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Executive Summary

The Japanese Patent Office should eliminate its seven-year delay in examining patent applications, SmithKline Beckman VP-Corporate Patents & Trademarks Alan Lourie maintained at a Feb. 28 hearing on the Japanese patent system before the Senate Commerce/Foreign Commerce Committee. Testifying as chairman of the U.S. group of the Joint Patent Task Force of the U.S.-Japan Business Council, Lourie said Japan's current practice of deferring patent examinations for seven years extends "the long period of time before it is known whether and when a Japanese patent will be granted." The U.S. task group also supports "elimination of the pre-grant opposition system" by which competitors can contest an applicant's pending application before it is granted, Lourie testified. The Japanese group of the joint task force disagrees with the recommendation, he noted. They believe that "oppositions can eliminate patents that should not have been granted." The Japanese also defend deferred examinations as a means "to lessen the workload at the Japanese Patent Office and thereby shorten the pendency time," Lourie continued. The Japanese explain that deferrals result in "some patent applications not having to be examined." However, Lourie contended, "the data show that most of ]the applications[ are examined, and the delay serves only to defer the problem." Subcommittee Chairman Rockefeller (D- W.Va.) indicated that the Senate may commission a study of whether the Japanese use their system to obtain a competitive advantage. The senator's remark followed Lourie's statement that "more fact-finding and analysis of the kind that our task force could not undertake is necessary in order to better determine whether and to what extent the Japanese patent system has been utilized to the advantage of foreign competitors." Lourie also argued for a change in the Japanese system that would allow initial submission of patent applications in a foreign language. The U.S. Patent & Trademark Office allows such submissions, which "permit priority dates to be obtained" by foreign applicants, Lourie said. "Translations would, of course, be required before examination," he said, adding that the Japanese should permit correction of translation errors, based on the authentic text of a foreign priority document. Another change has the support of the Japanese. "The Japanese Patent Office is greatly understaffed," a situation that "results in a large backlog of pending applications," Lourie said. He pointed out that "both the U.S. and the Japanese groups of the joint task force support significant increases in staff to deal with the backlog." Another reason for the backlog already has been changed, he continued. Japan now accepts single patents that make multiple claims; this procedure should help reduce the number of applications filed. Lourie emphasized that Japan is not the source of major intellectual property protection problems experienced by U.S. industry. The pharmaceutical industry, for example, has requested trade sanctions against Brazil, Argentina, Korea, and Thailand for failure to recognize drug patents (see story, p. 6). Such problems "do not exist in the Japanese system," he pointed out. "In fact, Japan, the U.S. and Europe are allies in the World Intellectual Property Organization and in the General Agreement on Tariff & Trade in attempting to persuade other countries to improve and harmonize their patent systems." Lourie said "it would be incorrect to refer to the Japanese patent system as a non-tariff barrier to trade." The task group does "not think that legislative action is needed," Lourie added.

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