Applications filed in the Common Application Format will satisfy the formality requirements of each of the three countries, and amendments to overcome formality objections will not be necessary later when filing the application before the other Trilateral offices. Therefore, filing applications before the Trilateral Offices is expected to become easier and less expensive.

For details, please refer to the website below:
http://www.trilateral.net/ ]]> tag:www.soei.com,2008:/english//6.1227 2008-11-17T01:43:35Z 2008-11-17T01:43:58Z

When the JPO receives a design application claiming priority under the Paris Convention, the JPO will examine, depending on circumstances, whether the application is qualified to claim the priority. Because there are differences in the design registration systems of various countries, it can be difficult to determine whether or not the design in the first application and the design in the subsequent application filed before the JPO are the same. The purpose of the revision is to compile a list of specific cases described in detail that further clarify the Design Examination Standards.

The basic criteria for determining whether the two designs are the same are as follows:

(1) If the design described in the first application is substantially the same as the design described in the subsequent design application filled before the JPO, the design application should be considered to be qualified to claim the priority right, regardless of drawing method used to present the design.
(2) To determining whether the design described in the first application and the design described in the subsequent application filed before the JPO are the same, it is necessary to make a comprehensive evaluation, including a thorough inspection and verification of the priority certificate, based on the knowledge that a person skilled in the art would have normally acquired.
(3) In identifying the design described in the Priority Certificate, the JPO should take into account any differences between the Acts/regulations in Japan and those of the country in which the application for the design was first filed.

Various examples are discussed based on the above criteria (1)-(3) in the draft revision and we would like to review two of those examples here. The first example is in regard to an article to which the design is applied.

The title of an article is indicated as “Bottle” in the Priority Certificate and the configuration of a PET bottle is shown in the drawings. However, the title of the article in the Japanese design application is “Bottle for Packaging.” In this case, the Guidelines state that the article in the first application and that in the subsequent application should be regarded as being the same.

The second example is in regard to a partial design for a flip mobile phone. The drawings attached to the Priority Certificate shows the configuration of the article when it is closed but do not show the configuration of inner part of the article when it is open. The Japanese application is a partial design application which shows the configuration of the article when it is open in dotted lines and the configuration of the article when it is closed in solid lines. In this case, the first application is considered to be a partial design application directed to the configuration of the article in the closed state, and, thus, the designs are considered to be the same.

As design intellectual property law specialists, we often find it difficult to determine whether a priority claim under the Paris Convention will be allowed. We hope that the revisions will make it easier to determine whether the designs in the priority application and the Japanese application are the same. Please note that even after the revisions are in force, allowability of the priority claim will still depend on the specific facts in each case. If you have any questions concerning a certain case, we recommend that you seek expert advice.

 OnJuly 1, 2008, the JPO and the Denmark Patent and Trademark Office (DKPTO) started a PPH pilot program.Denmarkis the fifth country with whichJapanhas implemented the PPH pilot program, after theU.S., theU.K.,Korea, andGermany. The JPO is currently negotiating with the European Patent Office (EPO), theCanadian Intellectual Property Office (CIPO) and the IP Australia to implement the PPH program.

The JPO has proposed that the current 30-day time limit for filing an Appeal Against Rejection be extended to three months from the date on which the certified copy of the examiner’s decision has been served on the applicant or his representative.

The Japan Patent Office invites public comments on the proposed changes to the Operation Guidelines.

For more information, please visit the following URL (in English).
http://www.jpo.go.jp/index_e/feedback.html

Under the Japanese Design Law, the applicant can obtain an Exception to lack of novelty if the applicant made the design publicly known in exhibitions; presentations in academic conventions; distributions, advertisements, presentations to the media and presentations to a third person.

If the design application is already filed in another country, the applicant can claim a priority in the Japanese application. In that case, an Exception to Lack of Novelty is unnecessary.

2. Specific procedures and required information
To obtain an Exception to Lack of Novelty, the applicant must file the application for a design within six months from the day the design became publicly known. The applicant is required to notify the JPO that the design lacks novelty at the time of filing the application and submit documents which prove that the design became publicly known within 30 days from the filing date.

If you plan to file an application for a design which became publicly known through your own actions, we would appreciate it if you would provide us with the following information: 

1. The fact that the novelty is lost
2. How the design became publicly known
3. Whether you can provide documents that will prove that the design became publicly known.  

The deadline for the documents was originally within 14 days from the filing date but the revision of the design law which came into force in 2006 extended the deadline to within 30 days from the filing date. The extended deadline is especially beneficial for applicants filing applications from foreign countries, who need more time to prepare the documents.

3. Note
An Exception to lack of novelty can only provide recognition that the application has not lost the novelty and will not provide any advantages over earlier or later applications. As it may take some time to prove that the applicant made the design publicly known, we normally suggest that the application be filed before making the design publicly known.

It should also be noted that whileEuropeand theUnited Statesprovide a one-year grace period after the design became publicly known,Japanprovides only six months.

The Accelerated Examination System was introduced in September 1997 in response to the needs for the early acquisition of trademark rights or globalization of users’ business activities.

In Japan waiting time for an examination is about 6.9 months now (in 2007). However when the Accelerated Examination System is applicable, it is shortened to about 1.3 months (in 2007).

However the current Accelerated Examination System is not applicable unless an application meets the following two requirements.

(1) An applicant is already using an applied trademark or preparing to use an applied trademark to a respectable degree in respect of designated goods (services).

(2) There is an urgent need for an examination. More specifically, an application applies to any of the following cases.
(a) A third party has begun to use an applicant’s trademark without permission.
(b) A third party has warned against the use of an applied trademark.
(c) A third party has consented to the use of an applied trademark.
(d) An applicant has also filed an applied trademark overseas.

Therefore, the Accelerated Examination System was only applied to about 0.3% of the total trademark applications (in 2007) and the system is hardly utilized widely.

<Newly covered application>
This time the JPO is planning to review the Accelerated Examination System in order that it may also cover the following case.

An application is filed with respect only to designated goods (services), for which an applicant is already using an applied trademark or preparing to use an applied trademark to a respectable degree.

By this possible revision, an applicant will be able to apply for the Accelerated Examination System if it is proved that an applicant is already using an applied trademark or preparing to use an applied trademark to a respectable degree with respect to all of designated goods (services). Basically, in order to prove the use of a trademark, an applicant submits catalogues or brochures for designated goods (services) bearing an applied trademark.

Now the above-mentioned possible revision can be seen at “public comment” on the website of Japan Patent Office. If no objection is raised, it will be enforced soon.

	Number of patent applications	Number of requests for examination	Number of first office actions	Number of patent registrations
2003	413,092	243,836	226,420	122,511
2004	423,081	328,105	234,109	124,192
2005	427,078	396,933	243,548	122,944
2006	408,674	382,116	292,756	141,399
2007	396,291	376,310	307,665	164,954

The number of patent applications in 2007 decreased by 12,383 from 2006, or about 3.0 %.  On the other hand, the number of patent registrations in 2007 increased by 23,555 over 2006, approximately a 16.7 % increase.The increase in number of patent registrations in 2007 might primarily be due to the sharp increase in number of requests for examination in 2005. 

The draft was originally prepared by the Policy Committee on Innovation and Intellectual Property (PCIIP), which was established by the JPO in 2007. The PCIIP declares the following three basic goals in the draft.

1. Realization of a Sustainable Global Patent System
2. Reducing the Amount of Uncertainty in the Patent System ~Enhancing patent quality~
3. Development of an Infrastructure for the Promotion of Innovation
   

Based on the above basic goals, the PCIIP has drafted thirteen (13) recommendations, some of which may definitely affect the global patent system as well as the Japanese patent system in future. Specifically, the draft recommendations include the following:

  - Construct a more Substantial International Cooperation Framework as the "Virtual Global Patent Office"
   (ex. Promotion of the work shearing in the examination)
  - Establish a Flexible Examination System Corresponding to the Various Needs of Applicants
  (ex. Introduction of a super accelerated examination)
  - Promote International Patent Harmonization
  (ex. Encouragement to have the U.S. introduce a first-to-file system)
  - Build a Highly Transparent and Predictable Patent Examination Mechanism
  (ex. Invitation to public comments on an English-version draft of the examination guidelines)
  - Discuss the Possibility of Introducing Guidelines for Countermeasure Against Patent Trolls
  - Promote the Use of an Intellectual Property System in Developing Countries

The period for the public comments on the draft is from June 16, 2008 to July 11, 2008.

More details are available from the following URL, which is entitled “JPO seeks Public Comments on the Draft Policy Recommendations/Report Formulated by the Policy Committee on Innovation and Intellectual Property (PCIIP)”.

http://www.jpo.go.jp/iken_e/iken_e_innovation_pc.htm

According to the Japan Patent Office homepage, the revisions will come into force on June 1, 2008.

In principle, the patent registration fees and other fees which are paid before the revised law comes into force shall follow the current fee schedule. Fees which are paid on and after that date shall follow the revised fee schedule.

The Japan Patent Office has posted on their homepage a list of fees which will be revised and their plan on how to handle the new and current fees. For more information, please refer to the homepage below:
http://www.jpo.go.jp/cgi/link.cgi?url=/tetuzuki/ryoukin/fy20_ryoukinkaitei.htm
(In Japanese only)

2. Recent court cases reveal that such trademark applications filed with unfair intention should be refused as contravening public order or morality [Article 4-1-7.]

The case betweenSullivan Entertainment International Inc., a film distributor (hereinafter referred to as Sullivan), and the provincial government of Prince Edward Island in Canada (hereinafter referred to as PEI) for a trademark of "Anne of Green Gables" is one example.

The Intellectual Property High Court affirmed the decision of the Trademark Trial Appeal Board of the Japan Patent Office to cancel the "Anne of Green Gables" trademark. Since the literary work "Anne of Green Gables" is one of the cultural assets in Canada, the application filed by Sullivan without prior agreement of Anne of Green Gables Licensing Authority Inc.violates the doctrine of good faith. Moreover,?the exclusive use of the title by one company, which has no relationship with the literary work whatsoever, is not appropriate: and the registration of the trademark in Japan might harm the cordial relation between the two countries.

Other examples are a name of celebrated painter, Salvador Dali. The Intellectual Property High Court decided that allowing the exclusive use of a trademark "DARI with Katakana" which is similar to "DALI" by one company, which has not relationship with the painter, is not appropriate: and that the registration of the trademark might dishonor a specific people or harm a fair trade practice. Therefore, a registration for "DARI with Katakana" canceled based on contravention of public order morality.

3. The Japan Patent Office is considering revision of the examination guidelines to clarify standards of public order or morality [Article 4-1-7,] so that examiners will enable to reject applications filed with an unfair intention without difficulty.

1. The combination of cited documents (common ground of technical field)
The Examiners often allege that an invention could have easily been made by a person skilled in the art having ordinary creativity from a combination of cited documents that share the same technical field. In such cases, it is difficult to assert an inventive step by only arguing that the inventions claimed in the cited documents are different from each other.

2. Matters of design
Selecting suitable materials, optimizing the range of values and substituting equivalents from publicly known material are often deemed to be merely a matter of design. In such cases, the Examiner often asserts he cannot find an inventive step without much explanation about the combination of cited documents. If the scope of invention could be anticipated or expected by a person skilled in the art, the invention is often considered to be merely a matter of design.

3. Characteristic effects
Inventions in the mechanical and electrical fields often produce predictable or general effects. Therefore, instead of asserting the unpredictable characteristic effect, it is more effective to explain why the cited references cannot be combined or assert the effect which cannot be obtained by simply combining the cited references. On the other hand, the inventions in chemical field often produce unpredictable characteristic effect. In many cases, however, such characteristic effect is produced only in part of the invention indicated in the claims. In such cases, the claims should indicate the scope of such unpredictable effect.

4. Hindsight
Generally, the Examiner can combine the cited references after understanding the invention, if he or she can explain why a person skilled in the art can achieve the invention by combining the cited documents. To assert on the hindsight, the applicant must argue not only that the cited documents were combined after understanding the invention but also explain specifically about the hindsight.

 For more information, please refer to the homepage below:
“Regarding Report of the Inventive Step Review Conference 2007” (In Japanese only)
http://www.jpo.go.jp/cgi/link.cgi?url=/shiryou/toushin/kenkyukai/sinposei_kentoukai.htm