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Collective Examinations for IP Portfolio Supporting Business Strategy

1. Introduction

In recent years, along with globalization and the diversified business styles of enterprises' business activities, it is important for enterprises to amass Intellectual Properties and utilize them. Under these circumstances, for the Japan Patent Office (JPO) to support the business strategy of each company, it is becoming necessary to provide such services as follows:

  • 1) Collective examination of a group of various applications that are part of a business project, covering any fields of patent, design, and trademark;
  • 2) Timely examination that supports the acquisition of rights in line with business development; and
  • 3) 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.

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 " Collective Examination"), 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 Collective Examination, there is no additional handling fee to the JPO.

2. Collective Examination Concept

  • Collective Examination targets a group of multiple applications related to technologies that constitute products/services necessary for a new businesses 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 examination with an understanding of the applicant's business project by having them present the outline of the project.

(*1) Applications for 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.

3. A Group of Applications Qualified for Collective Examination

To qualify for Collective Examination, a group of applications must consist of multiple patent 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) to (3) below. Additionally, applications for designs and trademarks may be included in a group of applications.

(1) Request for Collective Examination should be filed, in principal, prior to the commencement of examination.

The term "prior to the commencement of examination" means "before the arrival of any of the following notices by the Commissioner of the Patent Office or an examiner of the JPO." Note that patent applications are exempt from this requirement.

  • Notice of Reasons for Refusal (Patent Act Article 50)
  • Certified Copy of the Examiner's Decision to Grant (Patent Act Article 52 (2))
  • Non-compliance with requirements for disclosure of information on prior art documents (Patent Act Article 48 (7))
  • Invitation to consultation in case where two or more patent applications claiming identical inventions have been filed on the same date (Patent Act Article 39 (7))

(2) At least one of the patent applications in a group should meet the requirements of either "Internationally-filed applications" or " Working-related applications."

Internationally-filed applications

Applications filed with both the JPO and at least one of foreign IP Offices or intergovernmental organization (PCT application included).

Working-related applications

Patent applications filed by an applicant or a licensee who has already commercialized the invention or who plans to commercialize the invention within two years from the date of requesting Collective Examination.

(3) A group of multiple applications should include patent applications that are considered as part of a new business project or a global expansion plan.

4. Conducting Collective Examination

Once a request for Collective Examination is approved, 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

Applicant must 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

In the pre-examination interview, applicant may present 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.

[Last updated 25 February 2021]

Contact Us

Policy Planning and Research Section
Administrative Affairs Division,
First Examination Department, JPO

TEL: +81-3-3581-1101 ex. 3107

E-mail: PA2160@jpo.go.jp