System for Disclosure of Information on Prior Art Documents

February 6, 2003
HARA KENZO WORLD PATENT & TRADEMARK
Patent Attorney Junso Himura

Introduction

  Traditionally, Japanese Patent Law did not impose a requirement on the applicants to disclose the prior art that the applicants acknowledge when the applications are filed such as in the U.S.. However, the revised Patent Law in 2002 introduces a system of disclosure of information on prior art documents. Under the revised Patent Law, when applicants apply for a patent after September 1, 2002, the applicants must disclose the prior art in principle.

(1) Reasons for introduction of the system for disclosure of information on prior art
As the number of patent applications and examination requests has increased year by year, the need for rapid examination procedure has been increasing. Under the circumstances, if the applicants provide research results of the prior art documents, it is expected that the Examiner can effectively utilize the information on the prior art provided by the applicants so that the examination of the patent applications may be accelerated.
Also, it is expected that a successful patent will be granted as a result of fully examining the several prior art documents related to the invention. Consequently, under the new rules, the applicants shall disclose the prior art documents so that the Examiner can make an effective use of the information on prior art documents that the applicants acknowledge.

(2) Expectancy for the JPO in implementation of the system
  According to the draft criteria for examination, “in the case where an applicant is an individual or a medium and small company, the applicant may not know information of prior art documents at all, in relation to the invention on which an application is filed. Despite this, if reasons for refusal must be necessarily notified when violation of the requirement is found, it will not contribute to promote examination, and further more, it can impose excessive burdens on the applicant.” That is, it is expected that the Examiner will decide whether the applicant should disclose the information on prior art documents according to research capacities of the applicant.
  On the other hand, it is expected that large companies be regarded as they have enough research capacities. However, even in those large companies, there are many cases that they are compelled to file an application without fully researching the prior art because of complicated operations by increase in the target number of applications. For such companies, it may be difficult to immediately carry out thorough research of prior art.
  Of course, it is obvious that the introduction of this system is intended to ask for applicants’ cooperation for examination, and not intended to impose burdens on the applicants.
  Therefore, until the system is fully prevailing, I sincerely hope that the JPO flexibly accepts “research capacities of applicant” regardless of company size, and flexibly carries out the system.

(3) Role that patent and law firms will fulfill
  As described above, it is expected that the Examiner will decide whether the applicant should disclose of information on prior art documents according to the research capacities of the applicant. Therefore, in the case where the applicant is a medium and small company or an individual, it is expected that the system be not strictly applied. Seen from this viewpoint, the system is considered not to fully prevail in medium and small companies and individuals.
  However, though it is stated as reason for the introduction of the system, to acknowledge the prior art is extremely important to obtain a successful patent. This means that from the viewpoint of defining the scope of proper claims, preventing unnecessary applications, and acquiring a successful patent invulnerable to attacks from other companies, it is extremely important to acknowledge the prior art as far as possible.
  Therefore, even if the system is not strictly applied in examination, I assume that patent and law firms should proactively advise the importance of prior art for clients of medium and small companies and individuals.
  More specifically, I assume that it is necessary to make sure whether research of prior art is conducted or not for applications without any prior art documents. Moreover, if clients do not know well about methods for research and cannot submit prior art documents, it is necessary to willingly advise not only how to search using public access system of IPDL or the like, but also advise how to accurately search or the like for such clients.