Introduction
The Japan Patent Office has announced that it will trial a new practice called “Standardization Strategy-Responsive Examination,” under which patent examination may be delayed at the request of companies and other applicants. The new practice is intended for patent applications filed in parallel with efforts to develop international or industry standards. Traditionally, faster patent examination has generally been regarded as desirable. However, negotiations over standardization can take several years. If a patent is granted too early, it may become difficult to adjust the scope of the claims in line with later discussions on standardization. This new system can be seen as expanding the way patent practice is understood: from a one-sided focus on accelerating examination to a more strategic approach in which the timing of examination is designed according to business strategy and standardization strategy.
What It Means to “Delay” Patent Examination
The first notable point in this news is that the Japan Patent Office is introducing a system that allows examination to be “delayed.”
Until now, shortening examination periods has been an important policy goal in Japanese patent administration. For applicants as well, obtaining a patent early can make it easier to respond to counterfeit products, conduct licensing negotiations, raise funds, and pursue business partnerships. For this reason, patent examination is generally assumed to be better the faster it proceeds.
However, this is not always true for technologies related to standardization.
International standards and industry standards are developed through discussions involving multiple companies, research institutions, standardization bodies, and other stakeholders. It often takes a long time before the final specifications are fixed. During that process, technical specifications initially assumed may be changed, or the configurations ultimately adopted may be narrowed down.
In such situations, if only the patent is granted first, the room for amending the claims in response to standardization discussions becomes limited. Although there are procedures for correction even after a patent has been granted, they do not offer the same degree of flexibility as amendments during examination. As a result, a gap may arise between the technology adopted in the standard and the scope of the patent rights.
In other words, for applications related to standardization, it may sometimes be more important to finalize the scope of rights at an appropriate timing in line with the progress of standardization than to obtain rights as quickly as possible. This new system responds to that practical need.
Standardization and Patents Are Not in Conflict
The term “standardization” may evoke the idea of making technology widely available. A patent, on the other hand, is an exclusive right to work an invention. For that reason, standardization and patents may appear to be in conflict at first glance.
In advanced technology fields, however, standardization and patents are closely connected.
In areas such as telecommunications, semiconductors, video compression, batteries, charging standards, IoT, and AI-related technologies, technology adopted into a standard may become the foundation of the market. Holding patents related to that standard can significantly affect licensing revenue, bargaining power, and market presence.
In particular, patents known as standard-essential patents cover technologies that cannot be avoided when implementing a standard. How such patents are obtained, licensed, and incorporated into business strategy is directly linked to a company’s competitiveness.
Therefore, standardization and patents are not alternatives where one must choose one over the other. Rather, companies need an integrated strategy in which standardization expands the market, while patents secure revenue opportunities and bargaining power within that market.
The new Standardization Strategy-Responsive Examination can be viewed as an attempt to support this “integrated use of standardization and intellectual property” from an institutional perspective.
Benefits for Applicants
A major benefit of this system is that it becomes easier to adjust the scope of rights in a patent application while observing the progress of standardization discussions.
At the early stages of standardization, it is often unclear which technical specifications will ultimately be adopted. Companies need to file patent applications early for technologies that may be incorporated into future standards. At the same time, if examination proceeds too quickly, they may reach the stage of responding to office actions or receiving a decision to grant a patent before the substance of the standard has been fixed.
If the start of examination can be delayed, applicants can more easily consider the direction of their claims based on the progress of standardization. They may be better positioned to make amendments and submit arguments after identifying the technical features that are likely to be adopted in the standard.
This system may also strengthen coordination between departments involved in standardization activities and intellectual property departments. Companies will need to design their patent application portfolios based on what is being discussed at standardization meetings, which technologies are likely to be adopted, and what kinds of proposals competitors are making.
In this sense, using the system is not merely a procedural choice. It will test the maturity of a company’s internal structure across research and development, standardization, intellectual property, and business planning.
Points Requiring Caution
That said, delaying examination also involves risks.
First, because patent grant will be delayed, the system is not suitable when a company wishes to enforce patent rights at an early stage. For technologies where the applicant wants to quickly deter competitors’ implementation, or where it wants to show that a patent has been granted in the context of financing or alliances, ordinary examination or accelerated examination may be more appropriate.
Second, even if examination is delayed, matters not disclosed in the specification as originally filed cannot be added later. Even if claims can be amended while observing the progress of standardization discussions, such amendments must remain within the scope of the original disclosure. Therefore, it is important at the initial filing stage to describe sufficient variations while anticipating possible future directions of standardization.
Furthermore, because the applicant must explain that the application is related to standardization activities, it will be necessary to organize information such as which standardization body is discussing the relevant technology, what kind of technology is being discussed, and what position that technology occupies in the discussions. It will not be enough simply to say that the application “seems related to a standard.” Applicants will need to be able to explain the correspondence between their standardization strategy and their patent applications.
Perspectives Required of Japanese Companies
This new system appears to encourage Japanese companies to reconsider patents not merely as something to be “obtained,” but as something to be strategically designed.
Traditional patent practice has centered on filing applications for the results of research and development, responding to examination, and obtaining rights. However, in fields involving standardization, that alone is not sufficient. Companies need to consider in an integrated manner which technologies should be kept confidential, which should be patented, which should be proposed in standardization forums, and when rights should be obtained.
In international standardization in particular, not only technological capability but also proposal-making ability, negotiation power, intellectual property portfolios, and licensing strategy are intricately intertwined. Even if a company has excellent technology, it may fail to take the lead in market formation if it cannot effectively participate in standardization discussions. Conversely, if it can link standardization and intellectual property, it may be able to incorporate its own technology into the foundation of the market and build a long-term competitive advantage.
Standardization Strategy-Responsive Examination adds one more option for that purpose. The system itself does not create competitiveness, but for companies capable of using it effectively, it may become a powerful tool for advancing IP strategy in the age of standardization.
A System Relevant to SMEs and Universities as Well
Standardization may seem like a matter only for large companies and global enterprises. In the future, however, it will also be relevant to small and medium-sized enterprises and universities.
There are increasing situations in which SMEs with proprietary technologies in specific fields, or universities conducting advanced research, become involved in standardization activities. For example, in fields such as environmental technology, medical devices, robotics, information and communications, and smart infrastructure, specific technical elements may influence future standards.
In such cases, the option of filing early while adjusting the timing of examination based on standardization trends can be useful. Of course, using the system requires procedural preparation and strategic judgment. Nevertheless, it is worth considering not only for large companies but also for SMEs and universities that compete through technology.
Indeed, the more important it is for an organization to make effective use of a limited number of patent applications, the more important it becomes to design applications with an awareness of their relationship to standardization.
The Broader Trend Indicated by This System
Standardization Strategy-Responsive Examination is not simply a “system for delaying examination.” Viewed more broadly, it indicates a movement toward a patent system that is more closely aligned with companies’ business strategies and standardization strategies.
In conventional patent practice, emphasis has been placed on obtaining rights that are fast, broad, and strong. That importance has not changed. However, for technologies related to standardization, the time axis of “when to obtain rights” also becomes important.
If rights are obtained too early, it may become difficult to respond to changes in standardization. On the other hand, if rights are obtained too late, the applicant’s deterrent effect and bargaining power in business may be weakened. In other words, going forward, companies will need to consider not only the content of patent applications, but also the timing of requests for examination, the timing of the start of examination, the timing of amendments, and the progress of standardization meetings in combination.
This system more clearly introduces a “timing strategy” into intellectual property practice.
Conclusion
At first glance, Standardization Strategy-Responsive Examination may appear to run counter to the traditional trend of accelerating patent examination. However, its essence does not lie in making examination slower for its own sake. Rather, it lies in allowing applicants to proceed with rights acquisition at an appropriate timing in line with the progress of standardization.
In an era in which technology creates markets, standards expand markets, and patents support bargaining power within those markets, patent applications are no longer merely a means of protecting research results. A comprehensive intellectual property strategy is required, including the timing of filing, examination, and amendments.
This new system should provide companies and research institutions involved in standardization with a good opportunity to review their intellectual property strategies. In future IP practice, it will become increasingly important not merely to aim for early patent acquisition, but to consider which market to target, which standard to engage with, and when rights should be obtained in order to achieve the greatest strategic effect.