Japanese Patent Law and Practice Flashcards
What is the order of Japanese Courts
District Court (First Instance)- IP High Courts (Second Instance)- Supreme Court (Final Instance)
Grant procedure at JPO
Filing, Examination, Appeal, Opposition
By when do you need to request examination at JPO?
Three years
How long is opposition period in JPO
6 months
For overseas application how long can you apply for examination?
4 years, one year of priority plus 3 years of JPO application.
What language must filings be in?
Japanese
What is the limit for regional phase entry for PCT applications in Japan?
30 months
How long must a translation into Japanese be filed from the date of any priority claim?
16 months
By when should the translation be filed for a PCT application?
By the 30 month deadline, unless within 2 months of the deadline, in which case it can be within 2 months from national phase entry.
What happens if translation not filed?
It is deemed to be withdrawn.
What can you do if the deadline for translation is not met?
You can claim there were legitimate reasons, and this deadline can be extended by the office.
Does Japan value many claims?
No, fees are paid per claims, and since there are not many opportunities to argue before refusal, usually you ammend it before. Compared to the EPO, the claims are narrower. Thus proactive narrowing of claims is beneficial.
What must you do if relying on the grace period?
Make a statement and provide evidence of an earlier disclosure within a fixed period.
Article 29(1) Japan
Deals with novelty: if publicly known, worked or printed or publicly available through the internet in japan or foreign.
Objections based on unpublished prior art applications can be raised.
Inventive Step requirement
At the time of the filing, would a person ordinarily skilled in the art of the invention have easily made the invention based on the prior art?
Is mosaicking available at the JPO?
Primary prior art in combination with secondary prior art or common general knowledge
What advantageous factors are considered at the JPO?
Data to demostrate advantageous effect, or advantage will do better in Japan.
Article 29bis
Secret Prior Art, earlier filed, but later published. Invention must be substantially identical. This can include any earlier applications of the same applicant
How long is the grace period in Japan
One year
What cannot be used to claim the grace period?
Official publications of inventions
How long do you have to submit evidence supporting the use of the grace period?
30 days. If out of the person’s control can be extended by 14 days or 2 months (if overseas resident), but not later than 6 months
How long do you have to respond to a notice of examiner’s reasons for refusal?
3 months. 6 months for overseas applications
When is an Article 50-2 issued?
When the examiner finds that the reasons for refusal are the same as for an earlier application
When is a final notice of reasons for refusal issued?
If existing grounds of rejection overcome, but amendment has caused new grounds of rejection, then final notice of reasons for refusal issued.
Not much scope. This action requires of a couple more fixed, very restrictive to ammend to narrow.
