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

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

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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

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

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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

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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

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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

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“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/

“Green” related applications becoming the subject of accelerated examination/accelerated trial examination

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

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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

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）

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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

Current Trends Of Business-Related Inventions

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)

Year	Number of application
2000	Approx 19,600
2001	Approx 19,000
2002	Approx 13,000
2003	Approx 10,000
2004	Approx 9,000
2005	Approx 8,400
2006	Approx 7,000
2007	Approx 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
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- - - (Previous Information) - - - - - - (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)

Year	Number of application
2000	Approx 19,600
2001	Approx 19,000
2002	Approx 13,000
2003	Approx 10,000
2004	Approx 9,000
2005	Approx 8,400
2006	Approx 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.

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
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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 IPDL (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