategies.
Many respondents found it problematic tointroduce a system like the US system without
modification—namely, scrapping the examination
request system and allowing each applicant tochoose when to commence examination—because
it would result in the abolishment of the●

IIP Bulletin 2013 Vol.22

examination request system. Many respondents
answered that the ideal length of an examination
request period is three years, which is currently
prescribed. Almost none of the respondents
replied that the examination request system is
unnecessary.
In the domestic interview survey, most of
the respondents answered that they differentiate
the inventions for which they want to obtain apatent as soon as possible from the inventions forwhich they do not, and file an examination
request at different times accordingly. Many
respondents have replied that they consider theexamination request period to be a period during
which they need to determine whether to seek
patent prosecution. While some respondents havepointed out that, in the case of an invention
related to basic research, the current three-year
period is too short for them to determine thebenefits of the invention, some respondents havestated that the current three-year period isreasonable in consideration of the burden ofmonitoring other people’s patents and theincreasingly fast development of technology.
(Issue 3)

The need for the deferred examination
systemThe domestic questionnaire survey has
revealed that some respondents are against thedeferred examination system because they areconcerned with an increase in the complexity ofthe system, the lack of necessity and also in theburden of monitoring other people’s patents.
In the domestic interview survey, when
asked whether they support the introduction of adeferred examination system, some respondents
said yes, while others said no. They are against
the introduction of the deferred examination
system because the demerits of the introductionof the system, namely, an increase in the burdenof monitoring other people’s patents, outweighs
the merits, namely, the deferment of thecommencement of examination of theirapplications.
The committee has pointed out, among otherthings, that, in the case of the introduction of a
new system, discussions should be held on its
possible negative effects, and that, if there is aneed for such a system, a new system should beestablished, while discussions should be held as
to whether the new system would ultimately
contribute to industrial development.
The surveys conducted abroad have revealed
that the EPO is concerned that Japan's
5 ●introduction of a deferred examination system
could have a detrimental effect on thework-sharing among patent offices.
As described above, there is a certain levelof need for deferred examination, while more thana few respondents oppose deferred examination
for fear of an increase in the burden of monitoring
due to the delayed patent grants.
In order to determine the necessity of thesystemorpracticeofdeferringthecommencement of examination, it is necessary to
discuss not only the demerit of increased burdenof monitoring but also the fairness, transparency,
efficiency, etc., of such system and practice inconsideration of various factors, such as theobjective of the Patent Act and the work sharing
with foreign patent offices.

Ⅴ Conclusion1

the abolishment of the examination request
system, while they support the current
three-year examination request period startingfrom the patent application date. This indicatesthat there is little need for review of the current
examination request system.
The establishment of a system or practicethat allows timely commencement of theexamination could raise the issue of an increasein the burden of monitoring other people’s
patents.
We need to discuss a future system andpractice of deferred examination based on the
deep understanding of the applicants' needs, theobjective of the Patent Act, the work-sharing withforeign patent offices, and the risk of increasing
the burden of monitoring, while ensuring themaintenance of fairness, transparency, efficiency,
etc.

Accelerated Examination1

Since many applicants highly value theaccelerated examination system and the super
accelerated examination system and find noparticular problems with the current system, it isnecessary to ensure continuation of the system.
On the other hand, since some people
expressed concerns about the possibility of patentregistration before publication of the applicationand presented a request for simplification oromission of the documents explaining thesituation and also for expansion of theapplicability of the system (more relaxedapplication criteria), it is necessary to continue
discussions on these issues.
While we have found that many applicants
are satisfied with the timing of the receipt of thefirst Office Action, some applicants would like thefinal Office Action to be issued earlier. Therefore,
it is necessary to understand the applicants’needs and devise measures to fulfill requests forearlier issuance of the final Office Action.
2

2

In the case where an applicant files a patentapplication, an examination request, and an application
for accelerated examination simultaneously, theregistration could be made prior to the publication of
the application, which will occur 18 months after theapplication filing date. In this case, third parties would
be deprived of the opportunity to submit information
after the publication of applications. This means that apatent would be granted without undergoing
examination by the public in the form of thesubmission of information. We discussed thenecessity for measures against patent registration
prior to the publication of the application.
As a means to defer the commencement of
examination, some applicants delay the filing of arequest for examination within the examination
request period. We discussed the necessity of theexamination request system itself and theappropriateness of the length of the examination
request period.
(Researcher: Shinji KAWAMURA)

Deferred examination

In order to allow applicants to defer
commencement of the examination, there would
be two possible approaches: a reform of thecurrent examination request system or theestablishment of a new system or practice thatallows any applicant who hopes to defer thecommencement of examination to choose when tocommence examination.
We have found that many applicants oppose●

6 ●IIP Bulletin 2013 Vol.22