An Overview of Revisions in Japanese Patent Law (2002 – 2004)

December 5, 2003
HARAKENZO WORLD PATENT & TRADEMARK Intellectual Property Law Firm
Patent Attorney Ryuichi KIJIMA

1. Topic
Over the last few years, the Japanese government has shifted the course of its economic policy to recognize the
importance of intellectual property protection as the key factor of future economic growth. To pursue this policy, the Strategic Council on Intellectual Property was set up under the government (please see Reference 1), and there has been a number of enactments and revisions of laws relating to intellectual property, including the patent law.
Among a wide range of patent law revisions for 2002-2004, this paper will introduce some of the revisions which we think are of interest to the foreign applicants and attorneys filing Japanese patent applications.
We would like to note that the drawings and the descriptions referred to in the drawings herein were cited from the website ( http://jpo.go.jp ) of the Japan Patent Office and edited by us.

2. Law revisions already in effect
A. Introduction of information disclosure system for prior art document (Effective from September 1, 2002)
Please see Reference 2
Before the law revision, there was no obligation for the Applicants of Japanese patent applications to disclose prior art. In fact, only about 40 percent of all Japanese patent applications disclosed the information of prior art documents in the specification.
The revision was made in the hope that the information disclosed by the Applicant and became available to the Examiner would expedite Examination and improve the quality of Examination. Applicants are now required to disclose the information of all known prior art documents in the specification concerning their invention.
Absent information of prior art document in the specification, Examiner will request the Applicant, as required, to disclose known prior art information. Failure to comply with the Examiner’s request results in the rejection of the application.
It should be noted, however, that the implementation of this new system is much less strict than that of IDS employed in some countries, as represented by the United States.
Accordingly, it is generally agreed upon that the failure to disclose relevant prior art information does not immediately lead to the rejection of the application, or loss of patent right if it is granted a patent.

B. Extension of time limit for national phase entry of PCT applications
(Effective from September 1, 2002)
Please see Reference 3

In compliance with the resolution by the PCT union assembly, the time limit for entering the national phase was extended uniformly to 30 months from the priority date. In addition, a translation of a foreign-language PCT application may now be submitted within 2 months from the date of the submission of national form paper. 3. Law revisions to take effect in the future

i) Restructuring the patent-related fee (To take effect from April 1, 2004)

(1) Shift to a fee system encouraging strategic acquisition of patents By decreasing the application fee and the annual fee and increasing the fee for request for examination , thereby reducing the total cost per patent application, applicants would be provided with more incentives to make strategic efforts.

(2) Introduction of the refund system for the fee for request for examination
By introducing a system for refunding part of the fee for request for examination, in case applicants withdraw applications due to the decreased necessity for acquiring a patent after filing the request for examination, applicants would be provided with the opportunity to save costs.

ii) Revision on determination of unity of invention for international harmonization
(To take effect from January 1, 2004)

In order to reduce burden of acquiring foreign patents, the scope of inventions that can be included in a single application (unity of invention) would be harmonized with the global standard.
Currently, where there are two or more inventions, the invention of a particular claim is designated as "the specified invention." Unity of invention is then determined by finding whether the "specified invention" is related to the inventions of all the other claims in such a manner as to satisfy predetermined requirements (Japanese Patent Law Section 37).
By the law revision, unity of invention will be determined, as in the PCT, according to whether the claimed inventions form a single general inventive concept. This new rule will be specifically set out in the regulations.

(Reference 1)

Reference: Intellectual Property Policy
Outline (extract) (based on the decision by the Strategic Council on Intellectual Property in July 2002)

1. Promotion of creation of intellectual property at universities, etc.
(1) 4) b) Handling of patent-related expenses involving universities, etc.
The government of Japan ("GOJ" hereinafter) will consider how to properly handle patent-related expenses incurred by R&D-type special corporations that become independent administrative agencies and national universities that are incorporated as well as patent-related expenses incurred by existing independent administrative agencies. It will come to a conclusion by the end of fiscal year ("FY" hereinafter) 2002. (The Ministry of Economy, Trade and Industry and other ministries and agencies concerned)

2. Strengthening of the Protection of Intellectual Property
(1)1) Prompt examination of patent applications
i) By the end of FY 2002, the GOJ will design a plan for prompt examination of patent applications for the period until FY 2005, during which the number of requests for examination of patent applications is expected to rapidly increase due to shortening of the period of request for examination. By carrying out the plan, the GOJ will start in FY 2002 to promote efforts to prevent prolongation of the examination process and ensure prompt examination while maintaining the quality of examination. Toward this end, while making efforts toward more efficient examination, it will take comprehensive measures to improve the examination system by securing a sufficient number of examiners, outsourcing prior art searches, actively making use of assistant examiners with expertise and reforming the Japanese patent application/examination request systems through enlightening companies. (The Ministry of Economy, Trade and Industry)

(1) 2) Appeal/trial system reforms
i) In order to simplify and streamline the appeal/trial system and enhance its functions, the GOJ will consider the relationship between the opposition system and the system of trial for invalidation, the concept of the system of trial for correction, and the relationship between appeals/trials and lawsuits against appeal/trial decisions, and submit necessary bills to the ordinary session of the Diet in 2003. (The Ministry of Justice and the Ministry of Economy, Trade and Industry)

ii) In order to ensure reasonable dispute settlement, the GOJ will consider ideal court procedures from a variety of viewpoints including measures to achieve dispute settlement in a single proceeding, focusing on the relationship between judgments on invalid patents in infringement lawsuits and decisions in trials for invalidation. It will draw a conclusion by the end of FY 2004. (The Judicial Reform Headquarters, the Ministry of Justice and the Ministry of Economy, Trade and Industry)