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TRAINING AND DIALOGUE PROGRAMS

GENERAL INFORMATION ON

Patent Examination Practice for APEC Economies

集団研修「ＡＰＥＣ特許審査実務」

JFY 2012

NO. J12-00703 / ID.1280132

From August 2012 to March 2013

Core Phase in Japan November 20, 2012 to December 13, 2012

This information pertains to one of the Training and Dialogue Programs of the Japan International Cooperation Agency (JICA), which shall be implemented as part of the Official Development Assistance of the Government of Japan based on bilateral agreement between both Governments.

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I. Program Concept Background

APEC (Asia Pacific Economic Cooperation) countries aim at reducing difference in economic development and eliminating an obstacle to development of this area, and these countries play an important role in economic development of the countries. Meanwhile, industrial foundation system of these countries hasn’t been improved and that would be a factor of obstruction to active economic exchange. Especially, intellectual property right system is a foundation to protect invention and trademark and promote industrial development, then, it is very essential for attraction of investment and sustainable economic development. However, examination system and procedure of patent application, appreciate execution of the rights, promotion of invention are insufficient in these countries. For what?

In order to obtain a stable patent right and contribute to industrial development in APEC economies, it is indispensable for patent examiners to improve expertise which is necessary to conduct patent examinations, and to learn effective/efficient patent examination processes utilizing examination result in Japan. For whom?

The program is offered to patent examiners who have more than three years of experience in substantive patent examination in the APEC economies. How?

Participants shall understand a general picture of patent examination practice in Japan and also acquire the skill to utilize the Japanese patent examination result in their prior-art search, mainly through a series of lectures and observations conducted by Japan Patent Office (JPO) and Asia-Pacific Industrial Property Center (APIC), Japan Institute for Promoting Invention and Innovation(JIPII).

In addition, discussions among participants and lecturers, and presentations of Country Report by participants would be opportunities to exchange the information of current states of your patent examination practice and to recognize its potential problems.

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II. Description 1. Title : Patent Examination Practice for APEC Economies (J12-00703) 2. Period of program:

Duration of whole program: August 2012 to March 2013 Preliminary Phase: August 2012 to November 2012 (In a participant’s home country) Core Phase in Japan: November 20 to December 13, 2012 Finalization Phase: December 2012 to March 2013

(In a participant’s home country)

3. Target Countries (allocated numbers of participants):

China (1), Indonesia (2), Malaysia (1), Philippines (1), Thailand (1), Viet Nam (1), Papua New Guinea (1), Chile (1), Mexico (1)

4. Eligible and Target Organization

The intellectual property office in APEC economies 5. Total Number of Participants: 10 6. Language to be used in this program: English 7. Program Objective

Participants are expected to A) improve expertise which is necessary to conduct patent examinations B) learn effective/efficient patent examination processes

8. Overall Goal

Improved examination ability/processes will be realized towards obtainment of stable rights. Due to efficient examination utilizing results obtained in Japan, examination workload in the countries of participants will be alleviated in addition to that improvement in the quality of examination can also be expected. If industries in their countries will able to obtain a stable right, such stable patenting is expected to contribute to economic development of these countries.

9. Certificate

A certificate of participation will be issued to the participants at the end of the training program.

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10. Expected Module Output and Contents:

This program consists of the following components. Details on each component are given below:

(1) Preliminary Phase in a participant’s home country (August 2012 to November 2012) Participating organizations make required preparation for the Program in the respective country.

Expected Module Output

Activities

Country Report Writing and Submission of a Country Report. The form of a Country Report is attached in this General Information as Annex 1.

(2) Core Phase in Japan (November 20, 2012 to December 13, 2012) Participants dispatched by the organizations attend the Program implemented in Japan.

Expected Module Output Subjects/Agendas Methodology

To have an overall picture of Japan’s IP systems /strategies /measures based on relevance with international treaties and trends; also make comparative explanation of patent system with those of their countries

(1) APEC Initiatives, and IP related international contributions

Lecture

(2) Outlines of Patent Law Lecture

(3) Outlines of IP –related laws

Lecture

(4) International Treaties and current trends

Lecture

(5) National IP strategies Lecture

To learn Japan’s search /examination methods and master how to effectively utilize Japanese examination results

(1) Examination guidelines / practice

Lecture

(2) International Patent Classification, search practices

Lecture

(3) Utilization of IPDL and AIPN

Lecture

(4) Efficient /effective examination process by utilizing examination results obtained in Japan

Lecture

To realize and explain subtle differences among them while referring to the laws and examination

(1) Case Study on Japanese examination practices

Lecture

(2) Presentation of country reports

Presentation

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guidelines and understand each country’s differences in judging patentability

(3) Opinion exchanges on each country’s patent examination practices

Discussion

(3) Finalization Phase (in a participant’s home country) (December 2012 to March 2013) The participants are requested to hold a dissemination meeting in the respective organization in order to share knowledge or experience they gain in the Core Phase in Japan with their colleagues. The participants need to write and submit a report of this dissemination meeting to JICA up to March 31, 2013

Patent Examination Practice for APEC Economies (Tentative)

AM: 10:00～13:00 / PM: 2:00～5:00

Date Time Subject Place

Nov. 20 Tue.

Arrival

Nov. 21 Wed.

AM 9:30～12:00 Briefing by JICA

TIC PM 14:00～15:00 Program Orientation by JICA

Nov. 22 Thur.

AM

10:00～10:10 Greeting by JPO and APIC

10:10～12:00 Explanation of "APEC Initiative and IP related international contributions"

12:00～12:30 Explanation of Curriculum Orientation by APIC

APIC

PM

14:00～17:00 Observation of the Japan Patent Office (JPO) and Courtesy Call on Executive Official

Observation of the National Center for Industrial Property Information and Training (INPIT)

JPO

Nov. 23 Fri.

National Holiday

Nov. 26 Mon.

AM Outline of Other IP related Laws APIC

PM National IP Strategies APIC

Nov. 27 Tue.

AM IP Treaties and Current Trends APIC

PM Outline of Patent Law APIC

Nov. 28 Wed.

All day

Presentation of Country Reports APIC

Nov. 29 Thur.

AM Outline of Examination Practice

APIC

PM Examination Standards (Novelty/Inventive Step)

Nov. 30 Fri.

All day

Examination Standards: Case Study 1(Novelty) APIC

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Dec. 3 Mon.

All day

Corporate IP Management (Company Visit) Company

Dec. 4 Tue.

All day

Examination Standards: Case Study 2 (Novelty) APIC

Dec. 5 Wed.

All day

Appeals/Trials Practice: Case Study APIC

Dec. 6 Thur.

AM PM

Practical Training on Search: IPDL/AIPN INPIT

Dec. 7 Fri.

AM Practical Training on Search （Searching a subject）

INPIT

PM Examination Practice: Comparison and Decision 1

Dec. 10 Mon.

AM Examination Practice: Comparison and Decision 2

INPIT

PM Examination Practice: Decision Result

Dec. 11 Tue.

All day

Patent Infringement Litigation: Case Study APIC

Dec. 12 Wed.

AM Overall Discussion TIC

PM

15：30～16：30 Evaluation Meeting TIC

16：30～17：00 Closing Ceremony TIC

Dec. 13 Thur.

Departure

* TIC；Tokyo International Center, Japan International Cooperation Agency

* APIC；Asia Pacific Industrial Property Center, Japan Institute for Promoting Invention and Innovation * INPIT; National Center for Industrial Property Information and Technology

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III. Conditions and Procedures for Application

1. 1. Expectations for the Participating Organizations (1) This program is designed primarily for organizations that intend to address specific

issues or problems identified in their operation. Participating organizations are expected to use the program for those specific purposes.

(2) This program is enriched with contents and facilitation schemes specially developed in collaboration with relevant prominent organizations in Japan. These special features enable the program to meet specific requirements of applying organizations and effectively facilitate them toward solutions for the issues and problems.

(3) As this program is designed to facilitate organizations to come up with concrete solutions for their issues, participating organizations are expected to make due preparation before dispatching their participants to Japan by carrying out the

activities of the Preliminary Phase described in sectionⅡ-10 (4) Participating organizations are also expected to make the best use of the results

achieved by their participants in Japan by carrying out the activities of the

Finalization Phase described in sectionⅡ-10.

2. Nominee Qualifications

Applying Organizations are expected to select nominees who meet the following qualifications:

(1) Present position and assignment: Governmental officials responsible for substantive examination of patent in the intellectual property office

(2) Occupational Background: Have at least three years of experiences in the above fields.

(3) Academic Record: Obtained at a minimum a university/college bachelor degree (B.A/B.S) or its equivalent.

(4) Age: Must be less than 50 years of age.

(5) Language: Have a good command of spoken and written English which is equal to TOEFL IBT 100 (CBT 250, PBT 600) or more, to attend lectures and discussions as well as make reports of patent-related issues.

(6) Health: Must be in good health, both physically and mentally, to participate in the course activities.

(7) Must not be serving in any form of military services

3. Required Documents for Application

(1) Application Form: The Application Form is available at the respective country’s JICA office.

*Pregnancy Pregnant participants are strictly requested to attach the following documents in

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order to minimize the risk for their health.

① letter of the participant’s consent to bear economic and physical risks

② letter of consent from the participant’s supervisor

③ doctor’s letter with agreement of his/her training participation. Please ask National Staffs in JICA office for the details.

(2) Country Report: Applicants are required to prepare the report in accordance with the subjects described in ANNEX 1 & I-a. The report should be typewritten in double-spaced English on A4 size (viz. 210 mm x 296 mm) paper, and no more than 10 pages in volume. It should be submitted to the JICA office or the Embassy of Japan together with the Application Form.

(3) Questionnaire: Applicants are requested to fill in the Questionnaire (the form is in ANNEX 2) which will be used for screening of applicants. It should be submitted to the JICA office or the Embassy of Japan together with the Application Form.

(4) Nominee’s English Proficiency Evidence: to be submitted with the application form. If you have an official documentation of English ability (e.g., TOEFL, TOEIC, IELTS), please attach a copy to the application form.

4. Procedure for Application and Selection

(1) Submitting the Application Documents Closing date for application to the JICA Center in JAPAN: October 6, 2012 Note: Please confirm the closing date set by the respective country’s JICA office or Embassy of Japan of your country to meet the final date in Japan.

(2) Selection After receiving the document(s) through due administrative procedures in the respective government, the respective country’s JICA Office (or Japanese Embassy) shall conduct an initial screenings, and send the documents to the JICA Center in charge in Japan, which organizes this program. Final selection shall be made by the JICA Center in consultation with the organizations concerned in Japan based on submitted documents according to qualifications. The organization intending to utilize the opportunity of this Program will be highly valued in the selection.

(3) Notice of Acceptance Notification of results shall be made by the respective country’s JICA office (or Embassy of Japan) to the respective Government by no later than October 20, 2012.

5. Conditions for Attendance:

(1) to observe the schedule of the program,

(2) not to change the program subjects or extend the period of stay in Japan,

(3) not to bring any members of your family,

(4) to return to your home countries at the end of the program in Japan

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according to the travel schedule designated by JICA,

(5) to refrain from engaging in political activities, or any form of employment for profit or gain,

(6) to observe Japanese laws and ordinances. If there is any violation of said laws and ordinances participants may be required to return part or all of the training expenditure depending on the severity of said violation,

(7) to observe the rules and regulations of your place of accommodation and not to change the accommodation designated by JICA, and

(8) to participate in the entire program in Japan.

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IV. Administrative Arrangements 1. Organizer

(1) Name: Tokyo International Center (JICA Tokyo) (2) Contact: Mr. Katsuichiro Sakai, Advisor, Industrial Development and

Finance Division 2. Implementing Partner

Name: Japan Patent Office (JPO), Ministry of Economy, Trade and Industry

URL: http://www.jpo.go.jp/index.htm Name: Asia-Pacific Industrial Property Center (APIC), Japan Institute for

Promoting Invention and Innovation (JIPII)

URL: http://www.training.iprsupport-jpo.jp/en/

3. Travel to Japan

(1) Air Ticket: The cost of a round-trip ticket between an international airport designated by JICA and Japan will be borne by JICA.

(2) Travel Insurance: Term of Insurance: From arrival to departure in Japan. *the traveling time outside Japan shall not be covered

4. Accommodation in Japan

JICA will arrange the following accommodations for the participants in Japan:

JICA Tokyo International Center (JICA TOKYO) Address: 2-49-5 Nishihara, Shibuya-ku, Tokyo 151-0066, Japan TEL: 81-3-3485-7051 FAX: 81-3-3485-7904 (where “81” is the country code for Japan, and “3” is the local area code)

If there is no vacancy at JICA TOKYO, JICA will arrange alternative accommodations for the participants. Please refer to facility guide of TIC at its URL, http://www.jica.go.jp/english/contact/domestic/pdf/welcome.pdf 5. Expenses

The following expenses will be provided for the participants by JICA:

(1) Allowances for accommodation, living expenses, outfit, and shipping

(2) Expenses for study tours (basically in the form of train tickets.)

(3) Free medical care for participants who become ill after arriving in Japan (costs related to pre-existing illness, pregnancy, or dental treatment are not included)

(4) Expenses for program implementation, including materials

For more details, please see p. 9-16 of the brochure for participants titled “KENSHU-IN GUIDE BOOK,” which will be given to the selected participants before (or at the time of) the pre-departure orientation.

6. Pre-departure Orientation The JICA Office in your home country will send to you some orientation materials

about Japan. Although we will schedule some organizational visits, there will be very little content on Japanese society and so please take time from you busy pre-departure schedule to review the materials.

http://www.jpo.go.jp/index.htmhttp://www.training.iprsupport-jpo.jp/en/

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VI. Annexes Annex 1: Country Report Writing

Patent Examination Practice for APEC Economies (JFY2012)

Country Report 1. The applicants are required to prepare a Country Report on the following subjects.

The report should be typewritten in double-spaced English on A4 size paper, and no more than 10 pages in volume.

2. It should be submitted together with the Application Form (Form A2A3). 3. Please include all references for any citations. 4. Please be sure to indicate the closing date for all statistics and organizational chart

(Ex. As of March 31 2012). 5. Each country (or each organization if the participants belong to different

organizations in the same country) will be requested to make 20 minute presentation including consecutive interpretation.

6. The Country Report presentation session will be open to personnel related to patent.

1. Name of the participant

2. Name of the country

3. Name of the organization

4. Post and responsibility

5. Organizational chart (Please attach a separate sheet)

6. Outline of the organization

a. Name

b. Name of the representative

c. Address, contact E-mail address and URL address (HOMEPAGE), if you have.

d. Name of the supervisory ministry (Please attach a separate sheet of organization chart)

e. Number of staff members The detail of your staff Ex) Patent, Utility Models, Designs, Trademarks, appeal board and clerical staff

f. Budget

g. Function and activities

7. Outline of the organization related to intellectual property rights 8. Domestic Law Regarding Industrial Property Rights

*Please complete the attached document (ANNEX 1-a)

9. The present situation and future direction of patent examination in your country, including problems to be solved

10. Expectations of this program

11. Statistics (for 3 years) a. number of filings and registrations of Patents, Utility Models, Designs and Trademarks (domestic and overseas) *Patents, Utility Models, Designs, if you have b. number of appeals and oppositions c. number of applications filed from Japan, if you have

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Annex 1-a:

～Domestic Law regarding Intellectual Property Rights～

Your Country

Subject of Protection Not established/

Already established1 Date of

enforcement of

current law2

Date of

enforcement of

recent revision3

Comments

D

O

M

E

S

T

I

C

L

a

w

Patents

Trademarks

Industrial Designs

Utility Models

Copyright

Unfair Competition

Trade Secrets

Computer programs

Layout

Designs(Topographics)

of Integrated Circuits

1…Already established → ○,

Not established → ×,

There is no particular law for this category but another law can be applied. → ◇

(Please refer to comments column.)

2…Please enter the day, month, and year the law was established.

3…Please enter the day, month, year of establishment of a recent revision.

*Reference*

JAPAN

Subject of Protection Not established/

Already

established1

Date of

enforcement of

current law2

Date of

enforcement of

recent revision3

Comments

D

O

M

E

S

T

I

C

L

a

w

Patents ○ 1 Apr. 1960 1 Sep. 2002

Trademarks ○ 1 Apr. 1960 1 Sep. 2002

Industrial Designs ○ 1 Apr. 1960 1 Sep. 2002

Utility Models ○ 1 Apr. 1960 1 Sep. 2002

Copyright ○ 6 May 1975 9 Oct. 2002

Unfair Competition ○ 19 May 1993 25 Dec. 2001

Trade Secrets ◇ - - Protected under the

Unfair Competition

Prevention Law

Computer programs ◇ - - Protected under the

Copyright Law

Layout

Designs(Topographics)

of Integrated Circuits

○ 31 May 1985 6 Jan. 2001

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Annex 2 : Questionnaire

Country: Name:

Patent Examination Practice for APEC Economies (JFY2012)

1. Please list the name(s) of any intellectual property seminar(s) or training course(s) which you have attended in the past.

Name of seminar/course: Name of host organization: Place: Period:

2. Please describe your all experience you have had so far in the industrial property field. 3. Please specify your expectations for the training. 4. Please attach a chart of your organization's structure and indicate your position therein. (Please attach the chart here separately from the one attached to your Country Report.) 5. Any requests regarding the training.

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For Your Reference JICA and Capacity Development

The key concept underpinning JICA operations since its establishment in 1974 has been the conviction that “capacity development (building)” is central to the socioeconomic development of any country, regardless of the specific operational scheme one may be undertaking, i.e. expert assignments, development projects, development study projects, training programs, JOCV programs, etc.

Within this wide range of programs, Training Programs have long occupied an important place in JICA operations. Conducted in Japan, you provide partner countries with opportunities to acquire practical knowledge accumulated in Japanese society. Participants dispatched by partner countries might find useful knowledge and re-create your own knowledge for enhancement of your own capacity or that of the organization and society to which you belong.

About 460 pre-organized programs cover a wide range of professional fields, ranging from education, health, infrastructure, energy, trade and finance, to agriculture, rural development, gender mainstreaming, and environmental protection. A variety of programs are being customized to address the specific needs of different target organizations, such as policy-making organizations, service provision organizations, as well as research and academic institutions. Some programs are organized to target a certain group of countries with similar developmental challenges. Japanese Development Experience

Japan was the first non-Western country to successfully modernize its society and industrialize its economy. At the core of this process, which started more than 140 years ago, was the “adopt and adapt” concept by which a wide range of appropriate skills and knowledge have been imported from developed countries; these skills and knowledge have been adapted and/or improved using local skills, knowledge and initiatives. You finally became internalized in Japanese society to suit its local needs and conditions.

From engineering technology to production management methods, most of the know-how that has enabled Japan to become what it is today has emanated from this “adoption and adaptation” process, which, of course, has been accompanied by countless failures and errors behind the success stories. We presume that such experiences, both successful and unsuccessful, will be useful to our partners who are trying to address the challenges currently faced by developing countries.

However, it is rather challenging to share with our partners this whole body of Japan’s developmental experience. This difficulty has to do, in part, with the challenge of explaining a body of “tacit knowledge,” a type of knowledge that cannot fully be expressed in words or numbers. Adding to this difficulty are the social and cultural systems of Japan that vastly differ from those of other Western industrialized countries, and hence still remain unfamiliar to many partner countries. Simply stated, coming to Japan might be one way of overcoming such a cultural gap.

JICA, therefore, would like to invite as many leaders of partner countries as possible to come and visit us, to mingle with the Japanese people, and witness the advantages as well as the disadvantages of Japanese systems, so that integration of your findings might help them reach your developmental objectives.

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CORRESPONDENCE For enquiries and further information, please contact the JICA office or the Embassy of

Japan. Further, address correspondence to:

JICA Tokyo International Center (JICA TOKYO)

Address: 2-49-5 Nishihara, Shibuya-ku, Tokyo 151-0066, Japan TEL: +81-3-3485-7051 FAX: +81-3-3485-7904