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).

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

The following information can be registered:
(1) Registration of the true name
  A person whose true name has been registered shall be presumed to be the author of the work which is the subject of said registration.
This will make authentication of authors easy in a lawsuit.

(2) Registration of the date of first publication
  Works having the date of first publication or the date of first having been made public registered shall be presumed to have been first published or first made public on said registered date.
This will clarify the starting point of the period of protection provided by the copyright.

(3) Registration of the date of creation(Computer program works only)
  Works having the date of creation registered shall be presumed to have been created on the registration date.
This will also clarify the starting point of the period of protection provided by the copyright.

(4) Registration of the transfer of the copyright or a restriction on the disposal of the copyright
  As a result of the registration, you can assert that you have or do not have a copyright against a third party effectively.

In fact, these systems are rarely used.However, we are often asked about this Japanese registration system regarding copyright.

Please note that the cost and the procedure differ for each of the registrations. In addition, they also differ depending on whether the work is computer program or not.

The JPO and the GPTO will launch the PPH pilot program on March 25, 2008. This program will run for a two-year period from March 25, 2008.

Under the program, an applicant receiving a ruling from the GPTO that at least one claim in an application is patentable may request an accelerated examination of corresponding claims in corresponding applications pending before the JPO by an easy and simple procedure.

Following requirements must be met to request accelerated examination under the PPH pilot program:
(1) The Japanese application must claim priority to the corresponding German application(s) under the Paris Convention. PCT applications which do not claim priority and utility model applications are not accepted.
(2) The GPTO must have determined at least one claim in the corresponding German application(s) is patentable.
(3) All claims in the Japanese application for which accelerated examination under the PPH is requested must sufficiently correspond to one or more of the claims determined to be patentable by the GPTO.
(4) The Examination of the application by the JPO must have not yet begun at the time the request for the accelerated examination is filed.

Documents necessary
(a) A table setting out the correspondence relation between claims in the Japanese application and claims in the German application.
(b) Copies of all the Office Action issued for the German application and its English or Japanese translations.
(c) Copies of all the allowed or patented claims of the German application and its English or Japanese translation.
(d) Copies of all the references cited against the German application
Copies of Nonpatent documents are required. Copies of patent documents are generally not required. Translations of patent documents and nonpatent documents are not required.

2. Eligibility for PPH pilot program between the Japan Patent Office (JPO) and the UK Intellectual Property Office (UK-IPO) expanded

The JPO and UK-IPO started the PPH pilot program in July 2007. From March 25, 2008, the JPO and the UK-IPO will expand the eligibility for the PPH pilot program to make the program more accessible to applicants. The details are as follows.

Current Rule
-In the UK-IPO
   Only the UK applications (including PCT applications) based on a Japanese application are eligible for the PPH program.
-In the JPO
   Only the Japanese applications (including PCT applications) based on a UK application are eligible for the PPH program.

Rule from March 25, 2008
-In the UK-IPO and in the JPO
   The PCT applications which do not claim priority will be eligible for the PPH program.

Defendant has been granting licenses to third parties for merchandising goods using drawings from “The Tale of Peter Rabbit” covered by their copyright until it expired in Japan on May 21, 2004. After the copyright expired, the defendant continued to require third parties who are using the drawings from “The Tale of Peter Rabbit” to display the © mark.

Plaintiff had been planning to distribute towels displaying drawings from “The Tale of Peter Rabbit.” In the trial, the plaintiff asserted as follows:
1) The defendant does not possess the right to obtain an injunction based on an expired copyright.
2) Displaying the © mark on merchandises after the copyright has expired can be considered to be misleading the public as to the quality of goods, as stipulated in Unfair Competition Prevention Law, Article 2, (1),(xiii). The defendant’s actions must be enjoined.
3) The defendant must pay compensation for their illegal acts, in accordance with Unfair Competition Prevention Law Article 4 or Civil code Article 709.

In the ruling, the Court acknowledged the plaintiff’s assertion 1) but dismissed 2) and 3). The reasons for dismissing 2) and 3) are as follows:
Because copyrights are not protected in a methodical way in Japan, the “C” mark on a design not always guarantee that the design is protected under a copyright. On the other hand, it is difficult to deny that use of the “C” mark asserts that the merchandise is copyrighted and that it can be perceived as a warning to consumers.

False indications of patent right are often ruled to be a violation of the unfair competition law. Such rulings are based on the reasoning that false indications of a patent right can cause the consumers to think that the product has a superior design and advanced technology and, as a result, mislead consumers as to the quality of goods. However, such reasoning cannot be used for copyrights.

Goods having a copyrighted design do not necessarily excel in quality over a design for which the copyright has expired, for example, a painting by van Gogh. The consumers are likely to choose a product by evaluating the beauty and artistic value of the design without any regard to whether the product is copyrighted or not. Therefore, making the public think that the goods are copyrighted does not mislead the public as to the quality of goods.

On the other hand, forcing the licensee to include the © mark on the design may mislead the public to think that they need permission from the defendant if they want to use reproductions of the original drawings by Beatrix Potter. In other words, the public may be misled into thinking that the defendant still has the right to grant licenses for use of the design. Such a state will not, however, pose any threat to the plaintiff with regard to the profit in their business. Therefore, plaintiff’s assertions 2) and 3) were dismissed.

1. New registered license system
This system will allow the licensee to register his license at the time of filing an application for a patent. The license, called temporary non-exclusive license or temporary exclusive license, will enable the licensee to take legal action against a third party.

2. Extended deadline for filing an Appeal Against Final Rejection
Applicants currently have 30 days from the date of the certified copy of the Final Rejection to file an Appeal Against the Final Rejection. This deadline will be extended to three months from the date of the certified copy of the Final Rejection. The deadline for filing amendments will also be extended from the current 30 days following the date of the Appeal to three months following the date on which the Appeal was filed.

3. Reduced annual fee:
The annual maintenance fee for a patent will be significantly reduced for the 10th and subsequent years after registration.

(1) Drawings
Front view, rear view, top plan view, bottom plan view, right side view and left side view must be submitted. In addition to these six views, perspective view, sectional view and view showing the actual use of an article may be submitted. Note that the scale and shape of each view must agree with each other under the Japanese practice. Note that the six views and perspective view in the drawings or photographs must show the article on a plain background.

(2) Information on the article to which the design is applied
The article to which the design is applied must be identified, with a brief explanation on the function of the article. If the article is new, a brief explanation of the article, such as the purpose of use and the function of the article in particular, must be provided.

(3) Information on the basic application
The name of the country, filing date and application number must be provided. A certified copy of the priority document must be filed with the JPO within three months of the Japanese filing date.

(4) Information on the applicant(s) and the designer(s)
The name and address of the applicant(s) and the designer(s) must be provided.

Note that the JPO does not accept applications containing only the perspective view. The applicants must submit six views indicated above. If you are considering of filing an application in Japan, we highly recommend submitting six drawings for the basic application.

The revised Examination Guidelines (October 22, 2003) allowed the JPO Examiners to examine for a substantial correspondence between the claimed inventions and the inventions described in the Detailed Explanation of Invention regardless of the formal correspondence under Section 36(6) of Japanese Patent Law (cf.http://www.jpo.go.jp/tetuzuki_e/index.htm, "Examination Guidelines for Patents and Utility Model in Japan", PART 1, Chapter 1, Section 2.2, in Japanese:http://www.jpo.go.jp/shiryou/index_g.htm).

This increase in objections citing inappropriate description may be due to the revision of the Examination Guidelines.

2.Comments
Until recently, patent applications that included a copy of the claimed invention in the Summary of the Invention portion of the specification, did not commonly encounter inappropriate description objections. In practice, it is allowable to generalize from the embodiments in the patent application to the concept of the inventions.

However, as the numerous embodiments to be covered by a claimed invention increase, the less clear the correspondence between the embodiments and the claimed invention become.

Furthermore, it appears that Examiners who are not familiar with the technical field of the claimed invention have greater difficulty in finding the correspondence between a large number of embodiments and the claimed invention.

3.Countermeasures
1) Use identical words in both claims and the embodiments.
2) Include information to help the Examiner to see the correspondence between the claims and the embodiments.
3) Use reference numbers in the embodiments and the claims to show the correspondence between claim elements and the features in the embodiments.

Cf. What's New article "Descriptive requirements for claims in Japan" (Oct. 6, 2006)

Content of Criteria

•  A patentee may be limited in exercising his/her patent right due to exhaustion of the right for only unmodified patented product which was sold or otherwise transferred by the patentee in or outside our country.
• If a product that is not similar to the patented product sold by the patentee in or outside our country is found to have been newly-manufactured by replacing or modifying the parts of the patented product, the patentee may exercise his/her right over that product.
• To determine whether the patented product was newly-manufactured, the following must be considered: (1) the attributes of the subject patented product (functions, construction and materials, purpose, life span, embodiments), (2) the content of the patented invention, (3) the embodiments of modifying and replacing parts of the product (the condition of the subject patented product at the time of modification, the content and level of modification, life span of the replaced parts, technical function and economic value of such parts in the patented product), and (4) actual condition of the trade.

The Supreme Court Decision
The appellant not only refilled the cartridge with ink, but reused the ink tank, which reproduced the main constituent features of subject patented product. The appellant re-created the substantial value of the subject product by reproducing the characteristic effect that prevents the leakage of ink. When we consider the actual condition of the trade and other factors, it is fair to determine that the appellant newly-manufactured a product, which is not similar to the product covered by the patent before the modification.

The decision put an end to the debate over the exhaustion of the patent right for the time being. However, the criteria for determining whether the product was newly-manufactured are complicated and still unclear. We anticipate that there will be many rulings in lower courts that rely on the above criteria.