PATENT:SOEI Patent & Law Firm

1: Why must the annuities for three years be paid in one payment prior to registration of the patent?

According to the Patent Law Article 108 (1), the applicant must pay the annuities for the first three years at one time prior to registration.

 

2: Is there a Third Party Observation system in Japan?

Yes, there is. Japan Patent Office welcomes a submission of information from a member of the public to improve the effectiveness and expeditiousness of the examination. Supportive information for examination such as information identifying the fact that a certain invention relating to a patent application lacks novelty or inventive step or does not satisfy the requirement of description may be submitted. Information may be submitted at any time after a patent application or an application for utility model registration is filed, even after a grant of a patent or utility model registration. Any member of the public may file the Submission of Information. Submission on an anonymous basis is permitted.

Note: If you submit information against an application filed by another, the JPO will inform you whether or not the examiner used the information you submitted in a Notice of Reasons for Rejection upon your request.

 

3: In Japan, is there a system such as the IDS system in the United States?

The Japanese Patent Law requires applicants to disclose prior art known to the applicant as of the Japanese filing date (see  <Application>Q9). If the related prior art is not indicated in the specification, a Notice of Reasons for Rejection citing the failure to cite related prior art will be issued. In the United States, if the applicant fails to disclose the known prior art, the applicant may not be able to enforce the patent successfully. In Japan, there is no such effect.

 

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

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.

 

5: In Japan, are there any provisions similar to those benefiting a small entity in the United States?

The small entity system is unique to the United States, but there is a similar system in Japan. Small and medium-sized companies fulfilling certain legal conditions can apply for an exemption from the annuities or deferred payment of the annuities and fees for filing Request for Examination. However, entities outside Japan may find preparation of the required documentation difficult and not worth the expense.

 

6 : Can you obtain a patent for an invention related to software and/or business method?

In Japan, business methods may be patented if they satisfy the requirements prescribed in the patent law. The Japan Patent Office (JPO) regards so-called business method patents as a sub-category of software-related patents. The key issues to obtaining a business method patent in Japan are “statutory invention requirements,” “descriptive requirements” and “inventive step (nonobviousness) requirements.”
Firstly, in order to qualify as “statutory invention,” a claimed invention should be “a creation of technical ideas utilizing a law of nature”. According to the examination guidelines for computer software-related inventions, which, as mentioned above, includes business method-related inventions, explain that “if information processing by software is concretely realized using hardware resources, the software is deemed to be a creation of technical ideas utilizing a law of nature.”
Secondly, when considering the “description requirements”, it is rare that a category of the claimed invention matters as long as a claimed invention clearly is a “product,” a “process,” or a “process of manufacturing a product.” In addition, so-called “computer-readable media claims” and “program claims” are also admitted. However, since business method inventions regarded as part of software-related inventions, proper attention should be paid so that (1) the specification will clearly disclose how the claimed invention is concretely realized on a computer; (2) the claimed invention will be sufficiently supported by an original specification in terms of software-related invention (e.g. whether a claimed feature will be sufficiently disclosed in the specification as a step executed by a computer, not by an administrator himself/herself); and (3) the claim will properly recite a method performed by a computer, not by a person.
Thirdly, the basic criterion for “inventive step” is generally a repetition of the criterion for non-business-related inventions. However, business-related inventions tend to be rejected based on lack of inventive step in comparison with non-business-related inventions because business-related inventions tend to be considered to be within the exercise of an ordinary creative activity of a person skilled in the art.

 

7 : Are English translations of the Japanese patent documents available?

English translations of a patent abstract (human translation) and translations of the entire text of the patent publication (machine translation) are available in Industrial Property Digital Library (IPDL) of National Center for Industrial Property Information and Training (http://www.ipdl.inpit.go.jp/homepg_e.ipdl).