1f) Japan Flashcards
Types of patent
Standard patent - 20 year term
Divisional (filed within 30 days of grant decision or 3 months of refusal decision)
Utility model – 10 year term (cannot have patent and utility model to the same device)
Patentable inventions - nov and inv step
Absolute novelty
Pre-filed/post published Japanese patent or utility model or PCT designating JP and filed by a different
inventor/applicant is novelty only prior art. Whole of contents – not just claims
Patentable inventions - grace periods
12 month grace period for:
o breach of confidence
o patentee disclosure (provided not a patent publication)
must apply in writing on filing and provide evidence about which provision applies within 30 days
Was previously 6m but changed to 12m effective 9 June 2018 and applicable to disclosures made on or after
9 Dec 2017
Patentable inventions - exclusions to patentability
Computer programs and business methods patentable. Methods of medical treatment not patentable
Based on public comments received on the draft revision of its Examination Guidelines, which were prepared
based on the discussions held at the 12th meeting of the Working Group on the Patent Examination
Standards, the Japan Patent Office (JPO) has published the new Examination Guidelines related to computer
software-related inventions. The new guidelines further clarify the contents of eligibility for patent without
changing the basic concept. Among other things, the new guidelines provide definition for some of the terms
like “program”, “equivalent to programs”, “software” and “data structure”. The new Examination Guidelines will
be used for examining computer software-related inventions with effect from 1 April 2018.
Process for Obtaining a National Patent - filing and fees
Fees/other: Request for grant must be filed in JP on filing
Non-JP applicant/resident must have resident in country that grants full reciprocity to JP nationals.
Appointment of agent required
Additional fees required if filing by paper / Higher application fee due if filing in language other than Japanese
Small entity fee reduction available
Obligation to file first with national office: No
Excess claim fees: Yes: number of claims determines examination and maintenance fee
Renewal Fees: 30 days from grant date (extension available)
Process for Obtaining a National Patent - language
Any language for a direct national patent application (as of 1 April 2016, previously could file in English or
Japanese only): translation to Japanese due within 14 months from earliest priority date. Since 1 April 2016,
there are now provisions to correct a mistranslation if necessary
Process for Obtaining a National Patent - search and exam
Search before grant: Yes
Type of examination: formal and substantive examination
Time limit to request exam: Applicant or 3rd party can request examination within a period of 3 years from
the filing date with payment of a fee (extension available)
Multiply dependent claims allowed: Yes
Prior Art Disclosure requirements: None
Examination Process: Applicant can request accelerated exam (need reasons)
30 days to respond to formal objections
3 months to respond to substantive objection (with up to x3 month extension possible. From 1 April 2016, can
request a two month extension with a single fee and a further one month if needed with a second fee)
decision to reject appealable within 3 months
Since 1 Aug 2015 JPO introduced collaborative search pilot program (CSP) with the USPTO to provide
applicants with search results early in the examination process to expedite examination
Process for Obtaining a National Patent - grant
Once allowed, within 30 days from notification of decision, pay annual fees for the first three years. Patent will
then grant
Process for Obtaining a National Patent - priority
Claimed on filing – reinstatement possible since 1 April 2015
Must file certified copy within 16 months from earliest priority date together with translation of front page. If
priority from Korea, EPO, US or Taiwan, no need to file – JPO obtains it electronically
Process for Obtaining a National Patent - 3rd party challenges
Japan re-introduced an opposition system on 1 April 2015. A person may also demand a trial for invalidation
(nullification)
Opposition
Can be filed within 6 months of date of publication of grant
Anyone can oppose
Fee depends on the number of claims being challenged (cheaper than invalidation trial)
Grounds are lack of patentability: novelty, inventive step and written description, added matter, written
description, double patenting
Patentee has opportunity to argue and/or amend
Written process – no oral submissions
Patentee can appeal to JP High Court. Opponent cannot
Does not give rise to estoppel
Invalidity Trial
Can be filed at any time after grant of the patent or utility model (sometimes even after expiry)
Only interested parties can oppose
Fee depends on the number of claims being challenged (more expensive than opposition)
Grounds are lack of patentability, lack of enablement, lack of inventor ship (therefore broader than
opposition grounds)
Both parties participate at all stages of proceedings and there is an oral hearing
Losing party (patentee or third party) can appeal to Tokyo High Court.
Litigation has double track system with nullity heard at the JPO with appeal to the High Court and
infringement heard in a separate trial before the court. This can prolong time and costs of hearings.
3rd party observations can be made during prosecution, but the third party does not become party to
the proceedings
Losing party is estopped from re-litigating the same issue
National Phase Entry From a PCT Application - time limits and translation requirements
- time limits (and any extensions of time) for national/regional phase entry and filing formal documents
30 months from priority. Actions required:
file request / pay national fee / file translation / power of attorney / appointment of agent
Can obtain utility model via PCT - translation requirements
If the applicant has submitted the Japanese Request form and paid the fee within two months before the
expiry of the 30-month time limit, the applicant may provide a translation into Japanese within 2 months of
submitting the Request form (grace period for filing the translation) – no grace period for submission of
the request form and national fee
Utility models/ other patents
Term: 10 years
What can be protected: Not available for processes, computer software, plant/animal varieties or chemical
compositions. Novel devices with invention in the shape, construction or assemblage of the article(s)
Available from PCT: Yes
Conversion to/from patent: Can convert patent to utility model but not after 3 months from the transmittal of
the examiner’s first decision that the patent application is to be refused or after 9 years and 6 months from the
filing date of the original application. A utility model may also be converted into a patent application but not
after three years from the filing date of the utility model application
Examination: Application must include drawings and registration fees for the first 3 years must be paid at the
time of application. Application may not be filed in English.
Examined as to formal requirements only, i.e. no substantive examination as to novelty or inventive step.
However, must be novel and inventive to be enforceable. Inventive Step level lower than for patents.
For applications which have passed the formality check, the registration of a utility model right occurs. This is
usually within six months after filing the application.
It is advisable to apply for utility model protection when the invention relates to small improvements since
rejection of patent applications is common in Japan
When the utility model right has been registered, the JPO publishes the details of the claimed device, laying it
open to the public for the first time
If an applicant needs to obtain an evaluation about the validity (novelty and inventive step) of registered utility
models, the applicant may file a request for the registerability report.
A registerability report (Technical Evaluation Report (TER)), prepared by an examiner on the basis of a search
of prior art documents can be requested by any person at any time after the filing of the application.
Request can be filed in respect of any claim.
TER includes (1) relevant prior art, (2) validity opinion in respect of each requested claim.
TER becomes publicly available. TER is not binding but is rather an expert opinion of the Patent Office.
In exercising rights TER must be sent to the alleged infringer. So obtaining a TER is a prerequisite for taking
infringement action
Miscellaneous
New for 2019: New bill to create a new system under which if a third party is suspected of infringing on a
patent right of a patent-right holder, neutral technological experts conduct on-site inspections of plants and
other sites of the suspected third party as an infringer, implement research necessary for proving the
infringement, and file a report on the research results with a court
Improvement of damages calculations – the patent holder will be able to receive an equivalent to license fee,
i.e. presumed damages in addition to proven damages.
In May 2019, the Japanese Patent Act was revised to increase damage awards. Specifically, the plaintiff
(patentee) is awarded damages of the “full” amount of the profits that the infringer is calculated to have earned
from the infringement.
