PATENT:SOEI Patent & Law Firm

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

Yes, there is a restriction.  According to Patent Attorney Law Article 31, 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.

 

2: What are patentable inventions?

There are three major requirements for patentability.  Inventions must have 1) novelty (Patent Law Article 29 (1)), 2) an inventive step (Patent Law Article 29 (2)), and 3) industrial applicability (Patent Law Article 29 (1) main paragraph).

1. 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).
2. 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.
3. The following inventions do not have an industrial applicability.
   - An invention directed to a method for operating, treating, or diagnosing a human being.
   - An invention that cannot be worked for commercial purposes
   - An invention that obviously cannot be carried out.

 

3: I disclosed the invention. Can I still obtain a patent for this invention?

An invention disclosed before the application is filed does not have a novelty and thus, in principle, such invention cannot be patented.  However, there is an exception (exception to loss of novelty: refer to Q4).

 

4: What is the exception to loss of novelty?

Patent Law Article 30 stipulates the exception to loss of novelty.  The invention which lost novelty by 1) - 3) will be deemed not to lose novelty by 1) - 3) if the applicant take the procedures i) - iii).

1. The person having the right to obtain a patent
   - has conducted a test (refers only to a test for confirming the technical effect of the invention, and does not include tests for the sales results or advertising effects),
   - has made a presentation in a printed publication,
   - has made a presentation through electric telecommunication lines, or
   - has made a presentation in writing at a study meeting held by an academic group designated by the Commissioner of the Patent Office.
2. The third person (party) makes the invention publicly known against the will of the person having the right to obtain a patent.
3. The person having the right to obtain a patent has exhibited the invention at an exhibition.

Note: The procedures are;
i) the applicant must file a patent application within six months from the date the invention lost novelty,
ii) if condition 1) or 3) applies, together with this application, the applicant must submit a document requesting the exception to loss of novelty under Patent Law Article 30 to the commissioner of the JPO, and
iii) if condition 1) or 3) applies, the applicant must submit the document proving that the condition actually applies to the invention to the commissioner of the JPO within 30 days following the filing date of the patent application for the invention.

 

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

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

 

6: 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?

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.

 

7: 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?

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.

 

8 :Does the term “publication” include a poster session or other visual display of information without restriction on its further use or disclosure?

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’ notes as texts and illustrations and copied and distributed to the audiences’ colleagues are proven to be exact copies of the information originally provided on the white board.

 

9 :How long is the grace period in Japan?

There is no such period in Japan.  However, there is a period during which the applicant can claim the exception to loss of novelty (refer to Q4).

 

10 :In the following situation, would the Japanese application be rejected?
The patent application was filed in a first country, but the specification did not describe the invention well enough to enable one skilled in the art to practice the invention; Furthermore, subsequent to filing the application in the first country, the inventors gave a presentation at an academic conference which included a disclosure of the invention that was within the scope of the first country application but not that was not specifically disclosed in that application; Within the one year following the application date in the first country but more than six months following the academic conference presentation and before the publication date of the application in the first country, the applicants filed a Japanese application claiming priority to the first county application but revised to include the material disclosed at the academic conference that enabled one skilled in the art to practice the invention.

In this case, the application will be rejected because the priority claim will not be accepted and the application will have lost novelty.  It is important to
    - prepare the specification for the first county application that is sufficiently complete for a person skilled in the art to practice the invention, and
    - refrain from disclosing details of the invention that are not contained in the first country application after filing the filing the first country application but before filing the application in Japan.

Note: If the details were disclosed less than six months prior to the filing date of the Japanese application and the first country application has not yet been published, it may be possible to file the Japanese application without a priority claim and obtain an exception to lack of novelty under Art. 30.

 

11 :Could the application by others that was published after my application be cited in a Notice of Reasons for Rejection?

If the application by others was filed before your application and the invention in the specification, claims and the drawing in the application by others is identical to the invention in your application, it will be cited in the Notice of Reasons for Rejection (Patent Law Article 29 bis).