Are there any restrictions placed on the Japanese patent attorney with respect to simultaneously representing competitors in overlapping areas of technology?
If not, do the patent attorneys have an obligation to notify their foreign clients of such conflicts of interest?
Yes, there is a restriction.
Patent attorney – The Patent Attorneys Law Art. 31 provides that a case should not be accepted which may have a conflict of interest with another case being represented. However, simultaneous representation is allowed if the parties concerned give consent to the patent attorney.
The Patent Attorneys Law Art.31 applies equally to foreign clients, who should be notified and whose consent is required when a patent attorney wants to represent simultaneously competitors in overlapping areas of technology.
Does the Japan Patent Office (JPO) permit pro se applications? That is, is it permitted for an inventor to file and prosecute their own patent application without the assistance of a patent attorney?
The JPO permits so-called pro se (self representation) applications as long as the applicant has their domicile or residence in Japan irrespective of their nationality. Otherwise, it is not permitted for an inventor to file and prosecute their application without the assistance of a Patent Administrator [the Patent Law Art.8(1)]. Patent attorneys and attorneys at law can be Patent Administrators. Any person, including non-Japanese, who has their domicile or residence in Japan and is an applicant’s representative with respect to the applicant’s patent, can be a Patent Administrator. The Patent Administrator shall represent the principal in all procedures and in a suit instituted against measures taken by an administrative agency in accordance with the Patent Law or an order or ordinance thereunder [the Patent Law Art.8(2)]. However, the “resident abroad” – i.e. the applicant – can limit the scope of powers of attorney.
As an exception, if the applicant has a Patent administrator, the applicant (or in case of a legal entity, its representative) is able to proceed before the JPO during their stay in Japan without the assistance of a Patent administrator (Art.1 of the Enforcement Ordinance under the Patent Law).
Another exception is admitted when a PCT application filed in the U.S. or other foreign countries designating Japan enters into the Japanese national phase (the Patent Law Art.184-11 applies). In this case, the resident abroad is allowed to proceed before the JPO on condition that the resident appoints a Patent Administrator within 3 months after the expiration of 30 months from the priority date for the filing of a translation of the PCT application, or within 3 months from the day when a request for examination is filed within the above-described 30 months.
Can we file a patent application in a foreign language?
Yes. You can file a patent application written in English to obtain a filing date. Currently, the Japan Patent Office only accepts English-language applications.
You must file a Japanese translation of the English-language application within one year and four months from the priority date. Otherwise, the application is deemed to be withdrawn.
The examination is conducted in the Japanese language.
You can amend the specification, claims, and drawings within the disclosure of the original English text. However, you cannot amend the English text in any way.
If new matter is introduced into the Japanese translation beyond the disclosure of the original English text, it will cause rejection of the application and invalidation of the patent.
(iii)Specification and Claims
What format for the specification should be used to file a patent application in Japan?
The Japan Patent Office accepts the (trilateral) Common Application Format (CAF) from January 1, 2009. Therefore, required format in Japan is same as in USPTO and EPO, and it will be accepted by the Japan Patent Office without the need for amendments related to formalities.
Are there legal requirements for the description in “Summery of Invention”? If yes, what should be written down?
Yes, Art.24-2 of Regulation requires to state the features which are necessary for a person skilled in the art to recognize the technical significance of the invention, including the problems to be solved by the invention, technical means used for solving the problems and the others. Therefore, at least the description of a technical problem and a solution to the problem are necessary. The others, such as an advantageous effect of the invention, are not necessary unless they are essential for the skilled person to recognize the technical significance.
If an invention shows plural advantages, must a claim include all the features corresponding to each advantages? Or can we separate the features into a plurality of independent claims?
We can separate the features into a plurality of independent claims to obtain broader scope of protection. Note that the each independent claims must meet the requirements of the unity of invention (Art.37) and be supported by the specification (Art.36(6)(1)).
Is one particular claim format, for example, European two-part form, Jepson, etc., affect a scope of protection in later stage, such as litigation? If yes, what format is advantageous/disadvantageous?
No, claim format does not affect a scope of protection.
In some countries, a preamble in a two part form claim or a Jepson type claim is interpreted as a prior art. In Japan, every technical features in a claim, including a preamble and a body, are treated equally and a scope of protection is interpreted from whole written technical features in a claim. Therefore, there is no particular claim format which is advantageous/disadvantageous.
Can a dependent claim depend on other multiple dependent claim?
Yes. Multiple dependency on multiple dependency is admitted in Japan without additional governmental fee.
Will dependent claims be automatically determined to be invalid in a trial for invalidation if the independent claim is determined to be invalid?
No. A trial for invalidation should be demanded for each claim whether independent or dependent, and dependent claims can be maintained if they do not have any reasons for invalidation themselves, even though the independent claim is determined to be invalid. So, it is recommendable to draft dependent claims if these dependent claims have any additional significant features.
Is there any restriction for number of independent claims, such as one independent claim per one category?
No. An application can involve any number of independent claims. Note that all the claims must fulfill a requirement of unity of invention.
Show allowed claim categories in Japan.
There are two categories – a product and a process. The process is further divided into two – a simple process and a process of manufacturing.
Note that a device, an apparatus, a system or a program is categorized as a product. A method or a use is categorized as a process.
Is it possible to file a divisional application as a utility model application from a patent application?
Yes. A divisional application filed out of a patent application can be a utility model application by conversion of application. The conversion to a utility model, however, is only possible within 9 years and 6 months from the filing date of the patent application.
Is it possible to file a Japanese application (patent or utility model) which claims the priority based on an earlier filed Japanese application (patent or utility model) within the priority year (so-called internal priority period) allowing inclusion of earlier related invention made within the priority year?
Yes, it is possible.
The internal priority system provides an applicant of a Japanese application with the same benefit as enjoyed by those of Paris Convention applications.
A later filed application claiming an internal priority based on an earlier filed application can protect a fundamental invention as well as its improvements or peripheral inventions. In this case, the invention of the earlier Japanese application is combined with the later filed application as a single application and the earlier filed application is deemed withdrawn after a lapse of 1 year and 3 months (15 months) from the priority date (the filing date of the earlier filed application).
Explain outlines of the utility model system in Japan.
Targets of protection, called “a device”, by the Utility Model Law are limited to technical ideas relating to the shape, structure or combination of an article including articles and immovable properties, such as buildings, bridges, and plants. In other hands, materials themselves (e.g.: medicines, chemical compounds, glasses and alloys etc.), and methods are not the targets of protection.
Similar to the patent system, the Utility Model Law establishes three cases for novelty-breaking: publicly-known; publicly-worked; and publication in Japan or other countries before a filing date of an application. Note that the novelty breaking cases are not limited to be domestic.
While the patent system requires an invention not to be easily obtained by a person skilled in the art (Art.29(2) of the Patent Law), the utility model system requires a device not to be very easily obtained by a person skilled in the art (Art.3(2) of the Utility Model Law). It seems that the inventive step of the invention is higher than that of the device. However, the inventive steps of the patent system and the utility model system are treated as to be equal in a technical opinion (see (9) below) issued by the JPO, substantially there exists no difference between them.
All the utility model applications should be accompanied by drawings (Art.5(2) of the Utility Model Law), because an object of protection is limited to the device of an article. Further, the annual fee for each year from the first to the third year shall be paid in a lump sum, simultaneously with the filing of the utility model application.
Fees for a utility model application and registration are lower than fees for a patent application and registration.
A utility model right is granted only after the examination of formal and basic requirements except substantive requirements (e.g. novelty and inventive steps etc), so that a non-substantive examination system is adopted in the Utility Model Law. Therefore, if a utility model application satisfies the formal and basic requirements, the application will be registered. However, if it does not satisfy the substantive registration requirements, it shall be disputed in an appeal for invalidation (Art.37 of the Utility Model Law). It is noted that a utility model application will be registerable in about 4 months from the filing date, while a patent application will be registerable for in about 15 months from the date of request for examination (as of 2015).
The applicant may file amendments only for one month from the filing date or a period specified by the Commissioner(Art.2-2).
Further, the owner of a utility model right shall be entitled to one opportunity to correct the description, claim(s) for utility model registration or drawing(s) attached to the request, excluding the prescribed cases (Art.14-2(1) of the Utility Model Law).
However, only where correction has as its objective the cancellation of claim(s), the owner of a utility model right may correct the description, claim(s) for utility model registration or drawing(s) without limitation for the time or number of times, excluding after the notification of the conclusion of trial examination (Art.14-2(7) of the Utility Model Law).
The term of the utility model right is 10 years from the filing date of the application (Art.15 of the Utility Model Law), while the term of patent right is 20 years from the filing date (Art.67 of the Patent Law).
Basically, a utility model right is the same as a patent right in the exercise of right, but it is different from the patent right in that the utility model right may be exercised only after giving a warning in the form of a report of a technical opinion as to registrability of the utility model in order to avoid abuse of the right (Art.29-2 of the Utility Model Law).
However, where the owner of a utility model right has exercised their utility model right or given a warning to an infringer, and a trial decision that the utility model registration is to be invalidated has become conclusive, such owner shall be liable to indemnify any other party with respect to any damage caused to that party by the exercise of that right or by the giving of the warning (Art.29-3(1) of the Utility Model Law). The reason, therefore, is that the technical opinion is a kind of nonbinding comment of the Japan Patent Office.
Any person may make, to the Commissioner of the JPO, a request for a technical opinion (Art.12 of the Utility Model Law). The request may be made even after the expiration of the utility model right except when the registration has been invalidated in a utility model invalidation trial. It takes about six months from the date of request to get the technical opinion.
Is it possible to convert between an utility model application and a patent application?
Yes, A utility model application may be converted to a patent application and vice versa. A utility model application may be converted into a patent application within 3 years from the filing date of the utility model application only during the pendency of the case before the JPO. The owner of a utility model right may file a patent application on the basis on their utility model registration (Art.46-2 of the Patent Law). However, in such a case, the owner shall abandon their utility model right in order to avoid double registration.
Are additional fees for a multiple dependent claim imposed?
No. Regardless of single/multiple dependency, a single claim is counted as one in fee calculation.
What is the requirement of the unity of invention in Japan?
If all the claimed invention in a single application is linked as to form a single general inventive concept, the application meets requirement of the unity of invention. This requirement corresponds to the rule 13 of the PCT.
More concretely speaking, if two or more inventions have same or corresponding specific technical feature, these inventions satisfy the conditions of the unity of invention. Here, “specific technical feature” means a technical feature apparently contributes to the invention over prior art.
For more details of examples, see the Examination Guidelines, Part Ⅱ, Chapter 3.
Is the advantageous effects or merits of the invention required to be stated in the description?
An applicant should describe an advantageous effect of a claimed invention over the relevant prior art, if any, as far as he/she knows.
How the claims must be supported by the description?
Art. 36(6)(i) requires “statement setting forth the invention for which patent is sought and which is described in the detailed description of the invention.” The JPO states that typical cases exhibiting nonconformity to the provision of Art. 36(6)(i) are presented as follows;
Does the presence of inoperative embodiments within the scope of a claim render the claim non-enabled?
Yes. As stated above, Art. 36(6)(i) requires “statement setting forth the invention for which patent is sought and which is described in the detailed description of the invention,” and therefore a claim must be supported over the whole of its breadth.
Is it possible to define a claimed invention by function?
Yes. There is no prohibition against the use of functional language in the claims. However, the JPO states that when the claims include matters defining a product by its function or characteristics, etc., the scope of the invention cannot necessarily be clear and an invention for which a patent is sought may not be clearly identified.
Are optional expressions permitted in a claim?
If there are expressions where optionally added items are described along with such words as “when desired,” “if necessary,” “preferably,” etc., there are some cases that the statement of the claims is not clear. Further, if there are recitations where numerical ranges include zero, for example, 0 to 10%, such a claim may be unclear since it is unclear as to whether the component concerned should be included or not, i.e., indispensable or optional.
Do ambiguous terms indicating extent automatically render a claim invalid due to indefiniteness?
As a rule, ambiguous terms indicating extent shall not be used when writing a claim. If there are expressions where the standard or degree of comparison is unclear such as “with slightly greater specific gravity,” “much bigger,” “low temperature,” “high temperature,” “hard to slip,” “easy to slip” or where the meaning of the term is unclear, there are some cases that the scope of the invention is not clear.
Can a claim be defined by objectives to be attained?
The JPO states that where a claim includes the definition of a product by the result to be achieved, there may be cases where concrete products which can obtain such a result cannot be conceived. When a certain concrete means which can obtain such result is disclosed in the specification or drawings and it is also recognized that only the concrete means is substantially disclosed, the scope of the invention is usually deemed to be unclear.
May devices or products be claimed with limitations on their usage?
Yes. When devices or products are claimed with limitations on their usage, the protection conferred by the claim is interpreted as being limited to the stated use.
What are novelty requirements?
The Patent Law establishes three cases for novelty-breaking: publicly-known; publicly-worked; and publication. The publication contains publication by document and publication by electric telecommunication lines, so-called internet publication. A claimed invention must not fall under these cases.
Explain details of novelty requirements.
Art.29(1) provides that a claimed invention loses its novelty when the invention comes under following cases:
Would a paper submitted for consideration by a professional journal be a “publication” as of the date it is submitted to the journal (i.e., before the journal actually prints the paper)?
No. Even though the paper has been submitted for consideration by a professional journal, it has not been actually distributed to a person having no secrecy obligation. Therefore, the actual distribution date of the journal is considered to be the publication date.
Is there Grace Period in Japan?
Yes. According to Art 30, an applicant can claim Grace Period of 12 months, if their invention loses novelty against the will of the applicant or if their invention loses novelty due to their own act. A petition is required at the time of filing a patent application, and a document to prove the disclosure should be submitted within 30 days from the filing date.
How the Law requires for an inventive step?
Art. 29(2) settles:
Where an invention could easily have been made, prior to the filing of the patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of an invention or inventions referred to in any of the paragraphs of Subsection (1), a patent shall not be granted for such an invention notwithstanding Subsection (1).
Can we submit an additional experimental data to overcome inventive step rejection?
Generally, yes. Examination Guideline explains “Effects to be considered, asserted in a response to an office action” as follows:
Where advantageous effects compared to cited inventions are described in a specification, or where advantageous effects are not explicitly described but can be inferred from the statements in the specification or the drawings by a person skilled in the art, the effects asserted or verified (e.g., experimental results) in a written argument, etc. should be considered. However, the effects asserted in the written argument, which are not described in the specification and that a person skilled in the art couldn’t deduce from the description of the specification or the drawings, should not be taken into consideration.
Does a disclosure in unpublished prior application prevent later filed patent application from grant? A34. Yes. Art.29-2 settles:
Where an invention claimed in a patent application is identical with an invention or a device disclosed in the specification or drawings originally attached to the request of another application for a patent or of an application for a utility model registration which was filed prior to the filing date of the patent application and for which the Patent Gazette which states the matter referred to in each paragraph of Art. 66(3) of the said Law (hereinafter referred to as “the Gazette containing the Patent”) was published under the said subsection or the laying open for public inspection was effected or the Utility Model Gazette which states the matter referred to in each paragraph of Art. 14(3) of Utility Model Law (No. 123 of 1959) (hereinafter referred to as “the Gazette containing the Utility Model”) was published under the said subsection after the filing of the patent application, a patent shall not be granted for the invention notwithstanding Art. 29(1).
Is Art.29-2 applied to a case where inventors or applicants of a prior application and a present application are same? In other words, is an unpublished prior art self-collisive?
No, Art. 29-2 excludes self-collisive cases such as an invention or device made by the same person as the inventor of the invention claimed in the patent application. Moreover, this provision shall not apply where, at the time of filing of the patent application, the applicant of the patent application and the applicant of the other application for a patent or the application for a utility model registration are the same.
Is Art. 29-2 applied to a case where a prior application is a foreign application other than Japan?
No, Art.29-2 is only applied on a domestic application. Note that an application of the Japanese National Phase entry of a PCT application is treated as a domestic application. In such case, the language of the publication does not matter.
If an inventor discovers a new compound that is effective for treating a disease, but does not know its mechanism, would the claim relating the compound be rejected if there is no description of the mechanism explaining how the compound works?
No. In the case the claimed invention relates to a new compound, it would be sufficient to disclose: how to make and use the compound and the effect of the compound treating a disease. It is not necessary to clarify the mechanism (i.e. chemical reaction, biological reaction) of the compound.
However, in order to demonstrate the effect (efficacy data) of the compound for treating a disease, at least one working example would be required.
Is second use of a known pharmaceutical composition patentable in Japan?
Yes. A claim may be drafted as follows:
“A pharmaceutical composition for treating (combating) disease X (second purpose) comprising a compound Y as an active ingredient.”
The novelty of a pharmaceutical invention is judged from the two viewpoints; one is the compound contained in the composition, and the other is the pharmaceutical use (e.g., The Tokyo High Court Judgment of April 25, 2001 (Heisei 10(Gyo Ke)401) etc.). Therefore, even if there is no difference in composition from a known pharmaceutical composition and if the second pharmaceutical use is clearly different from the first pharmaceutical use, the pharmaceutical composition is patentable for the second use. However, if the second use is the species of the first use, for example, then the second use would not be distinguishable from the first use. In addition, if the second use can be derived from the first use (asthma treating composition vs. a bronchio-dilatation composition), then the novelty of the second invention would be denied.
Explain enable requirement for medicine.
According to the Examination Guideline, normally one or more representative embodiments or working examples are necessary which enable a person skilled in the art to work the invention, except the case where a person skilled in the art can manufacture the compounds etc. and can use the compounds etc. for medicinal use, in the light of common general technical knowledge as of the filing. As for working examples supporting the medicinal use, a description of the result of the pharmacological test is usually required.
In order to confirm the pharmacological effect of compounds etc. of the claimed medicinal invention, all of the followings should be made sufficiently clear, in principle; (i) which compounds etc. are (ii) applied to what sort of the pharmacological test system, (iii) what sort of result is obtained, and (iv) what sort of relationship the pharmacological test system has with the medicinal use of the claimed medicinal invention. It should be noted that the result of the pharmacological test should be described with numerical data as a general rule, but when the result cannot be described with the numerical data due to the nature of the pharmacological test system, an objective description equivalent to the numerical data for example, a description of the objective observation result by a medical doctor may be accepted. Furthermore, a clinical test, an animal experiment, and in-vitro test are employed as the pharmacological test system.
If the specification includes an example which exactly describes how to test the claimed chemical composition, can the data associated with the example later be added, if it is proven that the example is actual, rather than “paper” or “prophetic”?
No. The written requirement (support and enablement) concerning the pharmaceutical invention is very strict in recent practice. If the pharmacological efficacy data of the pharmaceutical composition of the example (or the description which is considered equivalent to the pharmacological efficacy data) were not disclosed in the specification at the filing date of the patent application, it is almost impossible to obtain a patent for the pharmaceutical composition. The addition of the data to the specification after the filing date of the present application is considered as new matter. “Paper” or “prophetic” examples are not considered as the working examples.
What physical-chemical data are required in Japanese applications to support an invention of a composition which is a mixture of known ingredients?
The physical-chemical data should be usually required in the specification for an invention of a composition. The chemical field is the technical field where the effect of a composition cannot be readily expected based on the components constituting the composition. A composition invention is usually invented for providing a new and useful composition for some intended purpose. Such usefulness is usually proved by the physical-chemical property of the composition relating to such intended purpose. The kind of the physical-chemical property of the composition should vary depending on the kind of the composition. For example, please assume that an adhesive composition has been invented, which provides a stronger adhesive property than the conventional adhesive composition. In order to confirm that the claimed adhesive composition is indeed useful as an adhesive composition, it is natural that the specification should contain physical-chemical data based on which the adhesive strength of the claimed invention can be evaluated.
If ex-post supportive data lacking in original application, such as physical/chemical/medical data for a chemical compound, are newly added in corresponding application claiming priority in Japan, are any detriments anticipated?
Yes, the priority may be denied. However, insufficient support or disclosure in the specification will cause a rejection of the application. Therefore, if the ex-post supportive data is essential to meet the support requirement or the disclosure requirement, there may be no choice. On the contrary, if the claimed invention is clear in its technical significance, such as usefulness, and can be prepared from the original disclosure, namely, a disclosure without the ex-post supportive data, the priority may be affirmed.
In the U.S., chemical patent applications often contain a mixture of examples which have actually been carried out and examples which are prophetic (or “paper”) examples. Do “paper” examples improve the acceptability of the Japanese patent application?
No. The “paper” or prophetic examples do not either improve the acceptability of the Japanese patent application; or create a specific problem. The JPO does not accept “paper” examples only. In addition, it is not possible to add to the specification, any data obtained by actually carrying out the prophetic examples, after the filing date of the application, as constituting new matter.
Assume the deposit has been made (e.g., plasmid, etc.) in the U.S. with ATCC prior to the U.S. filing date of the U.S. application. The Japanese law requires deposit prior to the filing of the priority application. The U.S. law allows deposit after filing of the application. The Accession Number from the ATCC was not made available until after the U.S. filling of the U.S. case. The Accession Number is therefore not disclosed in the U.S. application as originally filed. Can the Accession Number be added to the Japanese application?
No. The priority cannot be enjoyed for the Japanese application, if the invention is related to the microorganisms which were not easily available at the filing date of the U.S. application. In addition, the Accession Number from the ATCC (or any other International Depository Authority under Budapest Treaty, or a storage number when the deposit was made to a reliable public storage authority) cannot be added to the Japanese application even at the filing date of a Japanese application, even if it is desired to retain the convention priority right. Under the current practice, the Accession Number should be described in the basic application to enjoy the convention priority.
In this connection, the Examination Guidelines regarding microorganism explain a case of exceptionally acceptable supplement as follows:
“An amendment of an accession number of a microorganism is not regarded as addition of new matter, if microbiological characteristics of the microorganism are described in the specification as filed, to the extent that the microorganism can be identified, and deposit of the microorganism can be identified based on the name of the depositary institution, etc. In such a case, the applicant should make an amendment of the accession number without delay.” (Examination Hand book Appendix B, Chapter 2) If the accession number were added to the basic U.S. application after the filing thereof under the condition stated above, then it may be possible to enjoy the Convention priority based on the basic U.S. application for the corresponding Japanese application.
When an application includes an amino acid and/or nucleotide sequence, does the Japanese law require submit the sequence listing? Must the sequence listing in computer readable form be submitted with the application? Can the sequence listing be supplemented after the filing date of the application?
In case where a patent application (including an application claiming the priority of a foreign application and a PCT national phase application) describes an amino acid and/or a nucleotide sequence in the specification and/or figure, the applicant must prepare the sequence listing for the nucleotide and/or amino acid sequence in accordance with “Guidelines for the preparation of specification which contain nucleotide and/or amino acid sequences” and describe the sequence listing in the specification. Furthermore, when the application is filed, the electronic data of the sequence listing in computer readable form (electronic data) must be submitted.
The submission of the electronic data is made by submitting a floppy disc or compact disc storing the data. When a patent application is filed by using on-line application system, the electronic data can be submitted together with the application.
It is not necessary to submit the sequence listing when the application is filed. However, when no sequence listing is submitted at the filing of the application, the JPO issues a notice of formal objection and requires the applicant to submit the electronic data of the sequence listing within the prescribed term (usually 30 days from the notice). Unless the electronic data are submitted within the prescribed term, the application will be dismissed. Therefore, it is recommendable to submit the sequence listing at the filing of the application.
Have there been any decisions on what are “inventions liable to contravene public order, morality or public health”? In particular, is this an obstacle to the patenting of transgenic animals?
At present, the provision regarding public order, morality or public health is not considered to create any problem or question for patentability of transgenic animals in Japan.
There have been some decisions ruled by the Tokyo High Court. For example, a banknote forging apparatus, a vest usable for smuggling gold bars, an opium smoking tool, a man’s energy enhancing device, etc. were considered liable to contravene public order and morality. An invention relating to a bingo game machine was considered patentable although the judge recognized that it would be usable for gambling. A specific medicine for cancer and Streptomycin were both considered not liable to contravene public health in spite of the fact that they cause harmful but relievable after-effects when they are administered in large quantities.
A plant breed and an improvement of a breed of animal are patentable in Japan as long as they have novelty, inventive step and industrial applicability, and further they are properly disclosed in the applications so that anyone skilled in the art may easily carry out the inventions. In this connection, many patents regarding an animal itself have been granted in Japan. A Harvard mouse was also granted. No issue was raised in connection with public order, morality or public health.
Explain statutory requirements for CII.
CII, includes software, needs to use natural laws as a whole. Following cases fulfills statutory requirements.
Explain claim target and category thereof of CII.
CII can be expressed in various ways. Especially, claiming “a computer program” is admitted. These are exemplified as follows:
Can pure algorithms or program listings be patented?
No, they are considered to be a merely disclosure of information and not fulfill the statutory requirements.
How to draft claims and specification?
Claims must drafted to use hardware resources on each matter to define the invention included in the claims.
Specification must describe how the procedure or function corresponding to those stated in a claim is implemented or realized by hardware of software. Description merely in an abstract or functional manner is insufficient.
Also, specification must describe how hardware or software is structured sufficient enough to understand. Only functional block diagrams or general flow charts may be insufficient.
The request can be filed anytime within three years from the filing date. For a divisional application, a conversion application, and an application based on a utility model registration, a request for substantive examination can be filed within 30 days after filing such an application, even if the three-year period has been expired from the filing date of its original application.
If no request is filed within the prescribed period, the application is deemed to have been withdrawn.
Preferential examination, accelerated examination, super-accelerated examination (trial) and examination under PPH (Patent Prosecution Highway) are available for expeditions.
The accelerated examination is a non-statutory expedition. This is fast track and a first OA will be issued within two to three months after filing a request for accelerated examination. The accelerated examination can be requested by an applicant under the following conditions:
The super accelerated examination is a non-statutory expedition and currently under trial run. This is the fastest track and a first OA is issued within one month after filing a request for super-accelerated examination (within two months in the case of PCT applications). However, response to the first OA should be filed within 30 days (normally, 60 days) for domestic applicants and 2 months (normally, 3 months) for foreign applicants. The super-accelerated examination can be requested by a patent applicant under the following conditions:
Are there different types of OA (Office Action)?
Yes, there are two types – a non-final office action and a final office action. A first coming OA is generally non-final. An OA after the non-final OA can be either non-final or final. The final OA is issued when the OA is required solely due to amendment made in response to another OA. Namely, when claim amendments in response to an OA introduce new reason for rejection, forthcoming OA will be final. Note that when responding to a final OA, claim amendment is restricted heavier than in a non-final OA.
Explain about decision of rejection.
Decision of rejection is an OA to finally reject an application at examination phase. This OA is issued when a response to a final or non-final OA does not overcome a reason for rejection in the OA.
To this decision of rejection, an appeal to appeal board can be filed for further prosecution.
In the U.S., broad claims can be supported by later filed declarations. Can broad claims in a Japanese application be supported by later filed declarations showing operability of an invention?
For the purpose of meeting the disclosure requirement, it suffices to disclose only one example which is covered by the scope of the claimed invention. However, Examiner may reject a broad claim based on belief that the claim covers a non-operable portion. In this case, the Applicant may submit test data by a declaration to show operability of the invention.
Is it possible to have an extension of time for responding to an OA? If so, how long is the extended period of time? Can we file an extension of time more than once? How much does it cost to file an extension of time?
Yes, it is possible to have an extension of time for responding to an OA. As of April 1, 2017, you can enjoy the following:
Can a request for extension of time be submitted afterward?
Yes, the request can be submitted within two months from the expiration date of the time period for responding to an OA by paying the official fee of ￥51,000.
Amendment can be filed in the following time frames.
Explain requirements for amendment after first OA
No new matter must be introduced.
For an application filed on or after April 1, 2007, unity of invention between examined claims and amended claims must be satisfied. Under the new rule, an amendment which changes the special technical features of invention is prohibited once after receipt of an OA (The Patent Law Section 17-2(4)). The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions makes over the prior art.
Criteria of restriction of amendment depend on cases.
Explain requirements for amendment after final OA
In addition to above answer, when responding to final OA, claim amendment is restricted to any one of the following purposes.
Facts: An applicant has a first filed foreign application and a later filed Japanese application claiming priority to the foreign application. The applicant would be ultimately satisfied with the Japanese claims having the same scope as claims that issued in the foreign case.
QUESTION: In that case, is it advisable to amend the Japanese claims when requesting examination to parallel the issued foreign claim? Or should the applicant wait until the Examiner has issued the first Office Action before amending the claims?
It would normally be unnecessary to restrict the claims in a Japanese application to the scope of the issued foreign claims. Examination in Japan is done entirely independently of the U.S. or European or any foreign prosecution. The applicant is not currently obligated in Japan to report any prior art references uncovered in other countries. Therefore, it would be rather wise to try to obtain a maximum scope of the patent protection in Japan regardless of claims in other countries if a maximum scope of protection is desired in Japan.
We believe that the applicant should wait till the first official action before amending the claims. However, it is quite conceivable that restricted claims would lead to quick issuance of a patent or to a stronger patent in view of a possible Invalidation Trial against the patent after grant, particularly when the prior art references cited in the foreign application are very close references.
How is the new matter determined?
An amendment including matters beyond “the scope of features of the description, patent claim(s) or drawing(s) originally attached to the request”, in other words, an amendment including a new matter is not allowed (Patent Law Section 17-3(3)).
According to the Examination Guidelines, “matters which are originally disclosed in the specification and the like” includes not only “matters which are disclosed in the specification and the like originally” but also “matters which are unambiguously derivable from the matters originally disclosed in the specification and the like”. Here, “the matters which are unambiguously derivable from the matters originally disclosed in the specification and the like” indicate matters which can be recognized by a person skilled in the art without description in the specification and the like originally attached to the request that the matters are clearly derived from matters disclosed in specification and the like in view of technical knowledge available to public at the time of filing the request and considered to be nothing less than disclosed in the specification and the like.
Can amendments be challenged by third parties? How and when?
When can reply to an OA, including argument, be filed?
Reply to the OA can be filed in a response period specified in the OA. Amendments can be bundled.
Is the interview process the recommended procedure to expedite examination?
Assume you have a case of critical importance to your client. What strategy do you recommend?
Yes, the interview with the Examiner is the recommended procedure to expedite examination. It is very effective to hold an interview with the Examiner at any stage to obtain a result favorable to the applicant. It is recommendable to have an interview after fully discussing with a Japanese patent attorney how to proceed.
An Examiner is to conduct an interview with respect to an application on which the Examiner has started or is about to start the examination, while an Examiner is not to conduct an interview with respect to the following applications:
The information can be submitted at any time including after the patent granted under the 2003-revised patent law.
Anyone may submit the information. Submission by anonymity is also possible.
Not only information relating to the novelty or inventive step of inventions but also information relating to the lack of specification disclosure requirements and to an amendment including the introduction of new matter, etc. can be submitted.
How is the feedback to the provider of the information done?
requested by the provider of the information, the JPO will inform the provider in writing whether the submitted information has been used by the Examiner in the examination procedure.
How to inform an applicant of the submission of the information?
The JPO will send a letter informing of submission of prior art under Rule 13-2 to the applicant. If the applicant wants to know what kind of information was submitted, he or she has to request for inspection of files.
Is the information submission system effected?
Yes, it is. 73% of the submitted information has been used in the examination procedure.
Are there any disadvantages?
of the information is not permitted to contact the Examiner. Therefore, the provider cannot add the explanation of the submitted information directly to the Examiner. On the other hand, when such prior art information was submitted, the applicant will be aware of importance of the claimed invention for the provider. So, the applicant may try to overcome the possible Office Action based on the submitted prior art. Once the patent is granted, it will be very difficult to invalidate the patent in the opposition process or the Invalidation Trial based on the same prior art that was submitted.
How and when to appeal against Examiner’s decision of rejection?
a written appeal to the JPO within three months (for domestic) or four months (for foreign) from a date of a transmittal of Examiner’s decision of rejection. The written appeal must contain names and domiciles/residences of an appellant and a representative, a case identification, and a purport and reasons of the appeal. The reasons of the appeal can be complemented afterward.
Can a set of claims, a specification or drawings be amended when filing an appeal against Examiner’s decision of rejection? If yes, are there any requirements upon amendments?
you can amend the set of claims, the specification and the drawings. All amendments must be filed together with the appeal. There are requirements same as in a case of a final-OA.
Explain reconsideration by examiner before appeal.
examiner before appeal is an examination carried out by an Examiner, usually same one in a previous examination, to judge whether or not a decision of rejection shall be annulled. The reconsideration shall be executed when claims, specifications or figures have been amended together with the filing the appeal.
The Examiner will grant a patent when the previous decision of rejection should be annulled, while, if it is not the case, he won’t make a final decision and entrusts the appeal case to the appeal examination by appeal examiners.
What is Shin-Jin (questioning/interrogation by an appeal board)? Sometimes a paper titled such may be sent from the JPO in an appeal.
Generally, Shin-Jin means given opportunity of making a statement individually to the party concerned by an appeal board. In a case of an appeal against Examiner’s decision of rejection, Shin-Jin is often sent to an appellant to confirm his will whether the case shall proceed further or not when an Examiner have made a negative report in the reconsideration. Replying to this is not a duty but strongly recommended, because appeal examiners might consider the appellant have lost his will to proceed further.
Is there any summons, like oral proceedings in the EPO, expected in an appeal against Examiner’s decision of rejection?
Generally, no. An appeal against Examiner’s decision of rejection is conducted in which the appeal is examined by document by proceeding in principle.
What kinds of appeal decision do an appeal board provides?
Grant a patent, rejection or remand to an Examiner’s examination. The appeal decision of rejection can be sued.
Explain general requirements for suit against an appeal decision of rejection.
Jurisdiction: The Intellectual Property High Court (Tokyo), exclusive.
Term of limitation: 30 days for statutory period and additional 90 days for foreign plaintiff from a transmittal date of the appeal decision of rejection. No extension of time is permitted.
Nominal defendant: The commissioner of the JPO.
Can I amend a set of claims or a specification of an application when suing against an appeal decision? How about a divisional application?
No. Neither an amendment nor filing a divisional application is permitted.
Can I file complaints against the IP High Court Decision?
Yes, you can appeal to the Supreme Court. This is final appeal. Note that grounds for final appeal are legally restricted to certain situations.
How to register granted patent?
To pay annual fees of the first three years within 30 days from transmittal date of an Examiner’s decision of grant or an appeal decision of grant a patent. This period can be extended by 30 days by filing a petition beforehand.
How long can a patent right sustained?
A term of a patent right starts from its registration and expires 20 years from its filing date. No adjustment of Patent Term, like in U.S., can be applied. The patent right requires annual fees for every year after its grant. Annuities for the first three years must have paid at the time of registration, and annuities for the fourth year or after must be paid before the year covered thereby. Six months delay in payment is permitted with additional surcharge equal to the annuity. In case of delay caused by a reason outside its patentee’s control, further six months period of payment can be permitted. Before the grant of the patent, no annuity, e.g. maintenance fee in European patent system, is required.
How to know maintenance / expiration of registration?
Several ways are available.
Can a term of patent right be extended beyond statutory 20 years?
Yes, By filing an application for registration of an extension of the term of a patent right, the term can be extended. This extension is permitted only when the patent right is concerning medical drugs or agricultural chemicals, and there have been unexploitable period due to the Pharmaceutical Affairs Act or the Agricultural Chemicals Regulation Act. Extendable period is limited up to five years.
Explain the definition of Implementation in Japanese practice.
Implementation of an invention in this Law means the following acts:
What kind of recourse is available for patent infringement in Japan?
With regard to civil recourse for patent infringement, a patentee can seek an injunctive order, demand damages, demand restitution for unjust enrichment, and seek measures for recovery of reputation.
What is required to grant an injunction against infringement of a patent?
A patentee can require a person who is infringing or is likely to infringe their patent to stop or prevent such infringement under the Patent Law Art. 100. A patentee can seek an injunctive order even if he/she is not carrying out the patented invention. No willfulness or negligence is required to grant an injunction. Nevertheless, the likelihood of infringement needs to be proved objectively clear.
At the same time, a patentee can also demand measures necessary for the prevention of such infringement including disposal of infringing products and removal of facilities used for the infringement.
How is the award of damages calculated in Japan?
The Patent Law has provision for presumption of amount of damage (Art. 102). According to the Patent Law Art. 102, a patentee can select one of the following three methods to calculate damages caused by infringement.
Can a patentee seek monetary recovery for an infringer’s act carried out before the issuance of the patent?
Yes. Once a patent is granted, a patentee can demand compensation for an infringer’s act carried out before the issuance of the patent if the patentee provided a given warning with documents stating the contents of the claimed invention after the laid-open publication of the application. If an infringer knowingly infringed the claimed invention after the laid-open publication of the application, a patentee can demand compensation without a given warning. The amount of compensation shall be equivalent to the amount of a royalty the patentee would have been entitled to receive for the claimed invention.
What can a defendant do if a patentee files a suit for patent infringement?
If a patentee files a suit for patent infringement, a defendant has some options: First, the defendant may counterclaim that the alleged patent is invalid. Alternatively, the defendant may file a trial to invalidate the patent. In some circumstances, the defendant may file a suit for declaratory judgment that the patentee has no right to sue the defendant.
How does the Japanese court interpret a claim?
In assessing whether a claim reads on an accused product or process, the court first considers the explicit claim language under the Patent Law Art. 70(1). However, if the claim language is indefinitely vague and ambiguous, the court can consult the specification and the drawings, wherein the court may consider the object, advantages and/or individual embodiments. Basically, the essence of the claimed invention does not reside in the object and/or advantage but in the structure. On December 26, 1991 in the “Lightweight Coated Paper Case,” the Tokyo High Court held, in favor of the plaintiff (patentee), that the accused product was different in its objective from the patent’s but had the same technical features as those recited in the claims.
Defendants often try to defend themselves by insisting that their product or process achieves no such advantages expected by the patent. However, the advantages mentioned in the specification are not always intended to delimit the invention. The advantages are arbitrary predictions rather than facts, lacking the objectivity. The alleged advantages should be distinguished from “industrial applicability (utility)” as one of the requirements for patentability.
Specific embodiments or examples are generally provided for illustrative purposes and are not considered to limit the scope of the invention, except when the claim language is unreasonably broad beyond the description. The excessively broad scope of the claim will be contrary to the policy of the patent system where a patent is given in return for disclosure of the invention to the public. In cases where the scope of the claim is indefinite in light of the embodiments and/or prior art, defendants often refer to the prosecution history.
Is the doctrine of equivalence available in Japan?
In view of the fact that Japan adopts a statutory law system, and therefore every statute is supreme as the primary legal source. Therefore, the Patent Law Art. 70 is absolute. Judicial judges were hesitant to adopt the doctrine of equivalents to find infringement beyond the letter of a claim. In fact, until 1998 the courts had never held an infringement 57
under the doctrine of equivalents. However, on February 24, 1998, the Supreme Court has provided a guideline in favor of the doctrine of equivalents. Specifically, the following five requirements must be satisfied for successfully asserting the doctrine of equivalents:
Is the doctrine of prosecution history estoppels available in Japan?
Generally, the doctrine of prosecution history estoppels is also available in Japan. For example, the matter the patentee intentionally excluded during prosecution is excluded from the scope of protection.
Is the doctrine of claim differentiation or its equivalent available in Japan? Specifically, in a case where different words or phrases are used in different claims, are those claims presumed to have different scopes?
Japan does not have the doctrine of differentiation or its equivalent.
In this regard, the Patent Law Art. 36(5) provides that separate claims can be directed to substantially the same invention in the same application. This provision is intended to guide claim drafting but not to govern claim interpretation.
What is a trial for patent invalidation?
A trial for patent invalidation is an administrative procedure to invalidate a patent. When a trial for patent invalidation is requested, a panel consisting of three or five trial examiners examines the patent based upon ex officio proceedings. In principle, oral proceedings are used in a trial for patent invalidation.
What kind of grounds can be asserted in a trial for patent invalidation?
A trial for patent invalidation can be requested on the following grounds:
Generally, anyone can request a trial for patent invalidation. However, only an interested party can request a trial for patent invalidation if the trial is requested on the grounds that the patent application was not jointly filed by co-applicants or that the patent application was filed by a person who is not the inventor and has not succeeded to the right to obtain a patent, only a person who has the right to obtain a patent can request a trial.
A trial for patent invalidation can be requested anytime after a patent has been issued. A trial for patent invalidation can be requested even after a patent has been expired.
Can a patentee amend claims during a trial for patent invalidation?
A patentee may request for amendment (correction) of claims during a trial for patent invalidation. Such request can be made within the time limit designated for a patentee’s response to a written request for the trial or to an examination result in a case where the panel has examined any grounds not pleaded by a party.
Such correction shall be made within the disclosure of the patent application as filed. Furthermore, such correction shall not substantially enlarge or alter the scope of claims. Additionally, such correction shall be limited to the following purposes:
What kind of action can be taken against a decision of a trial for patent invalidation?
Either party who cannot accept the decision of the trial for patent invalidation may appeal the case to the IP High Court. Such appeal must be made within 30 days from the date on which the decision of the trial has been served. This time limit may be extended for a party in foreign counties.
What is a trial for correction?
A trial for correction is an administrative procedure to correct the description, scope of claims or drawings attached to the application of the patent. When a trial for correction is requested, a panel consisting of three or five trial examiners examines the advisability of these corrections.
The corrections are limited to the followings:
The patentee (patent owner) can only file the request. Please note that, when a request for the trial is filed regarding the patent of the joint ownership, all of joint owners have to jointly file the request. Further, if there is a non-exclusive licensee under Art. 35(1), 77(4) or 78(1) of the Japanese patent law, an exclusive licensee, or a pledgee, the patent owner needs the consent of the said person in order to file the request.
A trial for correction cannot be requested from the time the relevant opposition trial for patent invalidation has become pending before the Patent Office to the time the decision of the opposition or the trial has become final and binding.
What kind of action can be taken against a decision to dismiss the request?
The patent owner who cannot accept the decision to dismiss the request for the trial for correction can appeal the case to the IP High Court. Such appeal must be made within 30 days from the date on which the decision of the trial has been served. This time limit may be extended for a party in foreign counties.
What is an administrative opinion?
An administrative opinion is a judgment of the JPO on the technical scope of a patented invention. When an administrative opinion is requested to the JPO, a panel consisting of three trial examiners judges the technical scope of a patented invention. Specifically, the administrative opinion includes the judgments whether or not disputed property (or method) between parties is included within the technical scope of a patented invention, as well as whether or not the disputed property (or method) is equivalent to the patented invention under the doctrine of equivalents. Please note that the administrative opinion is non-legally binding.
What kind of action can be taken against an administrative opinion?
No appeal can be available against the administrative opinion.
What is a trial for invalidation of Registration of Extension of Term of Patent Right
A trial for invalidation of registration of extension of term of patent right is an administrative procedure to invalidate the extension registration.
What is a retrial?
The retrial is an administrative procedure to re-examine a final and conclusive trail decision. Please note that grounds for the retrial are strictly limited.
When a dispute related to intellectual property rights arises and it is difficult to resolve the dispute by discussion between the parties to the dispute, such dispute may be resolved mainly by filing an action with a court or by means of an alternative dispute resolution (hereinafter referred to as “ADR”). An example of ADR is mediation. Parties to a dispute may have mediation proceedings related to intellectual property rights at the Japan Intellectual Property Arbitration Center (hereinafter referred to as “JIPAC”). JIPAC is a private ADR organization that has been operated jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations since April 1998. Its services include not only mediation services but also various other services related to intellectual property rights such as consultation, arbitration, JP domain name dispute resolution, the Center’s advisory opinion, the Center’s essential patent evaluation, advisory opinion on operability, and evaluation of the level of contribution of a patent to business. JIPAC is an ADR organization certified under the ADR Act (Certification No. 119). The JIPAC website (https://www.ip-adr.gr.jp/eng/) shows a detailed explanation of services provided, examples of dispute resolution cases and other matters.
The characteristics of mediations by JIPAC are (i) expertise, (ii) being closed to the public, (iii) neutrality and fairness, (iv) voluntariness, (v) flexibility and (vi) speediness.
(i) Characteristic 1: Expertise
The persons who may serve as mediators when an application for mediation is made (mediator candidates) consist of experienced attorneys-at-law, patent attorneys and academic experts. In JIPAC mediations, mediators exhibit their very high expertise and present a persuasive mediation proposal by forecasting the result of a lawsuit that may be filed if the dispute is not settled by mediation. Mediators are appointed by the Director of the Center of JIPAC, and the parties are also allowed to appoint the mediators whom they want to appoint if the parties agree on such appointment.
(ii) Characteristic 2: Being closed to the public
In the case of a lawsuit, court proceedings take place at an open court on the date for oral argument and the judgment and records thereof are generally disclosed to the public. On the other hand, mediation proceedings at JIPAC, including whether or not an application for mediation is made, are not disclosed to the public and the result of mediation proceedings is also not published. For this reason, a dispute may be resolved without the existence of such dispute being known to third parties.
(iii) Characteristic 3: Neutrality and fairness
JIPAC is an organization established jointly by the Japan Patent Attorneys Association and the Japan Federation of Bar Associations, and its neutrality and fairness are guaranteed. In addition, the Rules for Mediation Proceedings of JIPAC provide for the exclusion or challenge of mediators, and JIPAC always confirms that mediators have no interest in the relevant case before appointing the mediators.
(iv) Characteristic 4: Voluntariness
In mediations by JIPAC, the parties to a dispute can have advanced discussion with the mediators, who are third parties with abundant experience and knowledge. As a result, if the parties can find a point of compromise, they can reach a settlement. If the parties think there is no room for compromise, they can refuse to reach a settlement and terminate the mediation proceedings. Because of this voluntariness, mediation by JIPAC is considered to be the more sensible response to a dispute compared with simply continuing to ignore the other party’s demands, with a risk of being sued.
(v) Characteristic 5: Flexibility
Mediations by JIPAC are a purely voluntary method of dispute resolution by a private organization and therefore have the advantage of being flexible. For example, when a party makes a claim for the payment of money, the party is not always required to specify the amount in the application for mediation, and there is no problem with stating “we claim an appropriate compensation” or the like in the application. Unlike court settlements where the parties feel pressured from being subject to a judicial decision if they cannot reach an agreement, mediation by JIPAC is commenced only after the other party agrees to commence mediation proceedings. Therefore, mediation by JIPAC is flexible with regard to the progress of proceedings. In addition, mediations by JIPAC allow the parties to discontinue mediation proceedings partway along the process to return to voluntary negotiation, file an action, or take other options.
JIPAC also provides arbitration services (a dispute resolution system under which the parties to a dispute are assumed to agree in advance to appoint arbitrators, who are neutral third parties, to make a decision on the dispute and follow such decision) in addition to mediation services. For this reason, JIPAC may start with mediation proceedings and, if the parties in the medication proceedings reach an agreement to commence arbitration proceedings, move on to arbitration proceedings, thereby taking the proceedings successively in order to exploit the advantages of both mediation and arbitration proceedings. In this case, mediators may continue to serve as arbitrators, or new arbitrators may be appointed depending on the will of the parties.
(vi) Characteristic 6: Speediness
The average time period required to resolve a dispute through JIPAC mediation is 176 days (the median is 162 days) and the minimum number of days required for proceedings is 65, although it depends on the level of cooperation between the parties and the details of the case. When the parties want to resolve a dispute speedily, it is possible to perform examination in a concentrated manner in a shortened period of time. With respect to the dates for mediation proceedings, we expect that about three dates will be required for resolution and aim to complete the proceedings within six months from the first date of mediation proceedings, although it will differ depending on the nature of the case. Looking at past cases of dispute resolution, the average number of dates is 4 (the median is 4) and the minimum number of dates is 2. This indicates that the proceedings until the resolution of disputes proceeded almost as expected.
As stated above, mediations by JIPAC are characterized by their expertise, being closed to the public, flexibility, and speediness, and therefore can be an excellent means of dispute resolution when the parties have the intention to resolve the dispute by discussion and want to resolve the dispute soon or at a place closed to the public.
In addition, intellectual property-related mediations in court do not allow the parties to appoint the members of the Mediation Committee, but mediations by JIPAC allow the parties to appoint the mediators whom they want to appoint if the parties agree on such appointment. For example, the parties may appoint the same mediators as the mediators for a past mediation case or appoint attorneys-at-law or patent attorneys who are specialized in the relevant field. They may also appoint, for example, a former judge who was in charge of famous lawsuits in the past or an academic expert who has published many papers. The fact that the parties are allowed to appoint mediators whom they can trust is considered to be a strong point of JIPAC mediations.
As stated above, mediations by JIPAC have various advantages that lawsuits do not have.