JAPAN PROPOSES A "PATENT FTA"

UNCLAS SECTION 01 OF 02 TOKYO 000657

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E.O. 12958: N/A
TAGS: KIPR ETRD ECON JP
SUBJECT: JAPAN PROPOSES A "PATENT FTA"



1. (SBU) Summary: Building on earlier proposals for a
"Patent Superhighway" Japan is now considering what it calls
a "Patent Free Trade Agreement" (FTA) between the US and
Japan. The plan calls for the Japan Patent Office (JPO) and
US Patent Office (USPTO) to share the results of patent
examinations so that applicants could receive a speedier
patent review in the second country. After a 3-year
confidence-building period the GOJ proposes that the second
patent office grant a patent based on the results of the
first patent office's examination. GOJ believes that
Trilateral talks among U.S. Japan, and the EU on sharing the
results of patent searches are not progressing because of EU
internal problems, and that a targeted bilateral agreement
makes more sense because U.S. and Japanese views and approach
are much closer. However, US firms are wary of a system that
would obligate the USPTO to issue a patent based on the
examination results of another patent office. End Summary.


2. (U) The Cabinet's Intellectual Strategy Headquarters
(IPSH) Secretary-General Hiramitsu Arai shared his latest
proposal with John Neuffer, Deputy Assistant USTR for Japan;
Michael Keplinger, Senior Counsel, International Relations
Office, USPTO; and Steven Tepp, Planning Policy Advisor,
Office of Policy and International Affairs, US Copyright
office at IPSH on January 25.


3. (SBU) Background:

Japan is looking for ways to cope with the explosion of
patent applications in the last 10 years, which has lead to a
backlog of 800,000 applications and an average wait of 27
months before applications are examined. Recently it offered
to refund all application fees if companies would withdraw
their applications. The JPO is asking corporations that
submit more than 1000 patent applications a year to submit
fewer applications. An IBM-Japan Patent Attorney recently
told us that JPO had asked him to stop submitting so many
patent applications.


4. (U) According to JPO statistics, Japan alone handle 37
per cent of patent applications worldwide, while the US
handles 22 per cent and the EPC (European Patent Office) 21
per cent. Together the three offices handle 80 per cent of
worldwide patent applications. JPO has had trilateral
dialogues not only with the U.S. and EU but also with China
and Korea (the State Intellectual Property Office of China,
SIPO and the Korean Intellectual Property Office, KIPO.) JPO
Commissioner Nakajima recently announced that one of JPO's
priorities is to push for international harmonization of
patent systems. The JPO Commissioner called for a trial run
of what he called the "Patent Prosecution Super Highway" and
with the US Patent office. The JPO announced plans to start
a similar dialogue with Korea.


5. (U) IPSH's Patent FTA proposal:

IPSH now wants to take the idea a step further with a
bilateral agreement which would start with a three-year trial
under which applicants would be able to apply to either the
USPTO or JPO and each would share their examination results.
The second patent office would then be able to review the
patent application using the results of the first patent
office, do a "complimentary" examination, and grant the
patent if it finds no reason to refuse the application within
six months. During the three-year trial period the JPO and
USPTO would be able to develop more confidence in each
other's patent examinations.


6. (U) At the end of the trial period, the JPO and USPTO
would recognize each other's examination results and grant a
patent to applicants without a second examination.
Applicants and third parties would be able to file appeals
and/or take their cases to court in either country. If
successful, Japan would like to expand the agreement to
European Patent Convention (EPC) countries and others. The
ultimate goal is a true global patent.


7. (SBU) Comment:

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The Japanese government believes that IPR is a very promising
area for strengthening US-Japan bilateral cooperation. This
is another ambitious plan from the IPSH, but one which may
encounter much resistance. In talking to U.S. companies and
patent attorneys in Tokyo, as well as the Japan Intellectual
Property Association (JIPA) we find great enthusiasm for the
first part of the plan, in which the USPTO and JPO are able
to share examination results and thus speed up the process.
However, even U.S. companies which might stand to benefit
from mutual recognition of patents, such as IBM, are wary of
a system whereby the USPTO would have to issue a patent based
on the examination results of another patent office. End
Comment

SCHIEFFER