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Third Japan-ASEAN Patent Experts Meeting On IoT Inventions and Translation Issues with Patent Application Documents Held. November 2022

On November 28, 2022, the Japan Patent Office (JPO) and the intellectual property (IP) offices of the Association of Southeast Asian Nations (ASEAN) Member States held the Third Japan-ASEAN Patent Experts Meeting on IoT Inventions.

On November 28, 2022, the Japan Patent Office (JPO) and the intellectual property (IP) offices of the Association of Southeast Asian Nations (ASEAN) Member States held the Third Japan-ASEAN Patent Experts Meeting on IoT Inventions.

The associated JPO website reporting can be found here. All information in this article is derived from the JPO website and associated sources they identify. Please note, however, that there are no published materials yet as to this latest meeting.

Participants focused on case studies on IoT inventions featured in the JPO Examination Handbook, based on the Interim Report*1 of the Research on Patent Examination Practices for Emerging Technologies in ASEAN Member States

Additionally, all participants actively discussed how to deal as a patent examiner with mistranslations of patent application documents, which occur when applicants file their applications to foreign countries.

The JPO will continue to hold these annual meetings to cooperate with and support ASEAN Member States to develop patent examination standards and to address translation issues. By doing this, the offices hope to further enhance the patent systems of the ASEAN Member States.

Kimura & Partners writes regularly on notable updates to Japanese IP law and related developments. Our focus is on Patent and Trademark law of relevance to the global SME market seeking strong IP protection in applications and infringement defense. We have a long history of supporting SMEs in Japan, and multi-jurisdictionally, with our unique approach to client relationships and “fighting on the IP Battlefield”.  

Published Summary of the August Meeting Outcomes: Twelfth Japan-ASEAN Heads of Intellectual Property Offices Meeting

At this meeting, the JPO and ASEAN IPOs agreed on the FY2022-2023 Japan-ASEAN IP Rights Action Plan.

Additionally, the Economic Research Institute for ASEAN and East Asia (ERIA – see below) presented an interim report of the study on patent examination practices for AI inventions and the utilization of patent information, which was conducted in cooperation with the individual ASEAN IPOs.

Background.

ASEAN Member States continue efforts to improve the IP environment in the ASEAN region by the ASEAN Intellectual Property Rights Action Plan 2016-2025, which was formulated under the framework of the ASEAN Working Group on Intellectual Property Cooperation (AWGIPC). The JPO has been cooperating in various ways over the years to support such efforts among ASEAN countries.

Outline of the FY2022 Japan-ASEAN IP Rights Action Plan

The JPO reported that all contents of the FY2021 ASEAN-Japan IP Action Plan have been implemented, and agreed on the following items for the FY2022 Action Plan, which confirmed ongoing Japan-ASEAN cooperation:

  • Providing training for the ASEAN IP Academy*2 (newly added);
  • Holding the 3rd Japan-ASEAN Patent Experts Meeting to share information on the development of patent examination guidelines in the field of emerging technologies, as well as patent translation issues;
  • Continuing the study of patent examination practices for AI inventions, and the utilization of patent information by ERIA;
  • Supporting the accession of ASEAN Member States to the international application system (Madrid Protocol/Hague Agreement), as well as its operation;
  • Promoting cooperation in human resource development and management of examination practices; and
  • Promoting cooperation in IP commercialization and awareness-raising concerning IP.

Interim report of the ERIA* study 

* see links to associated resources at the end of the article)

An interim report was presented by ERIA* on the study of patent examination practices for AI inventions, and the utilization of patent information.

  • Study on the patent examination practices of AI inventions
    In this study, ERIA analyzed how the case examples of AI inventions that are published in the JPO Examination Handbook are judged based on the patent examination practices of the individual ASEAN IPOs. ERIA published the final report in 2021 covering the first phase of the study on the three case examples, and is currently conducting the second phase of this study on three new case examples. In the interim report, it was noted that analysis has begun in four countries for the second phase of the study. This interim report will also be the basis of the discussion at the 3rd Japan-ASEAN Patent Experts Meeting.
    Through this study, it is expected that mutual understanding regarding the patent examination practice of AI inventions will be promoted within individual ASEAN IPOs.
  • Study on the utilization of patent information
    In this study, ERIA analyzed how private companies, universities, and other organizations in ASEAN countries utilize patent information to create innovations; and also organize workshops and business contests on the topic of how to utilize patent information. The interim report referenced the questionnaire survey on the utilization of patent information, as well as the implementation of workshops and business contests.
  • It is expected that this study will deepen understanding of the importance of patent information utilization in ASEAN countries.

* The Economic Research Institute for ASEAN and East Asia (ERIA) is an international research institute established in Jakarta in June 2008. ERIA conducts policy research and recommendations for deepening economic integration, improving development gaps, and promoting sustainable economic growth in 16 East Asian countries (ASEAN, Japan, China, Korea, India, Australia, and NZ). It also makes recommendations at the summit level, including the East Asia Summit and ASEAN Summit, and conducts policy research upon request.
ERIA’s website (External link)
Research on Patent Examination Practices for Emerging Technologies in ASEAN Member States (Published in September, 2021) (External link)

* The ASEAN IP Academy is an ASEAN training institute established in September 2021 to provide training in the field of IP for ASEAN member states.
JPO organized the inaugural “Train the Trainers” program for the ASEAN IP Academy.

The Third Japan-ASEAN Patent Experts Meeting on IoT Inventions holds much promise, and once again Japan is supporting global IP advancement across a range of commitments and activities.

By Takaaki Kimura

Managing Partner and Patent Attorney with over thirty-five years of IP law experience.