In Japan, an inventor, or
his or her assignee can be an applicant. Also it is
common in Japan for an assignee company to file a patent
application as well as a PCT international application.
However, an applicant
doesn't have to submit an assignment unless the examiner
requests it. In general, no assignment is required as
long as the inventor's address is the same as that of
the assignee's.
In Japan, there is a
provision that is not present in the U.S. patent law.
This provision, the Article 35 of the Japanese patent
law, stipulates that, in order for an employer to apply
for a patent for an invention created by his or her
employee within the scope of the employer's business,
the employer must pay the employee a reasonable
compensation separately from his or her salary. This
quite reasonable rule was created to protect the rights
of Japanese employees, whose positions are extremely
vulnerable. American company also need to be careful
about this rule because the employee can later claim
that a patent application or right is invalid using this
rule.
On the other hand, if the
employee individually obtains a patent for an invention
which was created within the scope of the employer's
business, the employer may obtain the license-fee,
non-exclusive right to use the patent. The employer can
still do so even if the employee individually applies
for a patent after he or she leaves the company.
Article 8 stipulates that
an applicant who does not have a domicile or residence
in Japan must appoint a patent administrator who does
have a domicile or residence in Japan. In most case
applicant appoints a Japanese patent attorney as the
patent administrator.
However, the new Patent
Law Treaty adopted on this June no longer forces an
applicant to appoint a patent attorney when filing a
patent application. For this reason, Article 8 will be
deleted from the Japanese patent law in two to three
years. As a result, an applicant will be able to apply
for a Japanese patent from anywhere in the world without
using a Japanese patent attorney since the Japanese
Patent Office (JPO) will receive applications over the
Internet in the near feature.
The JPO has been
operating its electronic filing system since 1990.
Online nationalization of PCT applications will also
become available this year. Currently the online
applications are filed through ISDN lines, which
directly connect the JPO with most patent attorneys in
Japan but, as mentioned earlier, the Internet is
supposed to replace these ISDN lines in the near future.
Since applicants have to
pay the JPO a very expensive surcharge for paper filing,
about 90 percent of applications are currently filed
online.
Since the U.S. and Japan
are both members of the Paris Convention and the World
Trade Organization (WTO), an applicant in the U.S. may
claim priority to apply in Japan based on domestic and
international applications filed in the U.S. The period
for which the applicant can claim this priority is 1
year.
Most applications from
the U.S. to Japan are either ones with this Paris
Convention priority or ones filed under the national
phase of the PCT, which will be described next.
In either case, the most
important thing to recognize is that the English and
Japanese languages are considerably different from each
other. These two languages are far more different than
Americans typically think they are.
Also, just like patent
specifications in English, Japanese patent
specifications require a very specific writing style and
better language skills than those of a normal Japanese.
A simple translation is not good enough and, in itself,
would become a reason for rejection.
For these reasons,
Japanese patent specifications need to be prepared by
patent attorneys or engineers with patent knowledge who
understand the invention.
In order for Japanese
patent attorneys to prepare better written documents,
they have to have enough time for the preparation and
plenty of materials to help understand the invention.
We believe that better
Japanese writing saves the overall cost for obtaining
the patent right even with a higher than normal
application filling cost. So, we are planning to
facilitate better communications with the applicants in
the following ways.
First, we have
established a liaison office, Omori & Yaguchi USA LLC,
in America to eliminate the time difference between the
U.S. and Japan. Second, we will use our telephone or
television conference system to eliminate the distance.
And third, our Japanese patent attorney will visit
companies and factories to better understand the
inventions.
In
Japan, the national phase application must be filed
within 30 months from the priority date (the 30-month deadline).
According to the Japanese patent law, a PCT
application can be entered into the Japanese
national phase without a Japanese translation.
Then, there is the two-month deadline after the
entry of the Japanese national phase for filing a
Japanese translation. Please note that the translation filing
due is two months from the date of the entry,
not two months from the 30-month deadline.
Further, it is not mandatory to
file a translation of amendments to PCT Articles 19 and
34 with the Japan Patent Office. But if these amendments do exist
in your case, the applicant must notify the Japanese
patent attorney in a written form whether these amendments should be
filed or not.
If the applicant is
uncertain whether to file a request for examination of
the Japanese application, we recommend that the applicant not
file the translation of the amendments at the time of
the Japanese national phase entry to reduce the cost. The translation can be
filed with the request for examination, or the
amendments can be directly filed to match a claim
granted in the U.S. without filing the translation for
the amendment under PCT Article 19 or 34.
The claim for
examination can be filed within three years from the
international application date.
* Regarding
the important rule change concerning the PCT Japanese
national phase deadline, please click
here (as of September 1, 2002)
Patent applications
(excluding PCT application; please see the above section
C for PCT applications) to the JPO can be filed in
English. In this case, a Japanese translation of the
application must be filed within two months of the
filing date.
However, it should be
noted that this rule does not apply to applications
filed under the national phase of the PCT. In other
words, when time is pressing, applicant can file in
English for applications with the Paris Convention
priority, but not for PCT applications.
If applicant files an
application in English, amendments can be filed later
for any mistakes in the Japanese translation. For this
reason, many Americans think English language
application is better than Japanese language application
in case of any mistranslations.
However, Japanese patent
attorneys generally do not encourage applications in
English.
This is because a
mistranslation in itself can become a reason for
rejection. When considering the difference between
English and Japanese, it is nearly impossible to create
a truly precise translation between these two languages.
Anyone who is interested can claim invalidity of the
patent right by pointing out trivial mistranslations.
Also, amendments for
mistranslations are not always granted. When filing an
amendment, it is required to explain in detail why the
mistranslation occurred. As a result, the Japanese
patent attorney will have to explain how incompetent he
or she is. Moreover, since the other party is very
likely to reject any amendment for such a
mistranslation, applicants may end up wasting their time
in the attempt.
For these reasons, we
recommend that applicant file applications in Japanese
instead of English if there is any extra time. It is not
considered a liability to the applicant because, even if
the application is in translated Japanese, obvious
mistranslations with respect to the entire specification
context can also be corrected in this case.
Applications filed in
Japan are published 18 months after the priority date
regardless of the examination. Inventions described in
the published application become a prior art as of this
disclosure.
PCT applications are
internationally published 18 months after the priority
date and their Japanese translations are also published
in Japan as soon as possible.
In Japan, a patent
application will not be examined unless a request for
examination is filed within three (3) years of the filing
date.
One of the most
frequently asked questions from non-Japanese clients is
about when to file this request for examination.
In general, Japanese companies
decide whether or not the request for examination should
be filed mainly from the product commercialization
viewpoint by the examination filing due. Because the publication has the effect
of indirectly holding the competitor's movements, in many cases, the request for examination is not
filed in order to save the prosecution cost unless the
invention is realized.
In case of
the applications based on those filed in the United
States, it will not be
too late to file a request for examination even after the U.S. application is granted.
What would be the cost
to
file a request for examination? Please try our
online fee calculator as the
fee for
examination request varies depending on the number of
claims ► LEARN MORE
The examination is
conducted in the order of the request filing, which
usually takes one to two years to be completed. If
you are interested in Japan's accelerated examination
system, which enables the applicant to obtain the result
within three to four months from the request date,
please read on
► LEARN MORE
The requirements for
patentability in Japan are about the same as those in
America. Incidentally, people think the examination is
stricter for business method patents and gene-related
patents, which have been foci of debate lately. However,
Japanese patent attorneys consider this factor when they
prepare translation and amendments could be also filed
after receiving a notice of reasons for rejection to
better suit Japanese standards.
For example, the most
important reasons for rejection are:
1)
Patentable subject matter,
2) Novelty, and
3) Inventive step
These are similar to those in the United States.
However, applicant
should be careful about the grace period in Japan
because it is different from that in the U.S. If the
invention is announced at a conference or in a
publication in the U.S. before its U.S. patent
application, its Japanese patent right cannot be
obtained unless an application is filed in Japan within
6 months from the announcement regardless of the U.S.
application. Also if this announcement is simply made in
an embodiment, but not at a conference or in a
publication, the right cannot be obtained. It is so even
if the U.S. application-based priority is claimed.
On the other hand, Japan
is adopting first-to-file rule and this is not very
different from the rule in America because examinations
are normally done based on the application date in this
country also.
One of the
characteristics of patent rejections in Japan is that
the reasons made by the patent examiners are very brief.
In general, the examiner writes only three to four lines
in the note of reasons for rejection for the substance.
In a way, it is inevitable since there are only 1,000
JPO examiners for 300,000 applications a year.
For this reason, it is
necessary to voluntarily analyze differences between the
references and the invention without reflecting much on
the examiner's note. If your analysis and the claim
limitations are both appropriate, the application will
have a high probability of being granted.
It is also possible to
request an interview to hear the examiner's intentions.
Normally this request is granted at least once. It is
especially useful when the reason for rejection is
misdescription due to the translation.
In other words, often
the examiner has difficulties understanding the Japanese
translation and proceeds with the examination without
adequate comprehension of the invention. Therefore, when
the application is filed from a foreign country, the
interview is of great help to the examiner as well.
Amendments to the
specification can be filed freely until the end of the
period for response to a first notice of reasons for
rejection. These amendments can be filed freely unless
new matter is added to the specification.
For example, if the U.S.
application is granted first, applicant can amend the
Japanese application claims to match those granted in
the U.S. Then, it is effective to submit a report to
inform the examiner that those claims have been granted
in America, and file a request for examination at the
same time.
Utility model
applications are registered without any examination.
For this reason, if the
patent application seems likely to be rejected
eventually, applicant can convert the application to a
utility model application and at least reserve the
right. This method is useful when the application is
very important and applicant want the right in any case.
A utility model
application is registered six month from the filing
date.
It is generally
difficult to enforce a utility model right since it is
not examined. However, this is not a problem unless
applicant are planning to enforce the right.
In Japan, an appeal
against the final decision of rejection may be filed
within 60 days.
It may be hard for
Americans to understand this appeal because there is
nothing equivalent to this final rejection here in the
U.S. We think that the advisory action after the final
action in this country roughly corresponds to the final
rejection in Japan. Also the Japanese appeal roughly
corresponds to the amendment or the continuation
application in America.
That is, if an amendment
is filed against the final rejection within 30 days from
the date of appeal, the application is re-examined by
the same examiner for re-consideration of its
patentability. This amendment can be filed unless a new
issue is added to the claim.
However, the patent will
not be granted even if the same amendment is filed as in
the examination. In this case, an appellate body of
three trial examiners will carefully consider the
application. In our experience, a high percentage of
patents applied for from foreign countries are granted
as a result of this deliberation despite the first
rejection.
We can speculate that, in
many cases, issues which were ambiguous and hard to
understand during the first examination become clear
when they are brought to the deliberation.
Effective January 1, 2004,
the opposition system was abolished and integrated into
the invalidation system. Please see "9. Trial for
invalidity" below.
The patent term is 20
years from the filing date. However, an application for
patent duration extension is permitted under certain
conditions in such cases as medicinal products, if the
patent practically could not be used due to a
time-consuming permit application to Japanese government
offices.
In Japan, there used to be
two ways to invalidate post-grant patents: the
opposition system and the invalidation trial system.
The former was to file a corrective action against a
mistaken decision regarding a post-grant patent, and the
latter is used by a third party as a countermove against
a patent infringement.
Effective January 1,
2004, the opposition system was abolished and integrated
into the invalidation trial system. Accordingly,
Japan's patent invalidity trial is currently the only
way to demand an invalidation of post-grant patents.
Under the revised
invalidation trial system,
1. Anyone can file an
invalidation trial.
2. The trial may be
filed at anytime. The old opposition system
allowed a petitioner to file a claim within six months
after the publication is issued.
3. Both parties are
involved in the adversarial system during the trial
procedure.
4. The petitioner may
appeal to the Tokyo High Court against the trial
decision given by the lower courts.
Japan's
opposition system and the invalidation trial system
before January 1, 2004:
- Oppositions: In Japan,
oppositions are filed for almost all patent applications
which involve a matter of importance. Oppositions
can be filed within six months of the publication date.
If the
examiner rules there is a reason for the opposition, a
note of reasons for invalidation is issued. This note is
normally issued within four months after the grievance
period expires.
Therefore, if no notice is issued for five months after
the grievance period expiration, there is a high chance
that the patent has not been invalidated despite the
opposition. By the way, according to statistics, the
fraction of patents invalidated due to opposition is as
low as about 25 percent of all opposed cases.
- Trial
for Invalidity:
In
Japan, there are two mechanisms to invalidate the
patent. One is the opposition that is mentioned earlier.
The other is a trial for the invalidation.
The
difference between the opposition and the trial for
invalidity is based on their purposes. The opposition is
filed as a corrective action against a mistaken decision
and it has a public benefit. Therefore, anyone can file
the opposition within a certain period after the patent
grant, and further, there will be no opportunity given
for a discussion between the opposition party and the
patentee and the deliberation is quick. On the
other hand, the trial for invalidity involves private
benefits. Normally, this is a system used by a third
party as a countermove against a patent infringement. In
this trial, an opportunity of discussion is given
between the party which requested the trial and the
patentee, and the ruling is made based on the discussion
result. This ruling normally takes about five years.
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