FAQ

<General>

Q1: Are there any restrictions on Japanese patent attorneys regarding simultaneously representing competitors in overlapping areas of technology?

A1: Yes, there is a restriction.According to Ethics-Rule Article 20, patent attorneys should not accept cases that may create a conflict of interest with other cases already being handled.However, if clients give patent attorneys consent to represent the competitors, simultaneous representation may be allowed.

Q1: Can I file a Japanese application in English to obtain a filing date?

A1: Yes, you can file a Japanese application in English to obtain a filing date. The specification, drawings, and abstract can be filed in English, but an application request must be in Japanese.The Japanese translation must follow within 2 months of the filing date.If translation errors are found in the Japanese translation after filing, you can correct the errors based on the English language application. However, the original English text cannot be amended or corrected. If new matter is introduced in the Japanese translation beyond the disclosure of the English language application, it will result in a reason for rejection of the application, or a ground for invalidation.

Q2: When is the due date for filing a national phase application derived from a PCT application?

A2: The due date for the national entry in Japan is 30 months from the first priority date regardless of whatever a demand under Chapter II was filed within 19 months of the first priority date (as of September 1, 2002).

If the national entry request is filed within 28 months of the first priority date, the translation must be filed no more than two months after the date of entry.

Q3: What should be filed at the time of filing a national phase application from a PCT application?

A3: Japanese translation of the specification, claims, abstract, and any text included in drawing as originally filed, must be filed at the time of filing a national phase application, or no more than two months after the entry into the national phase in Japan.

Q4: Must translations of amendments made under Article 19 and/or 34 of PCT be filed at the same time as the national filing?

A4: No.Although you may nationalize Article 19 and/or 34 amendments by filing the translation thereof at the time of the national filing, it is not recommended to file such translations because JPO conducts its own search, independent of the International Search Report and they often cites other references. Therefore, to obtain the broadest patent, it is generally better to start with the original claims. Also you may save the translation cost if such amendments have not been nationalized.You may have opportunity to effect the same amendments or file another amendment when you request examination.

Q5: If a claim of priority was inadvertently omitted in a PCT application, is there any way to restore the priority in Japan?

A5: There is no way to restore the priority in Japan.However, if priority has been properly claimed but a certified copy of the priority document was not submitted during the PCT international phase, you can file a certified copy within two months of the national entry.

Q6: Is there any duty to disclose relevant prior art for a Japanese patent application?

A6: Yes. Applicants need to identify the relevant prior art in the specification for all patent applications filed on or after September 1, 2002.(For PCT applications, the international filing date is regarded as the Japanese filing date.)If there is no such identification of the prior art, the Examiner will request applicants to identify the relevant art. Consequently, the identification of the relevant art can be supplemented during the examination. Note that there is no need to submit actual copies of the art.

Q1: What are patentable inventions?

A1: There are three major requirements for patentability.Inventions must have novelty and an inventive step, and industrial applicability.Novelty means inventions that were not publicly known or worked in Japan or elsewhere, or described in a publication distributed or publicly available through electronic telecommunications in Japan or elsewhere prior to the filing date (or priority date) of the patent application (Absolute novelty).To have an Inventive step, the inventions must not be easily made by those skilled in the art of the applicable field prior to the filing date (or priority date) of the patent application.

Q1: Is a submission date of a paper by a professional journal deemed to be a distribution date?

A1: No, the actual distribution date of the journal is deemed to be the publication date.

Q2: If the journal distributes copies of the paper to a committee of professionals for evaluation before printing of the paper, would it be deemed to be publication?

A2: Such committees are generally considered to maintain the confidentiality of the information that is disclosed therein.Consequently, the distribution to such committees is not deemed to be a publication unless there is an explicit rule that the information disclosed there can be disclosed to public.

Q3: If an oral presentation describing an invention has been made at a conference of specialists in Japan, would the event be considered to have made the invention publicly known?

A3: If the specialists do not have any obligation to maintain confidentiality of the invention, the oral presentation will constitute an event that results in the invention becoming publicly known.But if the specialists are actually obligated to keep the invention secret under certain regulations or if it is deemed that they were most likely obligated to do so, the event would not result in the invention becoming publicly known.

Q4: Does the term gpublicationh include a poster session or other visual display of information without restriction on its further use or disclosure?

A4: A publication includes written information such as documents, drawings and the like, as well as visual displays of information such as poster sessions, slide films, overhead projector sheets, video tapes, photographs and the like.For example, illustrations on a white board used in the presentation would be a publication since the audience could copy them by hand.Even an oral presentation would be a publication if the contents that have been recorded electronically and/or in the audiencesf notes as texts and illustrations and copied and distributed to the audiencesf colleagues are proven to be exact copies of the information originally provided on the white board.

Q1: When will applications be examined?

A1: Applications will be examined when the JPO receives a Request for Examination.If the application is filed after October 1, 2001, you must file a request for examination within three years of the filing date. For applications filed earlier, requests must be filed within seven years of the filing date. If a timely request is not filed, the application will be deemed to have been withdrawn.

Q2: Is there an additional examination fee for dependent claims?

A2: The official examination fee is calculated based on the total number of claims, both independent and dependent.

Q3: Does JPO have systems for expediting the examination of applications?

A3: Yes, JPO has two procedures for expediting examination. One is Preferential Examination system, which may be requested by either the applicant or a third party. The other one is Accelerated Examination system, which may be requested only by the applicant.

Q4: What is required for requesting Preferential Examination?

A4:The requirements are:

• A Request for Examination has been filed (may be submitted together with the request for Preferential Examination);
• The application has been laid open to public (Kokai Publication);
• A third party is working the claimed invention.

Q5: What is required for requesting Accelerated Examination?

A5:The requirements are:

• A Request for Examination has been filed (may be submitted together with the request for Accelerated Examination);
• Substantive examination by the Examiner has not yet begun;
• And anyone of the following;
• the applicant or his licensee is working or is planning to work the claimed invention within two years;
• the applicant has filed a corresponding patent application in a country other than Japan;
• the applicant is a educational institution such as a university; or
• the applicant is a small entity or individual.
  

Q6: If a prior U.S. application claiming compounds does not have physical or chemical data, will priority be denied for a corresponding Japanese application?

A6: Priority is likely to be denied.If new chemical compounds are disclosed with their chemical formula or structures but without any physical or chemical data including information about their preparations, such a disclosure may be deemed not to have fully disclosed an invention.

Q7: I first filed a U.S. application, and then filed a Japanese application claiming priority to the U.S. application.I wish to have the Japanese claims identical with those issued in the U.S. patent. Is it advisable to amend the Japanese claims so as to conform to the issued U.S. claims when requesting examination?

A7: No. Examinations in Japan are carried out independently regardless of the results of examination in the U.S. The applicant in Japan is not currently required to report any prior art references discovered in other countries.Therefore, it would be wise to try to obtain a broadest patent protection in Japan regardless of the claims in other countries.

Q8: Following gQ7h, should I wait until the Examiner issues a Notice of Reasons for Rejection (First Office Action) to amend the claims?

A8: Case by case. However, it is quite conceivable that restricted claims would lead to quick issuance of a patent, particularly if the prior art references cited in the U.S. application seem to be very close references.

Q9: I hear that the Japanese Examiner is more likely to give favorable consideration, if the Japanese claims were amended so as to conform to the granted U.S. claims. Is this correct?

A9: No. If you amend the claims to conform to the issued U.S. patent and inform the Japanese Examiner of this fact, it will not help to improve the Examinerfs impression. Rather, it is possible to offend the Examiner if the applicant gives too much weight to the U.S. prosecution, because the Japanese Examiner is to examine the application according to the Japanese Examination Standards and the prior art references discovered in Japan.

Q10: Is an interview recommended to expedite examination procedures?

A10: Yes, an interview with an Examiner is helpful in expediting the examination.It is very effective to have an interview with the Examiner in charge at any stage to obtain favorable results to the applicant.

Q11: Is it possible to request refund of the Examination Fee?

A11: Yes. Half of the examination fee can be refunded provided that;

• Submitting a written withdrawal or abandonment before a first Office Action is issued,
• Requesting the refund no later than 6 months of the submission of the withdrawal or abandonment

Q1: When can I file a divisional application?

A1: You can file a divisional application at anytime you can amend application.

Q2: Can I file a divisional application after an appeal against the Examinerfs decision to reject the application has been filed?

A2: Yes, you can file a divisional application no later than 30 days after the date of filing an appeal. You can also file a divisional application within a response term to a possible Notice of Reasons for Rejection during the appeal.

Q1: The old Opposition System has been combined in a New Invalidation System. Please explain.

A1: The Opposition system was integrated into a new Invalidation Trial system as of January 1, 2004. Followings diagram compares the Old Opposition and Invalidation procedures and the new Invalidation procedure.