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It is deemed to be withdrawn.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Objections based on unpublished prior art applications can be raised.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.
Can you file divisionals after Article 51?
Yes. Within 30 days.
What is Article 51?
Allowance of application, will grant if fees paid within 30 days.
What grounds can be used to reject an application under Article 49?
- Added subject matter and amendments
- Novelty and Inventive Step
- Unpatentable inventions (inmoral)
- Failure to specify joint inventors
- Prior unpublished applications
- Clarity of claims
- Unity
How long do you have to file a notice of appeal upon a rejection?
4 months
Can you file a divisional upon a decision of rejection?
Yes
What is the culture of amendments?
To do them voluntarily when request on examination, being very limited to narrowing the claims
How to oppose to a granted patent in Japan?
File a notice of opposition within 6 months of publication of grant in the gazette.
Opposition is a written procedure, like re-examination.
What happens if patent revoked in opposition?
Patentee may appeal a negative decision (revocation of patent) to the IP High Court.
Difference between procedures in Japan and EPO in terms of proceedings?
All written proceedings, no oral hearings.
What is the name of an SPC in Japan
A Patent Term Extension (PTE)
Up to how long can a PTE be? For what reasons?
Up to 5 years. For Regulatory Approval, patent cannot be worked because of it.
When do you apply for a PTE?
Within 3 months of regulatory approval being issued. But not after patent expires.
Can the JPO refuse a PTE?
Yes, if they think that regulatory approval was not needed to work the invention.
Explain Utility models in Japan
Available for devices, relates to shape or structure, no substantive examination, divisionals possible.
Patent application can be converted to a utility model and vice versa. Can be useful if patent is going badly.
How long does a Utility model last in Japan
10 years
