Japan

2.5 Japan

The FD1 syllabus identifies articles relating to the basics of patentability, filing, claiming priority and requesting examination, as detailed below.

Article 29 Patentability

1) An inventor is entitled to a patent to an invention unless it is: i-iii) publically known, worked or published anywhere before the filing of the application. 2) If a person ordinarily skilled in the art of the invention would have easily made the invention based on any prior art listed in 1) above, then a patent shall not be granted.

Article 29-2

1) Where an invention claimed in the current application is identical to an invention in a patent or utility model registration filed before the current application and published afterwards, then a patent shall not be granted, except if the applicant at the time of filing the current application was the same in both cases, or the inventor was the same in both cases.

Legal Notes

• This article replicates the same basic notions of novelty and inventive step found in the

UK, EP and other Paris Convention countries. ‘Easily made’ can be treated as equivalent to

‘obvious’. • Notably, however, inventors and applicants are additionally protected from self-citation for novelty-only patent prior art, in a manner similar to the old US system.

Article 30 Exception to lack of novelty

1) Where an invention is disclosed as per Art 29(1) against the will of the person entitled to obtain the patent, then Art 29(1)(2) will not apply for 12 months from such disclosure. 2) Where an invention is disclosed as per Art 29(1) by the person entitled to obtain the patent, then (except if the disclosure is in a gazette relating to patents, utility models, designs or

TMs) Art 29(1)(2) will not apply for 12 months from such disclosure. 3) Provide documentary proof that you can use this 12 month grace period within 30 days of filing. 4) If it is not possible to obtain proof within 30 days, a UK applicant has two months from when it becomes possible, but not longer than six months after the time limit, to provide the proof.

Legal Notes

• Hence Art 30 JP is similar to s2(4) UKPA, with a further provision protecting self-disclosure.

However, Japan has extended the grace period from 6m to 12 months for any disclosure made on or after 9 December 2017. Like the UK and Europe, it is necessary to file an application in

Japan itself within this 12-month period. A PCT designating Japan will also count. • The protections in subsection (1) similarly apply to international exhibitions recognised by the patent office.

Article 32 Unpatentable Inventions

Any invention that is liable to damage public order, morality or public health shall not be patented.

Article 36 Patent Applications

1) The application shall identify the name and residence of the applicant(s) and inventor(s). 2) The description, claims, drawings (where required), and abstract shall be attached to the application. 3) The description shall comprise the title of the invention, a brief explanation of the drawing(s) and a detailed explanation of the invention. 4) The detailed explanation of the invention shall be clear and sufficient to enable skilled person to work the invention, and should acknowledge related prior art known to the applicant. 5) The claims shall disclose the necessary features to specify the invention to be patented. 6) The claims shall have support in the description, be clear, concise and in accordance with the rules. 7) The abstract shall summarise the invention.

Article 36-2

1) The applicant may submit a foreign language application… 2) … but must submit a translation within one year and four months from the priority date.

For divisionals or conversions from utility models and the like, the deadline is two months after the division / conversion. 3) The JPO will notify the applicant if the deadline is missed. 4) The applicant may then file the translation within two months of this notification. 5) If the translation is still not filed, the application is deemed withdrawn from the date of the deadline in subsection (2). However… 6) … the applicant can provide justifications for a late translation within two months from the end of a cause of non-compliance (but not more than one year from the missed two month notification deadline) if the failure to comply with the time limit occurred in spite of due care. 7) Such late translations under (4) or (6) shall be deemed to be filed on time. 8) The translation will be treated as being the application.

Legal Notes

• Art 36 is similar to sections 14(2)(3)(5) UKPA and Arts 78, 83 and 84 EPC; note, however, the assumption that claims are present at filing. • Article 36-2 also provides a mechanism similar to the reinstatement of s20A UKPA if the translation is justifiably late – note, however, that this requires due care. • For PCT(JP) applications, file the translation within two months from when the application enters the national phase.

Article 43 Priority under Paris Convention

1) A person can declare priority under the Paris Convention, stating the date and country of the first filing. 2) A certified copy of the priority document must be provided within one year and four months (i.e., 16 months) from the earliest of the date of first filing or the earliest relevant priority claim, together with certified confirmation of the date and country of filing. 3) The filing number of the priority document should be provided with the declaration of priority. Where the number is not available at the time, it should be provided without delay when it becomes available. 4) Failure to provide the certified documents of paragraph (2) in time will result in a loss of priority claim. 5) If the priority document is available electronically (i.e., via another patent office), the applicant can just provide the application number to the JPO. 6) The JPO will notify the applicant if the deadline is missed. 7) The applicant may then file the certified copy within two months of this notification. 8) However, if this is not possible due to reasons beyond the applicant’s control, an overseas (e.g.

UK) applicant may submit the certified document within two months of finally receiving it. 9) If the documents referred to in subsections (2) or (5) are filed under subsection (7) or (8), then subsection (4) does not apply (i.e., priority is maintained).

Legal Notes

• Art 43 enacts similar priority requirements to other Paris Convention members, such as the

UK and EPO. • The article also provides for the late availability of certified documents.

Article 44 Divisionals

1) An applicant can file a divisional application only within the following circumstances: i. within the normal times allowed for amending the specification; ii. within 30 days of the issuance of an examiner’s decision to grant (excluding appeal decisions); or

iii. within three months of the issuance of an examiner’s decision to refuse. 2) The divisional shall inherit the filing date of the parent, unless the new patent is anticipated by an earlier application by the same inventor / applicant as per Art 29-2. 3) For divisionals, the deadline for filing priority documents (Art 43(2)) is the later of one year four months from priority or three months from filing. 4) Documents relating to unintended disclosure (Art 30) and priority claims (Arts 41 & 43(1) (2)) already filed in relation to the parent are deemed to also have been filed in relation to the divisional. 5) If the 30-day limit for paying grant fees is extended, then the 30-day limit under subsection (1)(ii) above is similarly extended. 6) If the three-month limit for filing an appeal is extended, then the three-month limit under subsection (1)(iii) above is similarly extended. 7) Where an applicant misses the deadline under subsection 1(i) or 1(ii) above due to reasons beyond their control, an overseas applicant can file the divisional within two months of the end of the cause of non-compliance but not later than six months from the end of the relevant deadline.

Legal Notes

• Note that as with the UKIPO, the Examiner’s decision to grant precedes the actual grant date; and again as with the UKIPO scheme, there is a window (here of 30 days) in which to pay fees and file divisionals – see notes to s18 and s24 UKPA. • Notably there is also explicit provision of a three-month window to file divisionals after a refusal. Recall there is also an effective two-month window at the EPO due to the appeal period; see the notes to Art 76 EPC. • Section 44 also provides for force majeure delays.

Article 48-3 Request for Examination

1) Request examination within three years of the filing date. 2) Divisionals (or conversions from utility models) filed after this deadline have 30 days to request examination. 3) Once filed, a request for examination cannot be withdrawn. 4) If the request is not filed in time, the application is deemed withdrawn. 5) If the applicant has a justifiable reason why despite due care, they missed the deadline above, they may request examination within two months of the end of the case of noncompliance provided this is within one year of the deadline. 6) If filed under subsection (5), the request is treated as occurring on the deadline if subsection (1). 7) As per subsection (3), such a request cannot be withdrawn. 8) Where a third party began in good faith to work the invention or prepare to do so between publication of withdrawal under subsection (4) and of the request under subsection (5),

then that person shall have a non-exclusive licence to the patent right, but only to the extent that they had worked or prepared the invention.

Legal Notes

• The examination request deadline is set is with respect to the filing date. For convention filings this is the date of the JP application, but for PCT national phase applications it is the date of the PCT filing. • The section includes a reinstatement provision (subsections 5-8) specific to this request, complete with third-party rights similar to those in s20B UKPA.

Summary

• There are a number of similarities to GB/EP systems: – Art 29 JPA makes it a first to file system, as GB/EP, – Patentability, absolute novelty and inventive step are similar to GB/EP, – Restrictions on amendment (added matter) are the same as GB/EP, – There are slightly more generous unity provisions, – Publication is at 18 months (but without a search report / exam), and – Similar rights / infringement to GB, though in principle patent infringement is a criminal, rather than civil, action. However, use of the criminal aspect is very rare.

• Notable points: – Novelty-only prior art is discounted if by the same applicant or inventor. – A30 JPA provides a 12-month grace period for both voluntary and unauthorised disclosures. As with other such grace periods, the 12 months is to file an application in Japan (or a PCT(JP)). – One should file a translation within one year and four months from priority for convention filings, and within two months from entry into the national phase for PCT(JP) applications. – One can request examination up to three years after filing at the JPO. – One can file divisionals between the Examiner’s notification of intent to grant, and actual grant, and also up to three months from refusal.

• An opposition process was re-introduced in Japan in 2015; alternatively one can bring a trial for invalidation at any time after grant (i.e., similar to revocation proceedings under s72 UKPA).

• For any further reading, the following resources may be of use. – A good FAQ is provided by the JPO here: https://www.jpo.go.jp/e/faq/yokuaru/patent.html

– A more general FAQ is also provided by the EPO: https://www.epo.org/searching-for-patents/helpful-resources/asian/japan/faq.html – A brief summary of the JP system can also be found at the JPO website: https://www.jpo.go.jp/e/system/patent/gaiyo/patent.html – For more detail, the Examination Guidelines are also available in English at: https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/tukujitu_kijun/index.html – Finally, an English translation of the Japanese Patent Act is available from: https://wipolex.wipo.int/en/text/532862