What Does it Take to Transform IP?

Hamano Koichi (JPO, Japan)

Like most organizations, intellectual property (IP) offices have faced significant challenges in recent years. From the pandemic to financial market turmoil, through supply chain issues to increased cybersecurity threats, IP offices have had to navigate these hurdles and more, stretching their  IT and organizational resources in unexpected ways. Yet, IP registrations have been soaring globally, and IP offices generally seem to have been riding those waves with success, often transforming challenges into opportunities to evolve and better meet the needs of creators, businesses, and the market.

Beyond their role as processors of IP applications and registrations, or as an inventory of registered assets, how do IP offices envision their mission in 2023? What sort of initiatives do they carry out to ensure they stay in tune with innovators, businesses big and small, and the market at large? How much of a transformative force can they be for the IP world?

Our guest today is Hamano Koichi, the Commissioner of the Japan Patent Office (JPO). Appointed in July 2022, he manages JPO operations and oversees Japan’s policy on patents, trademarks, and design rights. Prior to chairing JPO, Mr. Hamano has served in a wide range of senior roles at the Japanese Ministry of Economy, Trade, and Industry (METI), including as Director of the Finance Division, Business Environment Department; Counselor for Energy Policy; Executive Vice President and Advisor of Japan Oil, Gas and Metals National Corporation (JOGMEC); and Director-General of the Regional Economic and Industrial Policy Group, among others.

Below is an excerpt from Mr. Koichi’s podcast interview. It includes some minor edits to improve readability.

You were appointed Commissioner of the JPO just a few months ago. What is your agenda for this tenure? Are there specific priorities that you would like to highlight?
The JPO has been working to make examinations more efficient, and to reinforce the examination system in order to prevent the lengthening of the examination period caused by the recent increase in the number of trademark applications. The period between the filing of an application and the first notice of examination results is now approximately six and a half months, compared to ten months two years ago. Shortening the trademark examination period was the first issue that I had to solve soon after taking office. Much to my delight, our work has begun to pay off favorably.

Meanwhile, I also strongly believe that examination quality must not be compromised by shortening the examination period. Fortunately, trademark examinations by the JPO continue to ensure a high level of quality, and users have given us high evaluations in these areas: judgment and understanding in examinations; descriptions in the notices of reasons for refusal; and consistency of examination judgments. In addition, the JPO intends to utilize forums such as the TM5, which includes the trademark offices of China, Europe, Japan, Korea, and the U.S., in order to support the global business activities of companies and trademark users worldwide by creating an environment where trademarks are properly protected and utilized in countries throughout the world.

In order to promote a common understanding of the JPO’s trademark examination process among trademark users, the JPO has set up a booth at the INTA Annual Meeting, which has a global network, and has also organized workshops in cooperation with INTA. The theme of the upcoming workshop will be “Proving the use of trademarks in TM5 offices.” In the future, the JPO will continue with its work promoting the proper protection and use of trademarks.

Last November, the JPO participated in an event held in North Carolina, USA in partnership with the United States Patent and Trademark Office and the European Patent Office on how to make patent systems more accessible and friendly to small and medium-sized enterprises (SMEs). How can IP offices address the needs of this specific category of the market and foster its innovation efforts and growth?
It is universally recognized that unleashing the power of SMEs is of vital importance for the further promotion of innovation. In particular, managing IP as a business resource will enhance corporate value for SMEs and startups—thereby making it easier to attract investment, and also leading toward stable management and secure employment. Given the large share of SMEs in Japan, and their pivotal role in the supply chain, I have realized that it is essential for Japan to focus more on the matter of IP management.

The JPO has been providing support through the National Center for Industrial Property Information and Training (INPIT), an independent administrative agency, by setting up permanent, one-stop consultation counters throughout Japan to provide a variety of support services tailored to the needs of SMEs. Since last year, in collaboration with the department at the Ministry of Economy, Trade and Industry (METI), which has been overseeing support for SMEs, the JPO has formulated an Action Plan for the Utilization of Intellectual Property by Small and Medium Enterprises and Startups, for which we are currently enhancing our initiatives. Furthermore, the JPO is engaged in supporting universities and startups in cooperation with departments and R&D institutions that support innovation. To this end, we are also working on reinforcing cooperation with external parties (for example, the Japan Chamber of Commerce and Industry, the Japan Patent Attorneys Association, and the Financial Services Agency).

In addition, JPO runs the IP Acceleration Program for Startups (IPAS) as one of our initiatives targeting startups. Under this program, the JPO dispatches IP-mentoring teams consisting of business and IP experts to startups, which are tasked with providing assistance for the development of company IP strategies. The key to this program is that it supports the development of an IP strategy that is linked to the strategy of the company itself, rather than formulating a stand-alone IP strategy.

In the trademark field, the JPO publishes step-by-step guidelines for first-time trademark applicants. These provide easy-to-understand explanations regarding the key to filing trademark applications in order to avoid refusal. Such initiatives provide support for their brands, and I believe that these steady efforts for SMEs are critically important.

What actions has the JPO been taking—or is planning to take—to fuel the innovation economy in Japan?
The most important role of an IP office is to contribute to the creation of innovation by granting pertinent rights through prompt and accurate examination. And, improving user convenience is essential for the development of the IP ecosystem. In addition to realizing prompt and high-quality examinations, the JPO will contribute to the establishment of rights overseas, and the improvement of predictability through the Patent Prosecution Highway (PPH) and Japan-U.S. cooperative searches. We will continue endeavoring to promote the international harmonization of patent systems.

The JPO intends to respond to rapid technological development by improving predictability in the examination of advanced technologies of increasing complexity, such as AI and IoT. We prepared more than 30 examination cases in the area of AI/IoT-related technologies ahead of the rest of the world and published them in both Japanese and English.

Both the IP5 Offices [of the TM5] and the IP Offices of ASEAN [Association of Southeast Asian Nations] countries have been considering comparative studies using examination cases of advanced technologies such as AI and IoT. Some of these have already been conducted and have produced successful findings.

With these initiatives, the JPO will enhance an environment within which predictability is improved, and innovation in global economic activities is encouraged.

There is also growing interest worldwide in IP protection within the metaverse space and related fields, and the JPO is examining this issue by conducting interviews with experts. In these fields as well, we will work closely with TM5 and IP5, and with both overseas offices and WIPO, to encourage innovation in the area of intellectual property.

Over the last decade, the digital transformation has moved most application and registration procedures managed by IP offices online, which has increased access to protection for rights holders and therefore fostered innovation broadly—allegedly making a tangible impact on the IP world and the economy. Would you like to mention a digitalization program of the JPO that is particularly successful and beneficial to IP rights owners?
Approximately 90 percent of procedures involving patent applications, from application to the registration of rights, are currently processed electronically. However, some applications and dispatches remain in paper form, which could be an obstacle to digitization and teleworking among users.

In response, the JPO has formulated a Promotion Plan for Digitization of Procedures, which it is now implementing.

In 2021, the JPO amended the law to allow electronic transmittal via the World Intellectual Property Organization (WIPO) International Bureau for documents, such as registration notification of international applications for designs and trademarks, under the Hague Agreement and the Protocol Relating to the Madrid Agreement.

In addition, the JPO conducts online interviews at the examination stage, online interview proceedings at the appeal stage, and online oral proceedings for trials in order to facilitate online communication with users.

Within the TM5 framework, the JPO takes the lead in projects related to IT tools in order to assist with trademark examinations. At TM5 in 2022, JPO introduced the results of the AI x Trademark: Image Search Competition, which was conducted to improve the accuracy of the image search system using AI technology. This competition was also effective in improving accuracy and shortening system development. We believe that the sharing of such efforts will lead to improved quality and efficiency of trademark examinations by the TM5.

In order to respond flexibly to the changes in the environment surrounding intellectual property and the needs of users, and to flexibly address review of laws, and new measures, the JPO established an organization in 2022 to promote operational reform and informatization in an integrated manner. Currently, the JPO is in the process of reviewing and working together with the entire department to improve operational efficiency.

As part of your inaugural address, you emphasized your willingness, as JPO Commissioner, to promote green tech and, more particularly, to support innovation aligned with the United Nations Sustainable Development Goals and the WIPO GREEN initiative. How can IP offices, which are often seen as systems of records (meaning, neutral or agnostic when it comes to the policy implications of the rights they administer), participate in the implementation of policies such as promoting sustainable innovations?
The JPO has published the Green Transformation Technologies Inventory (GXTI), which provides patent search formulae for patent documents that disclose GX technologies—thereby providing a bird’s-eye view of GX technology trends. Utilizing GXTI enables a wide range of domestic and international users to analyze patent information related to GX technologies, and this tool can be useful for companies in terms of investment and decision-making.

Japan remains committed to the transfer of environmental technology and has joined WIPO GREEN with a total of 49 partners—the largest number of partners in the world.

We encourage the global deployment of environmental technologies, which Japan is proud of.

Listen to the full Brand & New podcast.

Thank you to Wanhuida Intellectual Property for sponsoring this episode of Brand & New.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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