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Report on the “JPO/IPR Operational Patent Examination Training Program”

The 8th Operational Patent Examination Training (OPET) program was held this year, this time lasting approximately two months. Two patent examiners participated from Brazil, two from Egypt, and six from India. Mr. Andre Felipe Costa Vliese and Mr. Rockfeller Maciel Pecanha represented the National Institute of Industrial Property of Brazil. Mr. Ayman Dergham Khalifa Hassan and Mr. Sherif Abdelmeged Abdelkerem Saleh of the Egyptian Patent Office also attended. The Office of the Controller-General of Patents, Designs and Trademarks of India has four offices: one each for the eastern, western, southern, and northern parts of the country. Three of these regional offices sent examiners as OPET trainees: Mr. Debasish Banerjee from the Delhi Office, Mr. Arun Kumar Pradhan and Mr. Ram Sundar Patel from the Kolkata Office, and Mr. Piyush Pralhad Lende, Mr. Sagar Baburao Pol, and Mr. Shrikant Sagar Bagde from the Mumbai Office.

First part (September 2 to October 6)

On September 2, the trainees participated in an orientation session in which the trainees and AIC/HIDA staff introduced themselves. The trainees appeared nervous initially, but soon became accustomed to the classes and the Japanese lifestyle. They gradually got to know each other and started having discussions and friendly conversations during breaks and after class. They sometimes went out together on holidays to engage in sightseeing and shopping.

On September 5, they visited the JPO, toured the trial court and the National Center for Industrial Property Information and Training (INPIT) and paid a courtesy visit to JPO Deputy Commissioner Masayuki Koyanagi.

Group photo

Group photo

On September 6, the trainees presented their country reports. They explained the current patent examination systems of their home countries and related issues. Many people attended the presentations and asked a number of questions about the IP environments and specific patent-related cases in the presenters’ countries. The trainees also engaged in active Q&A-style discussions. In the course of the discussions, they were able to identify issues their countries' IP systems in a new light and deepened their understanding.

scenery at the training

scenery at the training

This training program was divided into two parts. Before the first part, the trainees presented a pre-training report in which they explained their jobs and the issues they face as examiners in their home countries and discussed the goals that they were hoping to achieve through this training program.

The trainees next studied the theoretical underpinnings of the Japanese Patent Examination Guidelines in detail through lectures on various topics, such as industrially applicable inventions, novelty, inventive step, degree of identicalness, and amendment. Some trainees commented that they would like to understand the similarities and differences between the Japanese Guidelines and their countries' Guidelines and improve the patent examination quality of their IP Offices by emulating Japan’s strengths.

The trainees were then divided by specialty (Automobiles/Two-Wheeled Vehicles (vehicle bodies) and Information/Telecommunications) and given specialized lectures on technology-specific examination guidelines. The trainees enjoyed these lectures and later commented that, while the general lectures allowed a frank exchange of opinions by everyone on a wide variety of topics, the specialized lectures allowed them to gain greater knowledge in their specific fields. They seemed to appreciate both experiences.

scenery at the training

scenery at the training

The trainees were also given a lecture about IP management by Japanese companies and had an opportunity to visit Hitachi, Ltd., where they received a comprehensive explanation about Hitachi’s IP management and R&D systems and policies. The trainees also visited Shinohara Press Service Co., Ltd. to learn about IP management at a mid-size company. Shinohara Press Service explained its IP management methods and the importance of managing and utilizing all of its IP assets for the benefit of its business. Some trainees commented that both company visits were beneficial because they helped the trainees understand actual company experiences and the resulting knowledge acquired by the companies.

scenery at the training

scenery at the training

On September 28, the trainees visited the National Institute of Advanced Industrial Science and Technology (AIST), one of Japan’s most important research institutes, to learn about its IP-related activities. They also visited the Science Square and the Geological Museum. The close collaboration between research institutes like AIST and the national government was new to the trainees and they listened carefully to the explanations given at these facilities. The trainees were impressed that AIST has been developing and commercializing various technologies since its foundation and were excited to learn that AIST is still developing technologies society urgently needs.

At the end of the first part of the training program, the trainees were given lectures and training sessions on the legal process by which an examiner's patent application rejection decision can be challenged in court, invalidation trials, and example patent infringement cases. The trainees had been mainly studying patent examination methods and criteria. Some trainees commented that learning about the post-grant procedures raised their awareness of the treatment of patented inventions in JPO trials and judicial trials, and that the experience would influence their examinations of patent applications in their home countries.

The first part of the program concluded with presentations by the trainees on specific cases they had handled as examiners in their home countries and a discussion. Some trainees commented that the presentation afforded an opportunity to review their experiences in light of their newly acquired knowledge about Japanese examinations and to have a candid discussion about how to improve their examination practices. They seemed to consider the discussion very helpful in enhancing their understanding.

Second part (October 7 to November 2)

The second part started in October with lectures and training sessions about search methods such as J-Platpat, Patent Map, IPC Classification, and F1/F Term, laying the groundwork for further training on prior art searches and the examination process. After learning about publicly available databases, the trainees visited Thomson Reuters Professional and learned about the usefulness of privately-offered search tools. They asked various questions in order to improve their performance as examiners.

More training sessions were offered to the trainees on novelty, inventive step, etc. to enhance practical examination skills in addition to the basic knowledge acquired in the first part of the training program. In these classes, the lecturers first gave introductory explanations and then provided the trainees with information on example cases for them to study. Each trainee was expected to come up with his/her own answers based on the information provided during the lectures and then discuss them with the lecturer and the other trainees. After the discussion, the lecturer would comment and explain the example case. The classes were thus very intensive and practical.

During these training sessions, the trainees were divided by specialty in the same way that they were during the lectures on technology-specific examination guidelines offered in the first part of the training (Automobiles/Two-Wheeled Vehicles (vehicle bodies) and Information/Telecommunications). Consequently, the trainees were expected to know not only about the patent examination guidelines and patent law, but also about technical engineering, in order to correctly understand the example cases. The demanding nature of these sessions caused some trainees to comment that they were difficult but very effective. After the training sessions, the trainees received on-the-job training on patent searches and examinations from actual JPO examiners. Some trainees commented that this was a precious opportunity to actually see and experience the work of the JPO examiners.

scenery at the training

scenery at the training

The trainees gave presentations about their achievements in the training program on its last day (November 2). They explained what they learned and how they were going to use the newly acquired knowledge in the IP Offices of their home countries. They also explained, in detail, which aspects of the Japanese patent examination system most interested them during this training program. They analyzed the commonalities and differences between the Japanese system and their home countries' systems, features of the Japanese system capable of introduction in their home countries given local IP circumstances and what the trainees and their IP Offices can do to make these changes. The trainees then exchanged opinions with the lecturers who attended the presentations. This process offered a final learning opportunity for the trainees.

scenery at the training

scenery at the training

After the presentation session, a discussion was held to review the training program. The JPO and APIC exchanged opinions with the trainees on improvements that could be made to this type of small group training program. The training program received generally favorable comments with regard to the dense, valuable, two-part curriculum, which allowed the trainees to gradually progress to higher levels of understanding. Some trainees said that the technology-specific training sessions were particularly satisfying and useful. Proposed improvements included giving the trainees a wider range of options for company visits, offering a wider range of lectures by examiners currently working at the JPO, and providing more participatory classes.

After the review session, a closing ceremony was held. Mr. Kazuyuki Miura, Director of the JPO’s International Cooperation Division, presented a completion certificate to each trainee. One of the trainees, Mr. Debasish Banerjee, gave a speech in appreciation and to mark the end of the training program.

Group photo

Group photo

This was the longest training program in which trainees have ever been invited to participate. The relatively small number of trainees made intensive education possible. Most of the lecturers were current or former JPO examiners who were able to teach highly specialized practical knowledge. The trainees asked the lecturers a variety of stimulating questions, which turned most of their classes into discussion sessions. The lecturers expressed satisfaction that the trainees were not merely receiving information about the Japanese system, but participating actively in discussions with lecturers, which was beneficial to everyone concerned.

During their free time after classes and on weekends, the trainees visited various places and enjoyed their lives in Japan. This training program’s length made it possible for its participants to meet trainees taking other training courses. Having successfully completed the program, the trainees left Japan greatly satisfied. We hope that they find their experiences in Japan useful in their future careers.

 

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