Survey on Examination Cooperation Practices

______

2008/SOM3/IPEG/023c

Agenda item: 5a-ii

Survey on Examination Co-operation Practices Among APEC economies (Draft Survey Sheet)

Purpose: Consideration

Submitted by: Japan

/ 27thIntellectual Property Rights Experts’Group Meeting
Lima, Peru
15-16 August 2008

Survey on Examination Cooperation Practices among APEC Economies

Survey onExamination Cooperation Practices

among APEC Economies

Objective:

The purpose of this survey is to examinethe details of approaches taken by IP Offices in the APEC member economies to exchange search reports/examination results. The result of this survey will contribute to the identification of ways to exchange search/examination results that are in line with the APEC Cooperation Initiative on Patent Acquisition Procedures.

Use of survey results:

The survey results should be shared among the APEC member economies.

The survey results regarding asystem that allows an applicant to submit to an IP office the search results which wereissued by another IP office will be opened to the public.

The survey results on other approaches may also be published with the agreement of the member economy. (Please see section VI below.)

Note:

In order to make this survey less complicated to complete and your responses less ambiguous, please useONE SET OF SURVEY SHEETS FOR ONE APPROACH.If your economy exercises multiple approaches, please use multiple sets of survey sheets; i.e., one set of survey sheets for each approach.

(Example:Japanexercises3 approaches: Patent Prosecution Highway(PPH), Advanced Industrial Property Network(AIPN), and Accelerated Examination. Therefore, Japan will use3 separate sets of survey sheets;one set of survey sheets for the PPH, a different set of survey sheets for AIPN,and still another set of survey sheets for Accelerated Examination.)

Please do not include PCT activities because PCT activities are apparent under the treaty.

I. Basic information

I-1. Name of your economy:

I-2. Name of approach*:

*Please write the name of one approach only.If your economy is exercising more than one approach, please use a separate set of survey sheetsfor each approach.

I-3. Number of approaches** of your economy:

**Please write the total number of approaches of your economy.

I-4. Abstract of approach:

Please describe abstract of the approach very briefly. If your economy has existing explanatory document of the approach, please provide it.

II. Type of approach

II. Which of the following are true ofthe approach?
(Please select multiple answers, if necessary.) / Choice
(a) Exchange of search reports/examination results with other IP Offices***
(b) Receipt of search reports/examination results from other IP Offices
(c) Provision of search reports/examination results to other IP Offices, and the reports/resultsare based on the applications filed with your IP Office
(d) Provision of search reports/examination results to other IP Offices, and the reports/results are based on the applications filed with other IP Office
(e) Other (Please explain.)

*** ‘Exchange’ means that the approach is reciprocal. It is not always necessary for the search reports/examination resultsfor each application to have actually been exchanged between IP Offices. ‘Receipt’ and ‘provision’ means that the approach is one way. Under this specific approach, your IP Office only receives and provides respectively search report/examination result.

III. Outline of approach

III-1. Which of the following are requiredto takethe approach?
(Please select multiple answers, if necessary.) / Choice
(a) The request of the applicant and approval of your IP Office are bothnecessary
(b) The request of the applicantonly(Approval of your IP Office is not necessary)
(c) Thedecision of your IP Officeand approval of the applicant are bothnecessary
(d) The decision of your IP Officeonly(Approval of the applicant is not necessary)
(e) Requirements set out in the law/regulations
(f) Other (Please explain.)
III-2. Which of the following persons/organizations exchange or provide search reportsand/or search results to the IP office of your economy?
(Please select multiple answers, if necessary.) / Choice
(a) Applicant
(b) IP Office
(c) Other (Please explain.)
III-3. Which of the following laws/regulations/instructionsare applicable for the approach?
(Please select multiple answers, if necessary.) / Choice
(a) Laws/regulations of the economy;

Please provide the name of the legal authority and applicable articles.

(b) Instructions/practices administered by your IP Office

Please provide the name(s) of the instructions/practices, if possible.

Please provide the name(s) of the authority (authorities).

Please provide the URL(s) for the above authority (authorities) if possible:

III-4. Which of the following methodsare used to exchange/receive/ provide search reports or search results?
(Please select multiple answers, if necessary.) / Choice
(a) Online
(b) Electronic media (off-line)
(c) Paper (including FAX)
(d) Other(Please explain.)
III-5. Which of the following condition(s) is/are requiredfor your economy to take the approach?
(Please select multiple answers, if necessary.) / Choice
(a) Language: The application for which the other IP Office makes the search report/examination result should be filed in a certain language.
(b) Form: The search report or search result should be written in a particular formprovided by the other IP Office.
(c) Distribution system: Search reports/examination results are providedby means of a specific distribution system.
(d) Examination result: The approach is applicable only to particular kinds of examination resultsof the other IP Office; e.g., the grant of a patent.
(e) Application: The approach is applicable to/available with only an application which has a corresponding application filed with a certain economy’s IP Office. ****
(f) Other (Please explain.)
If you selected (a)-(f) above, please provide detailed information regarding the condition(s) of your economy, and the names of the economies/countries/regions where the approach is applicable:

**** III-5 ‘A corresponding application filed with a certain economy’s IP Office’ refers to ‘an application which is filed with a certain economy’s IP Office and in which the subject matter is the same or substantially the same as the application filed with your economy’s IP Office.’

IV. Submission of search report and/or examination results by applicants

IV-1. If you marked III-2(a)*****above, please provide the following information concerning the applicant.
・Time limit for following the procedure
・Documents necessary for the procedure
・ Fees necessary for the procedure

*****III-2(a): An applicant provides the search report and/or the search result for the approach.

IV-2. If you marked III-2(a) and/or III-1(a), (b)****** above, please describe the advantages an applicant can enjoy by following this procedure.

****** III-2(a) and/or III-1(a), (b): An applicant provides a search report and/or search result under the approach, and such provision is optional for the applicant, whether or not the IP office’s approval is necessary. This question covers the casewhere the applicant has the option to takethe approach and the IP office collects the search report and/or search result.

IV-3. If you marked III-2(a) and III-1(c) or (d)******* above, please describe the disadvantages resulting froma failure to fulfill a request made by the IP office.

******* III-2(a) and III-1(c) or (d): An applicant provides a search report and/or a search result under the approach, and such provision is required at the discretion of the IP office concerned, whether or not the applicant’s approval is necessary.

IV-4. If you marked III-2(a) and III-1(e)******** above, please describe the disadvantages resulting froma failure to implement any obligation set forth in laws/regulations.

********III-2(a) and III-1(e): An applicant provides a search report and/or a search result under the approach, and such provision is prescribed as an obligation under the law/regulation.

V. Effects of exchanged/received examination results issued by other IP Offices

V-1. Does your economy adopt the search report/examination result as your IP Office’s own decision in the examination process if such report/result is/are made by other IP Offices? / YES / NO
V-1-1. If the answer for V-1 is yes, does your economy adoptall of the report/result as your own decision or adoptpart of the report/result? / ALL / PART
V-1-2. If your economy adopts part of the report/result as your own decision, could you describe which part of the report/result is adopted as your own decision (e.g. novelty, inventive step, non-obviousness, etc.)?
V-2. Does your economy utilize the search report/examination result as a reference and your IP Office makes its own decision in the examination process if such report/results is/are made by other IP Offices? / YES / NO
V-2-1. If the answer for V-2 is Yes, which part of the report/results does your economy utilize for reference (e.g. novelty, inventive step, non-obviousness, document citation, etc.)?
V-3. Does your economy have any other utilization of the search report/examination results which is/are made by other IP Offices? / YES / NO
V-3-1. If the answer for V-3 is Yes, could you describe the manner in which the search report/examination results is/are utilized?

VI. Disclosure of survey result

In accordance with consensus at the IPEG 26, the survey results of the following questions will be opened to publicfor the purpose of allowing an applicant to submit to an IP Office the search report/examination result issued by another IP office.

I-1, I-2
III-1, III-2, III-3, III-4, III-5
IV-1, IV-2, IV-3. IV-4
V-1, V-1-1, V-1-2, V-2, V-2-1, V-3, V-3-1

If you do not want to release your responses tothe questionsother than those questions listed above, please specify the questionsconcerned below. If no question is indicated in the box, it is interpreted that your economy agrees to open to the public your responses to all the questions.

VII. Other Comments

If you have any other comments, please writethem here(These comments will also be made available to the public unless you indicate your desire that they not be made available to the public.)

[End of the Survey]