Japanese Patent practice

Artist Bjørn Bjørnholt

Japanese Patent practice & Tips for Handling Japanese applications

November 2011

Shinji Okayama Ph.D. Japanese Patent Attorney T +45 33 63 93 63 E [email protected]

Ako Yasuhara LL.M. Japanese Patent Attorney T +45 33 63 93 66 E [email protected]

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Important terms

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Procedures

Time Limits

Entry into the national phase in Japan • 30 MOs • translation can be filed within 2 MOs from the

submission of the national application request.

Amendment

• Any time before 1st O.A. • 3 MOs responding to O.A. (3 MOs extendable) • At demanding for Appeal

Request for Examination

• 3 YRs from the filling (never extendable!)

Filing an Appeal Trial against Final Rejection • 4 MOs from the Notice of Final Rejection (never extendable!)

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Substantial matter

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One part form Two part form

EP No Yes

JP Yes Yes

Multiple dependent claim Multiple Independent claim

in the same category EP Yes (basically) No

JP Yes Yes

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OA from the JPO

1 Rejection notice 1st O.A., 2nd O.A.(rare case)

2 Rejection notice –final- 2nd O.A. When amendment provokes new grounds amendment is restricted

3 Final rejection Decision of rejetion → Appeal or Divisional amendment is restricted

4 Declining of amendement Unallowable amendment in response to “Rejection notice –final-” or “Final rejection”

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Notice to the effect that the reasons for refusal stated therein are the same as those stated in the previous notice = 50bis

Ex. File divisional without any amendment Issued with 1st O.A. amendment is restricted

6 Notice of statement of information concerning invention known to the public through publication

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Application has to comply with… • Novelty

• Inventive step • Clarity • Unity

• Double patent (same invention written in claim)

• 29bis

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Article 29bis Patent Act Article 29bis reads: Where an invention claimed in a patent application is identical with an invention or device (excluding an invention or device made by the inventor of the invention claimed in the said patent application) disclosed in the description, scope of claims or drawings (in the case of the foreign language written application under Article 36bis (2), foreign language documents as provided in Article 36bis (1)) originally attached to the written application of another application for a patent or for a registration of a utility model which has been filed prior to the date of filing of the said patent application and published after the filing of the said patent application in the patent gazette under Article 66(3) of the Patent Act (hereinafter referred to as "gazette containing the patent") or in the utility model bulletin under Article 14(3) of the utility Model Act (Act No. 123 of 1959) (hereinafter referred to as "utility model bulletin") describing matters provided for in each of the paragraphs of the respective Article or for which the publication of the patent application has been effected, a patent shall not be granted for such an invention notwithstanding Article 29(1) ; provided, however, that this shall not apply where, at the time of the filing of the said patent application, the applicant of the said patent application and the applicant of the other application for a patent or for registration of a utility model are the same person.

No Self-collision

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Application A Application B

Prior application A is filed before present application B and is published after present application B is filed. However, No Self-collision In case, prior application A is published before present application B, this application is rejected pursuant to Art. 29(1)3, e.g. novelty.

Example of rejected case pursuant to 29bis

Cliams

1. a 2. b 3. c

Specification

a,b,c,d,e

Cliams

1. d 2. e 3. f

Specification

d,e,f,g,h

PUBLISHED! Application A

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Amendment

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Amendement - 1 1. Before receiving any OA

• Content of the application as filed 2. After receiving a 1st rejection notice without a notice pursuant to 50bis

• Content of the application as filed 3. After receiving a 1st rejection notice with a notice pursuant to 50bis, receiving rejection notice –final- or amendment filed at the same time of demand for appeal

• Content of the application as filed • Claim amendment shall be limited to those for the following purposes:

(i) deletion of claims (ii) restriction of the scope of claims (iii) correction of errors (iv) clarification of an ambiguous statement

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Amendement - 2

For the applications filed on or after 01/04/2007, claim amendments should be made such that the amended claims met unity with the claims examined in the outstanding office action.

Examined Claims

Amended Claims

O.A.

UNITY

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Claim 1: A Claim 2: A+B Claim 3: A+B+C

Novelty Inventive step feature A NO NO feature B YES NO feature C YES YES(maybe)

EXAMPLE

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How the Examiner examine

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When the Examiner judges feature A in claim 1 it does not have novelty, but feature B in claim 2 has novelty, he judges claims 2 and 3 which do NOT meet UNITY with claim 1. In this case, only claim 1 and 2 are examined.


Novelty Inventive step feature A NO NO feature B YES NO feature C YES YES(maybe)

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What grounds will be applied?

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3 Grounds and caution 1. Lack of Unity Claims 2 and 3 do not meet unity with claim 1. 2. Lack of Novelty Claim 1 does not have novelty. 3. Lack of Inventive Step Claims 1 and 2 does not have inventive step. CAUTION : Claim 3 has not been examined.


Novelty Inventive step feature A NO NO feature B YES NO feature C YES YES(??)

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How to overcome this O.A.?

Claims 1 and 2 are rejected. Claim 3 may have inventive step...

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It seems that cancelling claims 1 and 2 is the simplest way to overcome O.A. • HOWEVER, in this case, an amendment to cancel claims 1 and 2 and maintain claim 3

is not allowed because this amendment forces the Examiner to examine 2 inventions (prohibition of shift amendment → prohibition of shifting an invention to another invention).

• If the applicant desires to prosecute claim 3, the applicant should file a divisional application.

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To avoid situations like this when you enter into JP national phase, we suggest... … to reformulate claims at or before filing a request for examination, based on which claim is the most important for the applicant, and the result of ISR.

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1. If ISR says that the application does not meet unity…

The important group of claims should be presented first, because claims presented first is automatically elected for examination.


beyond blue broken line…

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2. If ISR says that claim 1 does not have novelty… Claim 1 should be amended to have novel technical feature, and other claims should also be amended to recite the novel technical feature of the amended claim 1.

Claim 1: A’ Claim 2: A’+B Claim 3: A’+B+C

erase blue broken line…

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Divisional Application

divisional application

- The applicant can file a divisional application within the following time limits:

1. During the period in which applicants are allowed to file Amendments, that is, - Before the 1st O. A., - After receiving O.A., within 3 MOs plus extensions up to 3 MOs on request after receiving O.A, or - At the same time of demanding for Appeal against Final Rejection,

2. Within 30 days following a Notice of Allowance, but before registration of patent; or

3. Within 4 MOs following the 1st Final Rejection*, regardless of whether or not an Appeal has been filed.

- However, please note that items 2 and 3 apply only to divisional applications out of parent (earliest) applications filed on or after April 1, 2007.

- *Although rare, an application on appeal can be returned to regular examination. If the examiner rejects it again, divisional applications can only be filed together with the appeal against the 2nd final rejection.

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Filing application

Request for exam

1st office action

office action -final-

Final rejection /Allowance

Ex parte Appeal

Exception: Final rejection/Allowance after filing an ex parte appeal are excluded.

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Re-examination

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When the applicant amends application at demanding for appeal of decision of rejection, the Examiner who has examined the application reexamines the amended application.

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reexamination by the examiner before trial Is the amendment made within the scope of the application as filed?

Is the amendment purposed any of those? (i) the deletion of a claim; (ii) restriction of the scope of claims; (iii) the correction of errors or (iv) the clarification of an ambiguous statement

Could the amended scope of claims be patented?

Allowed by the examiner Rejection Notice by the examiner

The amendment is not allowable. Was the final rejection appropriate?

Send the case to the commissioner of the JPO with reason = Apeal proceeding starts

Yes

Yes

Yes

Yes No

No

Could the application before amendment be patentable?

Amendment is dismissed

Yes

No

No

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Appeals?

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Appeals

1. Appeal against final rejection (Art. 121)

2. Invalidation appeal (Art. 123)

3. Appeal for correction (Art. 126)

4. Trial for invalidation of a registration of extension of duration (Art. 125bis)

• No Oppsition!

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Tips...

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Chemistry & Biotech Inventions • Method of treatment claim is not allowed

- Method of treating diabetic subject comprising administering compound A - A medicament (pharmaceutical composition) for treating diabetes comprising compound A - A method of producing medicament (pharmaceutical composition) for treating diabetes comprising formulating compound A - Use of compound A in production of a medicament (pharmaceutical composition) for treating diabetes - Compound A for use in treating diabetic subject • Method comprising a sugical step is not allowed - A method of testing diabetic risk, comprising isolating a blood sample from a subject, and measuring a protein X level in the blood sample - A method of testing diabetic risk, comprising measuring a protein X level in a blood sample isolated from a subject • Working example (preferably in vivo data) showing the effect of the claimed

compound (composition) should be presented in the original specification. A ”chemistry or biotechnology” invention having no data in the original specification will be rejected. In such cases, experimental data showing the effect are considered by the Examiner even if they are filed in response to an O.A.

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Official fee JPY1.- = EUR0.011.-

• Examination fee: JPY118,000.- + (Number of claims * JPY4,000.-) EUR1,114.- EUR38.- • Appeal fee: JPY49,500.- + (Number of claims * JPY5,500.-) EUR468.- EUR52.- • Renewal fee: 1 - 3 years JPY 2,300.- + (Number of claims * JPY200.-) 4 – 6 years JPY 7,100.- + (Number of claims * JPY500,-) 7 - 9 years JPY21,400.- + (Number of claims * JPY1,700.-) 10 – 25 years JPY61,600.- + (Number of claims * JPY4, 800.-) • Number of pages has no relation with Official fees.

Payment of request for examination fee can be deferred…

The applicant can postpone for 1 year to pay the examination fee.

Since the examination fee is expensive, SMEs can use this system and have time to consider their invention and business...

Q. How is the application going to be handled?

The application will be in the que to be examined. The examiner doesn’t care whether the applicant requests extention on the payment of the examination fee. In case the applicant doesn’t pay the fee within 1 year, the application is going to be withdrawn.

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Third Party Observation system

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- the Japanese Patent Office welcomes a submission of information from a member of the public to improve the effectiveness and expeditiousness of the examination. - Supportive information for examination such as information identifying the fact that a certain invention relating to a patent application lacks novelty or inventive step or does not satisfy the requirement of the description may be submitted.

- Information may be submitted at any time after a patent application or an application for utility model registration is filed, even after a grant of a patent or utility model registration. Any member of the public may file the Submission of Information. Submission on an anonymous basis is permitted. Note: If you submit information against an application filed by another, the JPO will inform you whether or not the examiner used the information you submitted in a Notice of Reasons for Rejection upon your request.

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A copy of the priority document is NOT required with following cases. 1. EPO JPO In case the priority founding application is filed in the EPO, USPTO, KIPO 2. DKPTO EPO JPO In case the applicant filed a priority claiming application in the EPO or USPTO, and after that the applicant files a priority claiming application to the JPO.

ex. the priority founding application is filed in the Danish Patent Office and the priority claiming application is filed in the EPO and JPO.

Priority document

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• Only devices

• Duration: 10 years from the filing date

• To be granted without examination

• Enforcement is permitted conditionally

• Registered utility model or design application can be converted into a patent application under certain condition.

Utility model

Japanese Patent practice

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