Japanese CEIP applications are key to business strategy. The Japan Patent Office (JPO) recognizes the importance for “enterprises to amass Intellectual Properties and utilize them”. They note that along with globalization and diversified business styles, the JPO will support companies’ business strategy by providing such services as follows:
- Collective examination of a group of various applications that are parts of a business project, covering any fields of patents, designs, and trademarks;
- Timely examination that supports the acquisition of rights in line with business development, and
- Quality examination based on an understanding of the background of the applicant’s business project and of the technical relevance among a group of various applications.
Background and July 2022 Revisions
In April 2013, as part of efforts in supporting the comprehensive acquisition of IP rights for a business project, the JPO launched the Collective Examinations for IP Portfolio Supporting Business Strategy (hereinafter referred to as “CEIP”), for implementing examination and granting of rights along with the timing of cross-sectional business deployment targeting at a plurality of IP rights (for patents, designs, and trademarks) that are useful for the businesses in and outside the country. In requesting a CEIP, there is no additional handling fee to the JPO.
July 2022 revised the guidelines of the operation of the Collective Examination for IP Portfolio Supporting Business Strategy (CEIP) to make it easier for users to utilize. These are the key points of the revisions:
(a) Presentation of a business project and an interview can be either face-to-face or online.
(b) At least one patent application is required to be included in a group of applications, though two or more patent applications used to be needed.
(c) An application AFTER the commencement of the examination can be included in a group of applications.
(d) Requesting for accelerated examination of patent nor design application(s) is not necessary even if a quick examination is desired.
Key source materials for this article can be found here, at the JPO Web Site. On this page, you will find the description of the CEIP, the revisions made in July and also a link to some case examples. These materials are all in English.
Kimura & Partners writes regularly on notable updates to Japanese IP law. Our focus is on Patent and Trademark law of relevance to the global SME market seeking strong IP protection in Japan. We also have a long history of supporting Japanese SMEs in Japan, and globally, using our unique approach to client relationships and “fighting on the IP Battlefield”.
CEIP Concept – As Set Out By The JPO
- CEIP targets a group of multiple applications related to technologies that constitute products/services necessary for a new business project or a global expansion plan. (*1)
- The timing of granting rights for a group of multiple applications is tailored to the applicant’s needs even if there are differences, for example, in the dates of filing applications, the dates of requesting examination, or the examination departments/offices in charge. (*2)
- A team of examiners simultaneously conducts individual examinations with the understanding of the applicant’s business project by having them present the outline of the project.
(*1) Applications for a modified version of existing products or research results at universities are also eligible for this program.
(*2) Regarding the timing of examinations and granting of rights, the JPO will make every effort to meet the desired timing of the applicants, but please note that it is not guaranteed.
Further Details To Understand the CEIP Process
A Group of Applications Qualified for CEIP
To qualify for CEIP, a group of applications must consist of multiple applications that constitute a product/ service related to a new business project or a global expansion plan, and that meet all the requirements shown in (1) and (2) below. Additionally, applications for designs and trademarks may be included in a group of applications.
1. At least one of the patent application(s) in a group should meet a requirement of either “Internationally-filed applications” or “Working-related applications.”
- Internationally-filed applications. Applications filed with both the JPO and at least one of the foreign IP Offices or intergovernmental organizations (PCT application included).
- Working-related applications. Patent applications filed by an applicant or a licensee who has already commercialized the invention in Japan or who plans to commercialize the invention in Japan within two years from the date of requesting CEIP.
2. A group of multiple applications should include one or more patent applications that are considered as part of a new business project or a global expansion plan.
Once a request for CEIP is approved, the applicant and examiner team work together for pre-examination procedures, including describing the business project, conducting an interview (if necessary) and coordinating examination schedule.
1. Presenting a Business Project(*3)
The applicant is going to present the outline of the project (outline of the new product/service), business strategy (implementation plan, international expansion plan), and positioning of the applications in the project to the examiner team.
2. Conducting a Pre-examination Interview. Either a face-to-face or online interview is available.
In the pre-examination interview, the applicant may present a technical explanation of the individual application, describe technical features in contrast to the prior art, and consider amendments.
3. Conducting Examination
Based on the outcomes of the business project presentation, the pre-examination interview, and discussions among the examiner team, each examiner conducts an independent examination according to the coordinated schedule.
Japanese CEIP applications are key to business strategy. The Japan Patent Office (JPO) recognizes the importance for “enterprises to amass Intellectual Properties and utilize them”.