(2) The Patent Prosecution Highway (PPH) Pilot Program and PCT-PPH Pilot Program between the JPO and the EPO have been extended

The JPO and USPTO have decided to continue with the PPH Pilot Program and the PCT-PPH Pilot Program until January 28, 2014. This program is similar to the JPO/USPTO program, but it allows applicants to request an accelerated examination using a Written Opinion from the EPO in addition to a WO issued by the JPO or USPTO, or an IPER where one of these offices has acted as the relevant authority.

(3) The “PPH MOTTAINAI” Pilot Program between the JPO and EPO to be launched 

The JPO and EPO have agreed to commence a “PPH MOTTAINAI” Pilot Program that eases the requirements for applying for the Patent Prosecution Highway (PPH) on January 29, 2012.

The conventional PPH Pilot Program required applicants to file for accelerated examination based on examination results from the Office of First Filing. This requirement is now eased between the JPO and EPO through the implementation of the “PPH MOTTAINAI” Pilot Program. Specifically, an applicant can request a PPH accelerated examination at the Office of Later Examination by using the examination results of the Office of Earlier Examination, without regard to the order of patent offices at which the application was filed.

* In naming the program, the Trilateral Patent Offices adopted the Japanese term “Mottainai” meaning “something useful should not be wasted.”

If you are interested in Japanese trademark matters, you may enjoy reading the article at http://country-index.com/articles.aspx?ID=162.

This accelerated examination system for countering counterfeit merchandise is available under the following conditions:

The JPO will consider the design application to be one requiring urgent acquisition of rights if the applicant is working the design in the application and it is clear that a third party is working or is making significant preparations to work, without permission of the applicant, a design either identical or similar to that of the design application.

To obtain accelerated examination, the applicant must either present written documentation or hold an interview with the JPO to explain the circumstances that require accelerated examination. In the following week or so, the JPO will review the request for accelerated examination and the circumstances, and notify the applicant as to whether the request has been accepted (by telephone) or rejected (by mail). For those cases for which the request has been accepted, the JPO will notify the applicant of results of the initial examination within one month of the filing date of the request.

In connection with the adoption of Nice Classification, 10th edition, the Japan Patent Office has reviewed the classification of descriptions of goods and services into Similar Group Codes and the published a draft of the classification.  In the draft, there are several significant changes in the Similar Group Codes classification.

For example, "Pharmaceutical preparations" and "Herbicides" will be regarded as dissimilar although they are currently similar.  "Vegetable juices [beverages]" will be regarded as similar to "Fruit juices."  The expression "Supplements" will be acceptable and placed in Class 5.

The new "Similar Group Codes” will come into effect on January 1, 2012.

(1) Points to Consider When Determining Whether the Claim is Supported

・According to the Guidelines, “The Problem to be Solved by the Invention” should be identified, in principle, from the statements in Detailed Description of the Invention.

・In addition, they instruct the Examiner to give due consideration to common technical knowledge at the time the application was filed as well as to all matters described in the specification and figures when making a determination as to whether “The scope described in the Detailed Description of the Invention is such that a person skilled in the art can recognize the problem to be solved by the invention.”

Current Exam Guidelines:
When identifying the "scope stated in the detailed explanation of the invention in such a way that a person skilled in the art could recognize that a problem to be solved by the invention would be actually solved," the common general knowledge as of the filing should be taken into account in addition to all of the statements of the description and drawings.

・The revised Examination Guidelines instruct the Examiner not to find a Type (3) Support Failure without reference to the problem to be solved by the invention.  (Type (3) Support Failure: The scope of the claimed invention exceeds the disclosure in the detailed description)

・The Examiner must give due consideration to the fact that although it is difficult to understand how the functions and characteristics of an object relate to its structure in some technical fields, the specific examples described in the Detailed Description of the Invention may be expanded or generalized to provide support for the claimed invention by taking into consideration common general knowledge in other technical fields in which such relationships are relatively easy to comprehend.

・The Examiner must not become preoccupied with a specific example in the Detailed Description of the Invention and, as a result, issue a Notice of Reasons for Rejection that alleges that the scope of the claims exceeds the disclosure in the Detailed Description

(2) Content Required in Notices of Reasons for Rejection

・In a Notice of Reasons for Rejection that alleges there is a Type (3) Support Failure, the Examiner must provide a detailed explanation of why such a failure has been found and set out the basis on which the determination was made.

・In a Notice of Reasons for Rejection that alleges there is a Type (4) Support Failure (defined below), the Examiner must provide a detailed explanation of why such a failure has been found and identify the Problem to be Solved by the Invention and Means for Solving the Problem as understood by the examiner.

Type (4) Support Failure: The claims exceed the scope of the Detailed Description of the Invention because the Problem to be Solved by the Invention as described in the Detailed Description of the Invention is not reflected in the claim.

(3) Preparing a Response to a Notice of Reasons for Rejection Citing Art 36 (6)(i)

・The applicant can assert that the application satisfies the support requirements of Article 36(6)(i) of the Patent Law by bringing to the Examiner’s attention common technical knowledge known at the time the application was filed that the examiner failed to consider when he made his determination.

・Applicants can back their arguments with a Certificate of Experimental Results

・However, when the disclosure in the Detailed Description of the Invention fails to support the invention in the claims even when common technical knowledge at the time of application was filed has been taken into consideration, it is unlikely that the submission of a Certificate of Experimental Results and assertion that any deficiencies in the Detailed Description of the Invention are thereby sufficiently supplemented will overcome the Examiner’s objection.

The blocks are for 2-4 year olds so each block is quite big and cannot make things with many details. But my son tries hard in his own way to make different anime or TV characters.

One time, he made Mickey Mouse using three square blocks. It seemed that the blocks represented its face and the two large ears.
I was pretty impressed with how well he depicted Mickey’s characteristics.

We, patent engineers, are always trying to understand the essence of the inventions and thinking about what the minimum element is that produces their effects. And I feel there is something common between that and my son’s block playing.

The intent of the JPO was to clarify the description of the guidelines with the objective of promoting sound, uniform decisions and further clarity in descriptions of examination requirements to promote smooth written communication between applicants and examiners. 

According to the announcement from the JPO, revisions were made to the following points, specifically:

(1) Clarification has been made to methods for determining violations of description requirements, in response to feedback concerning excessively stringent examination of description requirements, as well as variance among examiners’ judgment standards.

(2) Clarification has also been made to content required of examiners in explaining reasons for rejection and actions required of applicants in responding to office actions, in response to feedback that there were cases of examiners neglecting to sufficiently explain their specific reasons for judging description requirement violations, as well as applicants that were uncertain of how to respond to office actions.

(3) Explanations utilizing specific examples of (1) and (2) above will be enhanced.

“The product of Company A is recommended!”
“The function X of Company A’s product is provided only on the top-end models of other companies and those models with function X cost xx yen more.”
“The reason why only Company A’s products are all equipped with X is because Company A owns the patent for function X!”

Seeing that the other companies have provided their top-end models with this function X, it must be a useful feature.

And if Company A can make their products cheaper because they own the patent, it is effective in differentiation.

It made me realize once more the importance of a patent.

As a consumer, taking the other points into consideration, I decided to enjoy the benefits of the patent.

The current Japanese Patent Law stipulates that the exception of lack of novelty of invention only applies to those applications disclosed under the following circumstances: 1. testing, 2. presentation in a printed publication, 3. presentation through electric telecommunication lines, 4. presentation in writing at a study meeting held by an academic group designated by the Commissioner of the Patent Office, 5. unintentional disclosure of the person having the right to obtain a patent, and 6. exhibition of the invention at an prescribed exhibitions. 

However, in the amended Patent Law, the requirements have been considerably relaxed.  Specifically, the amended Patent Law allows the exception of lack of novelty of invention when an application is disclosed “due to an action of the person having the right to obtain a patent.”  As a result, the exception would be applied also to disclosures under the circumstances such as (1) presentation on television, (2) presentation by sales and distribution and (3) presentation at various study meetings in and out of Japan.  In comparison with the current law, a significant increase in number of patent applications to which the exception of lack of novelty is applied is expected.