SEIWA PATENT & LAW

Overview of JPO's Collective Examination System

  • Patent/Utility Model
  • Design
  • Trademark
  • Change of Laws & Systems
  • Commentaries on Systems
  • I. JPO’s Collective Examination System commenced in April, 2013.
  •  
  • Along with the globalization of business activities and diversification of business models, corporate IP strategies have recently been shifting to those more associated with a specific business project.
  •  
  • The JPO therefore introduced a system of Collective Examinations for IP portfolios (“Collective Examination”) in April 2013, in view of the above IP strategies, as a type of Accelerated Examination. Under this system, the JPO can conduct examinations collectively regarding a group of IP applications comprising plural and different-type applications (e.g. patent plus design and/or trademark), involved with a specific business project.
  •  
  • According to the JPO, the Collective Examination can a) cover a group of applications in a wide range of technological fields by a team of JPO Examiners, b) create practical IP portfolios including patents, designs, and trademarks, and c) confer IP rights in time to launch new businesses.
  •  
  • In practice, the Collective Examination System utilizes interviews and hearings to clarify the background of a relevant business project as well as the technological relationship among each application, and will adjust the schedule for granting the applications in line with the applicant’s request.
  •  
  • II. Relaxing Requirements for Requesting Collective Examination
  •  
  • The Collective Examination System was welcomed, and there have been 49 requests for Collective Examination covering more than 600 applications in total so far. However, this system was available only to groups of unexamined applications filed by the same applicant. In order to make this system more user-friendly, the JPO relaxed the requirements for requesting this system as of October 1, 2014, by issuing new Guidelines.
  •  
  • The major revision of the new Guidelines is as follows.
  •   ・A single request for Collective Examination is allowed for a group of IP applications filed by different applicants.
  •   ・The group of applications can include applications for which examination has already been initiated.
  •   ・An application(s) can be added and/or replaced even after the Collective Examination is requested.
  •  
  • III. Applications Eligible for Collective Examination
  •  
  • 1. All applications in the group of applications should basically have not yet been examined, however, applications already under examination may also be included if they are recognized as being positioned in the same business project.
  •  
  • 2. At least one application belonging in the group of applications must be either of the following a) and b).
  •  
  •   a) Working-related application: Applications where an applicant or his licensee has already worked the invention or plans to work the invention within 2 years from the date of submitting a request for Collective Examination.
  •   b) Internationally-filed application: Applications that have been filed at the JPO and any other IP Offices abroad. However, PCT international applications in the international phase cannot be included in a group of applications.
  •  
  • 3. The group of applications must consist of IP applications which are positioned in a new business project and/or a project intended to be internationally developed.
  •  
  • IV. Procedures for Requesting Collective Examination
  •  
  • 1. The Collective Examination must be requested by an applicant of the applications in the group of applications. If there are plural or joint applicants, a single applicant needs to be selected for requesting the Collective Examination. A group of applications may include applications filed by an applicant other than the applicant who requested the Collective Examination.
  •  
  • 2. The request must contain an explanation of the business project and the relationship between the project and the applications. No official fee shall be incurred for requesting a Collective Examination.
  •  
  • 3. The JPO will check if the request for the Collective Examination is acceptable, and notify the applicant of the result. If positive, the JPO designates a coordinator in charge, who will arrange a schedule for the next procedures, such as interview and hearing, with a contact person of the applicant’s side, and the Collective Examination will then commence. A team of JPO Examiners (patents, if needed, designs and trademarks) will be organized for the Collective Examination.
  •  
  • V. Remarks
  •  
  • 1. The number of the grouped application will be practically limited to approximately 20, in order to effectively conduct the Collective Examination.
  •  
  • 2. If the same party requests Collective Examination too often, such requests may not be accepted to ensure that this system can be equally utilized by other parties.
  •  
  • 3. Interviews and hearings with the JPO Examiners team will be conducted inside Japan only, such as at the JPO and/or the applicant’s facilities in Japan. The team will not travel abroad. Non-Japanese applicants should visit Japan to undergo the Collective Examination.
  •  
  • October 28, 2014
  • IP Information Section
  • ©SEIWA PATENT & LAW 

Go to Top

Information

  • TEL:+81(0)3-5470-1900
  • FAX:+81(0)3-5470-1911

Access

Toranomon37 Mori Bldg. 10F,
3-5-1 Toranomon, Minato-ku,
Tokyo 105-8423, JAPAN

View more