Patent Examination Practice on Emerging Technologies in the ASEAN Member States – Phase 2

Patent Examination Practice on Emerging Technologies in the ASEAN Member State Economic Research Institute for ASEAN and East Asia (ERIA)Sentral Senayan II 6thFloorJalan Asia Afrika No. 8, Gelora Bung KarnoSenayan, Jakarta Pusat 10270Indonesia © Economic Research Institute for ASEAN and East Asia,2024ERIA Research Project FY2024 No. 17Published in September 2024 All rights reserved. No part of this publication may be reproduced, stored in a retrievalsystem, or transmitted in any form by any means electronic or mechanical without priorwritten notice to and permission from ERIA. The findings, interpretations, conclusions, and views expressed in their respective chaptersare entirely those of the author/s and do not reflect the views and policies of the EconomicResearch Institute for ASEAN and East Asia, its Governing Board, Academic Advisory Councilor the institutions and governments they represent. Any error in content or citation in therespective chapters is the sole responsibility of the authors. Material in this publication may be freely quoted or reprinted with proper acknowledgement. Table of Contents Acknowledgementsiii List of Figurev List of Tablevi Executive Summaryxii Chapter 1ASEAN Intellectual Property Offices that Participated inthis ERIA Research Project1 Chapter 2Introduction of ERIA Research Project and its Objectives2 Chapter 3Methodologies of the Research4 Chapter 4Restrictions Caused by the COVID-19 Pandemic8 Chapter 5JPO’s Three Hypothetical Case Examples10 Chapter 6Q&Aconcerning Patent Examination and PatentabilityAssessment of AI-related Inventions14 Chapter 7Results of the Research (General Issues)15 Chapter 8Results of the Research (Each ASEAN State’s Observations)36 List of Figure Figure 4.1Target of This Research (Scope of AI-related Invention) List of Tables Table 7.1Availability of Patent Examination Guidelines (GLs)/EmergingTechnology–focused GLs17Table 7.2Availability of Patent Examination Guidelines (GLs)/EmergingTechnology–focused Examination GLs19Table 7.3Working Manuals/Concrete Examples in GLs/Number of AI or CSApplications Received/Difficulty Facing20Table 7.4Working Manuals/Concrete Examples in GLs/Number of AI or CSApplications Received/Difficulties Being Faced22Table 7.5Legal Basis for Patentability and Description Requirements <Q1>23Table 7.6Legal Basis for Patentability and Description Requirements <Q1>25Table 7.7Assessment of JPO’s Case Example 1 … “Novelty” <Q14-Q16>26Table 7.8Assessment of JPO’s Case Example 1 … ‘Novelty’ <Q14-Q16>28Table 7.9Assessment of JPO’s Case Example 2 … ‘DescriptionRequirements’ <Q17-Q21>30Table 7.10Assessment of JPO’s Case Example 2 … ‘DescriptionRequirements’ <Q17-Q21>31Table 7.11Assessment of JPO’s Case Example 3 … ’Patent Eligibility’ <Q21-Q24>33Table 7.12Assessment of JPO’s Case Example 3 … ‘Patent Eligibility’ <Q21-Q24>34 Executive Summary The Eleventh ASEAN–Japan Heads of Intellectual Property Offices Meeting held in 2021agreed on an ASEAN–Japan Intellectual Property Action Plan. The agreed-upon planincludescontinued research and studies of each ASEAN member state’s patentexamination guidelines in emerging technologies. The first phase of such research wasinitiated in 2019 and 2020 based on the agreement made at the Ninth ASEAN–Japan Headsof Intellectual Property Offices Meeting. Further, the second phase was again delegated to the Economic Research Institute forASEAN and East Asia (ERIA). This report contains the results of the research conducted in 2021 and 2022 by the ERIAdelegated from the above-identified Meeting. The Research by the ERIA was carried outbased on two viewpoints: the present situation regarding the patent examination guidelinesin each ASEAN member state, primarily since the previous ERIA research, and theassessment of the patentability or description requirement of three case examples newlypresented by the JPO based on the JPO Guidelines. As a result of the research, many ASEAN IP offices utilised the first phase of this ERIAresearch as an impetus to further examine their patent examination guidelines foremerging technologies. S Even though preparation of the guidelines for assessing the patentability of emergingtechnologies represented by artificial intelligence (AI) is still at the stage of laying thegroundwork in the ASEAN as a whole, some ASEAN IP offices made significant progress inelaborating on which issues needed to be focused on dealing with such technologies.Several offices developed specific patent examination guidelines for emerging technologiesbesides their ‘general’ examination guidelines. This second phase of research was conducted by directing all of the ASEAN IP offices.However, like the previous research in 2019–2020, the states that donot conductsubstantive examination for patent applications by themselves – i.e. Brunei Darussalam,Cambodia, Lao PDR, and Myanmar – work towards the establishment of patent examinationguidelines in an inevitably different manner from the