The Current state of discussions on the Legal framework for Multifaceted Protection of Inventions in japan
Currently, debate continues in the Ministry of Economy, Trade and Industry on how to realize multi-faceted protection for inventions in the Japanese patent system. Among the issues currently being discussed by the committee are the divisional application system and the system for granting exceptions for lack of novelty.
Under the current divisional application system, divisional applications may be filed only when the applicant is allowed to file amendments (Patent Law Section 44(1)). However, there is a strong desire on the part of applicants for a system that allows them an opportunity to broaden, narrow or otherwise modify the claims after the applicant reviews the final decision in the examination. The committee is therefore considering whether it is advisable to allow the applicant a fixed period in which to file a divisional application after the examiner renders his final decision to grant or reject the application.
The current Patent Law Section 30, “Exceptions to lack of novelty” restricts the kinds of disclosures for which such an exception may be granted to a narrowly defined set of circumstances. In contrast, in the United States, the nature of a disclosure made within a fixed “grace period” does not, in principle, adversely affect a novelty determination. Since the determination as to whether a particular presentation is one designated by the Commissioner of the Patent Office or otherwise satisfies the statutory provision of Section 30 is rather complicated, the current system for obtaining an “exceptions to lack of novelty” can hardly be regarded as user-friendly. Although many members of the committee remained cautious about simply adopting the US grace period system, the general consensus is that the emphasis should be placed on harmonizing the Japanese system with the relevant systems in other counties. At present, the focus of the discussion is on simplifying the procedures for submitting proof (Patent Law Section 30(4)) that the application qualifies for the exception.