Patent Attorneys
CONTENTS
CONTACT

HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BLDG. 21 F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-6121,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
E-Mail:


HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:


In the background of the HARAKENZO trademark is a global map wherein countries/regions are sized according to the number of patents registered there in 1991.

Privacy policy


Attorneys & Others

Thailand Joins the Madrid System of International Trademarks

The Japan Patent Office has announced that Thailand has deposited its instrument of accession into the Madrid Protocol with the WIPO Director General. The Madrid Protocol will come into force for Thailand on November 7, 2017. Thailand is the 99th country to join the Madrid system.

Source: JPO website
http://www.jpo.go.jp/tetuzuki/t_shouhyou/kokusai/madopro_thailand.htm



Status of Patent Opposition Filings and Points to Note on Procedures

On July 28, 2017, the Japan Patent Office published new information on 'the status of patent opposition filings and points to note on procedures.'
By the end of June 2017, the aggregate total number of oppositions filed was 2,240, of which 1,305 (around 60%) have reached their final stages. The percentage of cases in which a decision to uphold the opposed patent is high - decisions were made to uphold the patents without amendment in around 50% of cases, and to uphold the patents after amendment in around 40% of cases.
Also, as there continue to be many cases of deficiencies in procedures, the JPO is calling for greater care to be taken.



'Tokkyo' Bulletin for August/September 2017

The Japan Patent Office's 'Tokkyo' bulletin for August/September 2017 has been published.
The special features in this edition are:
(1) 'Patents and Beauty'
This feature contains information on IP related to women's underwear and accessories
(2) 'Patent Spotlight'
This feature looks at Shiseido Company Limited and Takemoto Oil & Fat Co., Ltd.

Source: JPO website
http://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



INPIT Kinki General Headquarters (INPIT-KANSAI) and Interview Examinations

The Ministry of Economy, Trade and Industry (METI) reports that the INPIT Kinki General Headquarters will open on July 31, 2017. These headquarters will support protection and use of the intellectual property of small and medium-sized businesses and venture enterprises in the Kinki region of Japan.
Also, the headquarters will carry out dispatch interview examinations by JPO examiners who travel to various regions of the country, as well as television interview examinations using an online conferencing system. Dispatch interview examinations generally require an request to be made four weeks prior to the desired date of the interview, but INPIT Kinki General Headquarters will only require the request to be made two weeks in advance.

Source: METI website
http://www.meti.go.jp/press/2017/06/20170616003/20170616003.html
Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/junkai.htm



Outline of amendments to PCT regulations enacted July 2017

The Japan Patent Office has published an outline of the amendments to the PCT regulations that came into effect from July 1, 2017.
・The period in which a supplementary international search may be requested from an international searching authority other than the international searching authority at the time of filing has been extended to 22 months from the priority date.
The aim of this change is to allow for more effective use of the international searching system and increase the proportion of cases making such requests. It is important to note that the JPO, in its role as an international searching authority, does not carry out supplementary international searches.
・If the receiving office is in possession of information regarding the search results/classification for the priority application of an international patent application, the receiving office will now send said primary search results etc. to the international searching authority regardless of whether or not the applicant requests it.
Previously, a request from the applicant was necessary, but due to the reduction in examination time at many offices, it is now possible to make use of primary application search results.
・After a PCT application has been entered into the national phase in multiple countries, each designated office is obligated to provide WIPO with the national phase information from each designated country.
Until now, each designated office could opt to provide WIPO with the national phase information, but considering the usefulness of this information the designated offices are now obligated to do so.

Details are available on the JPO website.
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct297.htm



Patent Administration Annual Report 2017

The Japan Patent Office has published the 2017 edition of its Patent Administration Annual Report.
The lead article in the report looks at the JPO's approach to handling the "fourth industrial revolution".
Although 318,381 patent applications were filed in 2016 (a reduction of 0.1% from the previous year), the number of PCT international applications filed with the JPO as the receiving office was 44,495, the highest ever. The number of utility model applications filed was 6,480 (a reduction of around 400 from the previous year). The number of design registration applications filed was up 3.3% from 2015, with 30,879 applications filed. The number of trademark registration applications (including international trademark applications) filed was 161,859, an increase of 9.9% from 2015.

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2017_index.htm



PCT International Search and Preliminary Examination Guidelines

The Japan Patent Office has published a tentative Japanese translation of the PCT International Search and Preliminary Examination Guidelines that came into effect on July 1, 2017. In any case where the translation differs from the original text, the original text takes precedence.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/guideline_pct.htm



Report on "Meeting to Consider State of IP Systems with Views on 4th Industrial Revolution"

As technological advancement continues regarding the IoT, AI and Big Data, it has become a fresh source of competitive energy for business models making use of data and data analysis technology. Also, there are demands for combined strategies for both physicalized and encoded data that enable arrangements (comprising preparations, handling and so on) regarding IP, connected items and interfaces to be appropriately applied.

Under these sorts of social circumstances, the Ministry of Economy, Trade and Industry has composed and published a report on a meeting to consider the state of IP systems with views on 4th industrial revolution.

Source: METI website
http://www.meti.go.jp/press/2017/04/20170419002/20170419002.html



Subdivision of Patent Classification (ZIT) of IoT-Related Technologies

The Japan Patent Office is applying to Japanese patent literature a broad-faceted classification mark (ZIT), which is a cross-sectional classification in connection with IoT-related technologies. From April 24, 2017 the ZIT classification mark was subdivided according to 12 uses, and from May 23, 2017 it has become possible to collect and analyze patent information on IoT-related technologies according to use.

Source: JPO website
https://www.jpo.go.jp/shiryou/s_sonota/iot_bunrui_saibunka.htm



Adjustment of Examination System to Handle IoT-Related Inventions

Due to the development of IoT-related technologies, information communications technologies and loosely-related technological fields also expect to see an increase in applications for IoT-related inventions. The Japan Patent Office has therefore decided to adjust its internal examination system accordingly.

Within the JPO, an IoT Committee and IoT Examination Team will be started. The IoT Committee will carry out measures to consolidate examination decisions on IoT-related inventions. The IoT Examination Team will aim to accumulate and share knowledge on IoT technologies and examination precedents.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/iot_shinsa_taisei.htm



Report of Surveys of Trends in Patent Applications for Fiscal 2016

On May 8, 2017, the Japan Patent Office published a report collecting surveys of trends in patent applications in noted fields.

15 technological themes are presented for fiscal 2016. IoT-related technologies included are "smart manufacturing technologies", "cloud services/cloud business", and "facility horticulture".

Source: JPO website
https://www.jpo.go.jp/shiryou/gidou-houkoku.htm



June/July 2017 'Tokkyo' Bulletin

The Japan Patent Office's 'Tokkyo' bulletin for June/July 2017 has been published. The features in this edition are on technology related to railways, and reports on the IP departments of Canon and iPS Academia Japan.

'Tokkyo' is available on the JPO website.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Accelerated Examination/Appeal Examination of Patent Applications

In recent years, use of accelerated examinations has considerably reduced the average time users must wait for patent applications to be examined. Figures from 2015 show there was an average wait of three months from the date of requesting accelerated examination, and for accelerated appeal examinations, once a request has been filed, there was an average wait of four months between an application becoming eligible for appeal examination and the issuance of the result.
The range of application eligible for accelerated examination has also expanded, and the percentage of cases making use of the system is continuing to grow. In 2015, accelerated examination was requested in around 18,000 cases.

Source: Japan Patent Office website
https://www.jpo.go.jp/torikumi/t_torikumi/souki/v3souki.htm



Revision to Trademark Examination Guidelines

Following a major review, the Japan Patent Office (JPO) has carried out a two-year plan to comprehensively revise the trademark examination guidelines, and on March 28, 2017 it published a revised set of guidelines.

Definitions, explanations and examples of the terminology used in each provision have been added, as well as headings for each section, and the terminology in the guidelines has been unified.

The revised examination guidelines became effective from April 1, 2017.

Source: Ministry of Economy, Trade and Industry Website
http://www.meti.go.jp/press/2016/03/20170328005/20170328005.html



Japan Patent Office Status Report 2017

According to the published Japan Patent Office (JPO) Status Report for 2017, 44,495 applications were filed in 2016 with the JPO as the receiving office. This is the highest number on record, surpassing the 2015 figure of 43,097 applications.

Meanwhile, the number of domestic patent applications was 318,381, approximately the same as in 2015. The number of designs filed (30,879) was slightly above that of 2015, and the number of trademarks filed was 161,859, an increase over the 2015 figure of 147,283.

Source: Ministry of Economy, Trade and Industry Website
http://www.meti.go.jp/press/2016/03/20170330002/20170330002.html



Patent Prosecution Highway Trial Programs

From April 1, 2017, trial Patent Prosecution Highway (PPH) programs were started with Brazil and Argentina. Also, from August 1, 2017, a further PPH is due to begin with Chile.
Brazil in particular has an issue of patent examination taking a long time, and so there is anticipation for this PPH to reduce the time needed to obtain rights.

Source: Ministry of Economy, Trade and Industry website
http://www.meti.go.jp/press/2016/03/20170317003/20170317003.html



List of Trademarks with High Frequency of Use

The Japan Patent Office (JPO) has updated its list of registered trademarks with high frequency of use, which includes "Windows", "ANDROID" and so on. The JPO only allows use of registered trademarks in cases where the thing referred to can only be expressed using a registered trademark, and if a registered trademark is used, requests that users clearly indicate it as such.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tourokusyohyo_kisai.htm



Filing Procedures (2017 edition)

The Japan Patent Office (JPO) has published the 2017 edition of its filing procedures.
The document collects essential information for practice on topics including points to note and formal written matters etc., centered on filing procedures for patents, utility models, designs and trademarks.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/syutugan_tetuzuki.htm



April/May 2017 Edition of “Tokkyo” Bulletin

The April/May 2017 edition of the “Tokkyo” bulletin has been published on the Japan Patent Office website. The special features in this edition are on Japanese trademarks and the Patent & Design Patent Contest.

The feature on Japanese trademarks has been produced as in 2017 the number of registered trademarks in Japan reached a total of over 5 million, and the importance of trademarks continues to grow.
The Patent & Design Patent Contest is held annually, and features competing inventions and designs that break new ground for ways of living in the future.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Formality Examinations Handbook Revised

On April 1, 2017, a revised edition of the Formality Examinations Handbook was published.
The revisions to the Handbook can be divided into the method of calculation when extensions of time have been filed; the unification of terminology in line with revisions to other laws; and the clarification of sections that were already in place.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tokkyo_houbin.htm



Recent Trends in Business-related Inventions

While the “fourth industrial revolution” being driven by the internet of things (IoT), AI and so on continues, attention is focused on more dated business-related inventions from around the year 2000.

There has been a continual rise in applications for business-related inventions since 2011. Also, the percentage of applications granted patents was 70% in 2012, which is close to the overall average of 74% across all fields.

Source: JPO website
https://www.jpo.go.jp/seido/bijinesu/biz_pat.htm



Patent/Utility Model Examination Handbook Revised

The Patent/Utility Model Examination Handbook has been revised, incorporating the following:

・Examples of IoT-related technologies, etc.
(Appendix A) examples 3-2, 3-3, 31 and 32
(Appendix B) examples 2-11 to 2-15, 3-4 and 3-5

Examples of IoT-related technologies etc. are collected under the heading “Examples of IoT-related Technologies”

・Examples of claims ending in terminology other than “program” that are still treated as programs
・The written gist of a standard related document as the written matter of a publication etc. when said publication etc. is cited in an office action
・Illustrative examples of in-person oral examinations in a form that includes interviews between examiners and representatives, etc.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa_h2903.htm



Investigation Report into Damages from Imitation Goods

The JPO has published its investigation report into damages from imitation goods for fiscal 2016.
The report states that in fiscal 2015, of those enterprises possessing industrial property in Japan, around 10,000 (approximately 6%) suffered damages as a result of imitation goods.

Source: JPO website
https://www.jpo.go.jp/shiryou/toukei/mohou_higai.htm



Point-by-point Explanation of Industrial Property Rights Law (20th edition)

On March 16, 2017, the JPO published a point-by-point explanation of the industrial property rights law (20th edition).

The following points revised in 2014 and 2015 are reflected:
・Expansion of relief measures (patents)
・Oppositions system (patents)
・Revision of employee inventions system (patents)
・Revision of fees (patents)
・Preparation of provisions for collective filing of a design in multiple countries at once (designs)
・Expansion of marks eligible for protection (trademarks)
・Preparation of provisions related to the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks (patents/trademarks)
・Amendments to the Patent Attorney Law
・Amendments to the International Application Law

Source: JPO website
https://www.jpo.go.jp/shiryou/hourei/kakokai/cikujyoukaisetu.htm



Comparative Research on Examination Practice in Japanese, Chinese and Korean Patent Offices

On March 15, 2017, the JPO published a summary of comparative research and study of examples in Japan, China and Korea.
Previously, reports on the results of research into inventive step, novelty, utility model systems, written requirements and amendment requirements have been published, but for ease of reading a simple summary of the results of each piece of research has been produced. Also, parts that have since changed from past reports due to amendments to ordinances or examination guidelines are highlighted.

Source: JPO website
https://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_shinpan_hikakuken.htm



Table of PCT Member States

An application by the Hashemite Kingdom of Jordan to join the PCT has been received by the World Intellectual Property Organization. As a result, Jordan has become the 152nd member of the PCT.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/kokusai2.htm



JPO Research Reports into Issues with Industrial Property Rights System

Reports produced from research conducted in fiscal 2017 into issues with the industrial property rights system have been published by the JPO.

The report’s six themes are as follows:
・Research on the licensing of trademarks expressing organizations related to public welfare, etc.
・Research on new IP issues facing enterprises etc. arising from changes in industry structure and trends amongst Non- Practicing Entities (NPEs)
・Research into current state of protection and issues etc. regarding patents for goods related to regenerative medicine etc. and medical products for external diagnosis etc. as stipulated in Article 2(2) of the Patent Law Enforcement Act
・Research into the state of handling of research results related to national R&D projects
・Research into the state of protection under the Industrial Property Rights Law for creations made using AI and data for 3D printing, etc.
・Research into representatives’ fees etc. for legal proceedings in patent infringement damages lawsuits

Each report is available on the JPO website:

https://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken.htm



Notice of Change to Fees for International Applications

On March 1, 2017, the JPO published a notice of changes to fees related to international applications. From April 1, 2017, in cases where the European Patent Office carries out international searches, the search fee will be altered from 213,600 yen to 229,600 yen.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tesuukaitei.htm



First Registration of Color Only Trademarks

On February 28, 2017, the first two trademarks consisting only of colors were registered.
One registration is the trademark color used by Tombow erasers, and the other registration is the trademark orange, green and red used by Seven Eleven Japan.

Color only trademarks are one of the ‘new type’ trademarks that were introduced from April 2015.

Source: METI website
http://www.meti.go.jp/press/2016/03/20170301003/20170301003.html



Points to Note when Filing Applications for Industrial Property Rights

On February 28, 2017, the Japan Patent Office published a list of points to note regarding various collected procedures.
The points to note regarding application procedures for industrial property rights bring together important matters related to procedures in which mistakes are commonly mde, including name changes, agents, and invitations to amend, etc., as well as special types of procedures such as divisional applications and conversions.

The list also includes important matters on registration procedures for industrial property and PCT international applications/national phase entries, as well as points to note on international trademark registration applications.

Source: JPO website
https://www.jpo.go.jp/seido/tetsuzuki_ryuiten/ryuiten_01.htm



Status of Patent Oppositions

Between the system for patent oppositions coming into use in April 2015 and the end of December 2016, the total number of opposition cases was 1,578, of which 731 have been concluded.

A decision was made either to partially or entirely cancel the opposed claims of a patent in around 10% of cases, while a decision was made to uphold the opposed patent in around 50% of cases.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_ryuuiten.htm



Revision to Handbook on Writing Design Registration Application Documents and Figures, etc.

On February 22, 2017, Section 3 Subsection 13 of the handbook on writing design registration application documents and figures, etc. (“Designs Including Images”) was updated. This is due to a partial revision of the examination standards. The revision adds examples and aims to make the content of the section more substantial.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/h23_zumen_guideline.htm



Appeal Workers’ Study Meeting Report 2016

On February 22, 2017, the Japan Patent Office published the Appeal Workers’ Study Meeting Report for 2016. The report comprises a main section and a summary. The 20 examples listed below were considered.

It should be noted that the opinions stated in the report are not the official views of the Japan Patent Office.

● Patents
(Common)
1. Light source module and display device
2. Energy-saving action sheet
(Machinery)
3. Substrate inspection device
4. Pack filter for vacuum cleaner
5. Vibration damping frame
(Chemistry)
6. Polyimide film and copper-clad laminate based thereon
7. Tire
8. Stabilized alkane bromide solvent
(Pharmaceuticals/Foodstuffs)
9. Use of zoledronate in production of drug for management of metabolic bone disease
10. Use of carbazole compound for treatment of congestive heart failure
11. Method of masking astringency
(Electrical)
12. Temperature fuse with resistance
13. Organic electroluminescent display device
14. Production method for crystal unit
● Designs
15. Office clip storage case
16. Motorcycle wheel
● Trademarks
17. “Network Omakase Support”
18. “B MING/LIFE STORE”
19. “Raffine Style”
20. “Kyoto Akabo”

Source: JPO Website
https://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai2016.htm



Outline of Accelerated Examinations/Accelerated Appeal Examinations for Trademarks

On February 6, 2017, the Japan Patent Office republished an outline of accelerated examinations and accelerated appeal examinations for trademarks. The guidelines regarding accelerated examinations/accelerated appeal examinations have been amended due to expansion of the system to include trademark applications whose basic applications are international registrations under the Madrid Protocol, or applications that specify only goods and services written in the examination guidelines for similar goods and services etc.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/souki/shkouhou.htm



Key Points on Examination Guidelines

Materials highlighting key points on patent examination guidelines have been published on the JPO website. There are an extensive number of patent examination guidelines, and much time is needed to check all of them. Consultation of these materials, therefore, is useful in order to grasp key points.

The materials comprise information on the following:
(1) Novelty and inventive step
(2) Prior art effect and first-to-file rule
(3) Written requirements
(4) Amendments
(5) Divisionals

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/tokkyo_shinsakijyun_point.htm



‘Tokkyo Walker’ Bulletin Vol. 6

Vol.6 of the ‘Tokkyo Walker’ bulletin has been published by the Japan Patent Office.

This volume’s “Studying IP from Hit Products” column looks at MTG Co., Ltd.’s FACIAL FITNESS PAO, 500,000 of which were sold in 2014.

Also, as an IP-led innovation, the topic of effective rules for entering different sectors of business is raised.

The bulletin is available on the JPO website:
http://www.jpo.go.jp/oshirase/kouhou/tokkyo_walker.htm



Revision of Fees for International Applications

The fees associated with international applications will be revised from March 1, 2017.
For example, for international applications filed up to February 28, 2017, the application fee is 138,800 yen. From March 1, 2017 the application fee will be 151,800 yen.

There will also be slight increases in handling fees and in search fees (for cases where international searches are carried out by authorities other than the Japan Patent Office).

Please see the JPO website for more information:
http://www.jpo.go.jp/tetuzuki/ryoukin/kokuryo.htm



PCT International Search/Preliminary Examination Guidelines and Handbook

The Japan Patent Office (JPO) has published a tentative Japanese translation of the guidelines on PCT International Searches and Preliminary Examinations that were brought into effect on December 15, 2016. In addition, the JPO has also published the revised version of the related handbook. Both the guidelines and the handbook are available on the JPO website.

Guidelines: http://www.jpo.go.jp/shiryou/kijun/kijun2/guideline_pct.htm
Handbook: http://www.jpo.go.jp/shiryou/kijun/kijun2/pct_handbook.htm



Comparison of Prior Use Systems of Japan, China and Korea

A table comparing the prior use systems in Japan, China and Korea (in English, with a tentative Japanese translation) has been published by the JPO.
The table compares the three based on the different systems, application requirements and effects.
The table is available on the JPO website:
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



Comparative Research into Appeals Practices at Japanese, Chinese and Korean Patent Offices

Comparative research has been carried out into the appeals systems and procedures at the JPO, SIPO and KIPO, and in 2014, a report on comparative research into appeals against decisions of refusal was published. Recently, on December 12, 2016, a report on comparative research into patent invalidation trials was published. Further, a tentative Japanese translation is currently being prepared.

The report is available on the JPO website:
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



Examination Guidelines for Similar Goods/Services (Corresponding to International Classification 11 – 2017 Edition)

With the revision of the Nice International Classifications (International Classification 11 – 2017 Edition), the relevant parts of the trademark enforcement regulations have been revised in order to reflect changes to classes of goods and services and similar groupings, etc. The revised parts took effect from January 1, 2017. On the same day, examination guidelines for similar goods/services corresponding to International Classification 11 – 2017 Edition began to be applied.

Source: JPO website
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



Q&A on Guidelines for Relief Measure Stipulations in Cases of Due Date Expiry

The JPO has published a Q&A regarding relief measure stipulations in cases where due dates expire. As whether or not a case is deemed eligible for relief measures depends on the individual concrete details of said case, the Q&A contains a large number of questions and answers. This information is useful as a supplement to the guidelines themselves.

The Q&A is available on the JPO website:
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



IP5 Statistics Report for 2015

On December 5, 2016, the IP5 Statistics Report for 2015 was published. The 2015 edition of the report was compiled by the JPO, and was published in English.

The second chapter of the report includes an overview of the recent state of the five patent offices (IP5), such as policies and basic statistics. The third chapter includes information on the state of patents worldwide, such as information on global patent applications. The fourth chapter describes the patent activities of the IP5 regarding patent application and registration statistics. The fifth chapter features statistics related to PCT applications.

The report is available on the JPO website:
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



Changes to fees related to international applications

From January 1, 2017, fees related to international applications will be amended.
For example, the cost of filing an application with up to 30 pages will be reduced to 138,800 yen (a reduction of 4,900 yen). When filing online, the cost will be reduced by 31,300 yen.

The standard for determining whether or not new fees apply is based on the date the application was received.

For more details, see the JPO website:
https://www.jpo.go.jp/cgi/link.cgi?url=/rireki/what.htm



‘Tokkyo’ Bulletin: December 2016/January 2017 Edition

The JPO has published the December 2016/January 2017 edition of its ‘Tokkyo’ bulletin.
The special features in this edition are on efforts towards supporting regions and small and medium-sized enterprises and on dispatch interview examinations held in various locations. The former feature looks at the use of IP to improve business strength as well as various systems of support. The latter feature looks at the role of interview examinations and their merit, and introduces some examples.

Source: JPO website
http://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Interview Guidelines (Patent examination edition) FAQ

The JPO has compiled a list of frequently asked questions and answers regarding the interview guidelines (patent examination edition) that came into effect from October 2014.

The FAQ is separated into six categories: subjects of interview guidelines; requests for interviews; recipients; preparatory documents; interview records; and contact by telephone and fax. For example, the FAQ covers the cases in which a power of attorney is required, and whether or not interviews can be requested by email, etc.

The FAQ is available on the JPO website:
http://www.jpo.go.jp/toiawase/faq/mensetu_guide_qa.htm



Cross-sectional classification for IoT-related technologies established

On November 14, 2016, the JPO established a new broad-facet patent classification number for IoT (Internet of Things)-related technologies.

According to the JPO, this broad-fact classification number will be gradually applied to patent documentation, and from 2017 it will be possible to gather and analyze patent information for IoT-related technologies via the J-Platpat portal.

Source: JPO website
http://www.jpo.go.jp/shiryou/s_sonota/iot_sinsetu.htm



Examination Guidelines for Technologies Related to Internet of Things (IoT)

The JPO has published an explanation of the main examination guidelines for IoT-related technologies, as well as examination precedents.
Currently, research and development of IoT-related technologies and businesses utilizing IoT-related technologies are progressing extremely quickly, and the number of enterprises filing applications for patents for such technologies is on the rise. The materials published by the JPO explain applicability, novelty and inventive step in inventions for IoT-related technologies, and include relevant precedents.

Source: JPO website
http://www.jpo.go.jp/shiryou/kijun/kijun2/iot_shinsa_161101.htm



General Meeting of WIPO Member Nations

At the General Meeting of WIPO member nations held in late October 2016, the JPO held discussions and exchanged opinions on arrangements etc. with several countries, advancing international cooperation in intellectual property fields.

In concrete terms, an agreement was made to commence with a PPH with Argentina; the exchange of patent data with Germany will be expanded; patent applications in Laos may be registered without substantive examination if a corresponding application has previously been granted in Japan; and relations with Chile and Turkey were strengthened.

Source: METI website
http://www.meti.go.jp/press/2016/10/20161007003/20161007003.html



Patent/Utility Model Examination Handbook Revised

The Patent/Utility Model Examination Handbook published by the JPO has undergone a partial revision. The main parts that have been revised are as follows.

1. 12 precedents concerning technologies related to IoT have been added to appendices A and B.
2. Concrete examples of impossible or impractical circumstances have been added regarding product-by-process claims, and an appeal decision has been added to appendix D for reference.
3. Precedent has been added to appendix A to help clarify decisions on novelty in cases where a product is specified in the claims by the manufacturing process.
4. Information has been added to indicate that prior to carrying out ex officio corrections of specifications, claims or drawings before the issuance of a decision to grant a patent, the examiner will contact the applicant and produce a record of correspondence.

The Patent/Utility Model Examination Handbook is available on the JPO website:
https://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa.htm



Receipt of English-language International Applications via Internet Application Software Begins and International Application Fees Revised

The JPO, as a receiving office for PCT international applications, began accepting English-language PCT applications filed using internet application software on October 2, 2016. Because of this change, receipt of applications via PCT-SAFE will cease at the end of December 2016. To accompany the start of acceptance of English-language PCT applications via internet application software, the relevant parts of the Q&A have been updated.

Also, due to movements in exchange rates, the fees associated with filing international applications have been revised as of October 1, 2016. The details of the new fees can be viewed on the JPO website.

Source: JPO Website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/pctapplicationsoft.htm
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tesuukaitei.htm



Over 1000 Patent Oppositions Filed

Between the introduction of the patent oppositions system in April 2015 and August 2016, a total of over 1000 patent oppositions have been filed. The percentage of petitioners using the system is high due to the benefits it provides, such as only requiring a small burden of responsibility on the part of the petitioner.

Source: JPO website
https://www.jpo.go.jp/seido/shinpan/igi_moushitate_1000ken.htm



Easing of Application Requirements for Japan-US Collaborative Searches

On August 1, 2016, one year since the commencement of trial Japan-US collaborative searches, the JPO announced that the application requirements for said searches would be eased. In concrete terms, it will no longer be necessary for an application to have been published. As a result, it is now possible to apply for Japan-US collaborative searches for both published and unpublished applications. The eased requirements will apply to searches applied for on or after August 1, 2016.

Source: Ministry of Economy, Trade and Industry website
http://www.meti.go.jp/press/2016/07/20160728001/20160728001.html



Documents Explaining Evidence

In order for trials to be realized smoothly, the JPO’s appeals section has requested that explanatory documents be filed alongside submissions of evidence.

Information on how to produce an appropriate explanatory document along with examples thereof is available on the JPO website.

Source: JPO website
https://www.jpo.go.jp/seido/shinpan/syoko_setsumeisyo.htm



One-stop Examination Information Service Launched

The JPO has announced the launch of a service providing dossier information sharing. On July 25, 2016, through the JPO’S Patent Information Platform, a service providing dossier information was made available. Through this service, it is possible to refer in bulk to dossier information from any of the patent offices taking part in the dossier information sharing system. For example, it is possible to grasp at once the status of procedures or examinations in multiple countries. As a result, this system is expected to prove very useful for users.

Source: JPO website:
https://www.jpo.go.jp/torikumi/kokusai/kokusai2/godai_patent_user.htm



“Tokkyo Walker” Magazine Vol.5

On July 25, 2016 the JPO published Vol.5 of is magazine “Tokkyo Walker.”
To coincide with the Olympic Games being held in Brazil, the magazine contains an article on inventions that support the advancement of the sporting world.
This issue also contains a look at “kikiyu” bath salts, and explains how the right to it is being protected.

“Tokkyo Walker” can be read on the JPO website
https://www.jpo.go.jp/oshirase/kouhou/tokkyo_walker.htm



Guidelines on PCT International Searches and Preliminary Examinations

On July 1, 2016, an addendum was published to the Guidelines on PCT International Searches and Preliminary Examinations, which were updated on October 1, 2015. To accompany this, the JPO has issued a tentative Japanese translation. As the translation is tentative, in any case where it differs from the original document, the original document takes precedence.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/guideline_pct.htm



Partial Refunding of Search Fees for PCT International Applications

The JPO has updated its information on the system for the partial refunding of search fees for PCT international applications. If the details of a prior domestic application are written in the PCT application document and the corresponding parts of the examination results for the domestic application can be used, then upon the filing of a request by the applicant, a partial refund of the search fees for the international application may be approved.

In addition, if a new PCT application claims a prior PCT application as its basic priority, the corresponding parts of the international search report of the prior application may be used, and in this case a partial refund of fees may be approved.

For an outline of the system, please see the JPO website.

Source: JPO Website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/researching_fee_return.htm



2016 Annual Patent Administration Report

The JPO has published the 2016 Annual Patent Administration Report, which contains information on developments in patent administration and various statistics, including on the situation regarding applications.

The number of PCT applications filed in fiscal 2015 with the JPO as the receiving office was 43,097, the highest number on record. It seems that the number of enterprises planning global IP strategies is increasing. Following the introduction of “new type” trademarks, there was also an increase in trademark applications of 18.4%, with a total of 147,283 applications filed.

The average length of time to the first action in patent, design and trademark cases in fiscal 2015 was maintained at the level set in fiscal 2014, showing that high-speed examinations have become a reality.

The report is available on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2016_index.htm



FAQ: Hague System

The JPO has published a translation of the information on the Hague System that appears on the WIPO website for users’ reference. The information includes 17 general questions and 12 questions regarding designation of the U.S.

Source: JPO website
https://www.jpo.go.jp/seido/s_ishou/wipo_faq_hague.htm



Tokkyo Bulletin: June/July edition

The JPO has published the June/July edition of its Tokkyo bulletin.
The special features in this edition are on the 10th anniversary of the patent prosecution highway and knowhow for companies to carry out advance patent searches.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Report on Role of IP System in Japan’s Economy

The JPO is carrying out investigations and analysis from multiple angles for the purpose of constructing an IP system that promotes technological innovation and the industrialization thereof. A report collects the following six investigations that were carried out in fiscal 2015.

(1) Investigation into contribution of IP rights to enterprise performance
This investigation analyzes the effect that acquiring patent rights has on an enterprise’s performance. According to the analysis, acquisition of patents and the rapidness thereof, etc. can result in added value and increased sales, etc. thus the patent system can be recognized as contribution to the promotion of innovation.
(2) Investigation into relationship between licensing and enterprise performance
This investigation establishes an understanding of Japan’s licensing situation and its effect on enterprise performance (benefits and increased sales, etc.)
(3) Investigation into effect of changes to IP policy on enterprises in field of life sciences
This investigation looks at how pharmaceutical patents entering the Japanese market are protected internationally, and analyzes how this has changed due to the strengthening of patent protections in various countries.
(4) Investigation into concordance of IPC and industrial classification
This investigation examines what sorts of tables have been produced by various countries and territories that show the corresponding relationship between industrial classification and international patent classification (IPC), and considers the Japanese table.
(5) Investigation into trends in investigations into effect of the IP system on economy
This investigation consolidates studies reported at the 2015 IP Statistics Meeting, and analyzes what sort of demonstrative research is being carried out into the effects of the IP system on the economy.
(6) Investigation using IP activities investigation data
This investigation establishes an understanding of the inclination of Japanese enterprises towards the application for and retention of patents and the formation of industrial secrets, and analyzes what effects these have on enterprise performance.

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/chousa/keizai_yakuwari.htm



Procedures for Appeals for Correction/Requests for Correction

As information on procedures for appeals for correction/requests for correction is made available on the JPO website, a new set of examples of written requests for appeals for correction and requests for correction (dated May 2016) has been published. Six examples are introduced as useful reference information when carrying out procedures.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/kaisei2711_teisei.htm



Examination Guidelines etc. in the field of Life Sciences

The JPO has published materials related to patents in the field of life sciences, aimed at university researchers, patent administrators and so on. As well as giving an outline of various systems such as patent requirements, procedures and examination guidelines, the materials collect information regarding examination guidelines from the point of view of medical inventions, genetic engineering inventions and others in the field of life sciences.

Source: JPO website
https://www.jpo.go.jp/shiryou/s_sonota/lifescience_kijun.htm



Prior Usage Rights System

A second edition of collected precedents under the title ‘Smooth and Effective Use of the Prior Usage Rights System – for Managing Strategic Knowhow’ has been published. The collection has been revised from the first edition (published in 2006) based on improvements in IP strategy and accumulated court precedents of recent years.
Also, a list has been published of court judgements made regarding prior usage rights since the Supreme Court decision of 1969. The list includes facts, application particulars and the gist of judgements.

https://www.jpo.go.jp/seido/tokkyo/seido/senshiyou/index.html



Small and Medium-sized Enterprise Support Measures Guidebook

The JPO has published a guidebook collecting measures it has enacted in order to support small and medium-sized enterprises.
The guidebook includes the outlines of three types of support measures, aimed at (i) enterprises that wish to expand overseas, (ii) enterprises that want to get out of subcontracts, and (iii) companies etc. that have small and medium-sized enterprises as their customers.

Source: JPO website
https://www.jpo.go.jp/sesaku/chusho/index.html



Application Procedures (2016 edition)

The JPO has published the 2016 edition of its Application Procedures. The latest version contains very important information, including revised elements and changes to operations.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/syutugan_tetuzuki/00_00all.pdf



Report on IP Support Personnel for Regions and Small/Medium-sized Enterprises

A report has been produced with the aim of helping to create the high-quality IP support personnel required for the strengthening of IP use by regions and small and medium-sized enterprises. The report includes topics on grasping the realities of a situation and nurturing personnel, as well as effective IP use.

Source: JPO website
https://www.jpo.go.jp/torikumi/chushou/pdf/report_sien_jinzai/01.pdf



Patent Law Guidelines for Article 35(6)

Following legal revisions introduced on April 1, 2016 regarding employee inventions as part of the changes to the Patent Law, etc., guidelines regarding methods of determining “appropriate compensation” for employee inventions were published on April 22, 2016.
According to the JPO, in cases where the employer, etc. receives the right to obtain a patent from the outset, or in cases where the right reverts from the employee, etc. to the employer, appropriate compensation must be awarded. When doing so, the awarding of appropriate compensation cannot be unreasonable. The guidelines have been set up based on the stipulations of the Patent Law, and stipulate procedures etc. taking into account the fundamentals of determining whether or not compensation is unreasonable, outline and standards for judgement of correct procedures, examples of appropriate compensation, and typical situations for universities, small and medium-sized enterprises and new employees, etc.

Source: JPO website
https://www.jpo.go.jp/seido/shokumu/shokumu_guideline.htm



2015 Japan-China Joint Research Report on Intellectual Property

The JPO has published the 2015 Japan-China Joint Research Report on Intellectual Property.
Together with its rapid development in recent years, China has also been rapidly putting in place legislature. Joint research towards collecting China’s advancements in handling IP and IP strategy and reviewing Japan’s “IP Policy Vision” has been carried out, with the aim of identifying a more advanced intellectual property system.

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/chousa/pdf/nicchu_houkoku/h27_houkoku.pdf



Counterfeiting Countermeasures in Taiwan, Infringement Precedents and Reports

The JPO’s web page on counterfeiting countermeasures etc. in various Asian countries has been updated, with revisions to information on decisions on inventive step in Taiwan and IP usage situations, the China/Taiwan Cooperative Study report (which aims to enable Japanese enterprises working in cooperation with Taiwanese enterprises to determine the chances of expansion into China and whether or no they can be sure of IP protection), and the counterfeiting countermeasures manual. A new version of each document has been published on the JPO website as of April 2016.

Source: JPO website
https://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/manual.htm#taiwan



Information on France and French Overseas Territories

The JPO reports that the French Industrial Property Office (INPI) has provided WIPO with information on the scope of effect when France and the EU are designated based on the Madrid Protocol.

For example, if France is designated, the effect is expanded to include the following territories:

French Guiana
French Polynesia
French Southern and Antarctic Lands
Guadeloupe
Martinique
Mayotte
New Caledonia
Réunion
Saint Barthélemy
Saint Martin (French part)
Saint Pierre and Miquelon)
Wallis and Futuna

Source: JPO website:
https://www.jpo.go.jp/tetuzuki/t_shouhyou/kokusai/20160428_france.htm



PCT International Search and Preliminary Examination Handbook

The PCT International Search and Preliminary Examination Handbook published around six months ago underwent formal revision April 1, 2016 to take into account changes to the international application law.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/pct_handbook.htm



Schedule of Fees Regarding Industrial Property Rights

An updated schedule of fees regarding industrial property rights was published on April 1, 2016. Patent application fees, annuity fees, trademark renewal fees, fees related to international applications, etc. have been changed. Also, fees related to the new systems established by the legal revisions have been added to the schedule of fees.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/ryoukin/hyou.htm



Q&A on Appeals System

The JPO has updated its list of common questions regarding appeals procedures and the answers thereto. New additions include questions and answers regarding request for extension of period following appeals against decisions of refusal.

Source: JPO website
https://www.jpo.go.jp/toiawase/faq/sinpan_q.htm



Guidelines Regarding Relief Stipulations for Elapsed Deadlines

Guidelines regarding relief stipulations for elapsed deadlines (revised April 1, 2016) have been published.

Relief measures introduced by 2015 revisions have been added. These are relief measures in cases where deadlines have elapsed for the election of overseas patent administrators or, under the trademark law, the payment of latter divisional registration fees or additional registration fees.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/kyusai_method.htm



2016 Collection of Examples of Enterprises Utilizing Intellectual Property

The JPO has published its 2016 Collection of Examples of Enterprises Utilizing Intellectual Property.

The collection contains 78 examples of small and medium-sized Japanese enterprises making use of intellectual resources and intellectual property, such as a maker of health and beauty appliances using the acquisition of a related design to create value in salons and clinics, and a long-established sake brewery carrying out a multi-brand strategy, aimed at overseas expansion, making use of easily-understood and impactful naming, etc.

Source: METI website
https://www.jpo.go.jp/torikumi/chushou/kigyou_jireii2016.htm



2016 JPO Status Report

The 2016 JPO Status Report has been published.

In a trend of reduced application filing, the number of Japanese patent applications filed in 2015 was 318,721. On the other hand, the proportion of patents registered is increasing, with the analysis that the careful selection of applications is progressing.

The number of PCT applications filed with the JPO as the receiving office was 43,097.

In addition to these statistics, the results of policies in 2015 are also included in the report.

The report can be read on the JPO website:
http://www.meti.go.jp/press/2015/03/20160329007/20160329007.html



Scope of Online Procedures Expanded

From April 1, 2016, the scope of procedures that can be carried out online has been newly expanded.

For example, it is now possible to file Notifications of Name Change and Requests for Preliminary Examination, etc. online. However, it is necessary to file the documents in Japanese, and so English-language documents will not be accepted when filing online.

Source: JPO website
https://www.jpo.go.jp/seido/s_tokkyo/160401_online_kakudai.htm



Collections of precedents for designs related to partial designs and for image designs

On March 23, 2016, the following useful information for handling partial designs was updated: (1) collection of precedents regarding designs registrations related to partial designs; and (2) collection of precedents regarding image designs.
(1) contains reference information regarding judgement of similarity in cases of partial designs being registered as principal or related designs, dating from April 1, 2007 to March 31, 2014.
(2) contains precedents that aid in understanding the examination guidelines that have been applied to applications from August 1, 2011.

Source: JPO website
(1) Collection of precedents regarding designs registrations:
https://www.jpo.go.jp/shiryou/kijun/kijun2/bubun_isyou.htm

(2) Collection of precedents regarding image designs
https://www.jpo.go.jp/shiryou/kijun/kijun2/gazoutouroku_jirei.htm



Tokkyo Walker Bulletin

The JPO has published vol. 4 of its Tokkyo Walker bulletin
The special feature in this volume is on ‘Innovations in Industry-academic Cooperation: from Local to Global.’ The feature looks at arrangements aimed at local production.
Aside from the special feature, other interesting articles in the field of IP include an article on Japan’s lead in patents in the field of robotics, and one on the high proportion of Japanese enterprises on the Thomson-Reuters list of 100 innovative companies.

Source: JPO website
https://www.jpo.go.jp/oshirase/kouhou/tokkyo_walker.htm



Guidelines on Relief Stipulations for Elapsed Deadlines

Following collection of public comments, the guidelines on relief stipulations have been revised to coincide with the addition of new relief stipulations as part of the 2015 legal revisions. The new guidelines started to be used from April 1, 2016.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/kyusai_guideline.htm



Formality Examination Handbook Revised

The Formality Examination Handbook has been revised to coincide with the legal revisions of 2015 coming into effect on April 1, 2016. In order to handle the preparations made for entry into the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks, a wide range of sections have been added or revised, including sections on relief stipulations, designated time periods, certification of application date, and referenced prior applications.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tokkyo_houbin.htm



Precedent of Correction Trial Regarding Product-by-Process Claims

The JPO has announced that its Trial Department has issued a decision in a correction trial (correction no. 2016-390005) approving a correction that includes a change from product-by-process claims claiming a “product” to claiming a “process for producing a product.”

The contents of the decision can be viewed on the JPO website:
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/pbp_teisei_sinpan.htm



April/May 2016 Issue of ‘Tokkyo’ Bulletin

On March 25, 2016, the April/May issue of the JPO’s ‘Tokkyo’ bulletin was published.
This issue contains special features on patent information use based on usage examples, and the first anniversary of the business secret hotline. The business secret hotline is a service providing consultations regarding the acquisition of rights based on new technology or knowhow, or the making of such technology or knowhow a business secret.

‘Tokkyo’ is available on the JPO website:
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Report on IP Activities in Different Regions

The JPO has published a report on the current status and usage examples of IP in Fukushima, Gunma, Fukui, Gifu, Okayama, Hiroshima, Aichi and Fukuoka Prefectures. The JPO’s stated goal is to encourage greater active use of IP aimed at regional vitalization.
The vitalization of small and medium-sized enterprises is essential for regional vitalization, and the engagement of regional public bodies is extremely important. Accordingly, the above eight regions were selected from the point of view of regions that are actively engaging with IP, regions in which a greater spread of IP policy enforcement is expected, and regions in which provision of information is required regarding handling of IP.

The report is published on the JPO website:
https://www.jpo.go.jp/sesaku/chiiki/chiiki_report_h27.html



Revisions to Patent and Utility Model Examination Guidelines and Examination Handbook

The JPO has announced revised examination guidelines and a revised examination handbook.

Revisions have been made to examination guidelines regarding inventions of use for foodstuffs (the operation of which had been suspended) and examination guidelines regarding the duration of patent rights. These will apply to examinations carried out from April 1, 2016. Also, revisions have been made to examination guidelines regarding matters prepared for Japan’s entry into the Patent Law Treaty. These revisions will apply to applications made from April 1, 2016.

Together with the revisions to the examination guidelines, the patent examination handbook has also been revised. The handbook will apply from the same times as the revised guidelines.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/h2803_kaitei.htm
https://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa_h2803.htm



JPO: Major Revision to Trademark Examination Guidelines (12th Revised Edition)

The JPO has made a further major revision to the Trademark Examination Guidelines. 45 years have passed since the first edition of the guidelines was issued in 1971. This latest overall revision has been made with the intent of greater clarifying the examination guidelines and in the context of changes in the business environment, etc.
The 12th Revised Edition of the guidelines will apply to examinations carried out from April 1, 2016.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/12th_kaitei_h28.htm



Procedures for Correction Trials/Correction Requests

Materials explaining the ordinance that came into effect on November 1, 2015 and examples of correction trial requests and correction requests made based on said ordinance have been published.

The materials raise several points of change including the simplified description of stipulations regarding groups of claims, changes to the way of writing requests for ease of understanding, and the fact that it is not necessary to attach a corrected specification when no corrections are made to the specification.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/kaisei2711_teisei.htm



Changes to Fees for Filing International Applications

The JPO has published its schedule of fees regarding the filing of international applications for April 1, 2016 onwards. Fees have been partially revised, including additional fees for international searches and preliminary examinations.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/ryoukin/kokuryo.htm



Japan Joins Patent Law Treaty and Singapore Treaty on the Law of Trademarks

On March 11, 2016, Japan submitted documentation for its membership of the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks to the Director General of WIPO. The treaties will come into force in Japan on June 11, 2016.

Source: METI website
http://www.meti.go.jp/press/2015/03/20160314004/20160314004.html



Explanatory Meeting text on Revisions to Design Examination Guidelines for Designs that contain Images and Revisions to the Design System

A new edition of the Design Examination Guidelines has been produced, with section 7.4 (Designs Containing Images) revised in order broaden the eligibility for registration of designs containing images, and to clarify the guidelines for judging creative difficulty of designs containing images.

Regarding the former, previously for goods such as digital cameras, only images that were already recorded could be subject to design registration, and any images recorded later, or images displayed due to installing software, were not subject to design registration. However, with the quick spread of smartphones and other devices, the need to protect such matters has increased, and registration eligibility has been expanded partly in order to meet this need.

Regarding the latter, the revision specifies the logical framework used when judging creative ease, clarifies the scope of understanding of a person skilled in the art, and specifies matters than can be taken into account for the purpose of evaluating a design’s originality.

Also, an explanatory meeting text has been published regarding the above changes to the examination guidelines as well as the international registration system based on the Hague Agreement. It contains a variety of topics including a broad outline of the course of international registration procedures and information the merits of using the system.


Source: JPO website
Revisions to the Design Examination Guidelines
https://www.jpo.go.jp/shiryou/kijun/kijun2/gazou_ishou_kaitei.htm
Explanatory Meeting Text on Revisions to the Design System https://www.jpo.go.jp/seido/s_ishou/isho_text_h27.htm



Outline of Patent Law Treaty (PLT) and of Procedures for its Introduction in Japan

As legislation partially revising the patent law, etc. – which includes changes to and introduction of systems necessary for Japan’s participation in the Patent Law Treaty (PLT) – comes into effect, an outline of the PLT has been published.

In concrete terms, the outline contains an overview of various stipulations including requirements for acknowledgment of application date, simplification of application procedures, relief procedures, and correction to and restoration of priority date.

In Japan, various stipulations will be introduced including requirements for acknowledgement of application date, supplementation procedures, applications referring to prior applications, partial supplementation of missing specifications/drawings, relief measures for cases in which due dates have expired, and notifications of expiry of due dates for filing translations of foreign-language applications or certified priority documents.

Source: JPO website
https://www.jpo.go.jp/torikumi/kokusai/kokusai2/plt_20160210.htm
https://www.jpo.go.jp/torikumi/kokusai/kokusai2/plt_tetsuzuki_20160210.htm



Q&A on Patent Oppositions Updated

The Q&A on patent oppositions published by the JPO has been updated.
Information has been added on methods of writing statements for cases in which novelty or inventive step are given as reasons for opposition, and points to note, etc. for cases in which information accessed via the internet is used as evidence.

Source: JPO website
https://www.jpo.go.jp/toiawase/faq/pdf/sinpan_q/tokkyo_igi_moushitate.pdf



2015 Intellectual Property System Explanatory Meeting Text (for Practitioners)

On February 4, 2016, the 2015 Intellectual Property System Explanatory Meeting Text (for practitioners) was published. The text contains detailed and practically useful information on examination guidelines and examination operations.

The practitioners’ text is available on the JPO website:
https://www.jpo.go.jp/torikumi/ibento/text/h27_jitsumusya_txt.htm



2015 Trial Practitioners Study Group Report Published

The JPO has published the 2015 Trial Practitioners Study Group Report.
The report collects the findings of experts regarding 20 example trial decisions (14 patents, 2 designs and 4 trademarks) that are considered important in trial practice.

In addition to this volume of the report, there is also a summarized edition that contains the general outline of the cases and the points of consideration, from which it is possible to grasp the outline of the full report.

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai2015.htm



Guide to 2015 Revisions to Law Published

The JPO has published a guide to the 2015 revisions to the law, which includes the purpose of the legislation and the content of the changes, etc.

The revised matters are a reworking of the employee inventions system, changes to fees and the preparation of stipulations for the enactment of the Singapore Treaty on the Law of Trademarks.

The guide also contains a proposed approach regarding matters for discussion when establishing the financial return on employee inventions.

Source: JPO website
https://www.jpo.go.jp/shiryou/hourei/kakokai/tokkyo_kaisei27_55.htm



State of Patent Oppositions and Points to Note When Carrying out Procedures

The Japan Patent Office has announced that as of January 12, 2016, over 400 patent oppositions have been filed. As patent opposition documents containing errors continue to be filed, the JPO is calling attention to the points to note when carrying out procedures by providing concrete examples.
Also, as there are cases where patent right holders make requests for corrections, the JPO has put together a set of points to note regarding errors in corrections requests.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_ryuuiten.htm



Current Handling of Product-by-Process Claims during Appeals and Addition of Examples of Non-applicability

On January 27, 2016, a report regarding the current handling of product-by-process claims during appeals was published.
According to the JPO, in appeals against decisions of refusal, if claims for inventions that are goods include the production method for said goods, then a reason for refusal will be issued, even without contacting the applicant (except in cases where the JPO judges that there are impossible or impractical circumstances). However, when reasons for a decision of refusal or reasons for refusal issued after a request for appeal can be upheld, a trial decision may be made without issuing a further notification of reasons for refusal.

In addition, the JPO has added a concrete example of claims that do not qualify as product-by-process claims. Claims where the construction or special features of goods are specified simply by stating the condition of those goods do not count as including the production methods for said goods in the claim.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/product_process_C150706.htm
https://www.jpo.go.jp/torikumi/t_torikumi/pdf/product_process_C160127/pbpc_higaitou.pdf



February/March 2016 Issue of ‘Tokkyo’ Bulletin

On January 25, 2016, the February/March issue of the JPO’s bulletin ‘Tokkyo’ was published.
This issue contains special features on a campaign to stamp out counterfeit goods and piracy, and the image-based design publication search support tool.

‘Tokkyo’ is available on the JPO website:
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Enactment Date Set for 2015 Legislation Revising Patent Law

The legislation partially revising the patent law, etc. established in July 2015 is to be enacted on April 1, 2016. Together with the enactment of the legislation, revisions will also be made to government ordinances regarding relief measures and fees, etc. for procedures by non-Japan residents.

Source: JPO website
https://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyo_kaisei_280122.htm



Handling of Examinations Regarding Inventions for Foodstuffs Usage

The examination guideline for “cases where there are expressions aiming to specify goods in terms of their use (limited use)” is due to be revised around April 2016. For example, if claims for inventions related to foodstuff such as “yoghurt used for X with ingredient A as its active ingredient” have a limit to their use, the meaning of said limit will be acknowledged as defining the invention claimed.
The issuing of decisions of refusal regarding certain cases of inventions for foodstuff with limited use will be halted until the application of the revised examination guidelines.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/syokuhin_201601.htm



Patent fees, etc. at the JPO will change from April 1, 2016.

The cost of filing a patent application (including divisional or converted applications) or a PCT national phase entry will be reduced from 15,000 yen to 14,000 yen. Foreign-language applications will be reduced from 24,000 yen to 22,000 yen.
Changes will also be made to other fees including patent registration fees and annuities, trademark registration and renewal fees, and fees for PCT international applications.

The JPO website has an illustration showing the times at which the new fees will come into effect.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/ryoukin/fy27_ryoukinkaitei.htm



Draft Guidelines Regarding Employee Inventions

As the enactment date for legislation revising the patent law, etc. draws near, a set of draft guidelines regarding employee inventions has been published. Said draft guidelines relate to procedures to determine financial benefit such as compensation through discussions between employers and employees, and should be a valuable tool for enterprises, universities and so on.

Source: JPO website
https://www.jpo.go.jp/seido/shokumu/shokumu_guideline.htm



Provision of English Translations of Trial Decisions, etc.

The JPO has announced that from January 12, 2016, it will provide English translations by human translators of trial decisions, opposition decisions and interpretations. Each year, the JPO expects to issue around 100 trial decisions, etc. in Japanese together with English translations, aiding in the understanding of the interpretation and application of the law.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/hanketsu_eiyaku_teikyou.htm



Registration Handling Q&A

A set of frequently asked questions and corresponding answers regarding the handling of registrations has been published. Topics including payment of registration fees and requests for transfer of rights, etc. are covered in a question-and-answer format.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/touroku/jitumu_qa.htm#anchor2q22



PCT International Search and Preliminary Examination Handbook

A new version of the PCT International Search and Preliminary Examination Handbook with some formal revisions was published by the JPO on January 4, 2016.

The revisions reflect changes to the format of international search reports, etc. and changes to reference points in the PCT international search and preliminary examination guidelines.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/pct_handbook.htm



Changes to the Handling of Extensions to the Response Period for Office Actions in Patent and Trademark Applications

As Japan joins the Singapore Treaty and adjusts the conventions of the patent law and the trademark law accordingly, it is expected that changes will be made to the handling of extensions of the period for response in the case of Office Actions. A brief outline follows.

1. Patents
 Residents and non-residents of Japan alike will not be able to state reasons for extension.
 Residents and non-residents of Japan alike will be able to extend the due date by two months with a single request.
 Non-residents will be able to further extend the due date by an additional one month.
 Even after the due date for responding to an Office Action has elapsed, it will be possible to request an extension of period within two months. However, (1) the cost will be higher than for a standard extension of period, (2) it will not be possible to request a time extension after the due date has elapsed in the case of an Office Action issued after filing an Appeal against a Decision of Refusal, and (3) it will not be possible to file a request for extension of period after the due date has elapsed if a request for extension of period was already filed prior to the due date elapsing.

2. Trademarks
 Residents and non-residents of Japan alike will not be able to state reasons for extension.
 Residents and non-residents of Japan alike will be able to request a one-month extension to the period for responding to an Office Action with a single request.
 Residents and non-residents of Japan alike will be able to file a request for extension of period within two months after the due date for responding to an Office Action has elapsed. However, (1) the cost will be higher than for a standard extension of period, (2) it will not be possible to request a time extension after the due date has elapsed in the case of an Office Action issued after filing an Appeal against a Decision of Refusal, and (3) unlike patents, it will still be possible to file a request for extension of period even if a request for extension of period was also made prior to the due date elapsing.
 International trademark registrations will also be subject to the above.

Source: JPO website
http://www.jpo.go.jp/torikumi/t_torikumi/kyozetu_entyou_160401.htm



Recent trends in Business-related Inventions

On December 22, 2015, an update was made to information on recent trends in business-related inventions.

After a low point in 2011, patent applications regarding business-related inventions have been increasing, and a as a provisional figure, 7,376 applications were made in 2014.

Since around 2012, the number of decisions to grant patents issued has been higher than the number of decisions of refusal issued. Compared to 2012, these latest figures show a further slight decrease in the number of decision of refusal.

Detailed information can be found on the JPO website:
http://www.jpo.go.jp/seido/bijinesu/biz_pat.htm#anchor1-1



Guide to Practical Use of Patent Oppositions System (Revised Edition)

A revised edition of a guide to procedures requesting corrections was published on November 1, 2015. The revisions reflect changes made to the patent enforcement regulations.

Source: JPO Website
http://www.jpo.go.jp/shiryou/kijun/kijun2/igi-tebiki.htm



Management of Cases in which Information has been Provided

Regarding the information provision system, an update has been made to how cases in which information has been provided are managed.
Cases in which information has been provided can be checked via the JPO’s J-PlatPat service, and as before the applicant/right holder will be notified.

Source: JPO website
http://www.jpo.go.jp/seido/s_tokkyo/jyouhou_03.htm



‘Tokkyo Walker’ Bulletin Volume 3

Volume 3 of the JPO’s bulletin ‘Tokkyo Walker’ has been published. This bulletin aims to familiarize readers with the role intellectual property plays in their everyday lives.

Volume 3’s special features include new technologies from small and medium-sized enterprises, with articles introducing products from three companies, explaining the impetus for producing these products and featuring comments on the importance of acquiring rights, etc.

The bulletin can be viewed on the JPO website:
http://www.jpo.go.jp/oshirase/kouhou/tokkyo_walker.htm



Status of Patent Oppositions and Points to Note Regarding Procedures

On November 25, 2015, the JPO announced that over 230 patent oppositions have been filed since the patent opposition system was introduced in April 2015.

Due to the large number of oppositions filed, there have been many occurrences of deficiencies or errors in the filings. The JPO has therefore published a guide of points to note in order to rectify these deficiencies.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_ryuuiten.htm



Revised Costs for PCT-related Procedures

From January 1, 2016, the costs of procedures for international applications will be revised as follows:

1. International filing fees
 Up to the first 30 pages: 164,200 yen (reduced from 178,100 yen )
 Above 30 pages: 1,900 yen/page (reduced from 2,000 yen/page)
 Fee reduction in the case of online filing: 37,000 yen (reduced from 40,200 yen)
(Fees calculated based on the date of receipt of the international application)

2. International preliminary examinations: 24,700 yen/case (reduced from 26,800 yen)
(Fees calculated based on the date of payment)


3. Fees in the case of international searches conducted by the EPO: 251,600 yen/case (reduced from 252,600 yen)
(Fees calculated based on the date of receipt of the international application)


Source: JPO website
https://www.jpo.go.jp/tetuzuki/ryoukin/kokuryo.htm
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tesuukaitei.htm



Handling of Examinations Regarding Product-by-process Claims

The JPO has published reference examples of approved assertions and attestations of “impossible or impractical circumstances,” under which the makeup or characteristics of certain goods were impossible or impractical to specify directly.

The examples are not an inclusive list of types of assertions and attestations, and it is necessary to be aware of the differences between each case, but they form a source of information that can be used as a reference.

The reference examples can be viewed on the JPO website:
https://www.jpo.go.jp/torikumi/t_torikumi/product_process_C151125.htm



Handling of Examinations and Examination Guidelines Regarding Terms of Patent Rights and Applications to Register Extensions of Term

On November 17, 2015, a Supreme Court decision was issued regarding terms of patent rights and applications to register extensions of term. The JPO will carry out a revision of the examination guidelines by spring 2016. Until the publication of the revised guidelines, the JPO will temporarily cease carrying out commencement of examinations of applications to register extensions of term in cases involving the disposition of prior pharmaceuticals and agricultural chemicals.

The IP High Court rejected the current examination guidelines, under which if directions for use/dosages of a pharmaceutical related to a prior approval differ from those related to a later approval, the registration of extension of term should be permitted based on the pharmaceutical related to the later approval. The Supreme Court then upheld the IP High Court’s decision.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/sonzoku_encho_201511.htm



Tokkyo Magazine – December 2015/January 2016 Edition

The JPO has updated its website with the December 2015/January 2016 edition of its regularly published magazine ‘Tokkyo.’
The current edition contains features on IP support for small and medium-sized enterprises and registration data regarding new-type trademarks. The latter article is of particular interest, as it contains the first examples of registered new-type trademarks since the system was introduced.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Judicial Precedents and Examples of Intellectual Property Infringement

Information on counterfeit goods countermeasures collected as part of the JPO’s commissioned activities has been published on the JPO website. The following collected examples and manuals have been published together. Previous information is also available as a reference on countermeasures against counterfeiting and infringement.

- Judicial Precedents and Examples of Intellectual Property Infringement (Korea)
- Manual on Prevention of Leakage of Industrial Secrets (Korea)
- Judicial Precedents and Examples of Intellectual Property Infringement (China)

Source: JPO website
https://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/manual.htm



First Examination Results for ‘New Type’ Trademarks

The first ‘new type’ trademarks have been registered since their introduction in April 2015.
On this occasion, 43 cases have received decisions to grant trademark registrations, with the majority consisting of sound and movement trademarks. Conversely, only 5 positional trademarks, 1 hologram trademark and no color trademarks have received decisions to grant registrations.

Source: JPO Website
https://www.jpo.go.jp/seido/s_shouhyou/new_shouhyou_jyoukyou.htm



Guide to Carrying out Oral Proceedings

The JPO has published a guide to carrying out oral proceedings.
The guide contains explanations of how to prepare and carry out oral proceedings. The guide also contains a collection of prior examples, making the process of the proceedings easy to understand. Also, as oral proceedings are as a rule carried out in invalidation trials and cancellation trials, the guide also aids as a supplement in understanding points of contention and items that cannot be fully conveyed via written documents.

Source: JPO Website
https://www.jpo.go.jp/shiryou/kijun/kijun2/koutou_shinri.htm



JPO Adjudication System

Information on the JPO’s adjudication system was updated on October 23, 2015.

The information incudes an outline of the adjudication system, as well as the format of adjudication request documents and examples thereof.

Source: JPO Website:
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/hantei2.htm



Revisions to the Appeals Process

Together with the enforcement regulations of the patent law coming into effect on November 1, 2015, the appeals handbook has been partially revised.
The major revisions are as follows:
- Clarifying the written content in the case of correction requests or corrections trials on a per-claim basis, and indicating the number of claims and the cost based on said number of claims.
- Rescinding exceptions to the ability to omit notices of conclusion of trial examinations (all notices).
- Adjustment to the time when a notice of names of examiners in an appeal is issued. This is to ensure a period for an applicant to submit a written statement or carry out an interview in the case of an appeal against a decision of refusal or a corrections trial. Also, a duplicate will be sent when issuing notifications of invalidation trials or patent oppositions, etc.

Source: JPO Website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/shinpan_minaoshi.htm



Appeals Manual (16th ed.) Published

The JPO published the 16th edition of its Appeals Manual on October 23, 2015.

The 16th edition is amended from the 15th edition following public comments on the draft ministerial ordinance to partially revise the enforcement regulations of the patent law.
The Appeals Manual was officially brought into use on November 1, 2015.

The Appeals Manual can be viewed on the JPO website:
https://www.jpo.go.jp/shiryou/kijun/kijun2/sinpan-binran_16.htm



PCT International Search and Preliminary Examination Handbook

On October 1, 2015, the JPO published the PCT International Search and Preliminary Examination Handbook.

As applications based on the PCT are increasing, the handbook has been published with the aim of clarifying the operating procedures and judgement guidelines etc. of the JPO as an international searching authority and preliminary examination authority, and promoting smooth and effective use of the system.

Use of the handbook in examinations began on October 1, 2015.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/pct_handbook.htm



Trademark Reference Service Provided via Foreign Patent Information Service ‘FOPISER’

The foreign patent information service provided by the JPO, ‘FOPISER,’ has begun offering a new trademark reference service. Through the service it is possible to refer to trademark information from Russia, Taiwan and EUIPO, and easily search based on classifications or names of trademarks, etc. The service became available on September 30, 2015.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/fopiser_shouhyou_kaishi.htm



Notice Regarding Submission of Priority Documents in Paris Convention Cases Claiming Priority with EUIPO as Office of First Filing

The JPO has issued a notice calling attention to an important point regarding the submission of priority documents in design and trademark application cases in Japan that claim priority under the Paris Convention with the Office for Harmonization in the Internal Market (EUIPO) as the office of first filing.

Namely, among the documents certified and issued by EUIPO, database extracts (extracts from the database containing Community Trade Mark Applications and extracts from the database containing Community Design Applications) will not be accepted as certified priority documents.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_shouhyou/shutsugan/daiichi_ohim.htm



‘Graphic Image Park’ Image-based Design Publication Search Support Tool Now Available

An image-based design publication search support tool utilizing image matching technology has been made available for use from October 1, 2015.

The tool enables users to compare designs even if they do not have specialist knowledge of design classifications, etc. Users can simply upload the image they wish to compare and run a search for designs based on said image. The tool has other features such as ordering results by shape or color, thus making it useful in conducting efficient searches of registered designs in Japan.

Source: METI website
http://www.meti.go.jp/press/2015/09/20150928002/20150928002.html



Collection of Image-based Design Registration Precedents

New precedents have been published with the aim of assisting with the users’ understanding of the current examination guidelines that have applied to design registration applications since August 2011.

Changing modes regarded as a single design: 2 precedents
Images displaying a view necessary for the product to carry out its function: 1 precedent

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/gazoutouroku_jirei.htm



2015 Intellectual Property System Explanatory Meeting Text (for beginners)

The JPO has published the text that was used at its 2015 Intellectual Property System Explanatory Meeting.
Aimed at beginners, the text focuses on providing an outline of the intellectual property system, and explains various support schemes and regional services, etc. The text also touches on the areas of the system that have been revised, and includes sections on the Patent Opposition System that was enacted this year.

The text can be viewed on the JPO website:
https://www.jpo.go.jp/torikumi/ibento/text/h27_syosinsya.htm



Examination Guidelines for Patents and Utility Models Revised

The examination guidelines for patents and utility models published by the JPO have been revised. The revised guidelines came into effect on October 1, 2015.

The fundamental aims of the revision are to improve the clarity and conciseness of the guidelines, to enrich the precedents and court examples contained therein, and to give the way of thinking expressed in the guidelines international currency.
Major revisions in this edition include the following: guidelines related to the clarity requirements for Product-by-Process claims have been revised; new guidelines have been established regarding exceptions to loss of novelty and grounds for unpatentability (contravention of public order and morality, etc.); the way of thinking regarding clarity requirements and novelty for subcombination inventions has been clarified; and comprehensive evaluation carried out when judging inventive step has been clarified.

Source: JPO Website
https://www.jpo.go.jp/shiryou/kijun/kijun2/h27_kaitei.htm



Patent and Utility Model Examination Handbook Revised

The Patent and Utility Model Examination Handbook published by the JPO has been revised, with the revisions coming into effect on October 1, 2015.

Inventions related to computer software, biology and medicine that were previously raised in the examination guidelines have been transferred to the Patent and Utility Model Examination Handbook. Also, by enriching the precedents and court examples included in the Handbook, it is intended that a deeper understanding of the way of thinking used in the examination guidelines will be possible, which in turn will help the method of judgment used by examiners to become more transparent.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa_1001.htm



Procedures for Stipulation of Exception to Loss of Novelty to be Applied to Inventions

The JPO webpage on procedures for exception to loss of novelty to be applied to inventions was partially updated on September 16, 2015.

With this update, the revision history of the handbook in accordance with the multiple revisions that have been made, as well as the list of important points to note, etc. have been streamlined.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/hatumei_reigai.htm



Revisions to the Patent Law, etc. in 2015

The JPO has published a video regarding the revision bill promulgated on July 10, 2015. Slides giving an outline of the revisions have also been published on the JPO website.
Details of the revisions can also be found in our Newsletter for August 2015.

JPO website:
https://www.jpo.go.jp/torikumi/ibento/ibento2/h27_tokkyo_video.htm

HARAKENZO WORLD PATENT & TRADEMARK August 2015 Newsletter
http://www.harakenzo.com/newsletter/201508.pdf


PCT-Related Fees Revised

From September 1, 2015, revised fees for international applications will come into effect.

The fee for filing an international application will increase from 164,300 yen to 178,100 yen for the first 30 pages, with a further charge of 2,000 yen per page from the 31st page onwards. Fees for online filing will also increase, from 37,100 yen to 40,200 yen.

Further, the fee for an international preliminary examination will increase from 24,700 yen to 27,800 yen per case.

Source: JPO website:
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tesuukaitei.htm



FOPISER Service Begins Providing Information on Foreign Patents

The Ministry of Economy, Trade and Industry (METI) announced on August 7, 2015 that it has begun a new service, ‘FOPISER,’ providing information on patents from countries that it has not been possible to provide through the J-PlatPat service. The name FOPISER stands for Foreign Patent Information Service.

Through the service, it is possible to display the text of available documents in Japanese. It should therefore be a convenient tool for applicants and others involved in patents.

Source: METI website:
http://www.meti.go.jp/press/2015/08/20150806001/20150806001.html



Q&A on ‘Product By Process’ Claims

A set of questions and answers on ‘Product by Process’ claims in invalidation and correction trials, regarding which a supreme court decision was recently issued, has been published. Another Q&A on Patent Oppositions has also been published.

The Q&As were published separately, but as the general gist of the questions contained within is the same, the answers also have the same general gist.

The Q&As are available on the JPO website:
Trials: https://www.jpo.go.jp/toiawase/faq/sinpan_q.htm
Patent Oppositions: https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_faq.htm



August/September 2015 edition of ‘Tokkyo’ Newsletter

On July 29, 2015, the August/September 2015 edition of the ‘Tokkyo’ newsletter published by the JPO was announced.

This edition contains special features on the 2015 Annual Report on Patent Administration, which was announced in June 2015, and on support measures aimed at resolving doubts and concerns regarding IP. The latter feature includes interviews with representatives of companies expanding overseas and with overseas IP producers, as well as providing information on IP Activity Support Centers.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Law Partially Revising the Patent Law, etc.

The Law Partially Revising the Patent Law, etc. was approved by the National Diet on July 3, 2015.
The revisions introduced by the law are related to (1) changes to the employee inventions system, (2) revision of patent fees, etc., (3) adjusting stipulations for the purpose of enacting a treaty, and (4) fees related to the filing of international applications based on the PCT.

(1) The major change to the employee inventions system is that the right to obtain a patent will from the outset principally revert to employers, including legal entities.
(2) Patent fees will be reduced by around 10%. Trademark registration fees will be reduced by around 25% and trademark renewal fees by around 20%.
(3) Several stipulations will be adjusted in order to enable to enactment of a patent treaty. For example, if a foreign-language application is made in Japan, even if the due date for submitting the Japanese translation is exceeded, a translation will be accepted if it is submitted within a fixed period. Meanwhile the trademark law will adjust stipulations for the enactment of the Singapore treaty.
(4) The additional cost in cases where international applications subject to international searches and preliminary examinations do not meet the requirements for unity of invention and the upper limit for service fees for international searches and preliminary examinations will depend on whether an application’s specification and claims are written in Japanese or English.

Source: JPO website
https://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyohoutou_kaiei_270710.htm



6th Small and Medium-sized Enterprise Regional IP Support Study Meeting

Materials distributed at the 6th Small and Medium-sized Enterprise Regional IP Support Study Meeting held on July 8, 2015 have been published.

The materials contain interesting data, including the fact that despite a slight reduction in the total number of domestic applications, the trend for small and medium-sized enterprises is for an increase in the number of patent applications filed.

In addition, materials containing information on the current state of support measures for small and medium-sized enterprises and courses of action, as well as information on consultations regarding IP provided to the National Center for Industrial Property Information and Training (INPIT).

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/kenkyukai/chusho_chizai_shien.htm



Japan-China Joint Research Report on Intellectual Property

A report based on joint research carried our between Japan and China in 2014 has been published.

The report contains research separated into three main topics:
1. Comparative research into patent strategies as part of the national strategies of Japan and China.
2. Research into fundamental theories related to the state of IP (patent systems, IP systems etc.).
3. Comparative research into issues related to the development of human resources in IP.

The report is available to read on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/nicchu_houkoku.htm



Present Handling of Examinations and Trials at the JPO regarding ‘Product By Process’ Claims

The JPO has announced its view that examinations and trials based on the Supreme Court decision of June 5, 2015 will also be carried out regarding cases that already have examinations and trials pending.

According to the JPO, if an invention is a product and the production process for said product is included in the claims, the invention will be judged unclear and a notification of reasons for refusal will be issued, except in cases where the examiner judges at the time of filing that it is either not possible or impractical to specify the invention via its composition or special features.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/product_process_C150706.htm



Trial Collaborative Search Program between Japan and US

Concrete procedures and requirements, etc. have been published for the collaborative searches between Japan and the United States that were announced on May 21, 2015. The trial period of two years will commence on August 1 of this year.

Both patent offices will receive requests for inclusion in the program, up to a total of 200 cases with the USPTO designated as the primary receiving office and the JPO as the secondary office, and 200 cases with the JPO designated as the primary receiving office and the USPTO as the secondary office. No more than 200 cases of each type will be accepted.

Japanese patent applications eligible for collaborative searches must at least have corresponding US patent application, and must also fulfil other designated requirements regarding numbers of claims etc. Meanwhile, the corresponding US patent application must fulfil the requirements set in the US.

More information is available on the JPO website:
https://www.jpo.go.jp/seido/tokkyo/tetuzuki/shinsa/zenpan/nichibei.htm



Report on Bad Faith Trademark Applications

The JPO has published a report on the systems and procedures of various countries to counteract so-called “bad faith trademark applications” – trademark applications for famous place names or brands made abroad by unrelated third parties without permission.

The report consists of three chapters, and contains outlines of the systems and procedures in Japan, the US, Europe, China and Korea, together with comparative tables, etc.

Source: JPO website
https://www.jpo.go.jp/torikumi/kokusai/kokusai2/bad_faith_report.htm



Ministerial Ordinance Partially Revising Patent Law Enforcement Regulations, etc.

In accordance with revisions to PCT rules, the JPO has announced that necessary revisions to Patent Law enforcement regulations, etc. will be brought into effect on July 1, 2015.

1.Restoration of priority by designated office
Under the revisions to the PCT rules, if an applicant has made a clear request (for examination), during the period for submitting a document stating that the criteria for restoration are met, then it also will be necessary to submit said document to the relevant receiving office within one month of the date of said request. The Patent/Utility Model Law enforcement regulations, etc. have been adjusted to bring them in line with the above PCT revision.

2.Cessation of EASY mode applications
Under the revisions to the PCT rules, EASY mode applications have been discontinued. Adjustments have been made to comply with this revision.

Source: JPO website
https://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyohou_270622.htm



Handling of Examinations, Trials and Examination Standards regarding ‘Product by Process’ Claims

On June 5, 2015, the Supreme Court issued a decision regarding ‘Product by Process’ claims. The JPO has subsequently begun considering revisions to the examination standards and the handling of examinations and trials. The JPO aims to publish its findings around the beginning of July.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/product_process_S.htm



Patent Administration Annual Report: 2015 Edition

On June 12, 2015, the JPO published the 2015 edition of the Patent Administration Annual Report. The report contains information on trends in patent administration and various statistics, including information on the state of patent applications.

A total of 325,989 patent applications were filed in 2014, around the same number as filed the previous year.

While the average length of time taken until the first action on a case has not changed considerably for designs or trademarks, the length of time shortened for patents in 2014, dropping to 9.6 months, compared to 14.1 months in 2013.

The report is available on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2015_index.htm



Comparative Study of Appeal Practices at Chinese, Japanese and Korean Patent Offices

On June 9, 2015, the JPO published a comparative study of appeal practices at the Chinese State Intellectual Property Office, Japan Patent Office and Korea Intellectual Property Office. The study was carried out regarding appeals against decisions of refusal. It compares organizational structures and appeals processes and provides analysis of the results.
The results of the comparative study are available on the JPO website:

https://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_shinpan_hikakuken.htm



Support Scheme for Utilizing Analyses of Patent Information

On June 8, 2015, the JPO began inviting applications by enterprises that wish to receive support for utilizing analyses of patent information.

Small and medium-sized enterprises may receive support for each stage of the process, including carrying out analysis of technically highly specialized and expensive patent information, making judgments regarding the emphasis on investment in research and development and the acquisition of rights, and so on.

When a certain number of cases have been adopted for this scheme, the JPO will stop receiving applications.

Source: JPO website
https://www.jpo.go.jp/sesaku/chusho/bunseki.htm



Model Appeal Requests etc. and Writing Guide

On June 3, 2015, the JPO updated the section of its website entitled ‘Model Appeal Requests etc. and Writing Guide.’

The section includes various model appeal and opposition requests, etc. regarding patents, utility models, designs and trademarks, as well as collected examples of written sections.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/sample_bill_sinpan.htm



Q&A on Guidelines to Relief Provisions for Expired Deadlines

The section of the JPO website entitled ‘Q&A on Guidelines to Relief Provisions for Expired Deadlines’ has been updated.

Questions and answers have been added regarding revisions to relief measures for priority rights, etc., which were enacted in April 2014.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/kikan_gide_faq.htm



PPH with Egypt Commences

A trial Patent Prosecution Highway (PPH) between the JPO and the Egyptian Patent Office came into effect from June 1, 2015. The trial is set to run for two years, finishing on May 31, 2017.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/japan_egypt_highway.htm



2014 Report on User Ratings of Patent Examination Quality

The JPO has published a report on the quality of patent examinations in fiscal 2014.

For domestic applications, 91.1% of respondents rated the quality “normal,” “quite satisfactory” or “very satisfactory.” For international searches regarding PCT applications, 96.6% of respondents rated the quality “normal” or higher. The level of satisfaction is therefore high for examinations in both domestic and international applications.
On the other hand, while some problems have been overcome, previously-raised issues still remain, such as insufficient written explanation in office actions, etc. of the process of examining novelty and inventive step, discrepancies in examination decisions, and the need for more substantial searches of foreign patent literature and non-patent literature, etc.

The report is available on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/h26_shinsa_user.htm



Outline of Appeals Department and Fields Handled by each Section

In conjunction with changes made in April 2015 to the sections of the Appeals Department handling certain technical fields, the handling classifications have been updated.

A table showing the various technical fields and classifications handled by different sections of the Appeals Department is available on the JPO website:


https://www.jpo.go.jp/torikumi/t_torikumi/sinpanga1.htm



June/July 2015 Edition of ‘Tokkyo’ Magazine

On May 25, 2015, the JPO published the June/July 2015 edition of its magazine ‘Tokkyo.’

Special features in the magazine look at the recently-enacted ‘new type’ trademarks and the One Portal Dossier system for sharing patent information between the five largest patent offices. Regarding the latter, according to Japanese examiners the system is easy to use and makes it possible to grasp how patent examinations are proceeding in other countries. It is therefore a useful reference when conducting patent examinations, and seems likely to contribute to an increase in efficiency.

Source: JPO website
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



FAQ on Publications

The JPO has published a set of questions and answers on patent, utility model, design, trademark and PCT publications on its website.

The topics covered include the time of publication, issuing of publications, viewing and purchasing, and the contents of publications.

Source: JPO website
https://www.jpo.go.jp/torikumi/kouhou/kouhou2/koho_faq.htm



Use of Accelerated Examinations in International Design Registrations

Information has been published on using accelerated examinations in International Design Registration Applications, which became available on May 13, 2015. According to the JPO, eligibility for accelerated examination is based on the same conditions as for domestic applications, but the period for requesting accelerated examination and the necessary procedures are slightly different. Also, the reporting of the results of preliminary examinations will take longer than for domestic applications, as the results are communicated to the applicant, etc. via the World Intellectual Property Organization (WIPO).

Source: JPO website
http://www.jpo.go.jp/torikumi/t_torikumi/souki/kokusaiisyou_soukisinri.htm



Appeals System Q&A

A list of common questions and answers regarding the following topics (including the appeals system) has been published on the JPO website. Included are questions and answers on the subjects of appeal request trials and related procedures.

Requests for appeal against decisions of refusal
Invalidation trials
Correction trials
Patent oppositions
Registered trademark cancellation trials
Registered trademark oppositions
Adjudications
Provision of information after rights are granted
Q&A regarding appeal procedures

Source: JPO website
http://www.jpo.go.jp/toiawase/faq/sinpan_q.htm



Japan-US Patent Examination Joint Research Begins

On May 21, 2015, the JPO announced that an agreement has been reached carry out joint research between JPO and the USPTO, commencing on August 1, 2015.

This joint research will take inventions for which patents have been applied in both Japan and the United States, and after examiners in both countries have carried out separate searches, the results of those searches and the examiners’ opinions will be shared between the patent offices. Both examiners will then issue their primary examination results quickly and concurrently.

This process will shorten the time period between application and right acquisition, and as examinations will be based on the combined search results from both Japan and the US, it will be possible to obtain more stable rights.
Source: METI website
http://www.meti.go.jp/press/2015/05/20150521001/20150521001.html



Research Report on Trends in Design and Trademark Applications

On May 19, 2015, the Japan Patent Office published an additional outline of 2014 research into trends in design and trademark applications.

1. Trademarks
Research was carried out into trends in trademark applications and registrations with the JPO by regional public entities and the practical use of registered trademarks by such entities. On the macro research level, the report contains information on trends in trademark applications and registrations as well as the length of time required for registration, etc. for the major countries and institutions with respect to trademark applications.

2. Designs
Research and analysis was carried out regarding design applications and registrations in Japan by both residents and non-residents. On the macro research level, the report contains analysis of trends in design registrations for the major countries and regions with respect to design applications, as well as of trends in design registrations at WIPO.

The report is available on the JPO website at the address below:
https://www.jpo.go.jp/shiryou/isyou_syouhyou-houkoku.htm



Report on Research into Trends in Patent Application Technologies, etc.

The themes and a partial overview of research conducted by the JPO in 2014 into trends in patent application technologies have been published.

14 themes were selected from technical fields currently receiving strong attention from the public, and six were put forward in technical fields experiencing a large amount of patent application activity in China. The latter of these is intended to help support Japanese enterprises that are expanding into the Chinese market.

Sections of the report on the topics of endoscopy, training machines, harvesting and exuviation machines, farming related technologies and firefighting/disaster prevention related technologies are available on the JPO website:
https://www.jpo.go.jp/shiryou/gidou-houkoku.htm



List of Various Pamphlets Available from JPO

A list of the various pamphlets available from the JPO is published on the JPO website.

On May 12, 2015, the following pamphlets were updated or added:

(1) IP support guide for small and medium-sized enterprises/venture businesses
(2) Foreign IP subsidy pamphlet

Regarding (1) above, the pamphlet contains information on the free consultation desk and foreign support measures, etc., whereas (2) describes who is eligible to receive a subsidy.

Further, pamphlet (1) above can be viewed on the JPO website.

List of pamphlets: https://www.jpo.go.jp/shiryou/s_sonota/panhu.htm
IP support guide for small and medium-sized enterprises/venture businesses:
https://www.jpo.go.jp/torikumi/chushou/chusyo_venture_guide.htm



Research Report on Machine Translations

As the number of patent applications made in countries outside the United States and Europe increases, the need for high-quality machine translations of foreign patent literature is rising. The JPO is therefore carrying out research in this area, and has published the following reports:

- Maintaining dictionaries for the translation of Chinese patent literature and survey of quality evaluations of machine translations
- Research into services by foreign patent offices, etc. providing industrial property information

The report is available on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/kikai_honyaku.htm



First Publications of Audio Trademarks

On April 28, 2015, the JPO announced that the first audio trademark publications had been made. So-called ‘new type’ trademarks, including audio trademarks, only became subject to protection from April 1, 2015, but already many applications for these ‘new type’ trademarks have been made.

A total of 21 audio trademark applications have been published, including applications by Taiko Pharmaceutical Co., Ltd., Ajinomoto Co., Inc. and S.T. Corporation.



2015 Research Reports Comparing Industrial Property Systems of Various Nations

The JPO has published its 2015 Research Reports Comparing Industrial Property Systems of Various Nations. The reports cover the following six topics:

1. Research report on U.S. court examples regarding application of concealed privilege between foreign attorneys and clients.
2. Research report on the effective use of overseas patent examinations that support rapid acquisition of rights.
3. Research report on intellectual property systems, etc. for appropriate protection of products for children and child-rearing in Asia.
4. Research report on examination standards and manuals for patents and trademarks in the major ASEAN nations and Taiwan.
5. Research report on the industrial property systems of Brazil, Mexico, Colombia, India and Russia and practical application thereof.
6. Research report on protection of intellectual property and international private law, etc.

Each research report can be viewed on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken_kouhyou.htm



Report on Services Providing Industrial Property Information

The JPO has published its 2015 Report on Services Providing Industrial Property Information.

The subjects of this year’s report are the industrial property information services, etc. of overseas patent offices, etc.

Firstly, the report grasps the content of the industrial property information services provided online by foreign patent offices, etc., and the actual use thereof by users as a fundamental resource for the JPO when considering services providing industrial property information.

Secondly, the report has the aim of improving the quality of machine translations of patent literature between Japanese and the languages of ASEAN nations (especially Thailand, Vietnam and Indonesia).

The report is available on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/sangyou_zaisan_service_houkoku.htm



Government Support Measure: 50% Support for Costs of Filing Abroad

As the economy continues to globalize, small and medium-sized enterprises are finding it increasingly vital to obtain intellectual property rights overseas, and are facing increased costs as a result.

The Japanese government is therefore providing a support measure to promote filing of applications abroad by small and medium-sized enterprises. Provided certain conditions are met, those eligible will be able to receive support for half of the fee for filing an application overseas.

Details of the measure are available on the JPO website:
https://www.jpo.go.jp/sesaku/shien_gaikokusyutugan.htm



Support Measures against Infringement for Small and Medium-Sized Enterprises

As part of its support for small and medium-sized enterprises, the JPO, via the Japan External Trade Organization (JETRO) is providing measures to counteract counterfeit goods abroad. A fixed amount of aid is available regarding the costs of carrying out a local infringement search or pursuing litigation, etc.

Source: JPO website:
https://www.jpo.go.jp/sesaku/shien_kaigaishingai.htm



Comparative Research on Examination Practices at Japanese, Chinese and Korean Patent Offices

Research has been carried out by the Japanese, Chinese and Korean patent offices, comparing the laws and examination standards of the three countries as well as investigating prior examples of inventive step, etc. A report has been published containing research comparing amendment requirements and showing prior examples of written requirements. The report is available in English with a tentative Japanese translation.

The report can be viewed on the JPO website:
https://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm



Comprehensive Provision of Patent Application/Examination Data from the Five Largest Patent Offices

Work is progressing towards the sharing of patent application and examination data between the five largest patent offices. From April 15, 2015, comprehensive provision of patent application and examination data from the JPO, EPO, SIPO and KIPO began, and from June 2015 data from the USPTO will be added.

Information on methods of using Espacenet and the European Patent register (provided by the EPO) and the One Portal Dossier (provided by the KIPO) has also been published.

More information is available on the JPO website:
http://www.meti.go.jp/press/2015/04/20150414003/20150414003.html
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/godai_patent_user.htm



Report on Bad Faith Trademark Applications

A report has been compiled into various countries’ systems and management regarding so-called “bad faith trademark applications” – i.e. trademark applications for famous place names or brands, etc. that are made overseas by unrelated third parties without permission.
The report is made up of three sections :
Section 1: Overview of systems and management
of bad faith trademark applications by various patent offices Section 2: Summary and comparison of the systems a
nd management of various patent offices Section 3: Table comparing data from Section 2
A tentative Japanese translation of the report will be made available at a later date. Source: JPO website: https://www.jpo.go.jp/torikumi/kokusai/kokusai2/bad_faith_report.htm



Hague Agreement Concerning the International Deposit of Industrial Designs

On February 13, 2015, Japan submitted to WIPO its documentation for entry into the Geneva Act of the Hague Agreement Concerning the International Deposit of Industrial Designs. There are now 64 countries participating in total.

The Act came into effect in Japan on May 13, 2015.

Source: JPO website: https://www.jpo.go.jp/seido/s_ishou/wipo_Japan1999.htm



Protection for Trademarks Preemptively Registered by Third Parties in Taiwan

The JPO is providing support measures in cases where problems arise due to the filing of trademarks for Japanese place names or regional brands, etc. by third parties in China and Taiwan. As a part of these support measures, the JPO has published the document “Protection for Trademarks Preemptively Registered by Third Parties in Taiwan.”

The document brings together information on measures that can be carried out in Taiwan to counteract problems arising from the preemptive registration of trademarks by third parties.

The document is available on the JPO website:
https://www.jpo.go.jp/torikumi/kokusai/kokusai2/shohyo_syutugantaisaku.htm



Q&A on PCT International Patent Application Procedures

Q&A on PCT International Patent Application Procedures

The JPO has updated its Q&A on international patent application procedures under the PCT. The updated document contains items related to changes that have been made, such as in procedures to be carried out with the JPO as the designated office when the receiving office has restored a priority right.

Details can be found on the JPO website:
https://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tetuduki_qa.htm



Table of fees related to industrial property rights

The JPO has published a table of the fees related to industrial property rights that came into effect on April 1, 2015. The table includes new items such as fees for patent opposition filing procedures.

The table is available on the JPO website:
https://www.jpo.go.jp/tetuzuki/ryoukin/hyou.htm



Examination and patent registration cost reduction measures for independent administrative agencies

Based on regulations regarding methods of strengthening industrial technology capabilities, etc., independent administrative agencies carrying out work related to testing and research will, in some cases, be subject to 50% reductions in the cost of filing requests for examination and the 1st to 10th years of patent registration fees/annuities. The JPO has announced the eligibility requirements and necessary documents.

Details can be found on the JPO website:
https://www.jpo.go.jp/tetuzuki/ryoukin/dokuritu24_4.htm



Cost reduction measures for Technology Licensing Organizations (certified TLOs)

A notice regarding methods of reducing the cost of examination and patent registration for Technology Licensing Organizations (certified TLOs) that has been displayed on the JPO website since January 2014 was updated on April 1, 2015.

Detailed information on eligibility, procedures, conditions and so on is available on the JPO website at the following address:
https://www.jpo.go.jp/tetuzuki/ryoukin/nintei_tlo_24_4.htm



Application Procedures

The document “Application Procedures,” which contains forms and points to note regarding application and other procedures for patents, utility models, designs and trademarks, has been updated.

Updated sections include those on procedures for claiming domestic priority or priority under the Paris Convention, relief procedures for cases in which the deadline for examination request expires and points related to ‘new type’ trademarks.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/syutugan_tetuzuki.htm



Examples of Forms for Patent Oppositions

On March 30, 2015, as the system for patent oppositions came into effect, the JPO published examples of forms related to the patent opposition filing procedure.

Examples of the opposition, argument and request for correction documents and essential points for producing said documents are included.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_youshiki.htm



JPO Status Report 2015

The JPO published its Status Report for 2015 on March 30, 2015.
The report has been published with the aim of making information on the results of policies enacted in 2014 and statistics on patents, utility models, designs, trademarks and appeals, etc. available in Japan and worldwide as early as possible. The report is written in both Japanese and English.

Source: JPO website
https://www.jpo.go.jp/shiryou/toukei/status2015.htm



As the 2014 revisions to the Patent Law, etc. come into effect, the JPO has published its Patent/Utility Model Examination Guidelines (in Japanese and English).

The new edition of the guidelines includes changes to the sections on Patent Law Art. 39, new matters, Paris Convention priorities, domestic priorities, divisional applications and converted applications, patent applications based on utility models, extension of the duration of patent rights, foreign-language filings and so on.

Source: JPO website

English: http://www.jpo.go.jp/shiryou/kijun/kijun2/tukujitu_kijun.htm

Japanese: http://www.jpo.go.jp/shiryou/kijun/kijun2/tukujitu_kijun.htm

Japanese (HTML): http://www.jpo.go.jp/shiryou/kijun/kijun2/tukujitu_kijun/hypertext.html



Revisions to Patent/Utility Model Examination Handbook

As the 2014 revisions to the Patent Law, etc. come into effect, the JPO has made corresponding revisions to its Patent/Utility Model Examination Handbook.

In addition to style amendments, the handbook also contains amendments in accordance with changes to the formality examination manual and the October 2014 changes to interview guidelines.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/koushin_handbook_shinsa.htm



Formality Examination Manual Revised

As the 2014 revisions to the Patent Law, etc. come into effect, a revised edition of the Formality Examination Manual was published on April 1, 2015. Revisions have been made to sections on claiming priority as well as relief measures in cases of deadline expiry, etc.

Source: JPO website
http://www.jpo.go.jp/shiryou/kijun/kijun2/binran_mokuji.htm



Relief Measures for Expired Deadlines in Cases with ‘Appropriate Reasons’

In the past, relief measures have been approved in some cases where deadlines have expired. However, with the 2014 revisions to the Patent Law, etc., relief measures may also be approved under systems in which they were not previously available, such as for examination request deadlines. Accordingly, a revised version of the relevant guidelines has been published.

Further, it is important to note that even if the deadline expired due to no fault of the applicant, etc., if there are no ‘appropriate reasons’ for the deadline expiring, then the guidelines for relief measures will not apply.

Source: JPO website
http://www.jpo.go.jp/shiryou/kijun/kijun2/kyusai_method.htm



Trademark Examination Manual and Trademark Examination Guidelines (11th edition)

As the 2014 revisions to the Patent Law, etc. come into effect, the JPO has published a revised version of its Trademark Examination Manual and the 11th edition of its Trademark Examination Guidelines, which have been revised in relation to the ‘new type’ of trademarks introduced by the revisions to the law.

More information is available on the JPO website:

Trademark Examination Manual
http://www.jpo.go.jp/shiryou/kijun/kijun2/syouhyoubin.htm

Trademark Examination Guidelines
http://www.jpo.go.jp/shiryou/kijun/kijun2/syouhyou_kijun.htm



Indicating Registered Trademarks in Specifications

The JPO is reminding applicants that registered trademarks must be indicated as such if it is necessary to use them in a specification. In order to prevent registered trademarks becoming standard words, the JPO regularly issues such reminders. This time, in addition to calling attention to the issue, the JPO has produced a list of the most frequently-used registered trademarks (as of April 2015).

Source: JPO website
https://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tourokusyohyo_kisai.htm



Manual of Foreign IP Litigation Risk Reduction Measures for Small and Medium-sized Enterprises

On March 31, 2015, the JPO published a manual of foreign IP litigation risk reduction measures, aimed at small and medium-sized enterprises.

The manual can be put to use by small and medium-sized enterprises in a variety of different circumstances: those that are thinking about beginning to expand overseas, have already made preparations to expand overseas, or which are currently expanding overseas but have unease due to the risk of foreign IP litigation.

The manual is available on the JPO website at the following address:
https://www.jpo.go.jp/torikumi/chushou/soshou_manual.htm



Revisions to Trademark Examination Manual

As new types of trademarks become subject to protection under Japanese law, the JPO has issued a revised version of its Trademark Examination Manual.

New sections of the manual deal with topics such as the writing and handling of applications for trademarks composed of gradations or colors, trademarks of movement and so on.

The content of the revised Trademark Examination Manual applies from April 1, 2015.

Source: JPO website
https://www.jpo.go.jp/seido/s_shouhyou/new_shouhyou.htm



April/May 2015 edition of ‘Tokkyo’ Magazine

The April/May 2015 edition of the JPO’s magazine ‘Tokkyo’ is a special edition focusing on the design registration system. This is because it will become possible to make use of the international design registration system due to Japan joining the Hague Agreement Concerning the International Deposit of Industrial Designs.

Articles on the topic include:
- ‘Expectations of a design registration system boosted by joining Hague Agreement’
- ‘Use of international patent registration system becomes possible!’
- ‘What possibilities does Japan joining the Hague Agreement bring to users of the design registration system?’

In addition to the above, the magazine contains an interested history in comic form of the start of the design registration system.

The April/May edition of ‘Tokkyo’ magazine is available on the JPO website:
https://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo_21.htm



Collection of past examples of design registrations related to partial designs

Examples of partial design applications made from April 1, 2007 to March 31, 2013 that were registered as designs or related designs have been published as a reference for design similarity. These are intended to assist with judgment of similarity of designs.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/bubun_isyou.htm



Collection of past examples of image-based designs

The JPO has published a collection of designs that include images, which were registered based on the design examination guidelines concerning applications filed from August 1, 2013 onwards. The collection is a reference for understanding said guidelines, and contains the following examples:
- Examples in which the mode of change is recognized as a design
- Examples in which the images show views necessary in order to fulfil the function of the product

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/gazoutouroku_jirei.htm



Procedures Necessary for Prescriptions Governing Exception to Loss of Novelty to be Applicable

In order to conform with the content of the 2014 revisions to the patent law, formal revisions have been carried out to the JPO’s handbook for applicants explaining how to make the prescriptions governing exception to loss of novelty apply to cases.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/hatumei_reigai.htm



Regarding the Written Format of Notifications of Reasons for Refusal, etc.

The JPO has carried out a revision to the written format of some documents, including Notifications of Reasons for Refusal.
The written format has been standardized in order for the intent of the examiner to be better conveyed to representatives or applicants in Japan and abroad. Another aim is to enhance the exchange of opinions between applicants and examiners, and thus contribute to improving the quality of examinations.

For example, the second and subsequent Notifications of Reasons for Refusal will be marked to indicate newly cited references, and Decisions of Refusal will indicated grounds that have not been dismissed, etc.

The new formats apply to cases in which the request for examination is filed from April 1, 2015 onwards.

Source: JPO website
https://www.jpo.go.jp/torikumi/t_torikumi/kyozetsu_kisaiyoushiki.htm



Patent/Utility Model Examination Guidelines Revised

Following public comments, a revised version of the Patent/Utility Model Examination Guidelines has been published. The revised guidelines apply to examinations from April 1, 2015 onwards.

Further formal revisions are planned to items in the guidelines, such as the period in which a priority can be claimed.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/h26_kaisei_kaitei.htm



Q&A on Patent Oppositions

On March 24, 2015, the JPO published a list of questions it has received regarding the patent opposition system and its answers thereto. The list contains a wide range of information on topics including trial methods and comparisons with invalidation trials.

Source: JPO website
https://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/igi_moushitate_faq.htm#j3



JPO Provides Machine Translation Dictionary Data

Each year, the JPO adds around 5,000 new words to the dictionary it uses to produce English machine translations of Japanese patent publications. The dictionary is also made generally available. The dictionary may be downloaded from the JPO website provided the terms and conditions of usage are agreed to.

Source: JPO website
https://www.jpo.go.jp/shiryou/toushin/chousa/tokkyo_dictionary.htm



Appeals Handbook (15th Edition) Published

Coinciding with the start of the new patent opposition system based on the 2014 revisions to the Patent Law, the JPO has published the 15th edition of its Appeals Handbook. With the introduction of the new patent opposition system, the persons eligible to file invalidation trials have changed, and so the handbook has been revised accordingly.

Source: JPO website
https://www.jpo.go.jp/shiryou/kijun/kijun2/sinpan-binran_15.htm



File Format etc. for Sound Files Submitted in Audio Trademark Applications

From April 1, 2015, it will be possible to file applications for audio trademarks with the JPO. When filing for an audio trademark, a sound file must be submitted. The JPO has announced requirements for file type, data storage format and submission method.

When submitting a sound file, great care should be taken to ensure that the file is free from computer viruses.

More information can be found on the JPO website:
https://www.jpo.go.jp/tetuzuki/t_gaiyou/oto_file.htm



Results of 2014 User Survey on Quality of Trademark Examinations Published

The JPO has conducted a survey of users’ appraisal of trademark examinations, with the aim of improving the quality of said examinations. The results and analysis thereof have been published in a report by the JPO.

Overall, the percentage of respondents who rated the trademark examinations “generally satisfactory” was over 70%. The percentage who rated the trademark examinations “generally satisfactory” or “satisfactory” was over 80%.

Discrepancies in the judgment of different examiners, trial decisions on uniformity or distinction and judgments connected with goods and services were topics raised by respondents.

More information can be found on the JPO website:
https://www.jpo.go.jp/shiryou/toushin/chousa/h26_shohyo_shinsa.htm



Text of 2014 Explanatory Meeting Regarding International Design Registration System

As the international design registration system comes into effect, the text of the related explanatory meeting organized by the JPO has been published. The text contains valuable information explaining the outline of the system and the related procedures. Further, in future the relevant forms and methods of carrying out procedures are due to change.

More information can be found on the JPO website:
https://www.jpo.go.jp/seido/s_ishou/h26_isho_text.htm



Draft Bill Partially Revising Patent Law to be submitted in Regular Diet Session Following Cabinet Decision

On March 13, 2015, the Ministry of Economy, Trade and Industry (METI) announced that a Cabinet decision had been reached regarding a new bill revising the patent law, and said bill would be submitted during a regular session of the Diet.

The points amended by the bill concern the employee inventions system and patent fees, etc., as well as adjustments to stipulations for the enactment of the Patent Law Treaty and the Singapore Treaty on the Law of Trademarks.

More information can be found on the METI website:
http://www.meti.go.jp/press/2014/03/20150313001/20150313001.html



Accelerated Trademark Examinations and Trials

From April 1, 2015, as “new type” trademarks become subject to protection under Japanese law, the JPO will begin accepting applications for these kinds of trademarks.

The JPO has announced that in order to ensure the quality of examinations and trials for “new type” trademarks, for the present time they will be exempt from accelerated examinations and trials.

Source: JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/shkouhou.htm



2014 Report on Survey of Damages Caused by Imitations

The JPO published its 2014 report on a survey of damages caused by imitations on March 11, 2015.

Divided by country/region, China’s level of imitation production continues to be high, and many Asian nations also feature notably. Analysis shows that methods of producing imitations are increasing in sophistication. The report also contains examples of how enterprises are tackling the problem of imitation goods, which serve as a reference point for anti-imitation strategies.

Source: JPO website:
http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/jittai/jittai.htm



Examples of Regional Collective Trademarks 2015

In order to encourage the further spread and utilization of the regional collective trademark system, the JPO has published the 2015 edition of its report of examples of the system being used.

According to the report, as of March 2015, 574 regional collective trademarks have been registered. Kyoto prefecture, with 62 trademarks, is the region with the most registrations.

The report includes information to assist with brand strategy, including examples of products that have seen an increase in shipment after becoming established as brands.

The report is available on the JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/tiikibrand.htm



Trademark Examination Guidelines Revised

As new types of trademarks will become subject to protection from April 1, 2015, the JPO has published the 11th revised edition of its Trademark Examination Guidelines.

The revised guidelines include new entries on requirements for the registration of new types of trademarks, guidelines for judgment of similarity etc. Also, a list of the new types of trademarks is included, making the revised guidelines beneficial for users.

The revised Trademark Examination Guidelines are available on the JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/shinsa_kijun_kaitei.htm



Report on Machine Translation Surveys

The JPO has published a report on its ‘Survey on Quality Evaluation Methods in Machine Translations of Patent Literature’ and ‘Survey on Neologisms for Use in Machine Translations of Chinese Patent Literature.’

In recent years, the number of patent applications outside of Europe and the United States has been increasing, and with it the need for high-quality machine translations of patent literature in other languages – particularly Chinese – has been growing. Reviews aimed at increasing the quality of such machine translations and surveys of characteristic issues that occur in English to Japanese machine translations have been carried out and collected into a report.

Further, regarding Chinese to Japanese machine translations, the use of technical neologisms that have not hitherto appeared in Chinese patent literature is increasing, and so the results of a survey into neologisms also appear in the report.

The report can be read on the JPO website:
http://www.jpo.go.jp/shiryou/toushin/chousa/kikai_honyaku.htm



Interview Guidelines (Appeal Version)

The interview guidelines regarding appeals, which have been revised by the JPO, were published on February 25, 2015. Timed to coincide with the introduction of a patent opposition system in April 2015, the guidelines have been revised based on a need for clarity regarding the handling of interviews (including interviews under the trademark opposition system) and also due to changes in how interviews have been conducted in recent years, such as the incorporation of TV conferencing.

The guidelines will be applicable from April 1, 2015.

More information can be found on the JPO website:
http://www.jpo.go.jp/shiryou/kijun/kijun2/mensetu_guide_sinpan.htm



Guide to Practice Under the Trademark Opposition System

The JPO has published a guide to practice under the trademark opposition system. The guide collects information including procedures and forms from the petition stage through to trials and decisions. This information can be put to practical use in actual proceedings.

It will be possible to file opposition to patents that are published after April 1, 2015.

More information can be found on the JPO website:
http://www.jpo.go.jp/shiryou/kijun/kijun2/igi-tebiki.htm



Appeal Handbook (15th Edition)

With the enactment of the 2014 revision to the Patent Law on April 1, 2015, opposition proceedings have been newly established and changes have been made to who is eligible to request invalidation trials. Therefore, the JPO has published the 15th edition of its Appeal Handbook, which contains sections addressing these points. Sections have also been added covering handling appeals related to international design registrations.

The content of the handbook will be applicable from April 1, 2015.

More information can be found on the JPO website:
http://www.jpo.go.jp/shiryou/kijun/kijun2/sinpan-binran_15kouhyou.htm



System of Protection for “New Type” Trademarks

From April 1, 2015, “new type” trademarks, such as moving trademarks, hologram trademarks and so on, will be subject to protection in Japan. To coincide with this, the JPO has published an outline of the revisions to the system and a list of important points to note when filing an application.

In an application document, it is necessary to write the trademark type and a detailed description defining the trademark. Further, in the case of aural trademarks, a CD-R or DVD-R containing a recording of the trademark in MP3 format must be included.

In addition, new type trademarks that have been in use since prior to 2015 can continue to be used in their existing business fields without registration, with the exception of locational trademarks.

More information can be found on the JPO website:
http://www.jpo.go.jp/seido/s_shouhyou/new_shouhyou.htm



Common Mistakes and Frequently Asked Questions when Writing Descriptions of Designated Goods and Services

The JPO has published a guide to common mistakes made when writing descriptions of designated goods and services, as well as frequently asked questions and answers. As designated goods and services establish the scope of a right, unless said scope is clearly defined an application will be subject to reasons for refusal. Therefore, the JPO has published this guide with the aim of assisting applicants with smoothly acquiring rights.

The guide can be found on the JPO website:
http://www.jpo.go.jp/tetuzuki/t_shouhyou/shutsugan/shitei_error_qanda.htm



Restoration of Priority based on PCT Rule 26bis3

From April 1, 2015, in accordance with the enactment of an amendment to the Patent Law, Japan will proceed with repealing a suspension of PCT Rule 26bis3. As a result, from April 1, 2015 onwards it will be possible to carry out restoration of priority procedures regarding PCT applications received at the JPO.

However, it is important to note that even if the JPO approves the restoration of a priority, if the patent offices of other countries do not approve restoration, then the priority will not be effective in those countries.

More information can be found on the JPO website:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct26-2_3_yusenken.htm



Use of International Design Registration System Begins

Due to Japan’s entry into the Geneva Act of the Hague Agreement Concerning the International Deposit of Industrial Designs, the JPO has announced that it will be possible to use the international design registration system based on said Act from May 13, 2015. Revisions to the design law will also be brought into effect on the same day.

As a result, by carrying out a single procedure it will be possible to obtain rights in multiple countries, thus simplifying and reducing the costs of registration procedures for applicants.

Please see the JPO Homepage at the below address for more information:
http://www.jpo.go.jp/seido/kokusai/kokusai_shutugan3/index.html



2014 Intellectual Property System Explanatory Meeting Text (for workers): “International Application Procedures based on the Patent Cooperation Treaty (PCT)”

On January 28, 2015, the JPO published a text aimed at workers regarding International Application Procedures based on PCT. The text contains concrete application procedures and methods for producing application documents, etc.

Further, in addition to the text for workers, the JPO has also published a text explaining the basics of the current PCT international application system, aimed at those who wish to understand the basis of PCT international application system procedures or consider use of the PCT international application system in order to obtain a patent abroad.

Text for workers:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/h26jitsumu-pct.htm

Outline of PCT international application system procedures:
http://www.jpo.go.jp/seido/s_tokkyo/tokkyo_jyouyaku.htm



Regarding interrogations using pre-trial notifications

Previously, the JPO carried out interrogations using pre-trial notifications, which made use of the waiting period for trial examinations. However, it has been decided that from February 2015, this practice will cease in all technical fields. In April 2014, the use of interrogations using pre-trial notifications was stopped in all technical fields except for medicine and biotechnology. From February 2015, such interrogations will no longer be carried out in the fields of medicine and biotechnology, and so the time required for trial examinations is expected to shorten in these fields also.

In cases where it is necessary to request the opinion of the demandant, an interrogation may be issued.

Source: JPO Homepage
http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/zentihoukoku.htm



2014 Revisions to Patent Law, etc. to be Enacted on April 1, 2015

A cabinet decision has been made to issue a government ordinance enacting the 2014 revisions to the patent law, etc. The Ministry of Economy, Trade and Industry announced that the revisions will come into effect on April 1, 2015. The enactment incorporates provisions for the costs of filing an opposition to a patent and the new forms of trademark registrations such as sounds, etc. Further, parts of the law related to the Geneva Act of the Hague Agreement Concerning the International Deposit of Industrial Designs will be enacted on the date that said Act comes into effect in Japan.

http://www.meti.go.jp/press/2014/01/20150123002/20150123002.html



2014 IP Rights System Explanatory Meeting Text (for Practical Business)

On January 19, 2015, the JPO published the text aimed at those carrying out practical business in the field. In contrast to the text for beginners, this text contains useful detailed information for practical business with regard to examination standards etc. Furthermore, following the patent law revision of 2014, entries for the revised items on the patent opposition system etc. have been added.
The text can be read on the JPO homepage below:
http://www.jpo.go.jp/torikumi/ibento/text/h26_jitsumusya_txt.htm



JPO Begins Providing Full Chinese/Korean Literature Translation and Search System

On January 5, 2015, the JPO began providing a full version of its system that allows users to search Chinese and Korean patent literature in Japanese.

Compared to the test version that was available from November 13, 2014, the full version has added around 2 million Chinese documents that were previously unavailable, as well as fixing bugs.

The system allows users to search Chinese and Korean literature published between 2003 and July 2014. There are plans to continue to add literature published from August 2014 onwards.

Please see the JPO Homepage for details:
http://www.meti.go.jp/press/2014/01/20150105001/20150105001.html



Japanese Trademark Information to be Included in World’s Largest Trademark Database

Progress is being made towards the inclusion of Japanese trademark publications in the Global Brand Database operated by the World Intellectual Property Organization (WIPO), which is the world’s largest trademark database. As a result, it will be possible to carry out comprehensive searches that include foreign publications. The database contains the accumulated trademark information of sixteen countries across the world, and can be searched free of charge.

For more information, please see the METI homepage at the following address:
http://www.meti.go.jp/press/2014/11/20141127001/20141127001.html



Magazine Bulletin ‘Tokkyo’ December 2014/January 2015 Edition

On November 25, 2014, the JPO published the December 2014/January 2015 edition of their magazine bulletin ‘Tokkyo.’ This edition focuses on information for small and medium-sized enterprises, with a special collection of articles on the evaluation and funding of IP, and activities to disseminate intellectual property in order to make use of said IP. Aside from this collection of articles, the magazine contains information on the test of a system that allows for searching of Chinese and Korean-language patent literature in Japanese, and various articles including a report on regional collective trademarks.

The December 2014/January 2015 edition of ‘Tokkyo’ is available on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/hiroba/pdf/kohoshi_tokkyo/tokkyo_19.pdf



Recent Trends in Business-related Inventions

On November 19, 2014, the JPO released a report on recent trends in business-related inventions.
Although there has been an overall tendency towards reduced numbers of applications following a peak in 2000, there has been a slight increase since 2011. Also, the proportion of applications that are granted patents has tended to rise since 2007, with the provisional figure for 2013 as high as around 63%.

According to the JPO’s analysis, the spread of examination guidelines in this field and the submission of correct amendments, etc., along with careful selection of applications has contributed to this increase.

The report is available on the JPO homepage at the address below:
http://www.jpo.go.jp/seido/bijinesu/biz_pat.htm
- - - (Previous Information) - - -
On November 29, 2013, the Japan Patent Office issued a publication regarding recent trends in business-related inventions. According to this publication, although the number of patents granted to business-related inventions is still relatively low compared to the average for inventions in other fields, the proportion of applications granted patents in 2012 provisionally exceeded 50%, and in recent years this figure has been rising. From 2007, the number of business-related patent applications began slowly decreasing, but the number of applications made in 2012 was approximately equal to the number made in 2009. In 2012, appeals were filed for over 20% of applications that received a decision of refusal, for the first time since 2003.

For more information, please see the JPO homepage:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/bijinesu/biz_pat.htm

- - - (Previous Information) - - -
On October 3, 2011, the JPO renewed its information on recent trends in business-related inventions.
According to the JPO, the number of applications concerning business-related inventions in 2009 was on a downward trend. In addition, the percentage of these inventions obtaining a patent has been on a rising trend since 2007, but is still low compared to inventions in other fields.

Related JPO website:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/bijinesu/biz_pat.htm


- - - (Previous Information) - - -
The Japan Patent Office (JPO) updated on October 1, 2010 its statistics on the current trends of business-related inventions.

(Application trend of business-related inventions)
Since 2000, the number of applications claiming a business-related invention has been decreasing every year.

(Examination status of business-related inventions)
While the coefficient of applications mainly claiming business-related inventions which were granted a patent was 8% (the average of all fields being approximately 50%) from 2003 to 2006, it has been on the rise since 2007, reaching 22% (estimation) in 2009.
The proportion of applications claiming a business-related invention against which a Decision of Refusal was issued is higher than in other fields. The proportion of appeals filed against such Decisions of Refusal is also comparatively low.

Website of the JPO
http://www.jpo.go.jp/tetuzuki/t_tokkyo/bijinesu/biz_pat.htm

- - - (Previous Information) - - -

The Japan Patent Office (JPO) updated on October 5, 2009 its statistics on the current trends of business-related inventions.
(Application trend of business-related inventions)

YearNumber of application
2000Approx 19,600
2001Approx 19,000
2002Approx 13,000
2003Approx 10,000
2004Approx 9,000
2005Approx 8,400
2006Approx 7,000
2007Approx 6,000

(Examination status of business-related inventions)
The coefficient of applications mainly claiming business-related inventions which were granted a patent was 8% (the average of all fields being approximately 50%) from 2003 to 2006, reached 15% in 2007 and further increased to 19% in 2008.
The proportion of cases against which a Decision of Refusal was issued is higher than in other fields. Appeals against Decisions of refusal are rarely filed.
Website of the JPO
http://www.jpo.go.jp/tetuzuki/t_tokkyo/bijinesu/biz_pat.htm
- - - (Previous Information) - - -
On September 19, 2008, the Patent Office released a report on the current trends of business-related inventions. According to the examination status of business-related inventions, the rate at which a patent is granted to business related invention has been remarkably lower compared to the rate in other fields, and Office Actions have been issued to an appeal against examiner’s decision of refusal at a higher rate.

(Application trend of business-related inventions)

YearNumber of application
2000Approx 19,600
2001Approx 19,000
2002Approx 13,000
2003Approx 10,000
2004Approx 9,000
2005Approx 8,400
2006Approx 7,000

(Application trends for business-related inventions per technical field)
The number of application decreased in technical fields (payment settlement, finance insurance, management, service business, etc.) in which the business-related invention itself is the main feature of the application (*1). In particular, the number of application has been decreased dramatically in the field of e-commerce.

(*1) Application to which one of the following FI classification is a main field: G06F15/20@G,N,R; G06F15/20,102; G06F15/21; G06F15/24 - G06F15/30; G06F15/42; G06F17/6.

(Application trends per applicant group of business related invention)
In 2002 through 2006, the number of applications continuously decreased in both major applicant companies and other applicants.

(Examination status of business-related inventions)
Since 2000, the rate of patent grant decreased in which the business-related invention itself is the main feature of the application. The rate of patent grant was 8% (average of all fields is approximately 50%) from 2003 to 2006, and reached 15% in 2007.
Office Action are more likely to be issued regarding the application. However, appeals against such Office Actions are rarely filed.



2014 Intellectual Property Rights System Explanatory Meeting Text (for Novices)

On October 27, 2014, the Japan Patent Office published the 2014 edition of the Intellectual Property Rights System Explanatory Meeting Text (for Novices).

The text gives the basic outline of the patent, utility model, design and trademark systems, and contains information on other areas of intellectual property including the difference between the variety registration system and the patent system, copyrights etc. In addition, the text outlines various support measures such as the Industrial Property Digital Library (J-PlatPat) and the accelerated examination system, etc.

The text is available on the JPO Homepage at the following address:
http://www.jpo.go.jp/torikumi/ibento/text/h26_syosinsya.htm



Easing of Requirements for Consolidated Examinations for Business Strategy Handling

The Ministry of Economy, Trade and Industry (METI) has announced a revised version of guidelines regarding consolidated examinations for business strategy handling. Consolidated examinations for business strategy handling have been available since April 2013, and are a method by which the examinations and granting of rights for several intellectual properties necessary for business can be timed to occur together and thereby coincide with business development.

Until now, consolidated examinations could only be requested for collections of applications made by the same applicant, meaning that group companies etc. controlling groups of applications that include different applicants could not use the system. This revision to the guidelines allows, under certain circumstances, for requests for consolidated examinations to be made for groups of patents with different applicants.

Other revisions have been made which make it easier for users to make use of the system, such as allowing the addition or substitution of cases subject to a consolidated examination during a fixed period.

More information is available on the METI homepage at the address below:
http://www.meti.go.jp/press/2014/10/20141001003/20141001003.html



Revisions to Interview Guidelines

On October 1, 2014, the JPO announced revised versions of its interview guidelines for patents, designs and trademarks.
When an interview is requested, as a rule a single interview will be granted. The new guidelines clarify that an interview record must be made, and that necessary items must be indicated on said interview record. In addition, the revisions include the addition of sections on handling TV interviews and recommendations for contacting the applicant, etc., regarding whether or not an amendment has overcome reasons for refusal.

The revised guidelines came into effect on October 1, 2014.

More information can be found on the JPO Homepage at the address below:
http://www.jpo.go.jp/tetuzuki/t_sonota/mensetu_guide_kaitei.htm



Japan Platform for Patent Information to Commence in March 2015

In order to respond to the needs of users regarding patent information, a new service providing patent information, the Japan Platform for Patent Information, will commence on March 23, 2015. The service will also serve to provide new information on trademarks and designs, including information on new types of trademarks, such as sound and colors, etc.

For more information, please see the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/chouhoyu/chouhoyu2/tokkyo_platform.htm



Examination Quality Regulation Aimed at Realizing JPO’s Goal of World’s Highest-Quality Examinations

The JPO has announced the formulation of ‘quality policies’ with the aim of realizing its goal of establishing the world’s highest-quality examinations.

Regarding the improvement of design and trademark examinations, a ‘Design Examination Quality Policy’ and a ‘Trademark Examination Quality Policy’ have been established. The JPO has also announced that for patents, a quality control system conforming to the basic principles of the patent policy has been put into writing as the ‘Patent Examination Quality Control Manual.’

In addition, the JPO has set up an Examination Quality Control Subcommittee with the purpose of putting to use the opinions of external specialists and realizing its goal of the world’s highest-quality examinations.

The announcement containing the above information can be found on the JPO homepage at the following address:
http://www.jpo.go.jp/seido/hinshitsukanri/hinshitsukanri.htm



Guidelines for PCT International Searches and Preliminary Examinations (tentative Japanese translation)

On July 31, 2014, the JPO published a tentative Japanese translation of the guidelines for PCT international searches and preliminary examinations that came into force on July 1, 2014. The original text will take priority in cases where the translation differs;  both the English and the Japanese translation thereof are included in the JPO’s publication to allow for immediate checking of the original text.

The guidelines are available on the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/guideline_pct.htm



Trademark Examination Guidelines (10th Revised Edition – Partial Revision) Published

Due to the 2014 partial revisions to the Patent Law, etc., registration subjects for regional collective trademarks have been expanded, with the changes coming into effect from August 1, 2014. In accordance with this, after gathering public comments, the Trademark Examination Guidelines (10th Revised Edition – Partial Revision) was published on August 1, 2014.

The examination guidelines can be viewed on the JPO Homepage at the address below:
http://www.jpo.go.jp/shiryou/kijun/kijun2/syouhyou_kijun.htm



General Desk for Countermeasures against Imitation Goods and Pirate Editions Yearly Report 2014

On June 25, 2014, the General Desk for Countermeasures against Imitation Goods and Pirate Editions Yearly Report for 2014 was published. The report collects information on countermeasures taken against imitation goods and piracy, etc. during the previous year.

The report collects information on various activities being carried out in collaboration between the Japanese government and industrial world. These include dispatching representatives to China to petition the Chinese government to make improvements to the situation, and running seminars for customs, police and related agencies on discerning between real and fake products.

The Asian region, in particular China, continues to be the source of a large amount of damages caused by imitation goods. In addition, the proportion of damages incurred due to the internet is increasing.

The report can be read on the Ministry of Economy, Trade and Industry website at the address below:
http://www.meti.go.jp/press/2014/06/20140625002/20140625002.html



Changes in Accordance with Amendments to PCT Regulations

From July 1, 2014, amendments to regulations based on the Patent Cooperation Treaty (PCT) will come into force. In accordance with this, the following points will change:

1: In order to find materials either published after the date of producing an International Search Report, or materials that may be used in searches by International Preliminary Examining Authorities, from July 1, 2014 onwards, “top-up searches” will be carried out by International Preliminary Examining Authorities in cases where requests for preliminary examination have been made for international applications.

2. Together with the international publication of a case, the opinions of the International Searching Authority and the informal comments of the applicant regarding said opinions will be published. This will apply to international applications filed from July 1, 2014 onwards.

For more details, please view the JPO homepage at the address below:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_kaisei_201406.htm



Date Set for Broadening of Regional Collective Trademarks Registration Subjects

The provision in the bill amending the Patent Law, etc. that broadens the registration subjects of regional collective trademarks (Trademark Law Article 7.2.1) will be enacted on August 1, 2014. Together with the above amendment to the law, a revision to the examination guidelines will be enacted on the same day.

More details can be found on the METI homepage at the following address:
http://www.meti.go.jp/press/2014/06/20140606002/20140606002.html



Collected Analysis of Judicial Decisions and Examination Results in Indian IP

JETRO has produced the 2014 second edition collected analysis of judicial decisions and examination results in Indian IP, in a project commissioned by the JPO.

India is a country that chiefly operates on judiciary law, and as such a statute law-based approach to handling IP in India is not always clear. Therefore, it is important to refer to past precedents of judicial decisions and examination results and grasp the actualities of handling IP in India.

The collected analysis of judicial decisions and examination results chiefly focuses on precedents involving patents.

The collected analysis can be read on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pdf/india/chizai_shinketsu.pdf



Fiscal 2013 Report on Activities Furthering Strategies for the Internationalization of Intellectual Property Rights

On June 6, 2014, the JPO announced the Fiscal 2013 Report on Activities Furthering Strategies for the Internationalization of Intellectual Property Rights, compiled by the Institute of Intellectual Property (IIP).

Based on recent global enterprises and technology trends, IIP carried out research and analysis with technical fields as its starting point. The report contains the results of considering a sample of IP issues, separated by technical field.

The report can be read on the JPO homepage at the address below:
http://www.jpo.go.jp/shiryou/toushin/chousa/pdf/kokusai_kenrika/h25.pdf



Japan-China Collaborative Research Report on IP

On June 6, 2014, the JPO published the ‘Japan-China Collaborative Research Report on IP.’ This report jointly produced by Japan and China introduces partial results of collaborative research comparing the IP strategies and legal amendment trends, etc. in both countries. It also collects studies by experts who participated in said research.

The report can be read on the JPO homepage at the address below:
http://www.jpo.go.jp/shiryou/toushin/chousa/nicchu_houkoku.htm



Q&A Regarding Changes to Pretrial Interrogations

The JPO has published a Q&A regarding the changes to pretrial interrogations that commenced from April 2014. The Q&A collects information on several topics including affected cases, confirming the content of pretrial notifications, written statements, cases where interviews are desired, etc. As the changes to the way pretrial interrogations work have only been introduced very recently, it is intended for this Q&A to help resolve points of confusion regarding the matter.

The Q&A is available on the JPO homepage at the following address:
http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/zentishinjin_faq.htm



2014 Patent Law Revision etc. Explanatory Meeting Text Published

On May 28, 2014, the JPO published the 2014 Patent Law Revision etc. Explanatory Meeting Text.

The text collects outlines to the revisions to the Patent Law, Design Law, Trademark Law, Patent Attorney Law and International Application Law and includes charts etc. explaining the schedule for enactment of the changes. In particular, the text focuses on changes to the former system for filing objections. The text contains valuable information comparing the revised system to the old one.

In addition, the text includes extracts from the amended general outline of the laws, laws themselves and reasons to highlight the differences between the new and old laws.

The text can be read on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/ibento/text/pdf/h26_houkaisei/h26text.pdf



IP Support Guide for Small and Medium-sized Enterprises and Venture Enterprises

The JPO has issued a new publication, the IP Support Guide for Small and Medium-sized Enterprises and Venture Enterprises.

The guide contains useful information on three support methods: the free nationwide consultation counters; the fee support/fee reduction system; and financial aid for foreign filing fees and countermeasures against imitation goods. Also, general support policies, overseas development support policies and useful information sites and various local support methods are included.

The guide is available on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/chushou/chusyo_venture_guide.htm



Imitation Countermeasure Manuals / Collections of Precedents etc. Published

On April 28, 2014, the JPO announced on its homepage that a new Imitation Countermeasure Manuals / Collections of Precedents etc. focusing on Asian countries had been published.

The contents of the new publication are outlined below.

Korea:
・Collection of past examples and judicial precedents regarding IP infringement
・Manual for responding to trademark usurpation in Korea

China:
・Collection of past examples and judicial precedents regarding IP infringement

Taiwan:
・Manual of imitation countermeasures
・Prior usage rights and notarization system in Taiwan / Prior examples illustrating key points of difference between Taiwanese and Chinese applications

Hong Kong:
・Manual of imitation countermeasures

India:
・Manual of imitation countermeasures

The manuals etc. can be viewed on the JPO Homepage at the following address:
http://www.jpo.go.jp/torikumi/mohouhin/mohouhin2/manual/manual.htm



Fiscal 2013 Report on Study and Analysis of Support Measures for Small and Medium-sized Enterprises, etc.

Stimulating the activities of small and medium-sized enterprises and small-scale businesspeople is regarded as vital for Japan’s economic growth. At the same time, IP-related activities play an important role in providing support to economic globalization. The JPO reports that it has therefore carried out diverse investigations and analysis into the IP-related activities of small and medium-sized enterprises and small-scale businesspeople that are not fully engaged in such activities. Based on this, it has produced basic materials that clarify the current situation and related issues.

The JPO’s report can be read on the JPO Homepage at the address below:
http://www.jpo.go.jp/shiryou/toushin/chousa/h25_chusho_chizai.htm



2014 Annual Patent Administration Report

On May 14, 2014, the Japan Patent Office published its 2014 Annual Patent Administration Report.

The report contains important announcements on undertakings in the fields of patents, designs, trademarks and trials, as well as the situation concerning applications and registrations, etc. Further, it collects useful information on recent circumstances in IP, including changes in the IP sphere in Japan and abroad, undertakings within Japan’s international framework, etc.

The article “Intellectual Property Policy So Far and Future JPO Undertakings” is included as the opening feature, and presents the strengthening of support for the acquisition and use of global IP by Japanese enterprises, the strengthening of support for small, medium-sized and local enterprises, etc. and an infrastructure that contributes to innovation as future undertakings for the JPO.

The Annual Report can be read on the JPO Homepage at the address below:
http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2014_index.htm



Bill Partially Revising Patent Law, Etc.

The Japan Patent Office has published the details of the ‘Bill Partially Revising the Patent Law, Etc.’ that was officially announced on May 14, 2014. The outline of the changes introduced by the bill follows:

Patent Law:
・Expansion of relief measures in cases where unavoidable circumstances arise
・Establishment of a system for filing opposition against patents
Design Law:
・Provisions for applying for designs in multiple countries at once based on the Geneva Act of the Hague Agreement Concerning the International Deposit of Industrial Designs (Japanese participation currently under review)
Trademark Law:
・Addition of protection for colors, sounds etc. and provisions for related application procedures
・Expansion of registration subjects for local group trademarks
International Application Law:
・Simplification of the fee payment process
Patent Attorney Law:
・Clarification of the duties of patent attorneys
・Agency for application procedures to other countries under the Design Law

The above changes will come in effect on a date set by government ordinance no more than one year from the date of the official announcement, with the exception of the expansion of registration subjects for local group trademarks, which will come into effect on a date set by government ordinance no more than three years from the date of the official announcement, and the changes to the Design Law, which will come into effect on the date the Geneva Act of the Hague Agreement Concerning the International Deposit of Industrial Designs comes into force in Japan.

More details can be found on the JPO Homepage at the following address:
http://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyohoutou_kaiei_260514.htm



Report of the "Meeting for the Research of the International System of Intellectual Property" (for 2013)

The Japan Patent Office published a report which collects the matters that were discussed during the 2013 Meeting for the Research of the International System of Intellectual Property.

The topic of unique requirements on patents in India and Canada as well as the potential of protection of intellectual property through investment arbitration are examined. Reports on the protection of trade secrets in various countries, on the fight of intellectual property system of the Asian countries against counterfeit and the crackdown by custom houses, and on the conformity of intellectual property law in Cambodia, Bangladesh and Myanmar with the Trips agreement are also collected.

The report can be read through the homepage of the Japan Patent Office.

http://www.jpo.go.jp/shiryou/toushin/chousa/trips_chousa_houkoku.htm



Examination Guidelines for Patents – Outline

The JPO has published an English-language version of its guide, “Examination Guidelines for Patents – Outline.” This guide contains an outline of claim requirements, specification requirements, unity, invention, industrial applicability, novelty, inventive step, amendment etc. It provides a useful resource for readers to grasp the outline of examination guidelines.
In addition, an English-language version of the examination guidelines has also been published.

Both documents can be viewed on the JPO Homepage.
・“Examination Guidelines for Patents – Outline”
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/pdf/outline_guideline_patents/outline.pdf
・Examination Guidelines (English)
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm



Information Regarding Application Procedures

The JPO has updated its information regarding application procedures. Information is available on pre-application procedures; patent, utility model, design and trademark application procedures; intermediate procedures and various reports, as well as a Q&A section, thus covering applications in full.

The information also collects summaries of forms and service fees etc., allowing readers to grasp the details of the process until registration.

The information can be viewed on the JPO Homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/syutugan_tetuzuki.htm



JPO Investigative Research Report into Industrial Property Rights System Issues

The JPO has published a report complied during fiscal 2013 by the investigative research project into issues with the Industrial Property Rights System.

The themes of this report include the system of charges related to the scope of claims of an invention and the state of written requirements, as well as topics and solutions related to the use of the employee inventions system in enterprises, etc. and research into the proportion of contributions to business made by intellectual property, etc. In total 10 themes are covered in the report, which includes much useful information.

For more details, please see the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken.htm

- - - (Previous Information) - - -

On April 19, 2013, the JPO published a report collecting research conducted in 2012 into problems in the industrial property system.

Among the 11 themes covered by the report, one entitled ‘Research into Procurement of Funding for IP by Enterprises, as seen by Financial Institutions, etc.’ includes research that looks at how to asses the latent intellectual property possessed by an enterprise, not only in terms of physical assets but also in terms of human resources, etc. As suggested in the title, the same report also considers the problematic nature of assessing the value of IP, and can be used as basic reference material when procuring funding for the exploitation of IP. In addition, the report includes information looking at issues and solutions that are rarely considered when financial institutions carry out promotion of intellectual property management.

For more information, please see the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken.htm#6009



Research Report on Systematic Handling by Universities Contributing to Use of Intellectual Property

The JPO has published a report examining several issues regarding intellectual property at universities, etc. where projects to promote universities’ intellectual property research was carried out. In fiscal 2013, research was conducted into systematic handling by universities contributing to use of intellectual property.

The report collects data on a number of topics. These include the state of applications and numbers of patent licenses domestically and abroad, the structure of universities that carry out the process from invention or discovery to acquisition of rights and outside involvement therein, issues regarding use of IP by outside bodies, and the state of employee inventions, etc.

For more details, please see the JPO homepage at the following address:
http://www.jpo.go.jp/sesaku/daigaku_shien_03.htm#anchor13mitsubishi



Support When Paying Foreign Filing Fees for Small and Medium-sized Enterprises

①Support When Paying Foreign Filing Fees for Small and Medium-sized Enterprises

In order to boost foreign applications by small and medium-sized Japanese enterprises, the JPO is providing subsidies that cover half of the filing fees.

From 2014, the Japan External Trade Organization (JETRO) will handle this support. With the inclusion of small and medium-sized enterprise support centers, it will be possible to obtain support in all prefectures of Japan.

It is hoped that the support system will be used as a method for carrying out strategic filings overseas.

Detailed information on the application qualifications, selection criteria, maximum subsidy amount and the process of support, etc. is available on the JPO homepage at the following address:
http://www.jpo.go.jp/sesaku/shien_gaikokusyutugan.htm


②Support for Countermeasures Against Imitation Goods Overseas

In order to further the opportunities for small and medium-sized Japanese enterprises to appropriately exercise their rights, the JPO, through the Japan External Trade Organization (JETRO), will carry out investigation into and exposure of manufacturers or distribution networks of imitation goods etc. for Japanese small and medium-sized enterprises suffering infringement overseas. Further, partial financial support is available.

More information on the process of support, maximum subsidy amount etc. is available on the JPO homepage at the following address:
http://www.jpo.go.jp/sesaku/shien_kaigaishingai.htm



JPO Updates Formality Examination Handbook

As the range of applications eligible for fee reduction is broadened based on the stipulations of the Law for Increasing Competitiveness, the JPO has revised its formality examination handbook. The changes came into effect on April 1, 2014.

The following three sections have been changed:

07.30 Handling of requests for reduction or postponement of service charges etc. (for patents/utility models/trademarks)

07.32 Reduction of service charges etc. under the stipulations of the Patent Law or Utility Model Law and reduction/postponement of patent fees or registration fees (for patents/utility models)

07.43 Alleviation of service fees etc. under the stipulations of the Law for Increasing Competitiveness (for patents)

The formality examination handbook can be viewed on the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/binran_mokuji.htm

- - - (Previous Information) - - -

On May 31, 2013, the JPO’s Formality Examination Handbook was updated. Information regarding the reduction of examination fees and registration fees based on the Asian Focus Promotion Law and the Fukushima Recovery Special Measure has been included, along with outlines of precedents and clarification of the standards for formality examinations. The revised handbook will be in use from June 1, 2013
For more information on the revisions to the Formality Examination Handbook, please see the JPO Homepage below:

http://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tokkyo_houbin.htm

- - - (Previous Information) - - -

The Japan Patent Office has revised the Formalities Examination Handbook as of June 20, 2012. To improve convenience a link to the text of the law has been added and it can be accessed immediately.

The Formalities Examination Handbook is published on the JPO homepage at the link below.
http://www.jpo.go.jp/shiryou/kijun/kijun2/binran_mokuji.htm



Guidelines and Q&A Regarding Relief Provisions for Procedures Following Expiry of Deadlines

The JPO has updated its Guidelines and Q&A Regarding Relief Provisions for Procedures Following Expiry of Deadlines, adding the question: “Please provide representative examples of cases where relief measures for procedures following expiry of deadlines were approved, and of cases where they were not approved, since the enactment date of law revision 1-1-6 (April 2012).”

The Q&A includes a general outline of the relief provisions along with details of procedures, documents, requirements etc.

For more details, please see the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/kikan_gide_faq.htm



Procedures for Having Provisions for Exception to Loss of Novelty Apply to Inventions

The JPO has revised both the pre-2011 revision and post-2011 revision versions of its Q&A regarding exceptions to loss of novelty. A large number of new questions have been added.

There are two sections on ‘when aiming to have provisions for loss of novelty apply to an invention in a patent application to which patent law article 30 applies’ for the post-2011 revision and the pre-2011 revision versions of the law. As the content of these sections is different, there is a different guide and Q&A for each one. When using this system, it is important to pay attention to which law is relevant.

The sections can be read on the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/hatumei_reigai.htm



Requirement to Indicate Trademark Registrations in Specifications

The section on the JPO Homepage entitled ‘Requirement to Indicate Trademark Registrations in Specifications’ has been updated.

When it is necessary to use a registered trademark in a specification etc., the first time said trademark appears in the text the JPO requires that it be followed by an indication that it is a trademark registration. Care should be taken regarding this point when producing specifications. In addition, a list of commonly-used trademarks has been included for users’ reference.

The section can be viewed on the JPO homepage at the following address:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/tourokusyohyo_kisai.htm



Change to Policy of Sending Interrogations

From April 2014, the JPO has decided to revise its policy regarding the sending of interrogations, which until now have been sent for all relevant cases.

From now on, in order to shorten the wait for a trial to start and to reduce the burden on applicants, interrogations will only be sent if they are effective. Therefore, interrogations will be sent for cases where pretrial examination reports have been produced in technical fields requiring time before the trial begins. Interrogations will also be sent when facing technical fields of medicine or biotechnology.

In cases where the person requesting the appeal has field a response to an interrogation, the appeal advisory body will carry out the trial and issue a decision while taking into account both the opinions of the pretrial examiner and the counterarguments of the person requesting the appeal. Even if a response to the interrogation is not filed, this alone will not result in the issuing of an unfavorable decision.
More details can be found on the JPO homepage at the following address: http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/zentihoukoku.htm



Information Bulletin “Tokkyo” for April/May 2014

The JPO has published the April/May 2014 edition of its information bulletin “Tokkyo.” The “Tokkyo” bulletin is published regularly by the JPO. The major articles in this edition are listed below.

Expansion of the Fee Reduction System for Patent Fees and Examination Fees
This article looks at the expansion of the field of eligibility for the fee reduction system as well as the increase in the amount of relief available. The expanded system will come into effect on April 1, 2014.

Intellectual Property Policy: Future Handling and Issues
This article examines major future courses of action in Intellectual Property Policy, the handling thereof and future concrete issues.

Looking at Local Brands across the Country
This edition introduces brands from the Chugoku region of Japan, including Fukuyama Koto, a traditional craft of Hiroshima prefecture, and Uppurui Nori, a kind of seaweed from Shimane prefecture.

The April/May 2014 edition of “Tokkyo” can be viewed on the JPO Homepage at the following address:
http://www.jpo.go.jp/torikumi/hiroba/kohoshi_tokkyo.htm



Report on Issues and Solutions Thereto Regarding Implementation of the Patent Law Article 35 System by Enterprises, etc.

On March 18, 2014, the Japan Patent Office published its report on “issues and solutions thereto regarding implementation of the Patent Law Article 35 system by enterprises, etc.”

Patent Law Article 35 provides stipulations regarding the employee inventions system, and there is a strong push by the industrial sector for it to undergo further revision. The JPO’s report examines problems that arise when enterprises, etc. implement the system under the current law, and aims to provide a resource when considering the whether or not revision of the law is necessary.

The report was produced by a committee that includes academic experts, and is based on information gathered through conducting surveys of enterprises and examining foreign employee inventions systems.

The report can be viewed on the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/syokumu_hatsumei.htm



2013 Investigative Report into Damages Caused by Imitation Goods and Services Published

The Japan Patent Office has published its 2013 Investigative Report into Damages Caused by Imitation Goods and Services, which collects data on actual damage caused to Japanese enterprises, etc. at home and abroad by imitation goods and services, and on the state of countermeasure implementation.

The report examines 8,081 enterprises and organizations that have collectively made a large number of applications for IP rights over a period of five years, from 2007 to 2011. Even though the figures are a decrease from 2011, in 2012 the average damages suffered by a single company amounted to 190 million JPY, and the combined damages suffered by the surveyed group were 100 billion JPY. From these figures it can be seen that countermeasures against imitation goods and services are as required as ever.

In terms of region, the data indicates that a large amount of the damages are caused in Asia (including China), and therefore countermeasures need to be strengthened in the Asian region.

The report is available on the JPO homepage at the following address:
http://www.meti.go.jp/press/2013/03/20140317001/20140317001.html



Report on 2013 User Survey regarding Quality of Patent Examinations

On March 11, 2014, the Japan Patent Office published a report on the 2013 user survey regarding the quality of patent examinations.

With regard to the overall quality of patent examinations at the national phase, 92.5% of responses rated the quality to be “satisfying,” “relatively satisfying,” or “normal.” This is an increase from 2012’s proportion of 88.2% of responses rating examinations this way.

45% of all responses rated examination quality to be either “satisfying” or “relatively satisfying,” another increase over 2012 when the proportion was 35.4%.

With regard to the overall quality of international search reports, etc,, 94.6% of responses rated the quality to be “satisfying,” “relatively satisfying,” or “normal,” a slight decrease from 95.1% of responses in 2012. However, the percentage of respondents rating international search reports as “satisfying” or “relatively satisfying” rose to 41.7% from 2012’s figure of 35.4%.

While overall the quality rating is high, there remain issues such as discrepancies in examination decisions and the need for more substantial searches of foreign patents and non-patent literature.

The report can be read on the JPO homepage at the following address:
http://www.jpo.go.jp/shiryou/toushin/chousa/h25_shinsa_user.htm



Supporting the international expansion of Japanese enterprises through rights protection of creative designs

The Patent Office has published a report with the title "Supporting the international expansion of Japanese enterprises through rights protection of creative designs".

In today's world, where the design of smartphones etc. has become a source of competitive strength in Japan and overseas, it is a necessary for Japanese enterprises to protect creative images like Graphical User Interfaces (GUI) used in information systems, while also maintaining a system for the efficient acquisition of design rights in all countries.

In this context, the report collects issues, measures etc. with regard to taking steps in order to become a member of the Geneva Act relating to the Hague Agreement Concerning the International Registration of Industrial Designs and a member of the Locarno Agreement, and with regard to the improvement of the protection of graphical designs.

The report can be viewed on the Patent Office homepage at the following address:
http://www.jpo.go.jp/shiryou/toushin/toushintou/design_chizai.htm



Regarding the Course of the Patent Attorney System Review

A report entitled “Regarding the Course of the Patent Attorney System Review” produced by the Patent Attorney System Subcommittee has been published by the JPO.

In the first chapter, entitled “Developing a Business Foundation etc. to Support Innovation,” the report makes clear the social obligations of patent attorneys, tackles hidden privileges, and looks at the problems caused by restrictions on the work of patent attorneys by non-patent attorneys and the course of the response to this.

The second chapter is entitled “Providing Painstaking Services to Broaden Horizons,” and reports on the state of patent attorney business and small-scale patent law firms etc.

The third chapter is entitled “Increasing Talent for Contributing to Global Strength,” and reports on improvements to the patent attorney exam and the diversification of training.

The report can be read on the JPO Homepage:
http://www.jpo.go.jp/shiryou/toushin/toushintou/benrishi_minaoshi.htm



2014 Compilation of Precedents of Enterprises Utilizing Intellectual Property

The JPO has published its “2014 Compilation of Precedents of Enterprises Utilizing Intellectual Property,” which contains 139 examples of small and medium-sized companies from across the country which have used intelligence and intellectual property as powerful tools in various fields.
The compilation introduces a wide range of endeavors in which small and medium-sized enterprises are involved and references enterprises which faced similar tasks. The publication also mainly aims at providing a stepping stone for the development of strategies in the field of intellectual properties and for technological discoveries.

Said fields are divided into "food and drink" "healthy food and medical supplies", "architecture, construction and public works", " architecture and construction related products and tools", "tooling, press working and industrial goods", "chemistry, plastic and materials", "agricultural machinery and food machinery", "industrial machinery and environment related products", "medical equipment, medical supplies and nursing supplies", "manufacturing devices and testing devices", "IT, electronic goods and analytical equipment" and "life culture goods", and the endeavors of enterprises are concisely collected for study.

The Compilation of Precedents is published on the homepage of the patent office at the following address:
http://www.jpo.go.jp/torikumi/chushou/kigyou_jireii2014.htm



2014 Compilation of Precedents of Enterprises Utilizing Intellectual Property

The JPO has published its “2014 Compilation of Precedents of Enterprises Utilizing Intellectual Property,” which contains 139 examples of small and medium-sized companies from across the country which have used intelligence and intellectual property as powerful tools in various fields.
The compilation introduces a wide range of endeavors in which small and medium-sized enterprises are involved and references enterprises which faced similar tasks. The publication also mainly aims at providing a stepping stone for the development of strategies in the field of intellectual properties and for technological discoveries.

Said fields are divided into "food and drink" "healthy food and medical supplies", "architecture, construction and public works", " architecture and construction related products and tools", "tooling, press working and industrial goods", "chemistry, plastic and materials", "agricultural machinery and food machinery", "industrial machinery and environment related products", "medical equipment, medical supplies and nursing supplies", "manufacturing devices and testing devices", "IT, electronic goods and analytical equipment" and "life culture goods", and the endeavors of enterprises are concisely collected for study.

The Compilation of Precedents is published on the homepage of the patent office at the following address:
http://www.jpo.go.jp/torikumi/chushou/kigyou_jireii2014.htm



2013 IP Rights System Explanatory Meeting Text (for Practical Business) – Procedures for International Applications based on the PCT

On January 30, 2014, the JPO published the 2013 edition of a text on procedures for international applications based on the Patent Cooperation Treaty (PCT), aimed at those carrying out practical business in the field.

The text is divided into two sections, regarding procedures at the receiving office and conventions respectively, both containing detailed and useful information. The same text was distributed to participants in the Explanatory Meeting.

The text can be viewed on the JPO Homepage below:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/h25jitsumu-pct.htm

- - - (Previous Information) - - -

The JPO has published the 2013 edition of its text aimed at working-level participants in the Intellectual Property Rights System Explanatory Meeting. This text contains detailed and useful information on examination standards and the application thereof, points to note when filing an application and information on the PCT system, etc. It also contains information on support measures regarding patents for small and medium-sized enterprises.
The text can be read on the JPO homepage below:
http://www.jpo.go.jp/torikumi/ibento/text/h25_jitsumusya_txt.htm



Measures to Reduce Patent Fees etc. Based on Law for Increasing Competitiveness

On December 4, 2013, together with the establishment of the Law for Increasing Competitiveness, plans were established to introduce measures allowing parties filing national or international-stage applications to receive a reduction in patent fees, examination fees, search fees, communication fees and preliminary examination fees.

Public comments are being collected on the plans, and the deadline for submitting comments is January 11, 2014. A further announcement regarding the cost reduction measures is planned based on the result of the collected opinions.

More information can be found on the JPO homepage:
http://www.jpo.go.jp/torikumi/hiroba/tokkyo_keigen.htm



Strengthening Cooperation with Korea

As a meeting of the Japan Patent Office and Korea Intellectual Property Office on December 5, 2013, agreement was reached to carry out the following:

1. Produce a policy regarding clarification of the causes of discrepancies in examination decisions, and the carrying out of consultations on said discrepancies etc.
2. Standardize methods to minimize discrepancies between examination results in cases examined under the PPH.
3. In the field of trademarks, produce a table indicating the corresponding classification codes used for similar goods and services in the JPO and KIPO.

The original report from this meeting can be read below:
http://www.meti.go.jp/press/2013/12/20131206002/20131206002.html



Agreement to Strengthen Trademark Cooperation Reached at TM5 Meeting

The Japanese Ministry of Economy, Trade and Industry (METI) has announced that on December 5 and 6, 2013, at the TM5 meeting of the five intellectual property offices (JPO, USPTO, EUIPO, SIPO and KIPO), an agreement to strengthen trademark cooperation between said offices.

In the field of trademarks, it was agreed that: (1) as systems and procedures for the acquisition of trademark rights abroad differ between countries, steps should be taken to provide the essential information for users in a format that is easy to understand; and (2) measures should be put in place to counter the filing or registration of trademarks without permission by third parties. Also, cooperation was successful ly achieved to produce a list of goods and services that are commonly recognized in each of the five countries/regions.

In the field of designs, it was agreed that the details concerning publication etc. of a report comparing the various requirements for drawings in each country/region would be decided at 2014’s meeting.

The announcement by METI can be read on their website below:
http://www.meti.go.jp/press/2013/12/20131206006/20131206006.html



Five Patent Offices Statistical Report - 2012 Edition

The 2012 edition of the Five Patent Offices (Japan, U.S., Europe, China and Korea) Statistical Report has been published on the JPO homepage. The body responsible for editing the fiscal 2012 edition is the EPO.

The report consists of statistics related to the policies, basic statistics, annual revenues and staff structures of the five patent offices and worldwide patents, as well as statistics on patent families aggregated by the EPO, on patent applications and registrations by each patent office, and on PCT applications. The report is divided into sections providing detailed information on each of the above topics.

The report can be read on the JPO homepage:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/ip5_statistics-report2012.htm



Comparative Research into Examination Practices at Japanese, Chinese and Korean Patent Offices

On November 14, 2013, the JPO published the “Comparative Research Report on Description Requirements” produced by the Japanese, Chinese and Korean patent offices, as well as a tentative Japanese translation thereof.

The report consists of comparison tables as well as comparative analysis based on said tables. Following the 2010 report on comparative research into inventive step and the 2012 report on comparative research into novelty, this year’s report collects the comparative research carried out on description requirements.

For more information, please see the JPO Homepage below:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm

- - - (Previous Information) - - -

On December 28, 2012, the JPO published a provisional Japanese translation of the two reports ‘Comparative Study of Novelty’ and ‘Study of Examples of Novelty,’ which were originally published on November 27, 2012. A comparative study of the key matters included in the reports is now planned.

The provisional Japanese translation can be found on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm


- - - (Previous Information) - - -

The JPO, which is conducting a comparative study of its own examination practices and those of the patent offices of China and Korea, published two reports on November 7, 2012: 'Comparative Study of Novelty' and 'Novelty Case Studies.' These reports collect the results of case studies and comparative studies of examination criteria and laws and ordinances related to novelty, following inventive step.

There are plans to publish provisional Japanese translations of the reports at a later date.

The reports (in English) can be read on the JPO Homepage at the address below:

http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm

- - - (Previous Information) - - -

On December 16, 2011, the JPO published a report regarding an example study related to the progressiveness of the Japanese, Chinese and Korean Patent Offices. The report is based on five cases and looks at the invention outlines and the results, comparisons and arguments from the three Patent Offices in each case.
Prior to this example study, a report on a comparative study into progressiveness was published in English in December 2010.

The report can be found on the JPO homepage via the link below:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm

- - - (Previous Information) - - -

On January 31, 2011, JPO released a Japanese translation of "Comparative Study Report on Inventive Step (JPO - KIPO - SIPO)", a report including contrast tables of legislation of the patent offices of Japan, China, and Korea in relation to the inventive step, contrast tables of their examination criteria, and comparative analysis of the differences and similarities between these. The information in this report is useful in comprehending the views of the three countries with regard to the inventive step.

In addition, from 2008 to 2009, a comparative study on description requirements, inventive step, and novelty was conducted among JPO, USPTO, EPO.

You can find the comparative study report on inventive step on the following website of JPO:

http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_hikakuken.htm



Use of Global Patent Examination Highway to Commence January 2014

The Japan Patent Office will begin using its Global Patent Examination Highway in January 2014.

Currently, 30 countries or regions are able to use Patent Prosecution Highways (PPH) in Japan, but the type of PPH available varies depending on the country, making the system difficult for applicants to understand. The various types of PPH will therefore be standardized as a single Global Patent Examination Highway.

Twelve countries or regions (U.S.A, Korea, U.K., Denmark, Finland, Russia, Canada, Spain, North Europe Patent Office, Norway, Portugal and Australia) have made agreements with the JPO to use the Global Patent Examination Highway.

For more information, see the Ministry of Economy, Trade and Industry homepage:
http://www.meti.go.jp/press/2013/11/20131101007/20131101007.html



Towards Accelerated Establishment of Very Stable Rights and Improved Usability

A collated report entitled “Towards Accelerated Establishment of Very Stable Rights and Improved Usability” was published by the JPO on September 24, 2013. An outline of the report is below.

1. Considering the realization of accelerated establishment of very stable rights
The features of invalidation trials, as a substitute to declarations of opposition, are not being fully utilized. This is for several reasons, including a decrease in the number of cases where an invalidation trial is requested within one year after the registration of the establishment of a patent right, the difficulty of using oral proceedings due to the workload, and the practice of holding back acquired invalidation materials for use at a future date rather than immediately requesting an invalidation trial. As a result, it is possible that defective patents continue to exist. Also, if there are concerns over the quality of patents at the foundation of globally-expanding enterprises, this will have a negative influence on global operations. For these reasons, there is a demand for accelerated establishment of very stable rights.

2. Improving Usability
In an aim to bring about compatibility with the Patent Law Treaty (PLT), ways to introduce relief provisions in connection with requests for examination, priority rights etc. are being considered.

Also, in cases where a disaster such as a major earthquake occurs either in or outside Japan, preparations will be put in place to provide relief in connection with procedures carried out by victims of said disaster.
Further, due to the complex payment procedure involved when prescribed charges must be paid to WIPO for PCT international applications, separate from those to the JPO, ways to establish a system whereby such fees can instead be paid to the JPO are being considered.

The report can be read on the JPO Homepage below:
http://www.jpo.go.jp/shiryou/toushin/toushintou/tokkyo_bukai_houkoku1.htm



Industrial Structure Advisory Council IP Subcommittee materials regarding the handling patent administration issues based on Japan’s “restoration strategy”

On September 13, 2013, the JPO published materials distributed at the first IP subcommittee meeting. The prominent materials dealing with patent administration, in particular No. 3 (“handling patent administration issues based on Japan’s “restoration strategy””), outline the content and results of measures aimed at establishing a national commitment to IP (such as increased examination speed, support measures for small and medium-sized enterprises, harmonizing the patent system at the international level, human resources etc.). In addition, it outlines polict measures based on environmental changes over a ten-year period (such as advancing the number of international and national applications, advancing the applications of major powers and emerging nations, and an increase in overseas IP litigation), aimed at reviving the Japanese economy.

Such policy measures include increasing the speed and quality of examinations, support for the protection and acquisition of global rights, revision of the employee inventions system and support for the IP strategies of small and medium-sized enterprises. In accordance with these measures, amendments to the law are being considered, as published in a report in February of this year.

The materials can be viewed on the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/shingikai/tizai_bunkakai_01_paper.htm



Guide to Writing Design Registration Application Documents and Drawings etc. Partially Revised

The JPO is continuously updating revision information for its guide to writing design registration application documents and drawings etc. On July 23, 2013, the JPO announced that the methods specified in the section on attempting to acquire design registrations have been revised to include concrete examples of ways of writing applications.

The guide is available on the JPO homepage below:
http://www.jpo.go.jp/shiryou/kijun/kijun2/h23_zumen_guideline.htm



2013 Intellectual Property System Explanatory Meeting (for Newcomers) Text

On July 16, 2013, the JPO published the 2013 edition of the text for its Intellectual Property System Explanatory Meeting (for Newcomers). Primarily giving an outline of the systems used for patents, utility models, designs and trademarks, the text provides an easy-to-understand explanation of intellectual property information.
The text can be read on the JPO Homepage below:
http://www.jpo.go.jp/torikumi/ibento/text/h25_syosinsya.htm



Clarification of How to Utilize Accelerated Patent Trial Examinations

In order to ensure that the trial decisions for cases that qualify for accelerated trial examination are issued in advance of normal cases, the JPO has issued a clarification of how to make use of the system. Namely, when a trial is requested for cases with an overseas applicant, in order to be consistent with the accelerated trial examination system, accelerated trial examination must be made without delay. In addition, even if accelerated trial examination has been requested, if a request for extension of response period is made, as a rule the case will become ineligible for accelerated examination.

For more information, please see the JPO Homepage:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/patent_meikaku.htm



Utilizing Extensions of Response Period for Notifications of Reasons for Refusal

The JPO has published a guide to key points when filing multiple time extensions to the response period for a notification of reasons for refusal on the same day, as well as a list of answers to frequently asked questions. The guide and FAQ also apply to extensions of period regarding notifications of reasons for refusal issued during the trial phase and extensions to the response period for interrogations.

For more information, please see the JPO Homepage:
http://www.jpo.go.jp/torikumi/t_torikumi/kyozetu_entyou.htm



Revision to Accelerated Examination/Trial Guidelines for Patent Applications

With the enactment of the Act for Promotion of Japan as an Asian Business Center on November 1, 2012, related patents have become eligible for accelerated examinations and trials. Accordingly, the guidelines for accelerated examinations and trials for patent applications have been revised. In addition to patents related to the Act for Promotion of Japan as an Asian Business Center, six more types of patent have also become eligible for accelerated examinations and trials.

Please see the JPO Homepage for more information.
http://www.jpo.go.jp/torikumi/t_torikumi/souki/azia_kaitei.htm



Patent Administration Annual Report for 2013

The Japan Patent Office published its Patent Administration Annual Report on June 25, 2013.

In addition to the main data on intellectual property, the report also indicates future courses of action in IP strategy for enterprises aiming to improve their competitiveness, as well as containing information and measures for helping to improve IP strategy.

The main statistics in the report indicate that the period between filing an examination or appeal for cases prior to rights grant and the first action being taken is shortening, and that the number of patent, utility model, design and trademark applications in 2012 increased over the number filed in 2011.

The Patent Administration Annual Report can be viewed on the JPO Homepage:
http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2013_index.htm



Examination Standards of ‘Requirements for unity of invention’ and ‘Amendments that alter Special Technical Features (STF)’ Revised

Following the collection of public comments on the proposed revisions to the examination standards of ‘requirements for unity of invention’ and ‘amendments that alter Special Technical Features,’ said examination standards have been revised. Cases affected by this revision are those which were filed after April 1, 2007 and for which examination was requested after July 1, 2013.

These revisions mean that the scope of inventions eligible for examination has expanded, and in certain cases the limitations on amendment have been relaxed for amended inventions subject to examination. These changes mean that the new examination standards are more beneficial to applicants.

More information can be found on the JPO homepage:
http://www.jpo.go.jp/shiryou/kijun/kijun2/hatsumei_kaitei.htm



Investigation and Research Report on Employees’ Inventions

In order to promote the interests of enterprises and increase their international competitiveness, it is becoming increasingly important to consider how to build a framework for an incentive system that encourages global development. One IP strategy in this regard is the provision of invention incentives, and the above-mentioned report covers investigations into and discussions on the protection and administration of inventors, etc.

As one point of consideration, the report raises the issue that many Japanese and foreign enterprises provide incentives at the time of filing an application or before execution/rights acquisition. However, this is not limited only to invention, and many enterprises provide incentives in a wide range of IP activities. As a result, the report indicates, not all incentives are monetary and some are related to receiving credit or promotions.

The report can be viewed on the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/chousa/syokumu_hatsumei.htm



Making Practical Use of the IT Court

In order for users to make practical use of the IT Court, the JPO has published usage examples of IT devices, procedures for utilizing said devices and important points to note, etc. For example, the guide details the use of a large display when giving a technical explanation, and the execution of relevant software on a laptop computer when giving an explanation of software, etc.

The chief justice decided that the IT court was necessary based on the proposals of applicants.

For more information, please see the JPO Homepage below:
http://www.jpo.go.jp/torikumi/t_torikumi/itshinpan_katsuyou.htm



Guide to Oral Examination Practice

On June 27, 2013, the JPO published a guide to oral examination practice. Based on accumulated experience from past oral examinations, the guide consolidates approaches to oral examinations, including the stages of preparation and progressing through the examination, as well as providing information on the realities of examinations. The guide also provides an abundance of examples for reference.

In addition, if the decision has been made to carry out an oral examination, as a rule a notification of the particulars of the examination will be sent to the concerned party. This notification clarifies the points that should be asserted and substantiated in order to allow recipients to make use of the examination’s full potential. Further, although oral examinations are, as a rule, freely open to public observers, practically speaking if the number of people wishing to observe is higher than the number of seats available, it may not be possible for everyone to observe the examination.

Oral examination practice guide:
http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/koutousinri.htm

Information on observing oral examinations/examination of evidence:
http://www.jpo.go.jp/torikumi/t_torikumi/boucho.htm



Results of User Survey on Quality of Patent Examinations Etc. Reported

The JPO has conducted a survey of 675 users (holding a total of 2,765 patent applications) on the subject of the quality of patent examinations, with the aim of clarifying areas where said examinations can be improved.

Regarding the overall quality of patent examinations, approximately 90% of those responding to the survey rated the examinations either ‘fully satisfactory,’ ‘quite satisfactory’ or ‘normal.’ On the other hand, the report details that in order to improve the quality of examinations, areas that should be focused on include decreasing inconsistencies in examination decisions and improving decisions regarding inventive step, written description requirements and unity of invention.

Regarding the overall quality of international search reports, again approximated 90% of those responding to the survey rated the reports either ‘fully satisfactory,’ ‘quite satisfactory’ or ‘normal.’ However, areas to be investigated for potential improvement are searches of foreign literature and non-patent literature and the elimination of discrepancies between the international and national phases.

The primary demands from users were for appropriate decisions regarding novelty and inventive step and more substantial written explanations of said decisions; for reduction of inconsistencies in examination decisions; and for more substantial searches of foreign literature and non-patent literature.

The report can be viewed on the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/chousa/shinsa_user.htm



Patent Examination Cooperation with Indonesia Strengthened

From June 1, 2013, the JPO’s jurisdiction over international search reports and preliminary examination reports expanded to include PCT applications received at the Indonesian Directorate General of Intellectual Property Rights (DGIPR). In addition, on the same day Japan and Indonesia began a trial Patent Prosecution Highway (PPH), as part of efforts to strengthen examination cooperation between the two countries.

For more information, please see the JPO Homepage:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pct_isa_ipea.htm



6th ‘Big 5’ Patent Office Directors’ Conference

On June 5, 2013, the 6th ‘Big 5’ Patent Office Directors’ Conference was held, with participants from the five major patent offices worldwide: Japan, the U.S., Europe, China and Korea. The following items were raised at the conference:

1. A one-stop reference system for examiners, which collects data on patent examinations from each of the five patent offices, was approved to begin operating this summer. In addition, trial programs were begun to expand usage of this system.
2. Agreement was reached on a policy regarding patent information such as patent publication data, etc. that is the subject of prior art searches.
3. It was agreed to consider ways to unify requirements for the PPHs of each of the five patent offices and to increase their quality.

For more detailed information, please see the 6th ‘Big 5’ Patent Office Directors’ Conference Press Release on the JPO homepage below.
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/godai_patent.htm



2012 Trial Conductors’ Study Meeting Report

The JPO has published a report from the 2012 Trial Conductors’ Study Meeting.
Continuing on from the previous year, research studies were carried out into the judgment criteria used by the JPO and the IP High Court, based on concrete examples of trial decision and judgments in six fields (machinery, chemistry, bioscience, electronics, designs and trademarks). Thirteen examples were published as the result of these studies.

In addition, the Trial Conductors’ Subcommittee has published the outcome of its discussions aimed at the enrichment of oral proceedings.

More information can be found on the JPO Homepage below:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm

- - - (Previous Information) - - -

On May 16, 2012, the JPO announced a report for fiscal 2011. This report contains results of studies into not only patents but also designs and trademarks, and therefor the name of the study group has been changed to the ' Working-level Judges Study Group.' The report contains investigations into discrete cases, as well as improvements to oral proceedings. The aim of the report is to improve oral proceedings and the objectiveness and clarity of judgment standards.

For fiscal 2011, in addition to novelty, inventive step, description requirements, amendment/correction requirements, information on designs, trademarks and oral proceedings (examiner coaching, dealing with the concerned party etc.) are collected in the report.

The report is available on the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm



Publications FAQ Announcement

The JPO has revised its FAQ regarding publications. The FAQ is divided into six sections: section 1 covers the time of publication before examination; section 2 covers the issuing of a publication; section 3 covers inspection and purchasing; section 4 covers publication content; section 5 covers online publications; and section 6 covers general topics not addressed in other sections.

More information can be found on the JPO homepage below:
http://www.jpo.go.jp/torikumi/kouhou/kouhou2/koho_faq.htm



Report by Patent System Subcommittee: ‘Toward Early Establishment of Very Stable Rights and Increased User Convenience.’

With the aim of updating the patent system to keep it relevant to the present, a new report has been published. This report covers a new system that would realize early protection of very stable rights, as well as measures etc. to progress the normalization and streamlining of methods that help increase user convenience.

The report also announces the introduction of several new systems, including a review system that provides opportunities to revise a patent after it has been granted and a relief system pertaining to failure to meet examination deadlines and priority right, as well as the fact that the JPO has been made a receiving office for payment of various PCT application fees, etc.

http://www.jpo.go.jp/shiryou/toushin/toushintou/pdf/h25_2_tokkyo/houkoku.pdf



System for New Trademark Types

A report has been published via the Trademark System Subcommittee Advisory Council held in February 2013, regarding the trademark system established for the protection etc. of new trademark types.

To protect various enterprises’ means of communicating their diverse brand messages, it is believed that protection should be made available to motions, holograms, colors without outlines, positions and sounds. The above-mentioned report covers methods of specifying registration requirements and the scope of rights, etc. for these new types of trademarks. In addition, the report announces expansion of the core of local organizations’ trademark registrations, in order to protect new local brands.

http://www.jpo.go.jp/shiryou/toushin/toushintou/pdf/h25_2_shohyo/houkoku.pdf



Analytical Research Report into Economic Growth Origination from Trends in Applications etc. for Industrial Property Rights in Japan

The JPO has published a report of its analytical research, divided into seven areas, with the aim of making effective use of technological innovation and IP policy. The report collects analysis of the number of patent applications made to the JPO by Japanese enterprises, etc. and the number of applications made in foreign countries; the effect on results of examination and stability caused during the period before examination commences; analysis of the realities of supplemental use of designs and patents; and the results of analysis of the stability of rights during invalidation trials, etc.

The Analytical Research Report is available on the JPO Homepage at the following address:
http://www.jpo.go.jp/shiryou/toushin/chousa/h24_sangyouzaisanken_keizai.htm



Project Promoting Strategies for Internationalizing Intellectual Property Rights Announced

The results of an investigation into and analysis of the most recent intellectual property strategies employed by enterprises from Japan and various foreign countries have been published by the JPO, along with a report regarding the current state of intellectual property strategies used by Japanese enterprises to strengthen their international competitiveness.

The five themes of the reports are: strategies for procurement of IP resources; strategies for design in order to acquire IP rights; strategies for executing the acquisition of IP rights; securing and managing human resources for the creation of IP; and strategies for international standardization. The research that went into each theme collected information from questionnaires, hearings, and foreign information outlets, and included meetings that carried out specialist consideration of the topic.

For more information, please see the JPO homepage below:
http://www.jpo.go.jp/shiryou/toushin/chousa/kokusai_kenrika.htm



The Five Major Patent Offices’ Catalogue of Differing Practices: ‘Points of Difference in Examination Practice’

Examiners from the Japanese, U.S., European, Chinese and Korean Patent Offices, which are the five largest patent offices in the world, have issued reports that consider and make comparisons on specific themes, in order to allow more effective use of examination results from other patent offices. Recently, a report on disclosure of prior art was published in English with a tentative Japanese translation, and more detailed information has been included in a report published in September 2012 entitled ‘Points of Difference in Examination Practice.’

For more information, please see the JPO homepage below:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/jitsumu_catalog.htm

- - - (Previous Information) - - -

On February 27, 2012, a Japanese translation of the Catalogue of Differing Practices was published (the original text was published on January 25, 2012).
In cases where the original text and the translation differ, the original text takes precedence.
The Japanese translation is available on the JPO Homepage at the address below:

http://www.jpo.go.jp/torikumi/kokusai/kokusai2/jitsumu_catalog.htm

- - - (Previous Information) - - -

On January 25, 2012, the “Differing business practices catalog” was published, detailing the differences in law and examination standards compared between the respective Patent Offices of Japan, the U.S., Europe, Korea and China.
The details for every country are compiled in English into large subjects. Starting with the application and its content that form the foundation of the interpretation of the claims as well as the Interpretation of the claims, Prior art, Novelty, and Inventive steps.
A provisionary Japanese translation is scheduled to be published in the middle of February, 2012.

JPO website
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/jitsumu_catalog.htm



Support Activities for Small and Medium-sized Enterprises Carried out by Industrial Property Rights Specialists

On April 15, 2013, the JPO announced that specialists in industrial property rights would be carrying out activities aimed at supporting small and medium-sized enterprises. Specifically, specialists will give introductions to support measures that help enterprises acquire rights in Japan and abroad, carry out visits to enterprises in order to respond to consultation requests, conduct seminars aimed at those new to the field of rights acquisition and so on. These support measures are intended to allow small and medium-sized enterprises to make strategic use of intellectual property.

The areas and frequency of specialists’ visits, the seminar reports and information on activities can be viewed on the JPO homepage below:

http://www.jpo.go.jp/torikumi/chushou/chitekizaisan.htm



Interviews Using New TV Conference System

Starting on April 1, 2013, applicants etc. are now able to take part in interview examinations using their personal computers, via a new TV conference system. Applicants, representatives and examiners are able to participate from up to ten difference locations simultaneously, and share materials such as PDF documents between the conference participants. This system allows for more thorough interviews to be conducted, and is expected to raise the overall quality of examinations. For information on how to apply, please see the JPO homepage below: http://www.jpo.go.jp/torikumi/t_torikumi/telesys_mensetu.htm
- - - (Previous Information) - - -

From April 1, 2013, the JPO is scheduled to introduce a new TV conference system. In practical terms, this means that applicants etc. will be able to use their own devices (PCs, mobile tablets etc.) to access the TV conference system via a website provided by the JPO and conduct interviews using said system. Interviews have been conducted via TV conference since July 1997, to allow examiners and applicants to make themselves mutually understood and promote fast and appropriate examinations.

More information on the new system can be found on the JPO Homepage below:
http://www.jpo.go.jp/torikumi/t_torikumi/telesys.htm



Summary Examinations Taking Into Account Business Strategy Begin

As part of support for enterprises’ business strategies, in April 2013 the JPO began a service that makes it possible to acquire comprehensive rights to intellectual property that can be used in business. Although it is not guaranteed that the examination and planning for acquisition of rights will take place at the preferred time of the applicant, the applicant’s business strategy will be taken into account as much as possible. The applicable cases and requirements for the aforementioned examination have also been published.

More information can be found on the JPO Homepage below:
http://www.jpo.go.jp/torikumi/t_torikumi/matome_sinsa.htm

- - - (Previous Information) - - -

On November 7, 2012, the JPO announced that the current joint examination system for related applications will be discontinued in fiscal 2012. This examination system allowed groups of related applications that were technologically very similar to be examined together, based on a unified judgment standard, after the technical content of the applications had been determined via interview etc.

According to the JPO, from April 2013, trials of a 'consolidated examination system for project strategy' developed from the joint examination system will begin. Under this examination system, examiners who specialize in different fields will work together to examine applications while taking into account the desired schedule of the applicant, in order to be able to comprehensively grant a patent at an appropriate time.

More information can be found on the JPO Homepage:
http://www.jpo.go.jp/torikumi/t_torikumi/sinsa_syuuryou.htm



JPO Expands its Jurisdiction Regarding International Searches and International Preliminary Examinations of PCT International Applications

The JPO plans to expand its countries of jurisdiction in order to provide international search reports and preliminary examination reports for PCT applications made with newly emerging nations, etc. as the receiving office. Recently, it has become possible for the JPO to provide international search reports and preliminary examination reports for PCT applications received after April 1, 2013 by the Intellectual Property Corporation of Malaysia. The countries where the JPO now has jurisdiction are Japan, Korea, The Philippines, Thailand, Vietnam, Singapore and Malaysia.

JPO Homepage:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/pct_isa_ipea.htm

Ministry of Economy, Trade and Industry Homepage:
http://www.meti.go.jp/press/2012/03/20130329004/20130329004.html



Public Comments on Proposed Revisions to Examination Standards Regarding ‘Requirements for Unity of Invention,’ and ‘Amendments That Change the Special Technical Characteristics of an Invention’

On March 6, 2013, the JPO began collecting public comments on proposed changes to examination standards regarding ‘Requirements for Unity of Invention,’ and ‘Amendments That Change the Special Technical Characteristics of an Invention.’ The JPO is also collecting comments on the related area of methods of advancing examinations. The final date for submitting opinions is April 5, 2013.

For more information on the proposed revisions, please see the JPO Homepage:
http://www.jpo.go.jp/iken/shinsa_kaitei2536.htm



Outline and Advantages of Patent Prosecution Highway

In March 2013, the JPO published a revised set of materials on the subject of the outline and effective use of the Patent Prosecution Highway (PPH). These materials collect information on the advantages of the PPH, including reduction in costs and increased likelihood of being granted a patent, along with usage examples and points to be aware of when applying.

The materials can be viewed on the JPO Homepage:
http://www.jpo.go.jp/torikumi/t_torikumi/pdf/patent_highway/gaiyou.pdf



JPO Publishes Point-by-Point Explanation of Industrial Property Law (19th edition)

On January 9, 2013, the Japan Patent Office published the 19th edition of its point-by-point explanation of the Industrial Property Law on its homepage. Parts of the law revised in 2011 [2012?] have been added to the explanation. It can be found on the JPO homepage at the address below:
http://www.jpo.go.jp/shiryou/hourei/kakokai/cikujyoukaisetu.htm



Results of 30th Japan-US-EU Tripolar Patent Office Directors’ Assembly

At the Patent Office Directors’ Assembly held on November 16, 2012, while looking back on 30 years of the tripolar relationship, the assembly heard the major outcomes of the shared approach. Also, a number of items were confirmed as requiring mutual tripolar cooperation, including the promotion of work sharing, strengthening efforts to maximize use of the PCT system, re-assessing the importance of a quality matrix for judging the quality of examinations and so on.
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nitibeiou_meeting_30.htm



Collection of Examples Providing Guidelines for Prior User's Rights System

The JPO has published the 6th edition of ‘Guidelines for the Prior User’s Rights System (Collection of Prior Examples) – For Smooth Use of the Prior User’s Rights System and Maintaining Strategic Knowhow’’ on their homepage.
The Guidelines contain information on the Prior User’s Rights system – by which usage rights are upheld in cases where knowhow is kept secret as an invention is implemented or preparations are made, even if a third party later acquires the patent rights. The guidelines also have information on methods of utilizing the notarization or electronic signature systems as a method of providing proof, etc. The guidelines are also available for purchase in book form.
http://www.jpo.go.jp/shiryou/s_sonota/senshiyouken.htm



Guidelines on PCT International Searches and Preliminary Examinations (Provisional Japanese Translation)

On November 21, 2012, the JPO published a provisional Japanese translation of the Guidelines on PCT International Searches and Preliminary Examinations that were issued on July 1, 2012. The guidelines are mainly intended for examining officers, and are positioned as common rules for international searches and international preliminary examinations, but they are also of use to applicants.

In any cases where the provisional Japanese translation and the original text differ, the original text takes priority.

The provisional translation can be found on the JPO Homepage:
http://www.jpo.go.jp/shiryou/kijun/kijun2/guideline_pct.htm




Comparative Study of Utility Model Applications at Japanese, Chinese and Korean Patent Offices - Provisional Translation Published

On November 7, 2012, the Japan Patent Office published a table comparing the examination systems for utility model applications in use at the JPO, the Chinese State Intellectual Property Office, and the Korean Intellectual Property Office. Although each country uses the same basic system, each has certain unique characteristics, hence a comparative study was carried out. A provisional Japanese translation will be published at a later date.

The comparative table (in English) can be seen on the JPO Homepage at the address below:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_jitsuyou.htm


- - - (Previous Information) - - -


Following the publication on November 7, 2012 of a table comparing the utility model examination systems of the Japanese, Chinese and Korean Patent Offices, the JPO published a provisional Japanese translation of the table on November 27, 2012.

The Japanese translation of the comparative table can be found on the JPO homepage at the following address:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/nicyukan_jitsuyou.htm




Cost Reductions and Expansion of Accelerated Examinations based on Law on Promotion of Asian Consolidation

The Law on Promotion of Asian Consolidation was enacted on November 1, 2012, with the aim of increasing opportunities for employment and the creation of new projects by facilitating the operations of global enterprises.

Subsequently, small and medium-sized enterprises that fulfill certain criteria will now be able to receive a 50% reduction in the costs of examination of patents and first to tenth year patent fees. In addition, said enterprises will also be eligible for accelerated examinations and trial examinations.

Information on the cost reduction for examination and patent fees:
http://www.jpo.go.jp/tetuzuki/ryoukin/asia_kyoten.htm

Information on accelerated examination:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/azia_souki.htm



FAQ on Guidelines Regarding Relief Provisions for Procedures in Cases of Elapsed Deadlines

In fiscal 2011, due to revisions in the Patent Law, etc. (enacted in April 2012), a plan was introduced to establish new relief provisions in cases of elapsed deadlines and also to ease the requirements for such cases. Accordingly, when the JPO published its guidelines related to the changes, it also announced on October 2, 2012 an FAQ regarding the guidelines.

The FAQ can be found on the JPO Homepage at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/kikan_gide_faq.htm



Procedure for Incorporation by Reference Based on Rule 4.18 of PCT Regulations

On October 1, 2012, the JPO published details of a procedure for including elements or parts of international applications in citations (Incorporation by Reference) as based on Rule 4.18 of the PCT Regulations.

For an international application that follows a priority case, if elements or parts of the application are lacking at the international phase but are fully present in the basic application, the lacking items may be incorporated through supplemental citation of the basic application. If the receiving office approves this supplementation, it will regard the lacking items as having been included in the international application from the day the original application documents were received.

Details of the steps of the procedure, along with the conditions for carrying the procedure out and the related documentation, can be found on the JPO homepage at the address below:

http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/inyo_hojyu.htm



Databank of IP Information for Emerging Nations etc. Established

On September 3, 2012, the JPO established a databank of intellectual property information for emerging nations, etc., integrating IP information related to those nations. The databank brings together information useful for the protection of rights, including information on the laws of China, Korea and Taiwan, statistics, application practices, licenses, trial and litigation practices, and example trial decisions and precedents. The JPO intends to administer the databank until June 30, 2016.

The databank can be accessed at the following URL:
http://www.jpo.go.jp/torikumi/hiroba/titeki_databank.htm



Memorandum between JPO and Singapore IP Office Concluded

On July 11, 2012, the JPO and Singapore's Intellectual Property Office concluded a joint memorandum on cooperation between the two countries. This memorandum is separate from the memorandums on cooperation concluded with members of ASEAN on the same day, and incorporates giving the Singapore IP Office as a receiving office jurisdiction over international searches and preliminary examinations for PCT applications; improving prior literature searches and patent examinations; and working with specialists, etc. The background for this memorandum is the issue of setting up an environment for Intellectual Property in Singapore that will allow Japanese enterprises to develop smoothly.

http://www.meti.go.jp/press/2012/07/20120712001/20120712001.html



Examination Standards in the Field of Life Sciences

On July 6, 2012, the JPO published materials aimed at university researchers and patent managers, which explain examination standards in the field of life sciences.

The materials are primarily an explanation of the examination standards, but they also contain information on inventions that become patents, specification submission forms, and an outline of the procedures for acquiring patents in Japan and abroad. The materials have been designed to be easy to understand, and make use of charts and diagrams.

The materials are published on the JPO homepage at the address below:
http://www.jpo.go.jp/shiryou/s_sonota/lifescience_kijun.htm



Patent administration annual report 2012 Edition

The Japan Patent Office has published the Patent administration annual report 2012 Edition on June 29, 2012.
Printed in it are of course the trends and strategies in Intellectual Property in Japan, as well as in other nations, including developing countries. The Japan Patent Office has fresh in its memory the relief from due dates measures arranged by Patent Offices of all countries after the 2011 great East Japan earth quake. In the 2012 edition also includes these kind of measure aimed at revival.

Also, the totals off all categories are publicized.
http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2012_index.htm#toukei_shiryou




2012 annual Intellectual Property Rights System explanatory meeting (for beginners) Text

On June 19, 2012 the Japanese Patent Office published the text for the 2012 annual Intellectual Property Rights System explanatory meeting for beginners.

Starting out from a basic outline of the industrial property rights for patents, utility models, designs and trademarks the text details information about the use and practical application of said rights and supporting measures etc. Though it is aimed at beginners it covers a wide spectrum and thus can be useful to improve the knowledge, learning and understanding of users other than beginners too.

The text is available for review and download at the link below.
http://www.jpo.go.jp/torikumi/ibento/text/h24_syosinsya.htm



Filing Patent Applications for Research Results from Universities, etc.

On June 8, 2012, the JPO published materials entitled 'Filing Patent Applications for Research Results from Universities, etc.'

The material is aimed at university researchers and patent administrators, and summarizes in simple terms a framework for protecting and utilizing the results of university research. It covers the importance of applying for a patent before publishing research, as well as joint research and inventions and the acquisition of foreign patents.

The materials can be seen on the JPO homepage below:
http://www.jpo.go.jp/shiryou/s_sonota/pamphlet_re_ap.htm



Examination Handbook Updated

On May 23, 2012, the JPO published an updated examination handbook.

In addition to the points listed below, the handbook has been formalized, with notes, errors and unnecessary parts relating to examiners removed.

Updates to the handbook:
- Clarification of the objective of preferential examination (handbook 32.01)
- Addition of example text from notification of temporary withholding of examination (handbook 34.01)
- Corrections due to changes in the law (handbook 53.01, 63.01, 63.10, utility model search report writing handbook (example))
- Additions and revisions to examples of specifications quoted in Notifications of Reason for Refusal (handbook 63.04)
Example: Chinese Patent Publication No. XXXXXXXXX Specification
Chinese Patent No. XXXXXXXXX Specification
- Information on extensions to designated periods for submission under Patent Law Article 194.1 (handbook 67.01)

The handbook can be seen on the JPO homepage below:
http://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa.htm



2011JPO Statistics concerning application and registration figures

On May 15, 2012, the JPO published the application and registration figures with regard to patents, utility models, designs, and trademarks for the fiscal year 2011.

In terms of the type of applications, there were 342,610 patent applications, 7,984applications for utility model registration, 30,805 applications for design registration, and 108,060 applications for trademark registration.

Meanwhile, in terms of the type of registrations, 238,323 patent registrations, 7,595 utility model registrations, 26,274 design registrations, and 89,279 trademark registrations were granted.

Related JPO website:
http://www.jpo.go.jp/torikumi/hiroba/2011syutsugan_kensuu.htm



Partial Revision of Legal Enforcement Regulations Regarding International Applications etc. Based on the Patent Cooperation Treaty

Alongside the planned publication of revisions to the regulations of the Patent Cooperation Treaty (PCT) on July 1, 2012, a ministerial ordinance partially revision the legal enforcement regulations regarding international applications etc. based on the PCT was officially announced on May 10, 2012. The ordinance will come into force on July 1, 2012.

Under the revisions to the PCT, a principle has been newly established whereby in specific circumstances permission may be granted for a delay to an application in cases where the deadline has not been met. Accordingly, due to laws and orders relating to international applications, etc. based on the PCT, the following rules will be established relating to submitting documents with a fixed submission period to the JPO. If for certain reasons it was not possible to submit the document within the submission period, it will be possible to submit evidence showing that the document was submitted within a designated period soon after the reasons for delay were overcome. Also, under certain conditions it will be possible for said document to be treated as if it was submitting during the submission period.

For more information, please see the JPO Homepage below:
http://www.jpo.go.jp/torikumi/kaisei/kaisei2/kokusaisekou_240510.htm



Survey on trends in Applications by Japanese and Foreign companies operating in major technological fields.

The Japan Patent Office has published its findings from a survey conducted in Japan, America, Europe, China and Korea evaluating trends in Patent Applications in upcoming technology themes with a viable future such as fields connected with green innovations and life innovations, and trends in Design Applications for mobile phones and mobile telecommunication devices.
The following is an outline of some of the important findings;
・ Of the 9 technology themes 8 themes hold the top positions for most Patent Applications filed in Japan
・ Newly risen companies in East Asia are rapidly making strides in their ability for technological development
・ South Korean companies are actively making Applications for Design Registration in other countries
・ Companies in all surveyed countries are acquiring Design Rights for Smartphones and other mobile telecommunication devices.

For detailed information please see the Ministry of Economy, Trade and Industry website at the link below.
http://www.meti.go.jp/press/2012/04/20120425001/20120425001.html



Fiscal 2011 Analytical Search Report Regarding Industrial Property Application Procedures, etc.

The JPO has released a report outlining 7 points of analysis and 4 examinations into improving the benefits of intellectual property activity searches as listed below. This analysis and examination forms the basis for the JPO's discussions on the patent system and policy formulation, which are aimed at establishing an IP system that promotes technological reform and industrialization.

Seven-point analysis
1. Statistical analysis of patent applications made by Japanese applicants
2. Statistical analysis of design registration applications made by Japanese applicants
3. Analysis of intellectual property strategies of newly-formed enterprises
4. Mechanism for the occurrence of stockpiling in patent examination and primary determining factors in examination efficiency
5. Statistical analysis of patent applications made from foreign countries in East Asia
6. Statistical analysis of unused patents and profitability of enterprises
7. Demonstrative analysis of the ownership structure of research results of universities and small-medium enterprises

Four examinations, etc.
1. Examination of general estimation method
2. Examination of data and cleaning
3. Revision of extraction method for subjects of searches regarding small-scale applicants
4. Examination to increase search accuracy and answer rate

The search report is available on the JPO Homepage below:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken_syutuganbunseki.htm



Updating of English Translations of the Examination Guidelines

English translations of the following items relating to patent/utility model examination guidelines were revised and published on the JPO website on April 25, 2012.

Part Ⅱ Chapter 2 Novelty and Inventive Step

Part Ⅱ Chapter 3 Patent Act Article 29bis

Part Ⅱ Chapter 4 Patent Act Article 39

Part Ⅲ Section Ⅰ New Matter

Part Ⅲ Section Ⅲ Amendment to the Scope of Claims after Final Notice of Reasons for Refusal

Part Ⅲ Section Ⅳ Examples Concerning Amendment of Description, Claims or Drawings

Examination Guidelines (English Translation) can be viewed on the JPO website below:
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e_upadate.htm



Outline of License Rights Registration System from April, 2012

On April 3, 2012, The Japan Patent Office has published the outline of the License Rights Registration System that came into affect starting from April, 2012.
In accordance with the reform in 2008 the provisional non-exclusive license, and provisional exclusive license rights system was established and in conjunction the registration system had been reformed, however, due to the recent reform the provisional non-exclusive license, and temporary non-exclusive license rights registration system has been abolished and the outline of the license rights registration system that came into affect starting from April, 2012 has been organized.

Please visit the Japan Patent Office website from the link below for more detailed information.
http://www.jpo.go.jp/tetuzuki/touroku/h24_4_seidogaiyou.htm



A practical approach to invalidation trials and correction trials under the legal revisions of 2011

On March 21, 2012, the JPO published a guide entitled 'A practical approach to invalidation trials and correction trials under the legal revisions of 2011.'

Major revisions related to trials are: (1) corrections in invalidation trials; (2) partial settlement of trial decisions and corrections, and decisions to refuse corrections; (3) nullifying the effects on third parties of invalidation trial decisions; and (4) handling retrials due to post-decision invalidation trials etc. after conclusive ruling of infringement litigation, etc. The guide describes concrete procedures for the invalidation trials and corrections trials that influenced these revisions.

JPO Homepage:
http://www.jpo.go.jp/shiryou/kijun/kijun2/h23_jitumu_kanngae.htm



Attention! Warning issued over non-WIPO fee demands

WIPO has issued a warning to applicants and representatives regarding notices that demand payment of fees, but which are not issued by WIPO offices and are unrelated to actual PCT international application procedures. These notices are typically calculated in Euros or U.S. Dollars and demand payment by check and/or money transfer to addresses in Germany or Switzerland.

http://www.wipo.int/export/sites/www/pct/ja/docs/warning.pdf



Relief Regulations Regarding Procedures After Deadline Has Passed

On March 1, 2012, the JPO published a set of guidelines and a Q&A regarding relief measures for expired cases, as stipulated by revisions to the patent law carried out in 2011.

The areas covered are: submitting translations of foreign-language applications (patents) and foreign-language (PCT) patent applications (patents/utility models); supplementary payment, etc. of patent costs/premium patent costs (patents/utility models/designs/trademarks).

The guidelines cover essential matters, the submission of documents and so on.

The guidelines and the Q&A can be viewed on the JPO homepage at the address below.

http://www.jpo.go.jp/shiryou/kijun/kijun2/kyusai_method.htm



Revisions to the Patent Fee, etc. Reduction System

The JPO has published a list detailing reductions for patent registration fees, examination fees, utility model registration fees and fees for technical opinion as to registrability of utility models. These reductions will apply from April 1, 2012, when revisions to the Patent Law are scheduled to come into effect. Fee reduction eligibility requirements for individuals and corporations, which apply after April 1, 2012, was renewed at the JPO website.

JPO homepage:
http://www.jpo.go.jp/tetuzuki/ryoukin/genmen_24_4.htm
For individuals:
http://www.jpo.go.jp/tetuzuki/ryoukin/personal24_4.htm
For corporations:
http://www.jpo.go.jp/tetuzuki/ryoukin/corporation24_4.htm

- - - (Previous Information) - - -

About the remission system, based on the revision of the patent law, the period for which remission is allowed has been expanded and the requirements have been loosened.

Regarding the applicability of the remission system after the revision,
The examination fee charged will become subject to the revision for cases that are paid on or from the start date of the revision, April 1, 2012. Patent registration fees will become subject to the revision if their payment is on or from the start date, however cases with payments that are due until the day before the start date, but are paid after the start date are not subject to the revision.

Japan Patent Office home page
http://www.jpo.go.jp/tetuzuki/ryoukin/menzei_info.htm



Materials Outlining Brazilian Patent System

The JPO has published materials that were distributed at a recent seminar on the Brazilian Patent System, which was held on January 31, 2012.

Four sets of materials distributed at the seminar have been published: (1) The State Patent Applications in Brazil; (2) Brazilian Patent System - A Brief Introduction; (3) Brazilian Patent Substantive Examination; and (4) Brazilian Patent Litigation and Practical Business. (1) is available in Japanese only; (2), (3) and (4) are available in both English and Japanese.

The materials can be viewed on the JPO Homepage below:
http://www.jpo.go.jp/torikumi/ibento/ibento2/brazil_seminar.htm



Publication of “Differing business practices catalog”

On January 25, 2012, the “Differing business practices catalog” was published, detailing the differences in law and examination standards compared between the respective Patent Offices of Japan, the U.S., Europe, Korea and China.
The details for every country are compiled in English into large subjects. Starting with the application and its content that form the foundation of the interpretation of the claims as well as the Interpretation of the claims, Prior art, Novelty, and Inventive steps.
A provisionary Japanese translation is scheduled to be published in the middle of February, 2012.

JPO website
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/jitsumu_catalog.htm



The Conclusion of the Defer Payment for Examination Fee system.

The Japanese Patent Office has announced that the system for deferment of payment for examination fees that was initiated from April 2009 will come to a conclusion on March 31, 2012.
The reasons for this are, among others, that in 2011 the fees for examination were lowered, and due to revisions in the Patent Law in 2011 the scope of applicants eligible for remissions was further expanded.

Japan Patent Office home page:
http://www.jpo.go.jp/tetuzuki/ryoukin/shinsa_kurinobe_syuryo.htm



Points of caution concerning the handling that goes with the introduction of the reasonable opposition system of putting rights into effect

The Japanese Patent Office publicized on January 16, 2012 the outline of a system, to be implemented, that a non-exclusive license has come into effect against right holders for a patent, utility or design without registration on the licenses. In accordance with the discontinuation of the registration system, a request for registration will be accepted up until March 30, 2012. Yet, applications made on or after April 1, 2012 and that are rejected cannot be applied for again.

Japan Patent Office home page
http://www.jpo.go.jp/tetuzuki/touroku/tujou_touzen_chui.htm



Patents / Utility Model Examination Handbook

The Patents / Utility Model Examination Handbook has been revised as of January 11, 2012. The main changes include changes in examination standards “56. Extension of the duration of patent right”, such as certain points of Exceptions due to lack of novelty rules in accordance with reform in the patent law, “61. General Examination”, and concerning points of special attention for requirements for examination under Article 17-2-4 “63. Notification of reason for refusal”.

Please view the handbook at the JPO Homepage linked below.
http://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa.htm

- - - (Previous Information) - - -

On April 28, 2011, the JPO updated its Patent and Utility Model Examination Handbook.
The updates are as follows:
1. Clarification of the position, etc. of the examination notes in the Handbook’s “61.04 Examination Notes”, 2. Supplements and corrections, etc. to the description of the examination process concerning the requirements indicated in “63.09 Points to note in the Examination Concerning the Requirements in Japanese Patent Law, Article 17 bis, Paragraph 4”, 3. An update on the gist of the survey and a renewal of the catalogue of topics in “91.01 Survey of the Trends in the Inventions in Patent Applications” 4. A renewal of items with regard to the examiners, etc.

The Handbook can be accessed through the following link to the JPO website (Japanese only):
http://www.jpo.go.jp/shiryou/kijun/kijun2/handbook_shinsa.htm


"Extension of the term of patent right," Revised Examination Guidelines

The JPO publicly announced a revision in the examination guidelines for extensions of the term of Patent right on December 28, 2011. With a basic policy of not conflicting with the Supreme Court, and ensuring that an explanation consistent with any prior disposition issued by the Supreme Court can be given, the new way of handling the implementation of patented inventions under Patent Act Article 67-3-1-1 will be used to judge whether or not it is necessary to incur measures as prescribed by government ordinance.
The revision in the examination standard applies to all examinations after December28, 2011, regarding cases that had pending applications for registrations of the extension on December 28, 2011 and applications for registrations of the extension filed thereafter.

Japan Patent Office Home Page
http://www.jpo.go.jp/torikumi/t_torikumi/tokkyoken_encyo_kaitei.htm



Average time required for patent/utility model registration invalidation trials

On December 16, 2011, as part of its fiscal 2010 oral examinations, the JPO announced a summary of the average length of time required for each examination stage in patent/utility model registration invalidation trials.

From the filing of the request for an invalidation trial until the trial verdict, the shortest cases took approx. 7-8 months (domestic applicant) or 8-9 months (overseas applicant). The time required for trials varied depending on invitations for rebuttals, amendment requests, etc.

For more information, please visit the JPO homepage below:
http://www.jpo.go.jp/torikumi/t_torikumi/mukousinpan_days.htm





Partial amendments to Patent Law will come into effect on April 1, 2012

The 'Government Ordinance Determining Date of Execution for Partial Amendments to Patent Law etc.' was concluded by the Cabinet on November 29, 2011. Under this government ordinance, the partial amendments to the Patent Law etc. that were announced in June 2011 will come into effect on April 1, 2012.

http://www.meti.go.jp/press/2011/11/20111129002/20111129002.html




Research report regarding prior user's right system

Following publication on September 6, 2011 of its findings from research into the prior user's right system, conducted as part of its 2010 research theme, the JPO has published a new table of information. This table compares various countries, showing whether or not they have prior user's right and the necessary requirements in each country, etc.

The table is available on the JPO homepage at the address below.

JPO homepage:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken_kouhyou.htm


- - - (Previous Information) - - -

On September 6, 2011, the JPO published the 2010 Investigation Research Report. This research investigates the present systems and trends in the key countries of the world.
The topics of last fiscal year (2010) were: 1) Investigation Research Report regarding the system of prior user's right, 2) Investigation Research Report regarding post-patent grant amendments and corrections in various foreign countries, and 3) Investigation Research Report regarding grace periods.

The Report can be viewed on the following JPO website:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken_kouhyou.htm




Revision of examination criteria -- "Description requirements for specifications and scope of claims"

Following the public comments regarding the revision of examination criteria for description requirements for specifications and scope of claims, the description criteria have been revised. On September 28, 2011, the JPO made an announcement of the revision.
This revision mainly consists of corrections of inconsistencies between the requirements occurring due to the fact that the criteria had been revised irregularly and of supplements and clarifications necessary for precise decisions and for correcting disparities in decisions.
The revised examination criteria will apply to examinations conducted on or after October 1, 2011.

The examination criteria can be viewed on the JPO website below:
http://www.jpo.go.jp/torikumi/t_torikumi/kisaiyoken_shinsa_kaitei.htm



Publication of Guideline on Obtaining Eligibility for Exception to Loss of Novelty (edition corresponding to revised Patent Act )

On September 20, 2011, based on the public comments regarding an applicant's guideline on obtaining eligibility for exception to loss of novelty corresponding to the 2011 Patent Act revision, the Japan Patent Office (JPO) published said guideline and a compilation of Q&A.
In this guideline, evidence documentation has been reconsidered, and objective evidence materials may now be supplemented at a later date, if submitted within thirty days after the filing date within the scope of items indicated in a certificate by the applicant. In addition, description examples for cases of disclosure through sale and television, etc. has been added to the guideline.

Related JPO website:
http://www.jpo.go.jp/shiryou/kijun/kijun2/hatumei_reigai.htm



Regarding accelerated examination and trial examination of patent applications

On July 28, 2011, the Japan Patent Office (JPO) updated the information on its website regarding accelerated examination and trial examination. The track record for fiscal 2010 indicates that accelerated examination was conducted approx. 1.7 months after filing the pertinent application, and after filing an application for accelerated trial examination, a decision was made approx. 3.7 months after the date on which trial examination became possible. In addition, a usage record from 1986 to 2010 is also revealed.

Related JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/v3souki.htm



Commencement of accelerated examination and trial examination as post-disaster reconstruction support

On July 28, 2011, the Japan Patent Office (JPO) announced that, as part of the reconstruction support after the tsunami and earthquake in Eastern Japan earlier this year, on August 1, 2011, it will initiate accelerated examination and trial examination in order to enable businesses, etc. in the affected areas to swiftly obtain and implement rights. The initiative is intended for persons residing or having an address in the specific areas struck by the disaster as well as persons who have suffered damages as a result of the earthquake, and will be implemented for a period of one year.

Related JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/souki_kaisi.htm



Public comments: Applicant's draft manual for eligibility for regulations concerning exception to loss of novelty

In accordance with the expansion of the eligibility for exception to loss of novelty based on the 2011 Japanese Patent Act amendment, the manual concerning exception to loss of novelty is to be partially changed. The JPO is gathering public comments with regard to the draft manual. The term for submitting opinions is until August 12, 2011.

Related JPO webpage:
http://www.jpo.go.jp/iken/kaiseihou_tebiki.htm



Invitation of public opinions concerning the draft revision of examination standards of description requirements for specification and scope of claims

On June 22, 2011, the JPO commenced gathering public comments with regard to the draft revision of examination standards concerning description requirements.

The basic course of the revision plans supplementing and clarification of inadequate explanations and consistency of all requirements.

The revision covers a broad range of issues such as clarification of the contents, addition of recent precedents, and enhancement of case examples.

The term for submitting opinions is until 21 July, 2011.
http://www.jpo.go.jp/iken/meisai_tokkyo_kisai.htm



PPH MOTTAINAI trial program

In the eight countries of Japan, U.S.A., Canada, Australia, Finland, Russia, and Spain, a trial program relaxing the requirements for applying to Patent Prosecution Highway (PPH) will commence on July 15, 2011 for a period of one year. This program will make it possible for applications which receive a positive examination result not necessarily by the first examining institution, but in any of the aforementioned eight countries, to use the PPH system.

http://www.meti.go.jp/press/2011/06/20110617002/20110617002.html



Report on trends in patent application technologies

Concerning the trend survey on patent application technologies executed in 2010, the results of the survey with regard to each country/institution were announced on June 15, 2011. The survey on patent application technologies offers an analysis based on patent information and can be used for reference in research development strategies.

http://www.jpo.go.jp/rireki/index.htm



A law partially amending the Japanese Patent Act, etc., promulgated on June 8, 2011

A law partially amending the Patent Act, etc., was promulgated on June 8, 2011. The outline follows:

1. Introduction of a system that makes it possible to be effective against third parties after the occurrence of a license even without a registration with the JPO.
2. Overhaul of rights that enable persons who possess the right to be granted a patent to request transfer of patent right in cases where persons who do not possess said right or persons who have committed a violation with regard to a joint application, have obtained the patent right.
3. Extension of the period of reduction of or exemption from patent fees and revision of the design registration fees (after the eleventh year) with regard to small and medium-sized businesses.
4. Extension of the applicable scope of exceptions to loss of novelty.
5. Securing opportunities for correction at invalidation trials and prohibition on requests of trials for correction after a lawsuit for cancelling trial decision has been filed.
6. A revision on the effect on third parties which extends the effect of invalidation trial decisions to third parties after finalization of said decisions.

In addition, the new law will be put into effect at a date determined by a Cabinet order within one year from the date of promulgation (June 8, 2011).

http://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyohoutou_kaiei_230608.htm



Information on Foreign Countries Industrial Property Systems

The JPO has been updating provisional Japanese and English translations of foreign countries’ legal systems. Because asterisks (*) were added in front of the names of laws, it is now possible to judge whether or not these are the newest versions as of the end of April, 2011. In addition, attention is required to the fact that since these are provisional translations made for reference with regard to the laws, conclusive verification needs to be done by referring to the original.

Foreign countries’ laws can be found at the following JPO website:
http://www.jpo.go.jp/shiryou/s_sonota/fips/mokuji.htm



PCT Online Document Upload Service

According to an announcement by the JPO of May 24, 2011, it is now possible to submit directly online certain documents to the International Bureau (IB) after filing an International Application.
Documents that are eligible for this service are limited to specific documents that can be directly submitted to the International Bureau or to WIPO as a receiving office.

Related JPO website:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pctonlineupld.htm



JPO Statistics concerning application and registration figures

On May 20, 2011, the JPO published the application and registration figures with regard to patents, utility models, designs, and trademarks for the fiscal year 2010.

In terms of the type of applications, there were 344,598 patent applications, 8,679 applications for utility model registration, 31,756 applications for design registration, and 113,519 applications for trademark registration.

Meanwhile, in terms of the type of registrations, 222,693 patent registrations, 8,571 utility model registrations, 27,438 design registrations, and 97,780 trademark registrations were granted.

Related JPO website:
http://www.jpo.go.jp/torikumi/hiroba/2010tourokukensuu.htm



Regarding examination and examination criteria for applications for registration of patent right term extension

On May 16, 2011, the JPO announced that in keeping with the recent Supreme Court decision concerning applications for registration of patent right term extension, it is considering a revision of examination criteria for said applications. In addition, until the revised examination criteria have been revealed, as a general rule, examination of applications for registration of term extension will not be undertaken.

This announcement comes as a result of the dismissal by the Supreme Court of the appeal made by the JPO, which confirmed a cancellation trial decision by the Intellectual Property High Court. The cancellation trial decision reversed a decision by the JPO concerning an application for registration of patent right extension, which was requested because the patented invention (a drug) could not be implemented before having been granted permission for production and sale. The JPO had refused to grant extension to said application on grounds that permission for production and sale of a drug with active ingredients, efficacy and effects identical to the drug in question had previously been granted.

http://www.jpo.go.jp/torikumi/t_torikumi/sonzoku_encho.htm



2010 Report on Patentability

On May 9, 2011, the Japan Patent Office’s Examination Division released the 2010 edition of the "Report on Patentability". The topics in this report are novelty, inventive step, description requirements (definiteness requirements, enablement requirements, support requirements), amendment/correction requirements, and division requirements. In addition, two cases each from the fields of machinery, chemistry, and electricity, as well as three cases from the filed of biotechnology have been selected as case examples.

Related web page of the Japan Patent Office:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm


(Previous Information)
----------------------------------
2009 Report on Patentability

On May 13, 2010, the Japan Patent Office’s Examination Division released the 2009 edition of the “Report on Patentability”. This report states that, in addition to facing requirements of inventive step and proper documentation, computer software-related inventions will be inspected to ensure that they qualify as valid inventions. Furthermore, the report indicates results of examinations of invalidation trials.

Related web page of the Japan Patent Office:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm
2009 edition of the Patentability Examination Committee’s report:
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/pdf/sinposei_kentoukai/h21_houkokusyo.pdf

(Previous Information)
----------------------------------
JPO publishes filing and registration statistics for 2008
The Japan Patent Office (JPO) published on May 29, 2009 a series of statistics on filings and registrations for patent, utility model, design and trademark in 2008.
Filing statistics show that 391,002 patent applications (a figure that falls short of the 400,000 mark for the second consecutive year), 9,452 utility model applications, 33,569 design applications and 119,185 trademark applications were filed in 2008. The number of filings in each of the four categories is lower than in 2007.
According to the statistics for registration, however, 2008 saw the registration of 176,950 patent applications, 8,917 utility model applications, 29,382 design applications and 100,243 trademark applications, which corresponds, with the exception of utility model, to an increase in the number of registered cases compared to 2007.

Filing and registration statistics for the last ten years (website of the JPO – in Japanese)
http://www.jpo.go.jp/torikumi/hiroba/2008tourokukensuu.htm



An Investigation Report on the Patenting Activities, etc. Aimed at the Industrialization of Japanese Inventions

The JPO has published the result of an investigation it had conducted which is comprised of experimental analysis of eight different items, including statistical analyses of proposals for accelerated examination and unused patents, an analysis of the changes in the patent strategies of companies, etc., and an economic analysis of the demands for trial. The purpose of the report is to provide points of consideration for patent systems and formulation of policies aimed at constructing an Intellectual Property system that promotes the creation and industrialization of inventions.

The report can be accessed through the following link to the JPO website (Japanese only):
http://www.jpo.go.jp/shiryou/toushin/chousa/hatsumei_chousa_houkoku.htm



Concerning Patent Application Accelerated Examination/Trial

On February 4, 2011, JPO renewed the information on its website concerning accelerated examination/trial.
The track record of the fiscal 2009 indicates that accelerated examination was executed approximately 1.8 months after the filing date of the accelerated examination, and accelerated trial decision was sent out approximately 3.5 months after the date on which accelerated trial became possible. In addition, there was an announcement that the number of cases of use has reached about 10,000.
In the Q&A section, it is states that in the case of accelerated trial, if the term is extended at the time of responding to reasons of refusal , the case is treated as ordinary, while in the case of accelerated examination it is states that an extension of the time limit is possible at the time of the response to the first reasons of rejection, but it is preferable not to prolong the response term.

JPO website
http://www.jpo.go.jp/torikumi/t_torikumi/souki/v3souki.htm

~・~・~Previous information~・~・~

Since “Green” related applications are fast becoming the subject of accelerated examination/accelerated trial examination, a section of the guidelines for accelerated examination/accelerated trial examination has been revised. Also, Q&A regarding accelerated examination/accelerated trial examination has been added for “Green” related applications.

The revised guidelines:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/pdf/v3souki/guideline.pdf

Q&A regarding accelerated examination/accelerated trial examination (patent applications):
http://www.jpo.go.jp/toiawase/faq/soukishinri_shinsa.htm

- - - (Previous Information) - - -

Green applications will be eligible, on a trial basis, for the Accelerated examination program of the Japan Patent Office (JPO) from November 1, 2009.
The term “green applications” refers to patent applications claiming inventions having a beneficial effect on the environment, for example through low energy consumption or reduction of CO2 emissions.
Along with the addition of green applications to the scope of eligible applications, the JPO also conducted a partial revision of the Accelerated examination guidelines.

Related information on the website of the JPO (in Japanese)
http://www.jpo.go.jp/torikumi/t_torikumi/souki/greensouki.htm
Guidelines (in Japanese)
http://www.jpo.go.jp/torikumi/t_torikumi/souki/pdf/v3souki/greensouki_guideline.pdf



Regarding the International Comparative Research on Industrial Property Systems Report

On January 21, 2011, JPO released the report with the research topics of 2009.
They are the following four:
① Computer software-related protection and protection of the business field, etc., ② Protection of the appropriate rights of the persons entitled to obtain patents,③ Assistance by developed and semi-developed countries to developing and semi-developed countries, etc., with a stress on the intellectual property field , ④ Intellectual Property systems and their application in Russia, Central and South America, and the Middle East.

① reports on the existing condition of computer software-related protection and protection of the business field, etc., in U.S.A., Europe, United Kingdom, Germany, China, Korea, India, Russia, and Canada.
④ reports on the systems of intellectual property protection, GCC Patent Office systems of patent protection, etc., in Russia, Brazil, Mexico, Peru, Chile, Bahrain, Kuwait, Oman, Qatar, Saudi Arabia, and the United Arab Emirates.

You can find the details on the following site of JPO:
http://www.jpo.go.jp/shiryou/toushin/chousa/zaisanken_kouhyou.htm



JPO inviting public comment on topics related to the regulation of Patent system

The Japan Patent Office has started an invitation for public comment on “Topics Related to the Regulation of Patent System (Draft)”. The period of invitation is up to January 4, 2011.
The council (committee) will discuss and study the following subjects, and will submit part of the subjects to the Ordinary Diet Session of year 2011.

≪Promotion of Utilization≫
・Introduction of legitimate opposition system against third parties without registration
・Study of exclusively non-exclusive license system
・ Study of pledge creation on right to obtain a patent
≪Efficient and appropriate resolution of disputes≫
・ Solution to the “double-track problem” arose from parallel practice of trial for invalidation and infringement suit
・ Restriction on possible retrial arose from the final and conclusive judgement of infringement suit
・ Solution to the back and forth formalities between the patent office and the court of justice
・ Abolition of third party effect in final and conclusive trial decision of invalidation trial
・ Maintain the number of request for invalidation trial by the same person
・ Judgement on permission for correction to each claim and trial conclusion of each claim during invalidation trial, and adjustments made for trial of correction
≪Protection of right holders≫
・ Ongoing study of what “right to demand for injunction” should be
・ Remedies for usurped application
・ Ongoing study of evidence collection and maintenance of secret in employee-invention suit
≪Improvement in users’ convenience≫
・ Study of remedies for default of term based upon Patent Law Treaty (PLT)
・ Study of simplified application procedures
・ Expansion of applicable subject matter of exception to loss of novelty
・ Review of fees
Website of the JPO
http://www.jpo.go.jp/iken/singikai_ikenbosyu.htm



Statistics on filings in the USA, the EU, China and the Republic of Korea

The Japan Patent Office (JPO) issued on November 29, 2010, on its website, a number of statistics and graphs on filing and registration in the leading areas of the intellectual property world, for patent (utility model), design and trademark.

The following are the general trends in each of the leading areas.

In the USA, the number of patent filings remained constant in 2008. In 2009, the number of trademark applications decreased compared to the previous year.
In the European Union, the number of patent filings in 2009 decreased compared to 2008.
In the Republic of Korea, the number of patent applications decreased slightly in 2009 compared to 2008, as did the number of trademark applications in 2009.
In China, the number patent applications is currently increasing year after year. Meanwhile, the number of trademark applications experienced a sharp increase in 2009 compared to 2008.

Statistics on the website of the JPO (in Japanese):
http://www.jpo.go.jp/shiryou/toukei/syuyou_toukei_info.htm



Publication of the 2010 Annual Report on Patent Policy

The Japan Patent Office (JPO) published on July 15, 2010 the 2010 edition of its Annual Report on Patent Policy, focusing on fiscal year 2009.
According to the Report, the number of Japanese patent applications filed during the period dropped to about 348,000 - a sharp decrease when compared to the about 390,000 applications filed in the previous fiscal year. The current global recession no doubt constitutes a factor in this evolution; however, the JPO also points out to a change in patent filing trends, with the focus shifting from “quantity” to “quality”. In contrast, the number of PCT applications received by the JPO as a PCT Receiving Office is on the increase.
The number of design and trademark applications has also slightly decreased. In this regard, international trademark applications have recorded their first decrease since Japan became a party to the Madrid Protocol. Meanwhile, the number of utility model applications have remained constant.
The Report is available on the website of the JPO at the following address (in Japanese):

http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/toushin/nenji/nenpou2010_index.htm



frequently-asked questions regarding Appeal System

The Japan Patent Office published a list of frequently-asked questions regarding the Appeal system on June 9, 2010. These FAQs focus on Appeal against examiner's decision of refusal, Trial for correction, Trial for invalidation, Trial for invalidation of a trademark registration, Opposition to the grant of a trademark registration, Advisory opinion on the technical scope of a patented invention (Hantei), and Provision of relevant information after grant of right. The list provides practical and useful information, regarding for example amendments of the specification during an appeal against a decision of refusal.

For further information, please visit the JPO's website:
http://www.jpo.go.jp/toiawase/faq/sinpan_q.htm



Revision of Examination Guidelines for Amendment of Description, Claims and Drawings (New Matter)

The Japan Patent Office has announced the revision of the examination guidelines regarding amendments of Description etc. (new matter). The revision will apply to all examinations after June 1, 2010.

Purpose of the revision
From the viewpoint that the Grand Panel decision of the Intellectual Property High Court given on May 30, 2008 indicated a definition about the acceptable scope of matters described in description, etc., and that thereafter the definition has been consistently quoted in the subsequent decisions, the JPO decided that the above definition would be specified in the examination standards as a general definition.
Meanwhile, the examination practice based on the examination standards before the revision will not be altered by the revision.

Outline
Definition of "Matters described in the description etc"
An amendment including a matter which is not within the scope of matters described in the original description etc. (i.e., a new matter), is not admitted. Here, the wording "matters described in the original description etc." refers to technical matters that a person skilled in the art can attain based on the synthesis of the contents of the original description etc. Therefore, amendments not introducing new technical matters in relation to the technical matters to be attained shall be considered to be within the scope of the matters described in the original description etc.
In addition to the above, amendments which do not introduce any new technical matter have been classified by type, "disclaimer" amendments have been organized and the strategy for the amendment inapplicable to the cases described in the Examination Guidelines was revised.


For further information, please visit the JPO's website.
http://www.jpo.go.jp/torikumi/t_torikumi/meisaisyo_shinsa_kaitei.htm



Map of Registered Designs

The Japan Patent Office has published a “Map of Registered Designs” as a reference for those applying to register a design or executing a design right. This chart shows shapes and other configurations of designs based on seventeen categories ranging from rice cookers to cellular phones.

Related website of the Japan Patent Office:
http://www.jpo.go.jp/shiryou/s_sonota/isyou_map.htm



Regarding the procedure to apply for exception to lack of novelty of invention

On March 31, 2010, for the first time in about 4 years, the JPO updated its Q&A regarding the applicant procedures to apply the exception to lack of novelty of invention. Also, the corresponding section in the examination handbook has been updated. Adding to the previous information, the sections that raised some doubts have been supplemented, hyperlinks added, making the information easier to understand.

JPO homepage:
http://www.jpo.go.jp/shiryou/kijun/kijun2/reigai.htm



The JPO publishes Law of Industrial Property (Industrial Property Law) clause-by-clause explanation (Article 18) on homepage

On March 18, 2010, the JPO published Law of Industrial Property (Industrial Property Law) clause-by-clause Explanation (Article 18) on its homepage.
The explanation clarifies special provisions of the procedures associated with the Patent Act, Utility Model Act, Design, Trademark, and Industrial Property, and the intent and purpose of each individual clause in the laws relating to international applications based on the Patent Cooperation Treaty.

The Law of Industrial Property (Industrial Property Law) clause-by-clause explanation (Article 18) is accessible at the following link:
http://www.jpo.go.jp/shiryou/hourei/kakokai/cikujyoukaisetu.htm



Example on how to write the format of procedures related to a request for appeal, etc.

On March 15, 2010 the JPO updated the example on how to write the format of a request for appeal, etc. References regarding examples of appeal related forms and how to enter the information can be found on the JPO homepage below.

・ Request for appeal against Decision of Refusal(Patent, design, trademark, former utility models)
・ Request for appeal against the dismissal of an amendment (design, trademark, former patents and utility models before December 31, 1993), invalidity appeal (patent, utility model, design and trademark)
・ Request for correction (patent, former utility model)
・ Correction appeal (patent, former utility model)
・ Correction of registered utility model (utility models which filed an application before January 1, 1994)
・ Cancellation trial of a registered trademark not in use, Written opposition against a trademark
・ Interpretation (patent, utility model, design, trademark)
・ Rehearing (patent, utility model, design, trademark)

JPO homepage:
http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/sample_bill_sinpan.htm



Q&A Procedures related to PCT International Applications

The JPO published a Q&A regarding the procedures during the international phase for PCT international applications (Updated March 1, 2010). It also includes relevant information such as if the submission of a POA is necessary or not, whether its possible to submit photos instead of drawings and the documents needed, and strategies on how to prevent the basic application of the priority document of the domestic Japanese application from being withdrawn.

JPO Homepage:
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct_tetuduki_qa.htm



Q&A Regarding the Increase in Period for Requesting a Trial Appeal

Based on the 2008 revision of the Patent Law, the period of time for requesting a trial appeal has been increased. Together with this, in response to the frequently asked questions the JPO has published a Q&A regarding the increase in Period for Requesting a Trial Appeal. The Q&A was updated at the end of February 2010.

JPO Homepage:
http://www.jpo.go.jp/toiawase/faq/qa_huhuku_sinpan.htm



Summary list of country IPR right law

The JPO has updated the table of system requirements for every country pertaining to patents, utility models, designs and trademarks. The table as of February 2010 can be viewed on the JPO homepage.

JPO Homepage:
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/sangyouzasisankenhou_itiran.htm

(Previous Information)

----------------------------------
The JPO has published a table of system requirements for every country pertaining to patents, utility models, designs and trademarks. Planned for convenience, the table has been published separately, and is updated from the version in the Patent Administration Annual Report (as of December 2009). The table is disclosed on the JPO homepage listed below.



Patent Prosecution Highway (PCT-PPH) between JPO and USPTO, JPO and EPO using PCT international results

With regard to the PPH between the JPO-USPTO and the trial program between the JPO-EPO, from January 29, 2010 a program using the results of the PCT international stage (written opinion or international preliminary examination report) will be available for a period of two years.

On the basis of a positive opinion on patentability, it is possible to request PPH with the JPO, USPTO or EPO using a written opinion (WO/ISA) established by certain International Searching Authorities (JPO, USPTO or EPO), or an international preliminary examination report (WO/IPEA, or IPER) established by certain International Preliminary Examining Authorities (JPO, USPTO or EPO).

JPO homepage:
Patent Prosecution Highway using PCT international work products
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/pph_pct/pct_e.htm
Patent Prosecution Highway between the JPO and the USPTO using PCT international work products
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/highway_pilot_program_e.htm
PPH pilot program between JPO and the EPO/Patent Prosecution Highway between the JPO and the EPO using PCT international work products
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/pph_epo/eigo.htm



The Patent Prosecution Highway program starts between the JPO and EPO on a trial basis

The Japan Patent Office (JPO) announced that the Patent Prosecution Highway between JPO and EPO would commence on a trial basis on January 29, 2010. The trial period is planned for 2 years. Also, it may be possible to apply based on PCT international results.
Please refer to the JPO website:
http://www.jpo.go.jp/torikumi/t_torikumi/pph_epo/nihongo.htm

- - - (Previous Information) - - -

The Patent Prosecution Highway program starts between Japan and Canada
The JPO announced on September 25, 2009 the start, from October 1, 2009 and on a trial basis, of the Patent Prosecution Highway (PPH) program between Japan and Canada.

Website of the JPO
http://www.jpo.go.jp/torikumi/t_torikumi/pph_epo/nihongo.htm
Regarding the Patent Prosecution Highway
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/patent_highway_e.htm



Introduction on a trial basis of the Patent Prosecution Highway between Japan and Hungary
The Japan Patent Office (JPO) announced on July 1, 2009 the introduction, on a trial basis, of the Patent Prosecution Highway between Japan and Hungary from August 3, 2009.
The Patent Prosecution Highway program, through the use of the results of the prior art search and examination conducted by the first patent office, is designed to lower the burden of examination for each patent office and to increase patent quality, therefore making it easier for applicants to register their patents in other participating countries.
The program is currently either fully implemented or implemented on a trial basis between Japan and the USA, Korea, the United Kingdom, Germany, Denmark, Finland, Russia, Austria and Singapore.

Website of the JPO
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/pph_hungary/eigo.htm
Regarding the Patent Prosecution Highway
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/patent_highway_e.htm



Introduction on a trial basis of the Patent Prosecution Highway between Japan and Singapore
The Japan Patent Office (JPO) announced on June 16, 2009 the introduction, on a trial basis, of the Patent Prosecution Highway between Japan and Singapore on July 1, 2009.
The Patent Prosecution Highway program, through the use of the results of the prior art search and examination conducted by the first patent office, is designed to lower the burden of examination for each patent office and to increase patent quality, therefore making it easier for applicants to register their patents in other participating countries.
The program is currently either fully implemented or implemented on a trial basis between Japan and the USA, Korea, the United Kingdom, Germany, Denmark, Finland, Russia and Austria.

Website of the JPO
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/nichi-singapore_highway.htm
Regarding the Patent Prosecution Highway
http://www.jpo.go.jp/torikumi/t_torikumi/patent_highway.htm



Trilateral comparative research of examination procedures

On November 26, 2009, the JPO published the results of the case study regarding novelty, trilateral regulations, and comparative research of examination standards.

The research report is posted on the JPO homepage link below:
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/sinsa_jitumu_3kyoku.htm

- - - (Previous Information) - - -

Subsequently to the publication of “Case Study on Description Requirements And Comparative Study on Laws/Examination Standards concerning Inventive Step”, JPO published “Case Study on Inventive Step” on November 26, 2008.
As a result of the case study on inventive step, the Trilateral Offices share similar views with regard to five cases out of six cases. However, regarding the remaining one case, the three patent offices are different as follows. JPO considers that the claimed invention is novel but not inventive, while EPO and USPTO consider that the claimed invention is not novel neither.
As a whole, the approaches of the Trilateral Offices to examining inventive step are similar that all three offices define the difference between claimed invention and the prior art, and then consider whether a person skilled in the art could have arrived at the claimed invention in consideration of the state of the art.

Currently, the following results of comparative studies/case studies are published.
[Comparative Study on Laws/Examination Standards]
“Comparative Study on Laws/Examination Standards concerning Description Requirements” (English)
“Comparative Study on Laws/Examination Standards concerning Inventive Step” (English)
[Case Study]
“Case Study on Description Requirements” (English/Preliminary Japanese)
“Case Study on Inventive Step” (English/Preliminary Japanese)

The Website of JPO
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/sinsa_jitumu_3kyoku.htm


- - - (Previous Information) - - -



“Comparative Study on Laws/Examination Standards concerning Requirements for Disclosure” and “Case Study on Requirements for Disclosure”

Subsequently to the publication of “Trilateral Comparative Study on Laws/Examination standards concerning Requirements for Disclosure” on July 10, 2008, JPO published “Case Study on Requirements for Disclosure And Comparative Study on Laws/Examination Standards concerning Inventive Step”.

The object of the study is to “perform comparative study on examination practices of trilateral patent offices in view of requirements for disclosure and inventive step (non-obviousness) and allow applicants/representatives to be familiar with the comparative study to support preparation of high quality specifications”.

The “Comparative Study on Laws/Examination Standards” gives analysis showing the comparison outline and different/same points concerning Laws/Examination standards of the trilateral patent offices. The “Case Study” gives analysis on requirements for disclosure based on laws/examination standards of the trilateral patent offices with reference to cases prepared by the trilateral offices. These studies were published in English.

JPO
http://www.jpo.go.jp/torikumi/kokusai/kokusai3/sinsa_jitumu_3kyoku.htm
The Website of the Trilateral Co-operation
http://www.trilateral.net/projects/legal_issues/20071218/





Patent / Utility Model Examination Criteria - HTML Version

The Patent / Utility Model examination criteria (HTML version) has been published. Through mutual links between each article, case, and examination criteria, it is now possible to refer to the relevant particulars. In cases where the PDF version differs from the HTML version, the PDF version takes precedence.

JPO homepage
http://www.jpo.go.jp//shiryou/kijun/kijun2/tukujitu_kijun.htm



JPO revises industrially applicable inventions and examination guidelines for medical inventions

The Japan Patent Office (JPO) announced on October 23, 2009 a revision concerning inventions considered as having industrial applicability and the examination guidelines regarding medical inventions. The revision will apply to patent applications examined after November 1, 2009.

Regarding inventions having industrial applicability
The present revision adds methods to gather data from the human body (for example by determining the structure and function of the organs) to the list of methods which do not fall under the category “methods to operate, treat or diagnose the human body”. Accordingly, a method to gather data from the human body which will not be considered as a “method of diagnostic practiced on the human body” as long as it contains neither processes to determine, for a medical purpose, the physical or mental condition (for example in terms of diseases) of a human body nor prescriptions or surgical/therapeutic steps based on said condition. Relevant case studies, among others, have also been added.

Regarding medical inventions
Novelty will be recognized in the case that the medical purpose (i.e. the application of a specified method of administration or dosage to a specific disease) is different from that of conventional medicine. Relevant case studies have also been added.

Related information on the website of the JPO
http://www.jpo.go.jp/torikumi/t_torikumi/sangyo_iyaku_shinsakijunkaitei.htm(in Japanese)
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/industrially_applicable_medicinal_e.htm(in English)

- - - (Previous Information) - - -

Official Announcement of the Newest Standards of Examination for Patents and Utility Models
On March 18, 2009 the JPO officially announced the latest standards of examination for patents and utility models.
This time, examples regarding the necessity of deposition of microorganisms were added to the standards.
With respect to the examples and the filing of a patent application, regarding the judgment if the deposition of microorganisms, plants, animals and etc. is necessary or not is clearly explained on the basis of concrete examples.
It is possible to download the list of examples from the link below.
Please contact us if you have any questions.

Official Announcement of the Newest Standards of Examination for Patents and Utility ModelsOfficial Announcement of the Newest Standards of Examination for Patents and Utility Models



Intellectual Property Rights System Information Seminar 2009

The JPO has published the text of the 2009 Intellectual Property Rights Information Seminar. There is one version of the text for IP novices, and one for industry professionals. The text for industry professionals contains details regarding recent legal amendments, examination standards and administration, the PCT system and other useful information. The text for novices contains mainly information regarding the Patent/Utility Model/Design/Trademark system.

Text for IP Industry Professionals:
http://www.jpo.go.jp/torikumi/ibento/text/h21_jitsumusya_txt.htm
Text for IP Novices:
http://www.jpo.go.jp/torikumi/ibento/text/h21_syosinsya.htm



Application of the Super Accelerated Examination pilot program to National Phase Applications

One year has passed since the pilot program of the Super Accelerated Examination System started. The Japan Patent Office announced that from October 1, 2009 the Super Accelerated Examination System would enlarge its target to Japanese National Phase Applications based on PCT international applications.

The first examination result will be issued within approximately two months from the filing date of a request for Super Accelerated Examination OR after five months from the latest of the following dates: 1) International publication date, or 2) filing date of a request for Substantial Examination. The second examination result will be issued within one month. Therefore, it is expected to achieve acceleration of obtainment of rights.

Please see the JPO homepage for more information:
http://www.jpo.go.jp/torikumi/t_torikumi/souki/supersoukisinsa_kakudai.htm
FAQ on the Super Accelerated Examination pilot program
http://www.jpo.go.jp/toiawase/faq/super_souki_qa.htm
Information on the start of the Super Accelerated Examination pilot program
http://www.jpo.go.jp/torikumi/t_torikumi/souki/supersoukisinsa.htm



Patent Applications in Eight Key Fields

The Japan Patent Office website regularly updates its information on the patent applications in the following eight key fields: 1. life science; 2. communications; 3. the environment; 4. nanotechnology/materials; 5. energy; 6. manufacturing technology; 7. infrastructure; and 8. the frontier.
As of October 7, 2009, the Japan Patent Office website has publicized the data below using graphs and tables.
1. Numbers of Unexamined Patent Application Publications Published during a One-Year Period in the Eight Key Fields in Japan
In comparison to other fields, the number of Unexamined Patent Application Publications published during a one-year period is the largest in the field of communications, followed by
life science.and nanotechnology/materials.
The figures of 2008 increased from those of 2007 in the fields of life science and infrastructure.

2. Numbers of Patents Registered during a One-Year Period in the Eight Key Fields in Japan
In comparison to other fields, the number of patents registered during a one-year period is the largest in the field of communications, followed by life science, nanotechnology/materials.

A comparison between the rate of increase in the number of cases in 2008 and in 2007 shows that social infrastructure-related applications and frontier-related applications are on the decrease, while other business-related patent applications are increasing.

For more detail, visit the Japan Patent Office website below.
The Japan Patent Office website
http://www.jpo.go.jp/shiryou/toukei/1402-027.htm
- - - (Previous Information) - - -
As of August 20, 2008, the Japan Patent Office website has publicized the data below using graphs and tables.
1. Numbers of Unexamined Patent Application Publications Published during a One-Year Period in the Eight Key Fields in Japan
In comparison to other fields, the number of Unexamined Patent Application Publications published during a one-year period is the largest in the field of communications, followed by nanotechnology/materials and life science.
The figures of 2007 increased from those of 2006 in the fields of life science, nanotechnology/materials, and infrastructure.

2. Numbers of Patents Registered during a One-Year Period in the Eight Key Fields in Japan
In comparison to other fields, the number of patents registered during a one-year period is the largest in the field of communications, followed by nanotechnology/materials and life science.
The figures of 2007 increased from those of 2006 in all the fields listed.

In addition to the above data, the site also posts “Numbers of Unexamined Patent Application Publications Published during a One-Month Period in the Eight Key Fields in Japan, the U.S., Europe, China, South Korea, and Taiwan” and “Numbers of Unexamined Patent Application Publications Published and Patents Registered during a One-Year Period on the Category Basis.”


The Russian Federation withdraws its notification of the applicability of PCT Rule 4.9 (b)

The Russian Federation reportedly informed the International Bureau, on June 5, 2009, of the withdrawal of its notification of the applicability of PCT Rule 4.9 (b). As a result, it is no longer necessary to exclude the related RU designation in an international application.

Website of the JPO (in Japanese)
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/russia_shitei_jogai.htm
WIPO PCT newsletter
http://www.wipo.int/pct/en/newslett/2009/09/article_0003.html



Thailand joins PCT

October 5, 2009
HARAKENZO WORLD PATENT & TRADEMARK
Takamasa ARAI, Foreign Department General Manager

According to an official WIPO announcement, the Kingdom of Thailand, having completed on September 24, 2009 the procedure of ratification of the Patent Cooperation Treaty (PCT), has become the 142nd contracting state of the PCT. As a result, it will be possible to enter PCT applications filed after December 24, 2009 into the National Phase in Thailand.
The following is an extract from the website of the WIPO.

Thailand Accedes to PCT, Geneva, September 24, 2009, PR/2009/609

DG receives Thailand's instrument of accession
Thailand’s Deputy Minister of Commerce, Mr. Alondkorn Ponlaboot, on September 24, 2009 deposited his country’s instrument of accession to the Patent Cooperation Treaty (PCT) with WIPO Director General Francis Gurry. Thailand is the 142nd contracting state of this multilateral pact that facilitates the filing of patents in multiple countries. The treaty will enter into force for Thailand on December 24, 2009.

The accession by Thailand means that in any international application filed on or after December 24, 2009, Thailand (country code: TH) will automatically be designated, and as it will be bound by Chapter II of the Treaty, will automatically be elected in any demand for international preliminary examination filed in respect of an international application filed on or after December 24, 2009. Also, as of that date, nationals and residents of Thailand will themselves be able to file PCT applications.

In a meeting with Mr. Ponlaboot, Mr. Gurry welcomed Thailand’s accession to the PCT which he said was “an extremely important step” that helps make the treaty a “more global and attractive system.”
With the accession of Thailand, the 142 contracting states of the PCT are the following:



The JPO releases a hypertext version of the trademark examination guidelines

The Japan Patent Office (JPO) announced on August 28, 2009 the release on its website of a hypertext version of the trademark examination guidelines and of a handbook on trademark examination, designed to allow easy navigation between related articles. Further, a number of abstracts of rulings and judgments related to examination guidelines have also been uploaded in hypertext format.

Website of the JPO
http://www.jpo.go.jp/tetuzuki/t_shouhyou/shinsa/shouhyou_shinsakijun_shikakuka.htm



About the Triway Pilot Program

On July 30, 2009, the JPO posted information on the status of the program.
The trial period for this program has ended. The submission period of the Triway pilot program ended on July 28, 2009 (1 year after the commencement) or with the acceptance of 100 requests, whichever occurred first.

Triway Pilot Program to Commence on July 28, 2008
The Trilateral Offices (European Patent Office, Japan Patent Office, and United States Patent and Trademark Office) will commence the search sharing project Triway Pilot Program on July 28, 2008.
[Purpose of Triway Pilot Program]
Triway is the framework in which the Office of Second Filing and the Office of Third Filing utilize the search results of the Office of First Filing, so that each Trilateral Office could eliminate the duplication of work for search and examination, and in which applicants receive the search (and examination) results from each Office at almost the same time so that they could proceed (ex. amend the claims) under the consideration of all the Trilateral Offices' results. The pilot program will be implemented in order to test the effect of this framework
[Eligible Applications]
An application must be filed with the USPTO as the Office of First Filing. A corresponding application claiming priority to the U.S. application must be filed with the EPO and the JPO as the Office of Second Filing and the Office of Third Filing.
As for the JPO, an applicant must file a request for the accelerated examination with the JPO by submitting “The Explanation of Circumstances Concerning Accelerated Examination.”
[Trial Period]
The Triway pilot program will end on July 28, 2009 (1 year after the commencement) or upon the acceptance of 100 requests, whichever occurs first.


[Related Websites]
Japan Patent Office
http://www.jpo.go.jp/torikumi/t_torikumi/triway.htm (Japanese)
http://www.jpo.go.jp/torikumi_e/t_torikumi_e/triway_e.htm (English)
United States Patent and Trademark Office
http://www.uspto.gov/web/patents/triwaypilot.html
European Patent Office
http://www.epo.org/patents/law/legal-texts/InformationEPO/archiveinfo/20080716.html



What an Applicant Is Required To Explain in Writing at the Time of Filing a Divisional Application

When filing a divisional application, the applicant is required to:
(i) explicitly indicate a part(s) of the specification and other documents of the divisional application, the part(s) having been changed from the original application; and
(ii) file a written statement including an explanation of the divisional application satisfying the substantive requirement for such division and of other matters.
The above is required with the aim of prompt and accurate examination of divisional applications.
On June 29, 2009, the Japanese Patent Office announced for clarification how to specifically explain the above matters in a written statement, when to file such a written statement, and other related matters.

The written statement must serve to explain:
1. with explicit indication of a part(s) of the divisional application, the part(s) having been changed from the original application, that the part(s) falls within the scope of the matters described in the specification and other documents of the original application;

2. that the invention of the divisional application is not identical with the invention of “another patent application” (deemed to have been filed at the same time as the subject divisional application under Section 44(2) of the Patent Law); and

3. (if the filing date of the divisional application is retroactive to April 1, 2007 or later) that the divisional application overcomes the rejection(s) raised for the above “another patent application”.

The written statement must be filed:
before a substantive examination on the divisional application is requested.

JPO website
http://www.jpo.go.jp/tetuzuki/t_tokkyo/shinsa/bunkatu_yousei.htm



Ministerial ordinance for partial amendments to Regulations under the Patent Law and Regulations under Law Concerning the International Application of the Patent Cooperation Treaty and Related Matters

Regulations under the Patent Law and Regulations under Law Concerning the International Application of the Patent Cooperation Treaty and Related Matters are to be amended in line with the amendments to Regulations under the Patent Cooperation Treaty and Administrative Instructions under the Patent Cooperation Treaty.

[Summary of Amendments]
1. Extension of time limit for applicants to submit arguments
Where it is found that requirements for the according of an international filing date are not met after the according of the international filing date, an applicant is given an opportunity to submit arguments in advance of a declaration that the international application is considered withdrawn. In this amendment, a time limit to submit arguments is extended from one month to two months.
2. Change in form of claim amendments
Where claims are amended under Article 34, they have to be presented in the form of replacement sheets containing a complete set of amended claims.
Where a translation is submitted, a translation of the full text of amended claims has to be presented.
3. Change in calculation of international filing fees where an international application including sequence listings is filed by Means of Electronic Data Processing System
No page fees are payable for the sequence listings filed by Means of Electronic Data Processing System.
4. Change in amendments to sequence listings according to an international application filed by Means of Electronic Data Processing System
In the filing by Means of Electronic Data Processing System, amendments or corrections to sequence listings are allowable by presenting a magnetic disk on which amended or corrected sequence listings are recorded. The magnetic disk has to be attached to written arguments or demand for correction.

Ministerial ordinance for partial amendments to Regulations under the Patent Law and Regulations under Law Concerning the International Application of the Patent Cooperation Treaty and Related Matters
[Date of Promulgation] June 22, 2009
[Date of Enforcement] July 1, 2009

Japan Patent Office
http://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyohoutou_kaiei_21062235.htm



Introduction on a trial basis of the Patent Prosecution Highway between Japan and Singapore

The Japan Patent Office (JPO) announced on June 16, 2009 the introduction, on a trial basis, of the Patent Prosecution Highway between Japan and Singapore on July 1, 2009.
The Patent Prosecution Highway program, through the use of the results of the prior art search and examination conducted by the first patent office, is designed to lower the burden of examination for each patent office and to increase patent quality, therefore making it easier for applicants to register their patents in other participating countries.
The program is currently either fully implemented or implemented on a trial basis between Japan and the USA, Korea, the United Kingdom, Germany, Denmark, Finland, Russia and Austria.

Website of the JPO
http://www.jpo.go.jp/torikumi/kokusai/kokusai2/nichi-singapore_highway.htm
Regarding the Patent Prosecution Highway
http://www.jpo.go.jp/torikumi/t_torikumi/patent_highway.htm


Revision of the Act on Special Measures for Industrial Revitalization and Industrial Technology Enhancement Law

The Japan Patent Office announced the partial revision of the Act on Special Measures for Industrial Revitalization and Industrial Technology Enhancement Law. According to the revision, the name of the law has been changed to "Act on Special Measures for Industrial Revitalization and Industrial Innovation", wherein the range of eligible applicants for reduction of registration fees, etc. will be broadened.

Enforcement date: June 22, 2009

For further information, please visit the following websites.

JPO's website:
For information on eligibility of the fee reduction
http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2009_index.htm

i) Independent administrative institution of experiment and research
http://www.jpo.go.jp/tetuzuki/ryoukin/pdf/sangyousaisei_kaisei/01.pdf
ii) Official experiment and research institute
http://www.jpo.go.jp/tetuzuki/ryoukin/pdf/sangyousaisei_kaisei/02.pdf
iii) Regional independent administrative institution of experiment and research
http://www.jpo.go.jp/tetuzuki/ryoukin/pdf/sangyousaisei_kaisei/03.pdf


Publication of the 2009 Annual Report on Government Patent Policy

The Japan Patent Office published, "Current situations and issues related to industrial property - Aiming for the construction of intellectual property system to facilitate Innovation Annual Report 2009 on Government Patent Policy" on June 12, 2009.

In Section I, the current situation with regard to national applications, registration of patents, utility models, designs and trademarks, the movement of examination and trial, as well as the application and registration in major countries, etc. is reported. With respect to the number of applications to the Japan Patent Office, the number of industrial property applications, such as patents tends to decrease, while the number of PCT applications and international trademark applications tend to increase. In view of such tendencies, the focus is being shifted to international applications.

In Section II, the government's activities for the intellectual property, examination and trial are introduced. It emphasizes the Patent Prosecution Highway as one of the activities to achieve the patent examination responsive to the applicants' needs. As of the end of April 2009, the number of requests from Japan to the United States was 963, from the United States to Japan 516, from Japan to Korea 242, from Korea to Japan 52, and the total number of requests, including requests made by the other countries, is increasing.

In Section III, useful support systems for small and medium sized enterprises as well as universities, etc. to obtain and utilize industrial property are presented. For example, free consultations with a specialist for small and medium sized enterprises, and access to industrial property information such as J-PlatPat (Industrial Property Digital Library) are presented.

In Section IV, cooperation with other countries and activities against imitation products is introduced.

For further information, please visit the JPO's website.
http://www.jpo.go.jp/shiryou/toushin/nenji/nenpou2009_index.htm


IP strategy consultancy

The Japan Patent Office (JPO) has published a report designed to allow consultants to support the intellectual property policy of medium-sized and small companies, as these companies are often at a loss as to the best way to exploit their intellectual property and translate it into business results.
Divided in ten “viewpoints”, the report is based on consultations conducted with ten medium-sized and small companies active in the field of intellectual property, and provides practical information on intellectual property consultancy.
The first part presents the said viewpoints, including interviews and the like, through the following axes:
1) Intellectual property strategies for stronger business
2) Intellectual property strategies for a healthy company
3) Intellectual property strategies accompanying business growth
The second part deals with some key points regarding intellectual property consultancy.

Website of the JPO
http://www.jpo.go.jp/torikumi/chushou/tizai_point.htm
Report on intellectual property strategy consultancy for medium-sized and small companies (in Japanese)
http://www.jpo.go.jp/torikumi/chushou/pdf/tizai_point/all.pdf


The Japan Patent Office Announces Its Visions

As the conditions surrounding intellectual property are continuously changing both nationally and internationally, it is necessary to establish a flexible structure that can respond to such changes. The Japan Patent Office announced, "Visions of the Japan Patent Office" for a flexible organization that can deal with such changes.

The visions introduced are:
(1) To be a flexible organization that is responsive to users’ voices.
(2) Take a lead in international discussion, contribute to the establishment of global intellectual property systems, and provide high-quality services.
(3) For the JPO personnel to conduct business based on guiding principles such as flexibility, as well as regard for a global and user's point of view.

For more information, please visit the JPO’s website:
http://www.jpo.go.jp/shoukai/soshiki/tokkyo_vision.htm


Establishment of Research Organization for Patent Systems - Nature of Patent Systems Pursuing Innovation

In 2009, that is, fifty years since the current Japanese Patent Law was enacted and published, for comprehensive investigations on future patent systems from the perspective of its starting point, the Research Organization for Patent Systems was established.

The organization will investigate the nature of patent systems pursuing innovation since it is time to review the basic design of the patent systems in view of the shift from pro-patent to pro-innovation.

The six topics of consideration are:
(1) Revision of the effect of patent rights
(2) Promotion of exploitation of patents
(3) Prompt and effective resolution of conflicts
(4) Improvement of patent quality
(5) Establishment of prompt and flexible examination systems
(6) Implementation of global systemic harmonization

For more information, please visit the JPO’s website.
http://www.jpo.go.jp/shiryou/toushin/kenkyukai/tokkyoseidokenkyu.htm


Prevention of beginning examination of applications to be withdrawn/abandoned

In order to accelerate the patent examination procedure, the Japan Patent Office calls for cooperation of applicants, patent attorneys and the like in prevention of starting examination of applications in which the applicant no longer seeks the right. Namely, this is because there is a possibility that the examiner may start the examination of an application in which the applicant is considering withdrawing/abandoning, but has not actually completed the withdrawal/abandonment procedure. By preventing such time lags, the JPO intends to accelerate and increase efficiency of the examination procedure.
Therefore, it is preferable to inform the JPO of an application to be withdrawn/abandoned if it will take some time until the actual withdrawal/abandonment procedure is completed.

For more information please visit the JPO's website:
http://www.jpo.go.jp/torikumi/t_torikumi/torisage_houki.htm


Publication of a case digest on the registration of moving image designs

The Japan Patent Office (JPO) has published a case digest on the registration of moving images as designs. Introduced in 2006 through a law revision, the protection of moving image designs is provided for in Article 2-2 of the Japan Design Act. With the publication of this case digest, the JPO is hoping to increase public understanding of the criteria of design examination.
The case digest assembles a selection of significant registered design cases related to moving images and disclosed between November 21, 2008 and February 2, 2009.

The case digest is accessible from the website of the JPO at the following address:
http://www.jpo.go.jp/shiryou/kijun/kijun2/gazoutouroku_jirei.htm


Regarding the cases where the Accelerated Examination procedure cannot be requested (patent applications)

Following the June 2006 revision of the Guidelines for the Accelerated Examination, the Japan Patent Office (JPO) is expected to release an updated version of the related Frequently Asked Questions list.
The updated version of the FAQ list will include a section regarding the cases where the Accelerated Examination procedure cannot be requested, as well as examples of what may be written in the items “Reason” and “Disclosure of the prior art and comparative explanation of the prior art and of the invention”.

The FAQ list can be accessed at the following address (in Japanese)
http://www.jpo.go.jp/toiawase/faq/soukishinri_shinsa.htm

Related pages:
General description of the Accelerated Examination (patent applications)
http://www.jpo.go.jp/torikumi/t_torikumi/souki/v3souki.htm
Guidelines for the Accelerated Examination
http://www.jpo.go.jp/torikumi/t_torikumi/souki/pdf/v3souki/guideline.pdf


Postponed payment of the Official fees for the Request for examination

In order to lower the financial burden related to the filing of the Request for examination, the Japan Patent Office (JPO) has announced the implementation, as an emergency measure, of a system allowing applicants to postpone the payment of the related Official fees.

When using this system, the applicant will be granted a grace period of one year from the filing date of the Request for examination to remit the Official fees to the JPO.
All applications for which the Request for examination is to be filed after April 1, 2009 are eligible. However, the postponement system does not apply in the case that an Accelerated examination or a Partial refund of the fees for the International Search has been requested, since the examination takes place earlier than usual in this case.
The system will be effective from April 1, 2009 for an intended period of two years.

Website of the JPO
http://www.jpo.go.jp/tetuzuki/ryoukin/shinsa_kurinnobe.htm


Trilateral Statistical Report 2007 Edition

The Trilateral Offices, consisting of the Japan Patent Office, the European Patent Office and the United States Patent and Trademark Office, announced the publication of the Trilateral Statistical Report 2007 Edition on March 23, 2009.

In the report, various information such as the number of worldwide patent filings by filing route, the number of PCT international applications filed at one of the Trilateral Offices, and the number of patent filings and proportion by field of technology and high technology areas etc are described. The patent procedure flow etc utilized by the Trilateral Offices is also explained.

-Report Table of contents-
Preface
1. Definition of terms
2. The Trilateral Offices
3. Worldwide patenting activity
4. Patent activity at the Trilateral Offices
5. The Trilateral Offices and the Patent Cooperation Treaty
6. Other work

Please visit the following website for more detailed information.
http://www.trilateral.net/statistics/tsr/2007.html


Amendment to the Patent Law:Revision to allow a longer period for filing an Appeal against Decision of Refusal etc.

One amendment in the 2008-revised Patent law becomes effective as of April 1, 2009, which allows a longer period for filing an appeal against decision of refusal etc. We summarize the amendment to the period of filing the appeal, etc. below.

1.Outline of Revision
(1) The period for filing an appeal against Decision of Refusal is prolonged from 30 days to 3 months (for overseas residents, from 90 days to 4 months).

(2) The period in which claims etc. may be amended after filing an appeal is amended from “within 30 days” to “only at filing of the appeal”.

 
Before
After
An appeal against decision of refusal may be filed…
…within 30 days (90 days for overseas residents) from transmittal of Notification of Decision of Refusal.
…within 3 months (4 months for overseas residents) from transmittal of Notification of Decision of Refusal.
Post-appeal amendment to claims etc. may be filed…
…within 30 days from filing the appeal.
…only at filing the appeal.



(3)In conformity with the amendment, the following amendment is made in the Patent Law.
・ The period in which a divisional application may be filed after receiving Decision of Refusal is prolonged from “within 30 days (90 days for overseas residents)” to “within 3 months (4 months for overseas residents)”.
・ As the period for filing an appeal against Decision of Refusal is prolonged for design application, the period in which conversion from/to a patent application/utility model application to/from a design application may be filed is amended.

 
Before
After
After decision of Refusal, a divisional application may be filed…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal.
…within 3 months (or 4 months for overseas residents) from transmittal of first Decision of Refusal.
Patent Application may be converted to Design Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal.
…within 3 months (4 months for overseas residents) from transmittal of first Decision of Refusal.
Design Application may be converted to Patent Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 3 years from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 3 years from filing date.
Design Application may be converted to Utility Model Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.

(4)It should be noted that the revision does NOT amend the period (30 days (120 days for overseas residents) for filing a suit with the Intellectual High Court against decision in appeal filed against decision of refusal.

2.Effective Date
The amendment becomes effective for all applications for which a notification of decision of refusal is received on or after April 1, 2009.


Amendment to the Design and Trademark Laws:Revision to allow a longer period for filing an Appeal against Decision of Refusal etc.

One amendment in the 2008-revised Design and Trademark laws becomes effective as of April 1, 2009, which allows a longer period for filing an appeal against decision of refusal or dismissal of amendment. We summarize the amendment to the period of filing the appeal, etc. below.

1.Outline of Revision
(1)The period for filing an appeal against Decision of refusal is prolonged from 30 days (90 days for overseas residents) to 3 months.
 
Before
After
An appeal against Decision of Refusal may be filed…
…within 30 days (90 days for overseas residents) from transmittal of Notification of Decision of Refusal.
…within 3 months from transmittal of Notification of Decision of Refusal.
※Transmittal is the day the applicant or his attorney receives the notification.



(2)The period for filing an appeal against Dismissal of Amendment, and the period for filing a new design or trademark application in response to dismissal of amendment is prolonged from 30 days (90 days for overseas residents) to 3 months.

 
Before
After
An Appeal against Dismissal of Amendment may be filed…
…within 30 days (90 days for overseas residents) from transmittal of Notification of dismissal of Amendment.
…within 3 months from transmittal of Notification of dismissal of Amendment.
In response to Dismissal of Amendment, a new application may be filed…
…within 30 days (90 days for overseas residents) from transmittal of Notification of dismissal of Amendment.
…within 3 months from transmittal of Notification of dismissal of Amendment.



(3)In conformity with the amendment, the period for converting design application to another type of application is amended as follows.

 
Before
After
Design Application may be converted to Patent Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 3 years from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 3 years from filing date.
Design application may be converted to Utility Model Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.
…within 3 months (for overseas residents as well) from transmittal of first Decision of Refusal, or 9 years and 6 months from filing date.
Patent Application may be converted to Design Application…
…within 30 days (90 days for overseas residents) from transmittal of first Decision of Refusal.
…within 3 months (4 months for overseas residents) from transmittal of first Decision of Refusal.

(4)It should be noted that the revision does NOT amend the periods (30 days (120 days for overseas residents) for filing a suit with the Intellectual High Court against decision in appeal filed against decision of refusal, or against dismissal of amendment in such appeal, and for filing a new application in response to such dismissal of amendment.


2.Effective Date
The amendment becomes effective for all applications for which a notification of decision of refusal or a notification of dismissal of amendment is received on or after April 1, 2009.


Regarding the common application format for online PCT application

The Japan Patent Office (JPO) will be accepting from April 1, 2009 the electronic filing of PCT applications following the common application format.
While the filing with the JPO of National Phase applications and PCT applications in the common application format already came into force on January 1, 2009, the electronic filing of PCT applications in the common application format will be possible from the end of March 2009 onwards.

Reference (in Japanese):
http://www.jpo.go.jp/tetuzuki/t_tokkyo/kokusai/pct-yousikitaiou.htm


Publication of a case study to promote the use of open innovation in Intellectual Property strategies

The Japan Patent Office (JPO) has published a case study promoting the use of open innovation in Intellectual Property strategies.
Through various examples of companies already following the open innovation model, the study proposes an advanced approach to open innovation, described as a tool for Intellectual Property strategy. The objective of the JPO is to increase further its use by Japanese companies as part of their business plan.
The study examines a range of situations, from cases where the company integrates external research to its own research in order to accelerate its R&D process (“licensing in”) to cases where the company discloses the results of its research to another company in return for royalties, thus gathering additional profits (“licensing out”).

The study is available for download on the website of the JPO at the following address (in Japanese):

http://www.jpo.go.jp/sesaku/tokkyosenryaku_openinnovation.htm


Cabinet Approval of Cabinet Order for Amending Part of Patent Law Enforcement Order Etc.

On December 24, 2008, the Japan patent office (JPO) announced a cabinet approval of “Cabinet Order for Amending Part of Patent Law Enforcement Order Etc.”

Along with the introduction of a scheme in which a part of information of a non-exclusive license etc. is supposed to be undisclosed and a registration system for provisional exclusive licenses and provisional non-exclusive licenses, this cabinet order provides types of information etc. supposed to be undisclosed, and a procedure etc. for registration for a provisional non-exclusive license etc.

[Promulgation Date]
December 26, 2008

[Enforcement Date]
April 1, 2009

[Outline]
(1) It is stipulated that undisclosed items of information of a non-exclusive license etc. are the name of a non-exclusive licensee, the name of a provisional non-exclusive licensee, the scope of a non-exclusive license, and the scope of a provisional non-exclusive license.

(2) Establishment of a registration system for provisional exclusive licenses and provisional non-exclusive licenses.

(3) The item regarding reasonable value is deleted from items on a request for registration for an exclusive license and a non-exclusive license.

JPO Homepage
http://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyo_kaisei_seirei.htm


Enforcement Date of Law for Partial Amendment to Patent Law Etc. (2008)

On December 24, 2008, the Japan patent office (JPO) announced a cabinet approval of “Cabinet Order That Provides Enforcement Date of Part of Law for Partial Amendment to Patent Law Etc.”

[Enforcement Date]
April 1, 2009

[Subject Items]
Among items to be revised, subjected to the enforcement are the following items, which are supposed to be enforced on that date provided by a cabinet order which is not later than one year from the promulgation date.

(1) Revision of the registration system for non-exclusive licenses, etc. (establishment of a provisional exclusive license system and a provisional non-exclusive license system; establishment of a registration system for provisional exclusive licenses and provisional non-exclusive licenses; and restriction on disclosure of description of registration for a non-exclusive license and a provisional non-exclusive license).

(2) Expansion of a period for demanding an appeal against examiner’s decision of refusal.

(3) Expansion of countries that can participate in electronic exchange of priority documents.

JPO Homepage
http://www.jpo.go.jp/torikumi/kaisei/kaisei2/tokkyo_kaisei_kijitu.htm


Partial Amendment Attendant upon Enforcement of Biofuel Law to Enforcement Regulations for Plant Variety Protection and Seed Act

On December 17, 2008, information on partial amendment to the Enforcement Regulations for the Plant Variety Protection and Seed Act (the amended act has been enforced on October 1, 2008) has been posted on the Homepage of the Plant Variety Protection.

The partial amendment followed the enforcement of “The Law Concerning the Promotion of Use of Agriculture, Forestry, and Fisheries-Derived Organic Resources as Raw Materials to Produce Bio Fuels” (Biofuel Law). According to the Homepage, for the first through sixth years, an application fee and a registration fee for a new variety, which is the fruitage of a research and development project program authorized under the Biofuel Law are each reduced to one quarter the original fee.

Homepage of the Plant Variety Protection
[Information on Law Amendment] Available at: “Partial Amendment Attendant upon Enforcement of Biofuel Law to Enforcement Regulations for Plant Variety Protection and Seed Act (September 30, 2008)”
http://www.hinsyu.maff.go.jp/


Introduction of Common Application Format

As for application for patent and utility model registration as from January 1, 2009, acceptance of an application using a common application format to which Trilateral Offices; the JPO, the EPO and the USPTO agreed is to be commenced, according to JPO. The common application format allows filing of an application with any of Trilateral Offices. In the format, headings to be described in a specification or a description are added, and heading titles, the heading order and the order of filing documents, including a specification or a description are changed. With regard to PCT application, the application itself using the common application format is to be commenced as from January 1, 2009, while on-line application compatible with the common application format is to be accepted as from the end of March 2009.

For further details of the common application format, refer to the following JPO website.
Japan Patent Office
http://www.jpo.go.jp/tetuzuki/t_tokkyo/shutsugan/kyoutsusyutugan.htm
The Website of the Trilateral Co-operation
http://www.trilateral.net/news/20080425/index.php


Online application software will be available for information statement system

Online procedure by use of online application software will be available on and after January 1, 2009, for submitting information regarding an application for patent or utility model registration, in addition to a conventional way of submitting paper documents, including prior art documents.
The number of the submission has been increasing in recent years. By providing the online way to submit the information, Japan Patent Office hopes to further promote the use of the information statement system.

As compared with the case of submitting paper documents, the online procedure is advantageous in that the information is immediately provided for the Examiner, and moreover, the submission of the information, including prior art information, can be confirmed by receiving a receipt.
However, with the online procedure, only 10 or less PDF files can be attached.

For more detail, visit the Japan Patent Office website below.
The Japan Patent Office website

http://www.jpo.go.jp/seido/s_tokkyo/internet_syutugan_online_kaisi.htm


Enforcement of Registration System of Certain Non-Exclusive License

Since October 1, 2008, the Patent Office has received applications for a registration system of certain non-exclusive license. The registration system of certain non-exclusive license was established by the law amending a part of laws such as the Special Measures Law concerning regeneration of industrial dynamism.
The registration system of certain non-exclusive license is a special exceptional system to the requirements of perfection of licensing a non-exclusive license based on patent, utility model registration, or exclusive license thereof, against a third party. The registration system of certain non-exclusive license is stipulated in the Special Measures Law concerning regeneration of industrial dynamism. The registration system protects a business activity of a non-exclusive license holder. The business activity thus protected is based on a licensing agreement on non-exclusive license (comprehensive licensing agreement) in which any particular patent number or utility model registration number, a licensed object of non-exclusive license, of patent is not specified. In the registration system of certain non-exclusive license, the non-exclusive license holder is allowed to have perfection against the third party (Special Measures Law concerning regeneration of industrial dynamism, Section 58) by registering, in the original register of certain non-exclusive license registration, non-exclusive license issued by the “licensing agreement on certain non-exclusive license” (Special Measures Law concerning regeneration of industrial dynamism, Section 2(xx)).

The Patent Office Home page
http://www.jpo.go.jp/tetuzuki/touroku/tokuteitujyojissikenseido.htm


Japan Patent Office Annual Report 2008

The JPO announced “Japan Patent Office Annual Report 2008” in English on September 19, 2008. This Report, which is based on the one released in Japanese on June 27, 2008, consists of 5 parts as follows;

(ⅰ) Trends of Industrial Property Rights
Chapter 1 Circumstances of Application and Registration and Current Status of Examination and Appeals/Trials at Home and Abroad

(ⅱ) Government Efforts in Intellectual Property Activities
Chapter 1 Efforts for Overall Intellectual Property
Chapter 2 Efforts Related to Ptents
Chapter 3 Efforts Related to Design
Chapter 4 Efforts Related to Trademark
Chapter 5 Efforts Related to Appeals and Trials
Chapter 6 Legal Amendment in 2008

(ⅲ) Measures for Private Companies and Universities
Chapter 1 Support for SMEs
Chapter 2 Support for Universities
Chapter 3 Support for Patent Utilization
Chapter 4 Support for Activities through Information Technology
Chapter 5 Development of Human Resources Related to Intellectual Property

(ⅳ) International Trends and Efforts
Chapter 1 International Trends and Efforts Relating to Patents
Chapter 2 International Trends and Efforts Relating to Designs
Chapter 3 International Trends and Efforts Relating to Trademarks
Chapter 4 International Efforts to Protect Intellectual Property

(ⅴ) Statistical Data

Link: JPO website
http://www.jpo.go.jp/shiryou_e/toushin_e/kenkyukai_e/annual_report2008.htm



Guidelines concerning the time limit for requesting appeals, in case of the applicant being overseas resident, under the 2008 revised Patent Act

In regard to the time limit for requesting an appeal against examiner’s decision of refusal (in regard to patent, design, and trademark) and an appeal against examiner’s decision to dismiss amendment (in regard to design and trademark), which is one of the revised matters of Patent Act and the like, the current time limit of 30 days from the date of sending a copy of a Decision of Refusal or a Decision to Dismiss Amendment is extended to 3 months. Additionally, in case of patent, the revised time limit is applicable only when an amendment to the description and the like at the time of request for appeal is to be done at the same time as the request for appeal.
In response to these revisions, JPO released, on September 17, 2008, guidelines concerning the time limit for requesting appeals in case of overseas applicant. The date of enforcement of the revised Patent Act will be designated by a government ordinance within 1 year from April 18, 2008.

An extension of the time limit for requesting appeals is not permitted in principle, except the following case.
In case where an overseas applicant requests an appeal against examiner’s decision of refusal with regard to a patent application, the time limit would be 4 months determined by adding 1-month extension by virtue of the authority to the 3-month time limit, in consideration of a balance with the current system, which allows a time limit of about 4-month in total for requesting appeals and discussing amendments to the description and the like.



Japan Patent Office
http://www.jpo.go.jp/iken/h20_kaisei_sinpan_seikyuu_toriatukai.htm


Clarification of operation of the requirement of unity of invention in the Patent·Utility Model Handbook

On July 30, 2008, the Patent Office clarified in the Patent·Utility Model Handbook (61. 02) the way of thinking concerning “an (another) invention, examination of which is practically finished,” which is described under THE REQUIREMENT OF UNITY OF INVENTION in the Examination Guideline section I chapter 2.
The Patent Office also clarified in the Patent·Utility Model Handbook (61. 03) the requirement of unity of invention for an application in which plural groups of inventions are figured out, in the view of an invention recited in the beginning of CLAIMS.

<<“An (Another) invention, examination of which is practically finished”>>
As an invention to be exceptionally examined regardless of the unity of invention, the Examination Guidelines mentions therein “an invention, examination of which is practically finished as a result of examining an invention to be examined.” Though there is no clear definition of “an invention, examination of which is practically finished,” the Patent Office clarified a range of such an invention, based on concrete examples (31, 35, 36) raised in the Examination Guidelines.
Specifically, an invention corresponding to any of the following (1) through (3) of 1 and satisfying 2 should be considered to be “an invention, examination of which is practically finished.”

1. An invention, examination (examination of novelty, inventive step, etc) of which in relation to a prior art is practically finished.
(1) An invention that is simply different from an invention to be examined, in an expression method.

(2) An invention that (i) simply carries out adding, eliminating, converting, etc of a well-known and/or conventional technique to/from/in an invention to be examined, and thus (ii) does not obtain a new effect. (This requirement should be limited to a case in which the technique to be added to, eliminated from, converted in, etc. can be identified as the well-known and/or conventional technique, (i) without performing a search or examination or (ii) in a process of searching and/or examining the invention to be examined)

(3) An invention of a broad concept that encompasses an invention to be examined. Based on examination results of novelty, inventive step, etc. of the invention to be examined, a judgment result of the invention of the broad concept can be obtained without requiring a further examination practically.

2. Examination (examination of description requirement, etc.) other than the examination of a relation between a prior art and the invention to be examined is practically finished.

<<“Requirement of unity of invention for an application in which plural groups of inventions are figured out, in the view of an invention recited in the beginning of CLAIMS”>>

Study Case
Claim 1: X + Y
Claim 2: X + a
Claim 3: Y + b
(claims 1 and 2: the same technical feature X)
(claims 1 and 3: the same technical feature Y)

(The following should be presupposed: it is described in specification that both X and Y are novel, both X and Y are admitted to be special technical features, and at least one of X and Y is found a posteriori to be “a technical feature making a contribution to a prior art.”)

1. Is the requirement of unity of invention satisfied in the study cases?
In order for an application having two or more inventions to satisfy the requirement of unity of invention, all the inventions recited in CLAIMS of the application have to form a single group of inventions, as a whole.
However, the inventions in accordance with claims 1 through 3 of the study case do not form the single group of inventions since the inventions recited in claims 1 and 2 and the inventions recited in claims 1 and 3 form different groups of inventions.
Thus, the requirement of unity of invention is not satisfied.

2. If the requirement of unity of invention is not satisfied, how does the Examiner select a group of inventions to examine?
1. Even if the requirement of unity of invention is not satisfied, a group of inventions satisfying the unity of invention in relation to a first invention are selected as inventions to be examined for requirements other than the requirement of unity of invention (the Examination Guideline section I chapter 2, 4.1(1)).
In the study case, a technical feature that is more likely to make a contribution to a prior art is to be identified in the invention in accordance with claim 1, the first invention.

2. If both X and Y are the technical features that are more likely to make contributions to the prior art in a case where, as in the study case, there are plural groups of inventions that satisfy the unity of invention in relation to the first invention, the Examiner has his/her own discretion in selecting which technical feature to examine.

3. If the Examiner selects X, it means that the Examiner selects, as the inventions to examine, the invention (X + Y) in accordance with claim 1 and another invention (X + a) in accordance with claim 2, the latter invention being linked to the former by X.

4. In adherence with the spirit of the requirement of unity of invention, X and Y cannot be selected simultaneously as the inventions to be examined.

The Patent Office’s Homepage
Clarification of operation of “the requirement of unity of invention”
http://www.jpo.go.jp/torikumi/t_torikumi/hatumeinotanitusei.htm

Patent·Utility Model Handbook (61. 02) (61. 03)
http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/handbook_shinsa/61.pdf

Examination Guideline Requirement of unity of invention
http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/tjkijun_i-2.pdf




Questioning Utilizing Pre-trial Reports (Pre-trial Questioning)

On July 10, 2008, the Japan Patent Office announced that as for cases whose appeal examination against examiner’s decision of refusal in connection with patent applications would be initiated after October, 2008, the conventional practice of judging the necessity for pre-trial questioning by case would be revised and in principle, pre-trial questioning would be conducted concerning all the cases with pre-trial reports prepared.
Pre-trial questioning is a system intended to secure procedures “by sending the contents of pre-trial reports to applicants for appeals so as to give them opportunities for making arguments against examiner’s judgment.” With this system, Appeals Department is expected to substantially examine appeals and make judgment on the basis of arguments of applicants for appeals.
Furthermore, note that the pre-trial questioning is not intended to grant opportunities for making amendments and that nonsubmission of responses to the pre-trial questioning will not have a disadvantageous influence on applicants for appeals in the course of appeal examination and judgment.

Japan Patent Office
http://www.jpo.go.jp/tetuzuki/sinpan/sinpan2/zentihoukoku.htm



PAGE TOP