Reduction in Fees for Requests for Examination of Japanese Patent Applications (Effective August 1, 2011) (July 2011)

For Paris convention or non-convention patent applications:

The basic fee of 168,600 yen for a Request for Examination will be reduced to 118,000 yen (around 30%).

The total Official Fee for a Request for Examination will be the new basic fee of 118,000 yen, plus the additional fee that is based on the number of claims (i.e., the basic fee of 118,000 yen + (number of claims x 4,000 yen)).

For patent applications entered into the Japanese national phase from a PCT international patent application for which an office other than the JPO served as the International Searching Authority and issued the International Search Report:

The basic fee of 151,700 yen will be reduced to 106,000 yen (around 30%).

The total Office Fee for a Request for Examination will be the new basic fee of 106,000 yen, plus the additional fee that is based on the number of claims (i.e., the basic fee of 106,000 yen + (number of claims x 3,600 yen)).

*Note that these new fees will be applied to Requests for Examination filed on and after August 1, 2011.

Accordingly, we recommend filing a Request for Examination on or after August 1, 2011 for applications whose deadline for filing a Request for Examination is on or after August 1, 2011 (i.e., Japanese patent applications of a filing date of on or after August 1, 2008).

A Bill Pertaining to a Partial Revision of Japanese Intellectual Property Laws (Patent, Utility Model, Design and Trademarks Laws) Was Passed by the Japanese Diet on the Last Day of May, 2011 and Will Become Effective on April 1, 2012. (December 2011)

The following summarizes the major points affected by this partial revision to the Intellectual Property Laws.

1. Reduction of annuities for design registrations

The annuities that are to be paid in the 11th through the (last) 20th year of a Design Registration will be reduced by half (50%), and thereby made equal to the yearly annuities for the 4th to 10th years. In other words, the annuity for each of the 11th to 20th years is reduced from 33,800 yen to 16,900 yen, which will greatly lighten the burden on owners of design registrations.

2. Abolishment of need to register non-exclusive license agreements

In accordance with the revision, non-exclusive license agreements relating to patents, utility models and designs will no longer be required to be registered in the Japanese Patent Office (JPO), and, further, licensees are protected from injunctions, sales prohibitions, etc. that are attempted by subsequent assignees or licensees. (Note that this does not pertain to exclusive license agreements which must be registered with the JPO as in the past.)

After a non-exclusive license is concluded between an applicant and a licensee, even if the applicant assigns the patent application (or right) to or agrees on an exclusive license therefor with a third party, the previous non-exclusive license agreement is not influenced by such a subsequent assignment or exclusive license. Accordingly, the licensee of the non-exclusive license is not required to comply with actions brought against them by the assignees or licensees of any subsequent exclusive licenses (e.g., demands to desist from manufacture or sale of products stipulated in the earlier non-exclusive license agreement).  In this way, the business of the licensee of the non-exclusive license in accordance with that license can no longer be interfered with by a third party.  Accordingly, this revision of the provision contributes widely to the safe conduct of business transactions.

On the other hand, the trademark law will still require registration of non-exclusive licenses in order for them to be effective against actions (e.g., a change in terms of or cancellation of the non-exclusive license agreement) taken by the subsequent owner of or a subsequent exclusive licensee of the trademark, as well as for protection for consumers). 

3. Protection of a co-inventor disregarded by other co-inventors

All of the co-inventors of an invention made through joint research or a joint venture have the right to be included as a co-inventor and/or joint applicant of a patent application, and can be added to an application as such after the application has been filed, if their names were left off of the application without their consent. The revisions to the patent, utility model and design laws will stipulate that a co-inventor or a co-developer, who was not listed as a co-inventor in a patent application that was filed by other co-inventors without any consent between them, has the right to restore his/her position as a co-inventor, and to demand that the applicant partially assign the application in accordance with his/her contribution to the invention, and that his/her name be legally added as a co-inventor and/or co-applicant in the patent application. Weaker co-inventors will thereby be more properly protected.

4. Recovery of a patent right by the true inventor

If a true inventor finds that a third party’s application or patent is directed toward the true inventor’s invention (for example, in a case in which the third party visited the true inventor’s company or research laboratory and received an explanation from the true inventor, and then subsequently filed an application directed thereto without the consent of the true inventor), the true inventor shall be able to recover, from the unauthorized third party, ownership of the patent after registration, and to record the transfer thereof in the JPO.

If the patent includes some new matter added by the third party to the basic invention of the true inventor, such a patent will be treated as property owned in common in accordance with interpretation of the laws.

5. Protection of invention publicly disclosed prior to filing application

Even though an invention has been publicly disclosed by an inventor or by a third party prior to the filing of a patent application for that invention (except for the laying-open under national or PCT provisions for the patent application anywhere), the inventor will be able to legitimately file a patent application therefor, without any disadvantages, within six months from that public disclosure. In order to obtain protection, the inventor will have to file, together with the application, a statement that they seek protection, and then, within 30 days from filing the patent application, file evidence proving that the invention was publicly disclosed.

Accordingly, for an invention that has been publicly disclosed in error, accidentally or intentionally, regardless of the mode of disclosure thereof (e.g., at a presentation at a conference, or in negotiations pertaining to a business contract, or the like) prior to filing of an application for patent, utility model or design, the inventor will be able to file an application therefor within six months after the disclosure, without any disadvantages.

6. Relief measures for missing, with good cause, the filing due date for Japanese translations of English-language applications

Even if the due date for filing the Japanese translation of a English-language patent application (PCT, convention, or non-convention) has expired, if there are reasonable grounds for failing to properly file the translation within the time limit, the translation can be filed in order to protect the application in Japan by the earlier of: (1) two months from the date on which the reason for missing the due date ceased to exist, or (2) one year following the original due date. The late filing of a Japanese translation will not present any problems in the examination of the application. 

7. Relief measures for missing, with good cause, payment of annuity

Even if the specified time limit to pay the annuity for a Japanese patent, design or utility model registration has expired, if there are reasonable grounds for failing to properly pay the annuity therefor, it is possible to make a late payment with surcharges to maintain the right in Japan, within two months from the date on which the reason ceased to exist, but within one year following the expiration of the annuity payment due date.

8. Abolishment of one-year wait period for registration of a trademark after cancellation or invalidation of a third party trademark

These latest revisions repeal the provision of a wait period of one year, from the cancellation or invalidation of a previous same or similar trademark by the Department of Appeal within the JPO, until registration of a subsequent trademark.  Accordingly, it will be possible to accelerate processing of a subsequent trademark registration in the JPO when a previous same or similar trademark is officially cancelled or invalidated.

Heretofore, in accordance with the Trademark Law, if Party A wishes to register a trademark that may be the same as or similar to a previously registered trademark owned by Party B that has undergone or is currently undergoing cancellation or invalidation appeal procedures at the Department of Appeal in the JPO, there is a mandatory wait period of one year, after the final and conclusive decision of appeal for cancellation or invalidation of Party B’s trademark, before Party A’s trademark can be registered.

These new revisions will abolish this provision for a one-year wait period, thereby enabling Party A to accelerate registration of their trademark.

Effectuation of Revised Guidelines for Examination in JPO for Japanese Patent Application as to "Technical New Matter" Included in an Amendment (December 2010)

The Japanese Patent Office (JPO) has revised sections of their Japanese Patent Examination Guidelines that define fundamental concepts of technical new matter included in an amendment.  These revisions were made in view of a judgment handed down in a Grand Panel Case by the Intellectual Property High Court within the JPO, and are effective as of June 1, 2010.

1. Examination Guidelines - General Concept of Technical Matter

An amendment that includes technical matter exceeding the scope of the technical matter described in the original description of a pending patent application is globally not accepted.

Technical matter concerns an invention described originally in the description, i.e., the original specification and drawings, of a patent application.

Technical matter that includes the technical matter of the original specification, drawings, etc. is defined as including technical matter that can be understood as obvious technical matter by a person skilled in the art taking into consideration the entirety of the original description disclosed in the patent application. From this point of view, it is considered that an amendment that involves such technical matter does not introduce new technical matter, and the amendment should be deemed as having been made within the scope of the technical matter described in the application.

This item of the Guidelines is to be interpreted as follows: if technical matter that is introduced by an amendment can be considered to be within the scope of the originally described technical matter as well as including obvious (as defined above) technical matter, the amended technical matter will be deemed to not involve new matter and will therefore be acceptable.

2. Examination Guidelines - Disclaimers

An exclusionary recitation, i.e., a disclaimer, may be added to a claim.  Other original recitations remaining in the claim prior to the amendment thereof will remain within the scope of the technical matter described in the original description.  Such an amendment is acceptable since the disclaimer does not introduce any new technical matter.

The following disclaiming amendments are accepted:

 a) In cases in which the claimed invention could be deemed as lacking novelty or the like due to overlap between a recitation in the claim and disclosure of prior art, an amendment that excludes only the overlap between the claimed invention and the prior art is acceptable provided that the original recitation of the claim before amendment is retained.

 b) In cases in which an application fails to meet the requirements prescribed by Japanese Patent Law, or is rejected under the provisions of Japanese Patent Law because the invention in the claim originally encompasses "human beings", an amendment to exclude "human beings" from the recitation of the claim is acceptable provided that the original recitation of the claim before amendment is retained.

The following is our translation of the guideline revised as summarized above.

“An amendment to a claim, in which the recitation of technical matter previously recited therein remains as is and technical matter, that is described in the specification and encompassed by the invention of the claim, is partially eliminated by using a so-called ‘disclaimer’, will be deemed as having been made within the ‘scope of the technical matter described in the specification or the drawings’.”

This guideline relating to “exclusionary claims” (i.e., claims to which a disclaimer is added) is to be interpreted such that an amendment that deletes partial technical matter in the claim by using the expression "excluding" to exclude that technical matter, which is described in the specification and whose concept is covered by the current claim in its pre-amendment form, is an acceptable amendment.

Remedy for Usurped Application in Japan (June 2010)

In accordance with a recent press report, remedy for a usurped application is currently being studied by a committee within the JPO, and a system to that end is expected to be implemented around 2011.

In the past, remedy has not been sufficient for the true inventor(s) who have had to file a trial for invalidation of the usurped patent. Therefore, quick and drastic measures are being sought in order to overcome the illegality of usurped patents.

Effectuation of Revised Guidelines for Examination in JPO for Japanese Patent Application as to " Patentability Requirement " and " Medicinal Invention " in November 2009 (December 2009)

The Patent Examination Guidelines for "Industrially Applicable Invention" and "Medicinal Invention" are respectively revised to expand the fields of acceptable subject matter for protection thereof and become effective as to November 1, 2009, and are applied to the patent applications to be examined
on and after November 1, 2009.

1) The revised guideline newly extends the patentable technical field of the Industrial invention in Part II, Chapter I thereof.

The technical field includes a method for gathering various kind of information by measuring structure and functions of the organs of the human body, i.e.;

a.) a method of extracting samples and data from the human body, and a method of analyzing such samples and data by comparing with the standards; and

b.) a method of preparatorily treating for measuring each structure or function of organs of the human body.

However, it does not include steps of judging the physical condition or the mental condition of the human body for the medical treatment purposes such as diseases and physical health, or steps of judging as to prescription or treatment or surgery plans based on these condition obtained.

2) The revised guideline newly extends the standard for novelty of the medicinal invention as to application to a specific disease in which dosage and administration is specified, in Part VII, Chapter III thereof.

Even though there is no difference between the compounds etc. of the claimed invention and of prior art, and between the applied disease thereof, the novelty of the claimed invention is not denied in a case there is difference between the claimed medicinal invention and the prior art in medicinal use of applying to a specific disease with a specific dosage and administration based on the attribute of compounds etc. thereof.  (It is exemplified as an acceptable medicine which performs remarkable
effects in a medicinal use of an application to a specific disease in a case dosage and administration is specified.)

New systems for registration of "Provisional Exclusive License" and "Provisional
Non-Exclusive License" on Japanese Patent Applications (May 2009)

The new systems become effective as of April 1st, 2009 for registering "a provisional exclusive license" and "a provisional non-exclusive license" on the Japanese patent pending applications in accordance with license agreements.

The new systems are created to support and ensure socially expectative activities in the Intellectual Property Field through the national and international business opportunities by registration of the provisional licenses.

Under the new system, registered bibliographical data and contents of the non-exclusive license agreement are not disclosed as a general rule to a third party in order to protect information on a licensee.

The registered licensee has a countervailing power against an assignee of the patent application even though the patent application is assigned to a third party.

Moreover, the provisional exclusive license and the provisional non-exclusive license will be legally changed respectively to "exclusive license" and "non-exclusive license"  when the patent
application will be allowed and registered.

Non-Requirement of Certified Copies of Priority Documents under Paris Route for Japanese Patent Applications in following cases (May 2009)

(1) Non-Requirement of Certified Copies of Priority Documents under the Agreements of Priority Document Electronic Exchange Program between JPO and Foreign Patent Offices:

Certified Copies of priority documents from the USPTO, KIPO and EPO under the Paris Route are no longer generally required to file in Japan. An applicant of the U.S. patent application is required to file a form of PTO/SB/39 in advance in the USPTO.

(2) Non-Requirement of Certified Copies of Priority Documents which are corresponding to the Priority Documents for the second application as filed in the USPTO or EPO:

Certified Copies of priority documents from other foreign Patent Offices under the Paris Route are not required in Japan, if the priority right of the first patent application is claimed and Priority Document thereof are retained in the second patent application filed in the USPTO or EPO. The JPO will obtain electronically the Priority Documents from the USPTO or EPO. An applicant who filed the second patent application in the USPTO is required to file a form of PTO/SB/39 in advance in the USPTO.

(3) Non-Requirement of Certified Copies of Priority Documents by Utilizing "Priority Document Access Service (DAS) of WIPO" in Japan:

Applicants are able to request for utilization of the simple and safe digital Access Service of WIPO to their Patent Offices^* and WIPO in advance for filing Certified Copies of the Priority Documents with the JPO. (*Countries or Organization of participating offices at this stage are CN, EPO, FI, GB, IL, JP and US.)