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Overview of the Japanese, Korean and Chinese patent system

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With this power point presentation we would like to introduce and compare the Japanese, Chinese and Korean Patent System in a comprehensive way based on the monthly one-point-lessons. We will add new …

With this power point presentation we would like to introduce and compare the Japanese, Chinese and Korean Patent System in a comprehensive way based on the monthly one-point-lessons. We will add new information every month and update the content of the presentation in case of law revisions.

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  • Can I get a PDF copy of your slides? This is pretty useful, and I'll need constant access tot he information.
    rclaps@wcsr.com

    Thanks!
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  • In China multiple dependent claims must refer to previous claims in an alternative way.を追加しました。
  • 「An analyzing device according to claim 1 or 2 charaterized by D .」前は Claim 1 and 2でしたが、中国にOr に直すように指示されました。
  • 中国についての情報を修正しました。韓国の期限も修正しました。
  • 韓国の期限を修正しました。
  • Transcript

    • 1. Outline of the Patent System inJapan, Korea and China Asia Patent Alliance 15 June 2012 info@asiapatent.net 1
    • 2. Contents1. Overview of the intellectual property system ~Differences of the several intellectual property systems~ ~Comparision of duration period of the several rights2. Deadlines for entering national phase of PCT applications3. Translation error corrections ~ PCT route~ ~ Paris Convention Priority Route~4. Request for examination5. Handling multiple dependent claims ~What is a multiple dependent claim ?~6. Regarding unity of the invention7. Patent requirements ~ Novelty requirements ~ ~ How Foreign Public Knowledge in the Art is Handled in China~ ~The role of expansion of secret prior art~ ~Expansion of secret prior art (Japan, China and Korea)~ ~Handling Expansion of Secret Prior Art in China~8. Exception to loss of novelty regulations ~About the revision of the Japanese patent law~ ~ Regulations in China and Korea ~ ~ Important points when exercising a right of priority ~9. Divisional application system ~ Broadening of Divisional Application Submission Period in Japan~ ~About divisional applications in China and Korea~10. Conversion of applications ~Conversion of patents and utility models in China / Simultaneous filing ~ 2
    • 3. 1. Overview of the intellectual property system Image taken from the JPO homepage and 3 translated into english
    • 4. 1. Overview of the intellectual property system ~Differences of the several intellectual property systems~ Japan・Korea There is a seperate law for patent, Utility models and design patents.※ In Japan there is no examination for utility models. In Korea the substantive examination system for utility models was restored by the law revision in 2006. ChinaDesigns(Right for exterior design)as well as utility models(Right for utility models)are protected under the patent act(Chinese Patent Law Article 2)※ No request for examination necessary for designs and utility models. Only formal examination 4
    • 5. 1. Overview of the intelectual property system ~Comparision of duration period of the several rights~ This table explains the duration period of patent, utility model, design and trademark rights in Japan, China and Korea. Japan China Korea Patent right 20 years from filing 20 years from filing 20 years from filing ※Extension of a ※Extension of a maximum of 5 years maximum of 5 years available for available for specified inventions specified inventions Utility model 10 years from filing 10 years from filing 10 years from filing right Design right 20 years from 10 years from filing 15 years from registration registration Trademark 10 years from 10 years from 10 years from right registration registration registration ※5 year period also ※5 year period also ※5 year period also available available available ※renewal possible ※renewal possible ※renewal possible5
    • 6. 2. Deadlines for entering national phase of PCT applications Deadline for Deadline for APA National Phase Attorney entering submission of Official Fees Fees national phase translation Within two Local attorney fees, translation months after 30 months from fees, figureJapan filing of the About USD 185 the priority date fees, etc national phase About USD 1922.00~ entry request 30 months from Local attorney fees, translation the priority date At the time of fees, figureChina 2 month entering national About USD 170 fees, etc extension phase About USD 810.00~ possible Local attorney fees, translation At the time of 31 months from fees, figureKorea entering national About USD 55 the priority date fees, etc phase About USD 864.00~ ※ In Japan the deadline for submission of translation is at latest 32 months from the priority date. 6
    • 7. 3. Translation error corrections ~PCT route~ Whether the PCT route or Paris convention route is used will determine whether it is possible to correct a mistranslation. In addition, differences may arise in the scope or time limit to make such revisions.(Outline of Translation Error Corrections for the PCT Route) Japan Korea China Translation Error Available Not available Available Correction System If the corrections do not go Article 33 of the China Patent Act states that beyond the scope of the original “(amending by) adding new matter is prohibited.” Possible Scope for Not available text, they will not infringe on the If the corrections are not beyond the scope of Corrections prohibition against adding new the original text, then they will not infringe on the material . prohibition against adding new matter. The same as the period There is an opportunity to file corrections both amendments can be filed for an from the time of national phase entry into China application. Thus, corrections Possible Period to Make Not available until publication and approximately 3 months may be submitted until the Corrections after notification of entry into the substantive Notification of Grant for a patent examination phase (administrative instruction is received, and during the article 113). Office Action response time. ※ In China, besided the above mentioned period it is also possible to make corrections anytime while examination is pending (during the Office Action period). ※ In Japan, because the scope that can be corrected is based on the translation, revising based on the scope of the original text will mean procedures to correct mistranslation are required, and if this procedure is completed wrong, it can be the cause for a rejection. 7
    • 8. 3. Translation Error Corrections ~ Paris Convention Priority Route~ In both China and Korea, translation errors cannot be corrected for Paris Convention Priority applications. In Japan there is a provision to accept English patent applications (Foreign Language Applications) and an English application may be filed in Japan through Paris Convention Priority. If this provision is used, the scope of revisions will be that of the English specifications, thereby allowing corrections of mistranslations and making it a useful tool. However, in Japan when the Japanese translation of the patent specifications are filed with Paris Convention Priority, revisions cannot go beyond the scope of the Japanese patent specifications. Even if you file corrections of translation errors, the japanese patent specifications will be considers as basis. 8
    • 9. 4. Request for examination Request for examination for applications different from patents  In Japan and China examination can only be requested for patent applications. For utility model, design and trademark applications, there is no system for requesting examination. The examination of the patent office starts simultaneously with filing.  In Korea, there also is a system for requesting examination for utility models. You have to file the request within three years from filing. Persons that can request examination  In Japan and Korea everyone can request examination. In China only the patent applicant can request examination. If the deadline for requesting examination has expired  If the deadline for requesting examination has expired the application is considered as abandonded. There is no way to restore the application. 9
    • 10. 4. Request for examinationPCT National Phase Entry Examination Fees and Deadlines Deadline Fees OtherJapan 3 years from the About USD 2000.00~ Additional fees incurred international filing for each claim date Considered abandoned if the deadline is missedChina 3 years from priority date About USD 380.00 No additional fee per May decrease depending claim on the country that Considered abandoned if conducts the ISR the deadline is missedKorea 5 years from the About USD170.00~ Additional fees incurred international filing for each claim date Considered abandoned if the deadline is missed 10
    • 11. 4. Request for examinationParis Convention Priority Examination Fees and Deadlines Deadline Fees OtherJapan 3 years from filing About USD 2100.00~ Additional fees incurred Date for each claim Considered abandoned if the deadline is missedChina 3 years from priority About USD 380.00 No additional fee per Date claim Considered abandoned if the deadline is missedKorea 5 years from filing About USD 170.00~ Additional fees incurred Date for each claim Considered abandoned if the deadline is missed 11
    • 12. 5. Handling multiple dependent claims ~What is a multiple dependent claim ?~Claim 1: An analyzing device characterized by AClaim 2: An analyzing device according to claim 1 characterized by BClaim 3: An analyzing device according to claims 1 and 2 characterized byClaim 4: An analyzing device according to claims 1, 2 , and 3 characterized by D  「Claim 1」 is an independent claim.  「Claim 2」 is a dependent claim.  「Claim 3」 is a mutiple dependent claim since it cites claim 1 and 2.  「Claim 4」 is multiple multiple dependent claim, since it cites the multiple dependent claim 3. 12
    • 13. 5. Handling multiple dependent claims Multiple Dependent Multiple-Multiple Dependent Claims Claims Dependent Claims Japan ○ ○ ○ China ○ ○ × Korea ○ ○ ×※ This table explains the how multiple dependent claims are handled in Japan, China and Korea. In Japan, the patent applicant can compose the claims freely, and multiple multipe dependent claims are accepted in pratice.(Patent Act Article 36 Paragraph 5) In China and Korea multiple independent claims are accepted, but multiple multiple independet claims are not accepted. In China multiple dependent claims must refer to previous claims in an alternative way. In China and Korea there is a provision, that says a multiple dependent claim that cites 2 or more claims, cannot be the base for another multiple dependent claim. 13
    • 14. 5. Handling multiple dependent claims If you enter national phase in China or Korea with a multiple multiple dependent claim we will file amendments. Claim 1: An analyzing device characterized by A Claim 2: An analyzing device according to claim 1 characterized by B Claim 3: An analyzing device according to claims 1 and 2 characterized by C Claim4: An analyzing device according to claims 1, 2 , and 3 characterized by D  Method 1 Splitting the multipe multiple dependent claim into several claims. 「An analyzing device according to claim 1 or 2 charaterized by D .」 「An analyzing device according to claim 3 charaterized by D.」  Method 2 Citying only the claim with the largest scope of protection and deletion of the other citation of claims. 「An analyzing device according to claim 1 charaterized by D」  Method 3 Keeping only the most imporatant technical feature and deleting all other features. For example , if the posibility for making it to a product is highest for feature 2 (D + B citation of claim 2) and all other features are considered not to be used at all, the claim 4 from above is amended like this. 「A n analyzing decive according to claim 2 characterized by D .」 14
    • 15. 6. Regarding unity of the invention Two or more inventions may be the subject of a single patent application in the same application provided that these inventions are of a group of inventions recognized as fulfilling the requirements of unity of invention based on their technical relationship designated in Ordinance of the Ministry of Economy, Trade, and Industry. ( Japanese Patent Act Aticle 37). Unity of Invention is judged according to whether the two or more inventions possess identical or counterpart Special Technical Features (henceforth STF). STF refers to the demonstration of a technological contribution to the prior art of the invention in question. Both the Chinese and Korean provisions and judgment criteria for unity of invention are the same as those of Japan as explained above. 15
    • 16. 6. Regarding Unity of the Invention A concrete examplePatent claims1.Film manufacturing equipment equipped with A, B, and/or C ← (Check point!)2.Film manufacturing equipment according to claim 1 wherein C is cylindrical3.Film manufacturing equipment according to claim 1 wherein C is cladded with heat resistant resin4.Film manufacturing equipment according to any one of claim 1 to claim 3 further equipped with D5.Film manufacturing equipment according to any one of claim 1 to claim 4 further equipped with E「 In case the invention recorded in claim 1 possesses STF」 When unity requirements with the invention according to claim 1 are satisfied, a group of inventions is considered eligible for examination; conversely, when unity requirements with the invention according to claim 1 remain unsatisfied, a group of inventions is considered ineligible for examination, and an Office Action will be issued, identifying non-compliance with unity of invention. 16
    • 17. 6. Regarding Unity of the Invention「 In case the invention recorded in Claim 1 lacks STF 」Referring to the next page① The invention according to claim 2, while serially dependent on claim 1, possessesSTF.② In addition to the invention according to claims 1 and 2, the invention according topart of claims 4 and 5, of the identical category and including all of the matters specifyingthe invention according to claim 2 (possessing STF), is eligible for examination. In otherwords, only those parts of the invention according to claims 4 and 5 which are dependenton claim 2 (claim 4-2, claim 5-2, claim 5-4-2) are eligible for examination.③ Once the parts of invention dependent on claim 2 to are found to be lackinginventive step, those parts of the invention according to claims 4 and 5 which aredependent on claim 1 (claims 4-1, 5-4-1, 5-1) become eligible for examination becausethe examination on these claims can be said to be substantively complete. 17
    • 18. 6. Regarding Unity of the Invention The invention recorded in claim 3 and the dependent claims (light blue part) does not contain all of the designated matter of the invention recorded in claim 2 that posses STF. Also since the substantive examination is not completed, these invention is not eligable for examination and an Office Action will be issued, identifying non- compliance with unity of invention. 18
    • 19. 6. Regarding Unity of the Invention 1. Film manufacturing equipment equipped with A, B, and/or C <<Public knowledge (lacks novelty) 2. Film manufacturing equipment according to claim 1 wherein C is cylindrical 3. Film manufacturing equipment according to claim 1 wherein C is cladded with heat resistant resin 4. Film manufacturing equipment according to any one of claim 1 to claim 3 further equipped with D 5. Film manufacturing equipment according to any one of claim 1 to claim 4 further equipped with EThis slide explains the possibility for amending. It is possible to amend claim 3 making it dependent on claim 2 that posseses STF. The single claim 3 is not eligable for examination. Therefore a divisional application will be filed. It is also possible to make claim 3 dependent on the invention for which substantive examination is completed (Claim 4-1) (Claim 5-4-1) (Claim 5-1) and thereby make it eligable for examination. The things to keep in mind regarding unity of inventions in pratice are: researching prior art sufficiently, drafting claims as series, listing dependent claims in order you would like to have them granted. 19
    • 20. 7. Patent requirements ~ Novelty requirements ~ Japan: Not yet published or publicly used anywhere in the world(Japan Patent Act Article 29 Paragraph 1) Korea: Not yet published or publicly used anywhere in the world (Korean Patent Act Article 29 Paragraph 1) China: In the law revision 2009 amended to „ Not yet published or publicly used anywhere in the world “ (Chinese Patent Act Article 22)※ Before the law revision in October 2009, the standard was not „ Not yet published or used anywhere in the world “. Therefore matter presented outside of China did not result in Office Actions. 20
    • 21. 7. Patent requirements ~ How Foreign Public Knowledge in the Art is Handled in China~ Trial for invalidation “Technology disclosed in foreign countries” can be used as proof that as patent lacks novelty or inventive step. Infringement suits “Technology disclosed in foreign countries” could also be used as proof to defend common knowledge in the art. Special requirement for procedures using foreign proof Affirmation procedures such as going to the Chinese consulate to receive validation from the notary public etc. are required. Exceptions are made if proof is obtained through the national public rout or if the other party admits the credibility of the proof. 21
    • 22. 7. Patent requirements ~The role of expansion of secret prior art~ Application A Application B Publication (Claims an invention disclosed in the specification of application A) The expansion of secret prior art refers to cases, where Application A is filed first, and then Application B is filed (claiming an invention disclosed in the specification of Application A) before Application A is published(Rule)In the above mentioned cases expanded secret prior art applies and application B will be rejected.Please note : The claims in Applications A and B are the same ⇒ Refused because of the „first to file principle“ Filing of Application B after publication of Application A ⇒ Refused for lack of novelty 22
    • 23. 7. Patent requirements ~Expansion of secret prior art (Japan, China and Korea)~ Expanded Secret Prior Art Applicant/Inventor is the Provision Same Japan Yes No Korea Yes No China Yes Yes In Japan and Korea, there is an exception to secret prior art when the applicant/inventor of Application A and B is the same. Thus, if the applicant of Applications A and B are the same, expanded secret prior art will not apply and application B will not be rejected. On the other hand in China, because of the law revision in 2009, even if applicant and inventor are the same expanded secret prior art will aplly and application B will be rejected. 23
    • 24. 7. Patent requirements ~Handling Expansion of Secret Prior Art in China~ Claims of application A = common compound R and specific compounds R1 and R2 ※ Specifications refer to experimental data of R1 and R2, the also mention that common compounds R3 and R4 may be used. Claims of application B = specific compounds R3 and R4 ※ Specifications refer in detail to both related experimental data and pharmaceutical effects of R3 and R4. Even If the applicant for application B is the same, expanded prior art appliesand and the application cannot be registered.(Important point.) If since filing of application A less then a year has passed, application B can claim priority, but it isproblematic if a year has passed and application A has not yet been published. (After publication there isthe novelty conflict.) In order to obtain rights for R3 and R4 in China, either priority must be claimed or R3 and R4 must bedeleted from Application A. 24
    • 25. 8. Exception to loss of novelty regulations ~About the revision of the Japanese patent law~ Provided that certain conditions are met, an exception is made and the invention treated as if it novelty has not been lost, despite having been made public prior to filing. The past regulation only covered those inventions which had become public knowledge by means of being conducted in an experiment or described in a printed publication, made available to the public through the internet. This resulted in disparities, such as internet distribution of a video introducing the invention being eligible, while a televised introduction was not. In 2011 it was therefore decided to expand the eligibility for the Exception to Loss of Novelty of Invention in Japan from a limited list structure to include inventions which have become public knowledge „due to the actions of those entitled to a patent‟. However, in the case of inventions filed with a foreign patent office that have become public knowledge as a result of patent publication however, the intent of the laws is highlighted to clarify of lack of eligibility. The same action was taken with regard to the Design and Utility Model laws. 25
    • 26. 8. Exception to loss of novelty regulations ~ Regulations in China and Korea ~ In China, the scope of eligibility is much narrower than that of Japan, providing for display at international expositions, presentation at an academic conference, and non-consensual exposure. An invention is ineligible in cases of public knowledge of an examination, printed matter, or disclosure through the internet. In Korea, on the other hand, when the invention has lost novelty as a result of the actions of those entitled to a patent, as a general rule for any kind of action, including sale, the invention is treated as if it retained novelty. Timing of Patent Form of Exception to Loss of Novelty Submission of Proof Filing Public knowledge „has its roots in the actions Within 6 months of loss Within 30 days from the filingJapan of those entitled to a patent‟ of novelty date Public knowledge „has its roots in the actions Within 12 months of Within 30 days from the filingKorea of those entitled to a patent‟ loss of novelty date 1) at an international exhibition sponsored or recognized by the Chinese Government 2) at a prescribed academic or Within 6 months of loss Within 2 months from the filingChina technological meeting; or of novelty date1 3) Disclosure by another person without the consent of the applicant. 26
    • 27. 8. Exception to loss of novelty regulations ~ Important points when exercising a right of priority ~1. Even when employing a Right of Priority, there is no change to therequirement to file a claim to priority within 6 months (in China andJapan) or 12 months (in Korea) of novelty being lost.2. It is still necessary to apply for exception to loss of novelty at the firsttime the application is filed, at the time of PCT filing and entry into theNational Phase. 27
    • 28. 9. Divisional application system ~ Broadening of Divisional Application Submission Period in Japan~ Since the law revision in 2006 it is possible to file divisional applications after a patent was granted or after the final office action was issued. Traditionally, if you wanted to file a divisonal application after the final office action was issued, the applicant had to first appeal against the office action and then file the divisional application afterwards. Now it is possible to just file a divisional application without unecessarily having to appeal against the office action. When appealing against the final office action it is also possible to file amendments, but amendments filed at that time are limited to restriction of claims. Therefore it can be considered that choosing a divisional application gives your more room for dealing with the problem. 28
    • 29. 9. Divisional application system ~ Broadening of Divisional Application Submission Period in Japan~ Points to note : (1) The deadline is 3 months (4 months for foreign applicants) from the initial service date of a certified copy of the examiners decision that the application was refused. It is not possible to file divisional applications after the trial decision of rejection. (2) When filing divisional applications after patent grant, the scope for filing divisional applications is not based on the original specifications at the time the application was filed at first, but based on the specifications after amendments right before the divisional application is filed. (3) When filing divisonal applications, you have to submit a written report, stating that the requirements for divisional applications are fulfilled. 29
    • 30. 9. Divisional application system ~About divisional applications in China and Korea~ Japan China Korea・Term for filing amendments ・Term for filing amendments ・Term for filing amendments・Within 3 months after the final ・Within 3 months after the final Within 30 days after the finaloffice action was issued office action was received office action was issued (two(For Foreign appliations it„s 4 ・Within 2 months after patent month extension possible)months) grant・Within 30 days after patent • During the administrativegrant proceedings・Within the scope of the ・Within the scope of the ・Within the scope of thespecifications and drawings specifications and drawings when specifications and drawings whenwhen the application was filed the application was filed the application was filed・However, after grant the scopeis the specifications anddrawings right before thedivisional application is filed For all countries it is not necessary to appeal against the final office ation in order to file divisional applications. 30
    • 31. 10. Conversion of applications Conversion of applications means changing the type of application without changing the content. The merit of conversion of applications is, that if obtaining a patent right is difficult, you can change it into a utility model and still get the rights. Another merit is that, the examination of novelty and such will be done based on the original filing date. Japan Korea China Patent ⇔ Possible Possible Not possible Utility model Patent ⇔ Design Possible Not possible Not possible Japan Korea Patent Until 3 months after the examiner‟s first As long as the utility model application is ⇒ decision that the patent application is to pending at the KIPO. However, conversion is Utility model be refused or after 9 years and 6 months not possible after 30 days from the final office from the filing date action Utiltiy model As long as the utility model application is ⇒ As long as the utility model application is pending at the KIPO. However, conversion is patent pending at the JPO not possible after 30 days from the final office action.  In Japan the period for converion of a patent application to a design application is within 3 months after the first notification of refusal was sent. 31
    • 32. 10. Conversion of applications ~Conversion of patents and utility models in China / Simultaneous filing ~ When filing an application under the Paris Convention, you can switch from patent to utility model or from utility model to patent at the point of filing. When filing an international PCT application in China you have to choose either patent or utility model. The simultaneous filing system allows you to file a patent and a utility model for the same invention at the same time. Once the patent is granted you abandon the utility model right and thereby obtain the patent right. 32