Foreign Law (JP) Flashcards
What sort of novelty system is used in Japan?
A29(1) - An inventor is entitled to a patent to an invention unless it is publically known, worked or published anywhere before the filing of the application (absolute novelty).
(First to file system)
Does JP have an inventive step requirement?
A29(2) - If a person skilled in the art of the invention would have easily made it based on any prior art listed in subsection (1) above, then a patent shall not be granted.
NB ‘easily made’ can be treated as equivalent to ‘obvious’
How are applications filed before but published after another application treated under JP law?
A29-2: Where an invention claimed in the current application is identical to an invention in a patent or utility model registration filed before the current application and published after, then a patent shall not be granted;
except if the applicant at the time of filing the current application was the same in both cases or the inventor was the same in both cases.
(This is more similar to the US system of self-citation not being relevant for novelty than the novelty-only system used in UK/EP)
Does JP have a grace period for prior disclosures?
A30(1) - Wheren an invention is disclosed against the will of the person entitled to obtain the patent, then Art 29(1) and (2) will not apply for 12 months (breach of confidence)
A30(2) - Where an invention is disclosed as per Art 29(1) by the person entitled to obtain the patent, then Art 29(1) and (2) will not apply for 12 months (inventor grace period)
What is the deadline to supply evidence to use the 12-month grace period?
A30(3) - Provide documentary evidence within 30 days of filing
A30(4) - If not possible to provide evidence within 30 days, a UK applicant has two months from when it becomes possible, but no longer than six months after the time limit, to provide the proof.
NB need to file an actual application in JP within the period (a PCT designating JP is also acceptable).
What must be included with a JP patent application?
A36(1) - Application shall identify the name and residence of the applicant and inventor.
A36(2) - Description, claims, drawing (optional) and abstract shall be attached (NB claims are required on filing)
A36(3) - Title required, an explanation of the invention is required, and if drawings, a brief explanation of these is also required.
What are the formal requirements for the detailed explanation of a JP application?
A36(4) - Detailed explanation shall be clear and sufficient to enable the skilled person to work the invention.
What are the formal requirements for the claims of a JP application?
A36(5) - Claims shall disclose the necessary features to specify the invention to be patented.
A36(6) - Claims shall have support in the description, be clear, concise and in accordance with the rules
Can you file foreign language applications in JP?
Yes, but must submit a translation within 1 year and 4 months (16 months) from priority.
For divisionals or conversions from utility models and the like, the deadline is two months after the division/conversion.
What happens if a JP translation is late filed?
JPO will notify the applicant that the deadline was missed, and the applicant can file the translation within two months from notification.
If the translation is still not filed the application will be deemed withdrawn. The applicant can file the translation late if they provide justifications within 2 months from the end of the cause of non-compliance (but no more than 1 year from the missed notification deadline) to show that failure was in in spite of all due care.
When should you file a translation for a PCT(JP)?
Within 2 months of national phase entry
Can a JP application claim priority?
Yes, can claim priority within 12 months under the Paris Convention
When must a certified copy of the priority document be supplied in JP?
A43(2) - Within 16 months from earliest relevant priority claim
When is it possible to file a divisional application in JP?
Only in the following situations:
- within the normal times allowed for amending the specification; or
- within 30 days of the issuance of the examiner’s decision to grant (excluding appeal decisions); or
- within three months of the issuance of an examiner’s decision to refuse.
If 30 day deadline to pay the grant fee is extended, so is the period under 2.
If the three month limit for appealing is extended, so is the period under 3
If applicant misses deadline of 1 or 2 due to reasons beyond their control, an overseass applicant can file the divisional within two months of the end of the cause of non-compliance but no later than six months from the deadline.
What is the deadline for filing certified copies of priority documents for JP divisionals?
A44(3) - later of one year four months from priority or three months from filing.
NB documents relating to unintended disclosure (Art30) and priority claims already filed in relation to the parent are deemed to also have been filed in relation to the divisional.
