As a Japanese patent attorney, I’ve handled, and I’m aware that there are a large number of applications to Asian countries, especially China and South Korea. Therefore, I would like to describe my Japanese perspective on patent examination practices in China and Korea at the China Patent Office (CNIPA) and the Korea Patent Office (KIPO)
I: Impressions regarding examinations at the China Patent Office (CNIPA)
The Chinese patent system has a history of only 40 years since its establishment. To establish the patent system, I heard that the Chinese government dispatched examiners to the JPO, EPO, and USPTO to study abroad. Therefore, the current patent system is mainly based on the EPC and Japanese patent systems.
The examination situation until the patent is granted at the examination stage seems to be stable and appropriate from the perspective of Japanese patent attorneys.
However, there are differences with regard to the measure of the relief for loss of novelty resulting from the application process. The public practice, before filing an application, of it being laid open to the public and thereby losing novelty, is often relieved in Japan, but it is not relieved under the Chinese Patent Law.
In practice, the application for the exception of the loss of novelty in Japan (and maybe in other foreign countries) is effective and eventually accepted. However, this is at the discretion of each examiner in charge, so if the examiner interprets the law very rigorously, the procedure for a remedy for loss of novelty may be denied. I have had this experience.
I think that the examination itself (judgment regarding novelty, inventive step, etc.) at the China Patent Office is basically performed appropriately. The reason for a CNIPA refusal of Japanese applications is almost the same as that of JPO‘s examinations, and in many cases, the cited documents are basically the same. It seems that the CNIPA, when they examine, they refer to the examination process of the Japan Patent Office (JPO).
Ⅱ: Exercise of rights
From the perspective of a Japanese patent attorney, unfortunately, there is still little impression that the rights are being exercised fairly and appropriately. This tendency is particularly noticeable in the exercise of rights in rural areas. In the case of China, the enforcement of rights is carried out not only by proceedings in courts, but also by administrative procedures in the administrative bureau. Administrative procedures are the system that eliminates infringing properties relatively quickly, and they are very effective procedures.
However, in my opinion, due to the influence of local protectionism in rural areas, foreign companies including Japan are not able to fairly carry out administrative procedures for infringing companies in rural areas. In the end, the infringer’s unlawful negotiation with the government may lead to a conclusion in their favor.
I have had this experience multiple times, and I have had difficulty explaining this to clients. For SMEs, it takes a certain amount of money to settle a dispute in a foreign country, and the amount is by no means small.
When the infrastructure of the IP protection system is “fragile”, the motivation for acquiring rights by foreign companies is naturally low. Currently, in the trade conflict between the United States and China, “appropriate protection of intellectual property rights” is still being voiced by the United States.
Impressions regarding the examination status at the Korean Intellectual Property Office (KIPO)
It is generally judged that examinations by the KIPO are basically conducted fairly. Even when the JPO’s examination of a case precedes, there is a tendency for the KIPO to conduct its own search and examination. In this case, all citations issued with the notice of reasons for refusal are in Hangul, and translation is very costly.
In this environment, the scope of the Japanese patent attorney’s work in response to a notice of refusal from the Korean Patent Office can be limited, and it may not be possible to properly effect a response to the KIPO, even if we have the cooperation with good Korean patent attorneys.
In addition, I suppose that in some situations, the political relationship with the applicant’s country influences the examination of the case. For example, in a case of an appeal against the decision of refusal (the final action) the dismissal decision on the appeal was issued just one month after filing – although it takes about half a year to one year in the normal appeal schedule.
In the past, regarding one appeal case, we visited the Korean Patent Office together with the client, had an interview with the appeal examiner, and then the case was patented. At that time, Japan-South Korea relations were stable. However, before that, some 30 years ago, the relationship between the two countries was unstable, and at that time, I visited Korean Patent Office and had an interview with the appeal examiner on another case with our client, but the result was not good.
Therefore, although it may not always have a direct effect, it cannot be denied that appeal examiners are also human beings and their feelings toward Japan may affect the case processing. Basically, the intellectual property protection system in a country first works to protect domestic industry, as may also be the case in Japan, and I think that it is necessary to consider the acquisition of rights in a foreign country on the premise that there is such a tendency. The Japanese perspective on patent examination practices in China and Korea is important to consider.