Recent Changes in the Japanese Patent Law and Practice

1. Time limit for filing appeals (Expected to go into Effect: April 1, 2009)

(1) According to the present Patent Law, a foreign applicant can file an appeal against a final rejection by an examiner within 90 days from the final rejection. An amendment of Claims and Specification can be filed within 30 days from the appeal date (that is, 120 days at the longest from the final rejection).

(2) Under the amended Patent Law, a foreign applicant can file an appeal against the final rejection by an examiner within 4 months from the final rejection. An amendment of Claims and Specification can be filed only at the same time as the filing date of the appeal (that is, 4 months from the final rejection). The period for filing such an amendment has not been substantially changed, but the due date for appealing has been extended by about one month.

(3) Under the amended Patent Law, an appeal brief for supporting the appeal shall be submitted to the JPO at the same time as the filing of a notice of appeal. If no appeal brief is submitted, the JPO will issue an invitation for one. The appellant is required to submit such an appeal brief within 30 days from the invitation. 

(4) Under the amended Patent Law, if the Claims or Specification are amended at the same time as the filing of a notice of appeal, then the application shall be examined again by the original examiner that finally rejected the application. If the examiner finds the amendment solves the reason of the final rejection, the application will be allowed without moving up to the Appeal Board.

(5) On the other hand, if the original examiner finds the amendment does not yet solve the rejection reason, then the examiner issues an examiner’s report to the JPO Commissioner. The case then moves up to the Appeal Board stage, where three appeal examiners examine the appeal case. The chief appeal examiner sends the appellant a written question (Shin-jin) together with the examiner’s report. The appellant can officially submit an opinion against the examiner’s report and can unofficially submit an amendment of the claims. An interview with the appeal examiners can be requested in order to orally explain the differences between the claimed invention and the cited references. If the unofficially amended claims are found allowable by the appeal examiners, an official action is issued in order to give the appellant an opportunity to officially amend the claims. With such an official amendment in response to the official action, the appeal examiners will allow the appeal case.

2. Provisional license under pending application (Expected to go into Effect: April 1, 2009)

(1) A system will be introduced for registering provisional licenses under pending patent applications (Articles 34bis, ter). There are two types of provisional licenses, “provisional exclusive license” and “provisional non-exclusive license”. A provisional license can be granted within the scope of the disclosure of the originally filed patent application.

(2) A provisional exclusive license goes into effect upon registration thereof at the JPO. Once a provisional non-exclusive license is registered at the JPO, it shall be effective against any assignee of the patent application.

(3) A registered provisional exclusive and/or non-exclusive license remains effective even after amending the application. And when a divisional application is filed from a parent application under which a provisional exclusive and/or non-exclusive license has been registered, a provisional exclusive and/or non-exclusive license is deemed granted under the divisional application as well.

(4) Where a provisional exclusive or non-exclusive license is registered under a patent application, the applicant may withdraw the patent application only with the consent of the registered licensee. (Article 38bis)

(5) When a patent is granted for the patent application, the provisional exclusive license and/or provisional non-exclusive license loses its provisional status and matures into an exclusive license and/or a non-exclusive license respectively.

(6) When a patent application is finally rejected or abandoned, the provisional exclusive license and/or provisional non-exclusive license lose its effect.

3. Super Accelerated Examination System (Effective Date: October 1, 2008)

(1) This system has been recently introduced and is applicable to patent applications satisfying the following two requirements i) and ii). 

i) Internationally-filed application:

a) application that was filed with both the JPO and at least one foreign IP Office;
b) PCT application that was filed with a foreign IP Office and then entered into the national phase in Japan; or
c) application that was filed with the JPO as a domestic application and also filed with the JPO as a PCT application

ii) Commercialized application:

a) applicant or its licensee has already commercialized (worked) the claimed invention; or
b) applicant or its licensee has a concrete plan to commercialize the claimed invention within two years from the date of requesting super accelerated examination.

(2) In order to utilize the Super Accelerated Examination system, the applicant should submit a written request “The Explanation of Circumstances Concerning Accelerated Examination” (“Request”) to the JPO. The Request should include the followings:

i) Explanation that the application is an Internationally-filed application and a Commercialized application;
ii) Prior arts as a result of prior art search (done by the applicant, an IP office, etc.), and a comparison statement between the claimed invention and the prior arts.

(3) The JPO quickly examines such applications that satisfy the above requirements, and issues a first official action within one month from the date of the Request, that is much shorter than the average examination period for conventional accelerated examinations which is 2.2 months.