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Omori & Yaguchi USA
"Keeping Our Sights on the Intangible

The following is a summary of changes that have been made in the Japanese Patent Law effective April 1^st of 2007. The changes consist of three main parts and one miscellaneous part as follows:

         1. Revisions in the Divisional Application System
       2. Revised Amendment System
       3. Extension of the Period for which to File a Translation of a Foreign
           Language Application
       4. Other Miscellaneous Revisions*
                     (*effective January 1, 2007)

Revised Points: The timeframe in which Divisional Applications can be filed has been changed. 

[Filing Period of Divisional Applications]

Since Divisional Applications were considered to be analogous to amendments in Japan, under the old law, Divisional Applications could only be filed during the period in which amendments for the claims, description, or drawings attached to the application could be made. That timeframe was:

                (i)   the period prior to the response period of the first office action,

                (ii)  the period when responding to a non-final office action, and

                (iii) the period within 30 days of filing Demand for Trial against the

                      Examiner's Decision of Final Refusal

Under the new law, Divisionals can now be additionally filed within 30 days from the mailing of a Decision to Grant a Patent (also known as a Notice of Allowance) and prior to the issuance of a patent, or within 30 days from the mailing of the issuance of a Decision of Final Refusal.

[Merits of the New Law]

The primary purpose of filing a Divisional application in Japan is to continue an application and to secure a broader scope of patent protection. However, prior to April 2007, Divisionals could not be filed after receiving a Notice of Allowance. If an applicant wanted to file a Divisional, he had to do so within the period in which the last amendment could be filed, such as when responding to an office action. In addition, if an applicant wanted to file a Divisional Application after an issuance of a Decision of Refusal, he had to first file a Demand for Trial against the Examiner's Decision of Final Refusal for the sole purpose of obtaining an opportunity to file a Divisional application.

Now, under the new law, a Divisional can be filed without pursuing an appeal. In other words, after an issuance of the Decision of Refusal, if an applicant wants to separate one portion of the claims and seek protection, he can now do so without first filing a demand for Trial. Thus, unnecessary procedures can be avoided in the future.

Also, applicants no longer need to file a Divisional Application along with a response to office actions, just for the purposes of keeping the application "pending" and prevent the loss of any opportunities should a Decision to Grant a Patent be mailed.

Additionally, applicants may now have greater opportunities to obtain more comprehensive or multidisciplinary patents, due to the additional opportunity to file Divisional Applications. This change to allow Divisional Applications to be filed as the issuance of Decision to Grant a Patent or a Decision of Refusal brings the Japanese patent law closer to U.S. and European patent law, and contributes to harmonization of those systems.

[New Restrictions on the Amendments to the Divisional Application]

Pre-April 1, 2007, a Divisional Application was examined separately from the parent application. Now with the new law in place, if a Divisional Application includes a large portion of the claims of the parent application (i.e., if the claims are substantially that of the same invention), for which the grounds for rejection in said parent application has not been resolved or overcome, the same restrictions on the allowable scope of amendments imposed in a final office action (*see below) apply to the Divisional Application. In other words this is similar to receiving a "first action final" rejection in U.S. practice.

(*The amendments allowable in a final office action are (i) the deletion of the claims, (ii) the restriction of the scope of claims, (iii) the correction of the errors in the description, and (iv) the clarification of descriptions that are ambiguous.)
[The Effective Date]

The changes are applicable to parent applications filed on or after April 1, 2007. The new law will not apply to Divisional Applications whose parent applications were filed on or before March 31, 2007, nor is it applicable for cases currently pending before the Japanese Patent Office.

Excluding amendments filed in response to an appeal against a Decision of Rejection, or a final Notification of Reasons for Refusal, previously, applicants were free to file amendments to drastically revise the scope of a claimed invention after the issuance of the first Notification of Reasons for Refusal, so long as the new claims were found in the descriptions of the specification. For instance, the scope of claims describing an "antenna" for a mobile phone in the original application could be changed to a scope of claims describing a "hinge device" of the same and still be permissible. Such drastically revised claims now have the different scope of an invention compared to the invention as originally described in the claims. The making of this particular type of amendments, however, caused unfairness since it would allow some applications to be essentially examined twice, while others, who have taken the time to unify the targeted invention, would be examined only once.

The new law no longer permits the filing of this type of amendments. The standard on whether the amendment falls on to this particular type is judged based on whether the original invention and the amended invention satisfy the "unity of invention" requirements under Section 37 of the Japanese Patent Law, and have the same "patentably distinct characteristics".

In other words, once substantive examinations of claims have been conducted, applicants can no longer change inventions by canceling the rejected claims and adding new claims covering different technical features, even if the changed invention was originally encompassed within the description.

There are essentially two cases of shifting amendments that will no longer be permitted:

Case 1: An application with a claimed invention regarding an antenna for a mobile phone (claim A) and descriptions that include a hinged device of a mobile phone (descriptions [A] and [B]) is submitted. The first office action is issued and a Notification of Reasons for Refusal is sent due to a lack of inventive step. An amendment is submitted now with the hinged device of the mobile phone as the claimed invention (claim B) with the same descriptions (descriptions [A] and [B]). Since claims A and B do not satisfy the unity of invention requirement, this will be grounds for refusal.

Case 2: An application with a claimed invention regarding an antenna for a mobile phone (claim A) and a hinged device of a mobile phone (claim B) is submitted. Due to lack of unity, only invention A will be examined for its patentability. If invention A is rejected due to a lack of inventive step, submitting an amendment retaining only claims B will be considered a shifting amendment and will not be permitted either. If the pre-amendment application was issued a Notice of Reasons for Refusal because it contained two inventions that lacked unity, then the amended version containing a narrowed scope of the original scope of claims will be issued a Decision for Refusal (or a final office action) as in the above example.

Consequently, applicants may need to take special care to file any necessary amendments at the time of filing a Request for Examination, so that certain opportunities will not be lost due to this new limitation.

Before the revision, the period for filing a translation of a Japanese patent application filed in a foreign language, a "foreign language application", was within 2 months of the filing date of the foreign language application. Under the new law, the period has been extended to one year and two months from the date of filing if the application was filed claiming no Paris Convention priority, or from the priority date of the original application filed in another country under the Paris Convention.

Please note that this revision does not apply to the due date for filing a Japanese translation for a PCT application that was originally filed in a foreign language and entered into the Japanese national phase.

The changes are applicable to a foreign language applications filed in Japan on or after April 1, 2007.

· "Exportation" will be recognized as an act of infringement
· "Act of holding a patented product for the purpose of assignments or the like" will become an additional manner of indirect infringement
· Criminal sanctions are increased for patent infringement