In April 2013, the
Japan Patent Office (JPO) instituted a new system, hereinafter referred to as
“Collective Examination” with the intention of simultaneously conducting
examinations of multiple applications regardless of whether the applications are
a mixture of patent applications, design applications, utility model
applications, and/or trademark applications.
Under Collective
Examination, a team of JPO examiners is assigned to examine applications which could
potentially cover a wide range of fields, projects, and/or products for
applicants and businesses wishing to create more encompassing IP portfolios.
This would be useful at a time when a mixture of patent applications along with
design applications, utility model applications, and/or trademark applications is
necessary, particularly in the case when IP protection is necessary for the
launching of a start-up or the introduction of a new project or product.
Prior to October
1, 2014, the Collective Examination System required hearings and interviews be
held in order to understand the details of the business project or product and the
relationship among the various previously unexamined applications by the
same applicant.
On October 1, 2014, new less-stringent
requirements for requesting a Collective Examination were introduced by the
JPO.
Now, one Collective Examination
may be requested for a group of applications by different applicants, even
if examinations have already commenced for some of the applications. If the applications are clearly
recognized as belonging to the same business, or product, or the same research
and development project, an application(s) currently under examination is (are)
permitted in the group of applications submitted for Collective Examination.
It is anticipated that these
various applications will be used for the development of business projects,
specifically, the development of international business projects.
At the very least, one of the
applications among the group of applications must be either
1)
a “working-related application”, in which the applicant has already worked the
invention (or plans to work the invention within 2 (two) years of the date on
which the Collective Examination is requested); or
2)
an application which has been filed not only at the JPO, but also an IP office
in another country. Please note that PCT applications are not permitted in the
group of applications if the PCT application is in the international phase.
In addition, additional
applications can be included, substituted, replaced, etc., after requesting the
Collective Examination.
To
Request a Collective Examination
Before filing a
request for Collective Examination, please understand that the maximum number
of applications which can be grouped together for a Collective Examination is generally
restricted to 20 (twenty).
1)
A single applicant (in the case when there are multiple applicants) requests
the Collective Examination.
2)
The request contains a description of the business project or product and how
the project or product and the various applications are related.
3)
The JPO informs the applicant of whether the request is to be permitted. If deemed to be allowable, a coordinator
at the JPO will arrange interviews or hearings to be conducted and a team of
JPO examiners will be designated to perform the Collective Examination.
According to the
Japan Patent Office, in 2016, 36 separate filings were made requesting
examination under the Collective Examination System. These filings encompassed 360 patent
applications as well as trademark and design applications.