An interview with Tetsuhiro Hosono

In 1721, the Tokugawa government prohibited inventing in Japan through the shinki gohatto law. In order to maintain feudal authority over the Japanese populous, it ensured that no one could develop anything that might dramatically improve people’s lives.

Thankfully, times have changed. Today, Japan is a hotbed of invention, and its patent office is one of the world’s most active and well respected. And Japanese patent law is 125 years old this year.

Tetsuhiro Hosono became the 78th commissioner in charge of the Japan Patent Office (JPO) on July 14, 2009. Before that, he was director general of the Manufacturing Industries Bureau in the Ministry of Economy, Trade and Industry (METI). The bureau administers the development of manufacturing industries in Japan.

“During my years in the bureau, I strongly felt from the user’s perspective that an efficient and stable intellectual property system is crucial for supporting innovation and realising sustainable development of our manufacturing sector and economy,” Hosono says.

“In order to keep our patent system adapted to our present society and especially to its request for a pro-innovative environment, we need to constantly maintain and streamline it. The JPO has been exploring possibilities to improve the system over the past year, and I am hopeful of concluding this process soon.”

Like many patent offices across the world, the JPO has work to do on speeding up the patent examination process. This is crucial to maintaining a healthy marketplace.

“[Speeding up examinations] will allow an applicant to use resources more efficiently; that is, if the applicant can expect his or her invention to be patented, he or can focus on marketing his or her invention, and if not, he or she can focus on R&D for a different invention,” Hosono says.

“Our goal is to decrease the first action pendency time to 11 months after request for examination by the year 2013. The pendency in the year 2009 was 29.1 months on average to first action and 35.3 months to final action. We are seeing a steady increase in output, and there was nearly a 20 percent decrease in the total backlog in 2009. I am confident that our efforts will lead to a positive outcome.”

But while there is certainly room for improvement, in some ways, the JPO is ahead of the game.

“We have also strengthened our IT infrastructure, starting from the introduction around 20 years ago of the world’s first electronic filing system, which is used for 97 percent of our present patent and utility model filings, and continuing the improvement of our search system to gain quick access to prior art documents,” Hosono says.

Applicants looking for accelerated examination under the current system are well provided for as well.

Hosono says: “The JPO’s accelerated examination programme covers a wide range of applications and produces the first office action within nine months of request, with an average time of two months. The JPO also has a ‘super’ accelerated examination pilot programme for more urgent cases, in which the average time for first action is 25 days.”

However, there is little point speeding up patent examination and tackling the backlog if there is no guarantee that quality patents will result. The JPO is tackling this issue too.

“In most of our present search outsourcing, face-to-face discussions are held between the examiner and searcher to evaluate and redo searches if necessary, resulting in improved search quality,” Hosono says. “We have also been analysing our examination quality in which our Quality Management Office plays a central role. Examined applications are sample checked, related statistical information is compiled and user reviews are conducted.”

“We have also been actively co-operating with our IP5 partners [EPO, US PTO, the Korean IP Office and the State IP Office of the People's Republic of China] in creating a work-sharing environment through IT and other examination-related foundation projects.”

As many patent offices will testify, one of the key difficulties stopping speedy examination is lack of resources. If there is a lack of personnel, or if the personnel are not trained to a sufficiently high standard, that will have an impact on every aspect of a patent office’s success. The knock-on effects of resource constraints can be huge. If patents are poor quality, litigation is likely to increase, and if applications take forever to process, that may chill innovation within companies that are concerned about their IP protection and therefore the commercial viability of their inventions.

The JPO seems to take these risks seriously and has made efforts to deal with them.

Hosono says: “We have taken bold steps, including the recruitment of approximately 500 fixed-term patent examiners, a substantial part of our 1,700 patent examiner workforce and a great increase in the number of search outsourcing.”

The financial situation of the office is adequate as well. “The JPO is funded under the Patent Special Account Law, which is a system to cover the expenses required for the accomplishment of the JPO’s administrative work by fees (mainly, application fees, request examination fees and annual/registration fees) paid by applicants,” Hosono says. “Currently, the JPO is sufficiently funded to implement necessary efforts.”

An added advantage, at least in terms of how to assign available resources, lies in the numbers.

“The annual number of patent filings has been gradually decreasing since 2006,” Hosono says. “One factor behind the decrease may be a shift of the applicant’s patent strategy from quantity to quality. In addition, we think that the decrease of patent filings in 2009 was influenced by the global economic crisis.”

But while the number of filings decreased in 2009, the number of registrations increased.

Hosono explains: “The increase in the number of registrations is a result of the increase in the number of patent examinations, achieved through the improvement of examination efficiency using a variety of measures such as the increase of the outsourcing of prior art searches. However, it should be noted that the allowance rate is the same level as the previous year.”

Trademarks

Like the majority of its international cousins, the JPO doesn’t only focus on patents. It is also responsible for trademarks and, Hosono says, fulfils the role with considerable success.

“Regarding trademark examination, efforts are being made to improve examination efficiency through further automation of the examination process and use of private-sector capacity,” he says.

“Examination pendency [5.9 months as of March 2010] is at a non-problematic level compared to other foreign offices. In addition, we have launched a project to consider quality management to further maintain and improve the quality of examination. We are also planning to conduct a survey of quality management methods using private-sector capacity. Furthermore, the possibility of registering new types of trademarks such as sounds is under consideration.”

The JPO examines design applications as well, and there are about 50 design examiners in the JPO. In 2009, it took 7.1 months on average to first action.

“We have also made efforts to clarify the examination procedures in the Design Examination Standard, to clarify similarity decisions in our office actions, and to disclose similar designs and publicly known designs through our intellectual property digital library,” Hosono says.

The international picture

Japan is one of the most active patent offices on the international scene; it has to be, given the influence its decisions have on international companies. While its outward-looking stance is nothing new, the past year has seen its international efforts increase at an even faster rate than before.

“We have been working with foreign patent offices to improve our work-sharing, which includes five new Patent Prosecution Highway [PPH] programmes since last July and a new Patent Cooperation Treaty-based PPH pilot with our trilateral partners, namely the European Patent Office [EPO]and the United States Patent and Trademark Office [USPTO],” Hosono says.

“We have hosted and co-hosted plurilateral PPH meetings respectively with the Danish Patent and Trademark Office and with the USPTO, to discuss the streamlining of PPH requirements between different programmes.”

He adds: “We have also been actively co-operating with our IP5 partners [EPO, USPTO, the Korean IP Office and the State IP Office of the People’s Republic of China] in creating a work-sharing environment through IT and other examinationrelated foundation projects.”

The JPO has positioned itself as one of the most important patent offices in the world, and is well prepared to deal with any rise in application volume that accompanies the easing of the economic crisis. And as the balance of patent power continues to shift eastwards, the decisions that the JPO makes today may well have a large influence on what happens across the globe tomorrow.