Japanese Patent practice


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Japanese Patent practice

  1. 1. Artist Bjørn Bjørnholt Japanese Patent practice & Tips for Handling Japanese applications Ako Yasuhara Shinji Okayama LL.M. Ph.D. Japanese Patent Attorney Japanese Patent Attorney T +45 33 63 93 66 T +45 33 63 93 63 E aky@pv.eu E sho@pv.euNovember 2011
  2. 2. Important terms 2
  3. 3. Procedures Time LimitsEntry 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 AppealRequest 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!) 3
  4. 4. Substantial matter 4
  5. 5. One part form Two part formEP No YesJP Yes Yes Multiple Independent claim Multiple dependent claim in the same categoryEP Yes (basically) NoJP Yes Yes 5
  6. 6. OA from the JPO 1 Rejection notice 1st O.A., 2nd O.A.(rare case) 2nd O.A. 2 Rejection notice –final- When amendment provokes new grounds amendment is restricted Decision of rejetion → Appeal or Divisional 3 Final rejection amendment is restricted Unallowable amendment in response to 4 Declining of amendement “Rejection notice –final-” or “Final rejection” Notice to the effect that the reasons Ex. File divisional without any amendment for refusal stated therein are the same Issued with 1st O.A. 5 as those stated in the previous notice amendment is restricted = 50bis Notice of statement of information 6 concerning invention known to the public through publication 6
  7. 7. Application has to comply with…• Novelty• Inventive step• Clarity• Unity• Double patent (same invention written in claim)• 29bis 7
  8. 8. Article 29bisPatent Act Article 29bis reads:Where an invention claimed in a patent application is identical with an invention ordevice (excluding an invention or device made by the inventor of the inventionclaimed in the said patent application) disclosed in the description, scope of claimsor drawings (in the case of the foreign language written application under Article36bis (2), foreign language documents as provided in Article 36bis (1)) originallyattached to the written application of another application for a patent or for aregistration of a utility model which has been filed prior to the date of filing of thesaid patent application and published after the filing of the said patent applicationin the patent gazette under Article 66(3) of the Patent Act (hereinafter referred toas "gazette containing the patent") or in the utility model bulletin under Article14(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 paragraphsof the respective Article or for which the publication of the patent application hasbeen effected, a patent shall not be granted for such an invention notwithstandingArticle 29(1) ; provided, however, that this shall not apply where, at the time of thefiling of the said patent application, the applicant of the said patent application andthe applicant of the other application for a patent or for registration of a utilitymodel are the same person. No Self-collision  8
  9. 9. Example of rejected case pursuant to 29bis Application A Application B Cliams Cliams 1. a 1. d 2. b 2. e 3. c 3. f PUBLISHED! Specification Specification Application A a,b,c,d,e d,e,f,g,hPrior application A is filed before present application B and is published after presentapplication B is filed.However, No Self-collision In case, prior application A is published before present application B, this application isrejected pursuant to Art. 29(1)3, e.g. novelty. 9
  10. 10. Amendment 10
  11. 11. Amendement - 11. Before receiving any OA • Content of the application as filed2. After receiving a 1st rejection notice without a notice pursuant to 50bis • Content of the application as filed3. After receiving a 1st rejection notice with a notice pursuant to 50bis, receivingrejection 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 11
  12. 12. Amendement - 2For the applications filed on or after 01/04/2007, claim amendments should be madesuch that the amended claims met unity with the claims examined in the outstandingoffice action. UNITY O.A. Examined Amended Claims Claims 12
  13. 13. EXAMPLE 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) 13
  14. 14. How the Examiner examine 14
  15. 15. When the Examiner judges feature A in claim 1 it does not have novelty, butfeature B in claim 2 has novelty, he judges claims 2 and 3 which do NOT meetUNITY with claim 1. In this case, only claim 1 and 2 are examined. Claim 1: A Novelty Inventive step feature A NO NO Claim 2: A+B feature B YES NO Claim 3: A+B+C feature C YES YES(maybe) 15
  16. 16. What grounds will be applied? 16
  17. 17. 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. Claim 1: A Novelty Inventive step feature A NO NO Claim 2: A+B feature B YES NO Claim 3: A+B+C feature C YES YES(??) 17
  18. 18. How to overcome this O.A.?Claims 1 and 2 are rejected.Claim 3 may have inventive step... 18
  19. 19. Claim 1: A Claim 2: A+B Claim 3: A+B+CIt 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. 19
  20. 20. To avoid situations like this when you enter into JPnational phase, we suggest...… to reformulate claims at or before filing a request for examination, based on whichclaim is the most important for the applicant, and the result of ISR. 20
  21. 21. 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. Claim 1: A beyond blue broken line… Claim 2: A+B Claim 3: A+B+C 21
  22. 22. 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’ erase blue broken line… Claim 2: A’+B Claim 3: A’+B+C 22
  23. 23. Divisional Application 23
  24. 24. 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; or3. 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 24 with the appeal against the 2nd final rejection.
  25. 25. Filing Request for 1st office office action Final rejection Ex parteapplication exam action -final- /Allowance Appeal Exception: Final rejection/Allowance after filing an ex parte appeal are excluded. 25
  26. 26. Re-examination 26
  27. 27. When the applicant amends application atdemanding for appeal of decision of rejection, theExaminer who has examined the applicationreexamines the amended application. 27
  28. 28. reexamination by the examiner before trialIs the amendment made withinthe scope of the application asfiled? No Yes NoIs the amendment purposedany of those?(i) the deletion of a claim;(ii) restriction of the scope of Could theclaims; application(iii) the correction of errors or before(iv) the clarification of an amendment be Noambiguous statement patentable? Yes The amendment is not Yes allowable. Was the final rejection appropriate?Could the amended scope ofclaims be patented? Amendment is dismissed Yes Yes No Send the case to the commissioner of the JPO Rejection Notice with reason = ApealAllowed by the examiner by the examiner proceeding starts 28
  29. 29. Appeals? 29
  30. 30. Appeals1. 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! 30
  31. 31. Tips... 31
  32. 32. 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. 32
  33. 33. Official feeJPY1.- = 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. 33
  34. 34. 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 toconsider 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 carewhether the applicant requests extention on the payment of the examination fee. Incase the applicant doesn’t pay the fee within 1 year, the application is going to bewithdrawn. 34
  35. 35. Third Party Observation system- the Japanese Patent Office welcomes a submission of information from a memberof the public to improve the effectiveness and expeditiousness of the examination.- Supportive information for examination such as information identifying the factthat a certain invention relating to a patent application lacks novelty or inventivestep or does not satisfy the requirement of the description may be submitted.- Information may be submitted at any time after a patent application or anapplication for utility model registration is filed, even after a grant of a patent orutility model registration. Any member of the public may file the Submission ofInformation. Submission on an anonymous basis is permitted.Note: If you submit information against an application filed by another, the JPO willinform you whether or not the examiner used the information you submitted in aNotice of Reasons for Rejection upon your request. 35
  36. 36. Priority documentA copy of the priority document is NOT required with following cases.1. EPO JPOIn case the priority founding application is filed in the EPO, USPTO, KIPO2. 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. 36
  37. 37. Utility model• 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. 37