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 Japanese
Patent System News and History
Patent Translations Inc. has long maintained brief descriptions
of important changes in intellectual property practice in
Japan. In fact, our coverage goes back to 1995. This coverage
is now part of Martin
Cross' blog, but we have left the content here for
people interested in how things happened.
Another excellent source of JP IP News can be found on the
web site of Shinjyu
Global IP.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
As of July 1, 2003, a separate file must
be created for the Claims section of all patent applications,
including national phase PCT applications. The new regulations
also call for a highly compact page layout throughout the
specification that nearly doubles the number of characters
per page.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
As of September 1, 2002, the limit for entry
of PCT applications into the national phase in Japan is extended
to 30 months from the priority date for all applications.
The limit remains unchanged at 30 months for those applications
for which a Chapter II IPE demand has been filed.
The big news is, however, that an additional two months are
given in which to provide a Japanese translation of the specification,
claims, and drawings after the application itself has been
filed. In the past, applicants who left decisions about entry
into the national phase to the last minute have often paid
for their procrastination in translation rush fees. The new
two-month grace period gives ample time for a translation
to be prepared without surcharges once the decision has been
made and the application has been filed. Note that the clock
starts ticking when the application is filed.
For more information, see the article at the Japan Patent
Attorneys Association web site, here.
As of September 1, 2002, a new Japanese
Patent Office requirement calls for specific disclosure of
prior art. The requirement will also apply to national phase
PCT applications with international filing dates after September
1, 2002. At least one publication must be listed in the background
art. Documents need only be referenced, unless an examiner
specifically requests copies. If no publications exist, this
must be explained. Failure to comply should result in an invitation
to amend.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
Japanese patent law has not, up until recently,
recognized computer programs per se as being patentable. This
was due to a requirement in the patent law that the claimed
invention utilize a law of nature. New guidelines for examination,
which will be effective as of January 10, 2001, allow computer
programs to be recognized as "product inventions",
while software that is reduced to practice by way of hardware
is given the status of a "statutory invention".
The same guidelines, however, will stiffen the inventive-step
requirement for business-related software to exclude, "the
exercise of ordinary creative activity of a person skilled
in the art who has knowledge both of the said business field
and computer technology."
The guidelines are available from
the JPO in PDF format, here.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
As of the first day of the year 2000, the
Japanese Patent Office began using the western calendar in
numbering its publications. The first two digits of published,
unexamined Japanese patent applications (or kokai) had previously
represented the year of the Emperor's reign. This is the year-indicator
in the traditional Japanese calendar. The new numbers start
with four digits which represent the year according to the
Gregorian calendar, so the first kokai published in the year
2000 is numbered 2000-000001. The publication number for kokai
and other documents published before the year 2000 will not
change. Similarly, application numbers will continue to start
with a two-digit number indicating the year according to the
traditional Japanese calendar.
In March, 2000 the Patent Abstracts of Japan
(PAJ) department of the JPO launched its online machine translation
(MT) initiative, making English versions of all unexamined
Japanese patent applications (or kokai) published later than
1992 available free of charge.
The system uses relatively simple MT software
to produce translations, which are very useful in determining
whether or not a proper translation of the document will be
necessary. The MT output is less reliable than that of more
sophisticated MT systems, such as the one made available by
Derwent,
mainly because the technical dictionaries it uses are less
complete. We did not, however, find the MT output considerably
more difficult to read.
One great advantage of the system is that,
while MT output typically costs from $35 to $350 per document,
and takes up to a week to arrive, the JPO service is free
and operates in real time.
It should be understood, however, that while
MT output can let you know what it is that is being described
in a kokai, it can rarely tell you what is being said. When
the sentence structure of the MT output is not confusing,
it is quite often misleading, and even discrete technical
terms are often mistranslated. It is unwise to base any significant
decision on MT output without discussing it with your regular
translation provider. By using MT, however, you may be able
to reduce your translation costs by having only a few paragraphs
that contain the information you need, translated by a human,
rather than ordering a translation of the entire document.
To access the JPO machine translation
service, go to the PAJ
search page to locate the document you need translated.
After clicking on the kokai listed in the results, so as to
open the abstract for that document, click on the "Details"
button in the top right-hand corner of the screen. A new window
will open for the MT output. This often takes several minutes
to load. The new window will be made up of three frames. To
see the MT output for the various sections of the specification,
it is necessary to click on the links in the top-left frame
labeled "claims", "detailed description",
etc. Long sections, such as the detailed description, can
take several minutes to load, so be sure to wait until all
the text has been displayed before beginning to work with
it.
As part of its initiative to make Japanese
IP information more widely available, the Japanese Patent
Office has included an English search interface for the Goods
and Services lists of its trademark database at the IPDL.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
| EPO
Priority Documents Exempted |
Effective January 1, 1999, priority documents
will no longer be required by the JPO when priority is claimed
under the Paris Convention-based applications filed with the
EPO.
This simplification of procedures is made
possible by electronic data exchange between the EPO and the
JPO. Negotiations date back to 1997 Tri-Lateral discussions
between the JPO, EPO and USPTO. The official announcement
was made on December 18, 1998.
On January 22, the WIPO made version 2.81
of PCT-EASY available for download. The new version supports
Japanese, as well as all other official WIPO languages. The
JPO announced that it would accept applications in PCT-EASY
format earlier this year. The new software can be downloaded
free of charge from the WIPO
PCT-EASY site.
On March 31st the Intellectual Property
Digital Library (IPDL) established by the JPO went online.
The IDPL is now the place to search and retrieve the Patent
Abstracts of Japan, as well as Japanese trademarks. Those
with Japanese-capable computers can take advantage of many
more features including instant access to all Japanese patent
publications. For more information, see our 1998
news brief.
| Lattice
Supports Japanese Patents |
Lattice is a download robot written by Steve
Mayall and available through Image
Applications. The program can automatically download
just about anything on the web, but most importantly it can
download patents. The way it works is this: you type in a
patent number, you click on the start button, and a few minutes
later the patent is on your hard disk either as a collection
of PDF files (one file per page) or a tiff file (in the case
of USPTO patents).
In the past it only downloaded USPTO, EPO,
and CIPO patents. Following a request from Patent Translations,
however, the program has been updated to cover Japanese patents
as well. Lattice is now by far the fastest and most convenient
way to retrieve Japanese patents published after 1973, which
is as far back as the EPO database used by Lattice goes.
If your browser supports Japanese, and the
patent you are looking for was published after 1993, you may
want to go directly to the Patent
and Utility Model database of the IPDL
provided by the JPO,
where you can access the electronic text version.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
On Christmas Day 1997, the Japanese Patent
Office (JPO) announced a six-part plan aimed at making its
services easier to use. The measures, scheduled to take effect
between January 1998 and the year 2000, should mean faster
processing times and reduced paperwork. The most striking
promises include reducing the primary examination period to
12 months by the millennium, and making some 40,000 documents
available over the Internet. Measures that may impact non-Japanese
applicants are listed here in order of their planned effective
dates.
| January 1998 |
 |
Trial schedules to be published on the internet. |
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Notification of overdue registration fees to be given
before dismissal action is taken. |
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Database of sleeping patents to be made available via
JPO home page. |
| February 1998 |
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Full text of applications and patent gazette for previous
month to be posted on the Internet. |
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Preliminary Internet publication of patent, utility
model, design and trademark gazettes ,and trial decisions.
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| April 1998 |
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Power of attorney no longer to be required for patent
applications. Remains applicable for major amendments,
abandonment, withdrawal, and trial requests. |
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Patent gazette to include scope of examiners' prior
art search. |
|
Trial period to be shortened to 12 months for patent
invalidation and appeal, and for trademark appeal. The
period is to be shortened to 6 months for design and trademark
invalidation. |
| By Year 2000 |
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Primary examination period for patents, designs and
trademarks to be reduced to 12 months. |
|
Appeal response (by JPO) period to be reduced to 12
months. |
| Requirements
to Be Relaxed |
Only 80 foreign attorneys currently practice
in Japan. This number may increase, however, as restrictions
are set to be relaxed as of September 1998. At the present
time, lawyers wishing to register as foreign attorneys in
Japan must have five years of experience outside Japan. The
amended law would reduce this period to three years, of which
only two years need be completed outside Japan.
On May 6, 1998 law No. 51 (1998) was promulgated.
The law is aimed at making patent rights easier to protect,
and both faster and less expensive to enforce. The law provides
for an increase in the maximum fine for patent infringement,
from the current 5 million yen (40 thousand US$) to 150 million
yen (12.5 million US$). Despite talk last year of increasing
maximum damages to three times the reasonable royalty, the
law permits only for calculation of damages based on actual
conditions. Provisions were made for facilitation of online
application and expedition of examination. An average cost
reduction of 11.5% can be expected as a result of flat-rate
tariffs from year 10 onwards, as opposed to the current progressive
rate system. Most of these measures are to become law as of
January 1, 1999.
The following four areas were covered by the bill.
Damage Compensation and Penalties
Under the new system, damage substantiation is to be based
on the sales volume of the infringing party, calculated using
the patentee’s profit rate. While in the past damage
has been limited to the licensing fee that would have been
established had a contract been negotiated in good faith,
under the new system, this restriction will not apply.
Separately, the ceiling on penalties for infringement is to
be raised from 5 million yen to 150 million yen.
Design Rights
The "ease of creation" judgment criteria will be
raised from "well known in Japan" to "existing
in the international public domain." The new law also
provides for protection of component parts designs and pattern
designs as embodiments of partial designs, while at the same
time expanding coverage to system designs and eliminating
the requirement that system components be registered individually.
A system will also be introduced that allows rights to be
exercised independently for associated designs.
Faster Invalidation Trials and Granting of Rights
The law is to be amended so as to disallow changes in the
gist of the reason behind requests for invalidation. Separately,
online and floppy disk applications are to be facilitated
to as to speed up the granting of rights.
Lower Patent Annuities
Japanese patent annuities, which are among the highest in
the world, are to be reduced for the first time since 1909.
The new law will establish a flat rate as of the 10th year
of the patent. This would mean a cost reduction of approximately
11.5% for a patent worked over 20 years.
Odds and Ends
The promulgated law states that companies co-owning patents
with the Japanese government need pay only their share of
the patent annuities. Priority certificates will no longer
be required for patents originally filed in countries with
which the JPO exchanges priority data. Application requirements
will be simplified to avoid redundant entry of terms such
as the title of the invention. Provisions are also included
for the issuing of trademark registration certificates.
On June 19, 1998 Mr. Takeshi Isayama, a
55-year-old Tokyo University graduate, took over as Commissioner
of the Japanese Patent Office. Separately, Mr. Shozo Uemura
became the first Japanese national to fill the post of Deputy
Director General at the WIPO as of July 6, 1998.
| Industrial
Property Digital Library |
The initiative that will make all JPO documentation
available online and free of charge, announced in late 1997,
is moving from the drawing board to hard disks. The Industrial
Property Digital Library (IPDL), as the project is now called,
is set to open to the public in March 1999.
Some of the functions covered by the system - such as searching
the English-language Patent Abstracts of Japan and searching
well-known Japanese trademarks - are already available online.
But those who don't read Japanese will have to wait for the
other English-language features: automatic machine translation
of patent and utility model full-text (Jan. 2000), and searching
of the entire trademark database (March, 1999).
Most of the 22 access functions provided by the IPDL will
be available in Japanese only, but fast access to IP journals,
gazettes, and legal status listings (all set for March, 1999)
should help Japanese-speaking patent professionals to work
more quickly.
| New
Format for Japanese Patent Numbers |
As of the year 2000, Japanese patent numbers
will be easier to understand, and there will be less room
for errors when retrieving documents. At the present time,
the first two digits in the number indicate the year of the
Emperor's reign in which the number was assigned. When the
emperor changes (as happened in 1989), this year is reset
to 1. This means that a patent filed in 1999 can have the
same number as an entirely unrelated patent filed in 1936.
In Japanese, there are no problems, as the name of the reign
is included in the patent number. This information is, however,
often left out when Japanese patent numbers are used in western
languages. To avoid confusion in the future, the JPO will
start using the western (Gregorian) calendar for the year
prefix as of January 2000.
The information
presented here is neither legal advice nor a substitute for
obtaining legal advice from a licensed
attorney.
A number of major changes were made to the Japanese patent
system in 1995 and 1996. The most significant changes are
described here, including:
| Introduction
of English filing |
In the past, patent applications could only
be filed in Japanese. Furthermore, once a patent had been
filed, it was not possible to correct translation errors which
affected the gist of the patent.
As of July 1, 1995, the specifications, abstract, and drawings
may be filed in either Japanese or English. A Japanese translation
of the same must be provided within two months of the filing
date. The request itself must still be made in Japanese.
Examination and judgment are based on the Japanese version
of the text.
Translation mistakes may be corrected at any time prior to
the end of the response period for the first official action
following a substantive examination. It is possible to correct
translation mistakes after this point, but these corrections
may not substantially increase the scope of the claims.
The same rules apply to the correction of translations of
PCT applications. Note, however, that Japanese translations
of PCT applications must be provided as soon as they move
into the national phase, and not two months after that date.
| Abolition
of the pre-grant opposition system |
Until 1996, once a patent application had
been examined, it was published, and third parties were given
18 months in which to oppose the patent before it was granted.
As of January 1, 1996, patents are granted at the issue of
the substantive examination. For a period of 6 months following
granting, any third party may oppose the patent. This opposition
may be made on a claim-by-claim basis.
Oppositions are arbitrated by a panel of appeal examiners.
These examiners may decide to reject the patent on grounds
other than the grounds raised by the party that instigated
the opposition. Amendment of the patent during opposition
is possible.
After this six-month period, interested parties may appeal
for invalidation of the patent as a separate procedure.
In the past, accelerated examination could
only be requested in cases where the filing party was working
or had made preparations to work the invention.
As of January 1, 1996, accelerated examination can be requested
for patent applications that are filed for the purpose of
gaining international rights; that is to say, those which
have already been filed in other countries. If accepted, this
request results in granting or final rejection within 36 months.
| Amendment
and divisional application |
In the past, amendments and divisional applications
could only be filed in the first 15 months following filing,
at the time of an examination request, and in any of the response
periods following an office action.
As of July 1, 1995, amendments and divisional applications
may be made at any time up to the end of the response period
for the first official action and during any subsequent response
periods.
| Extension
of the patent term |
In the past, the patent term was a maximum
of 15 years from the date of publication of the examined application
and a maximum of 20 years from the filing date.
As of July 1, 1995, the patent term is 20 years from the filing
date.
| Restoration
of lapsed rights |
In the past, failure to pay annual fees
within six months of the due date resulted in irrevocable
lapsing of rights, retroactive to the due date.
As of July 1, 1995, rights still lapse as before, and a 100%
fine is still applicable to late payments. If, however, fees
were not paid on time for a reason beyond the control of the
patentee, and if these fees are paid within 12 months of the
due date, rights will be restored.
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