Japanese patent law

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Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act (特許法 Tokkyohō [1] ) of Japan. Article 2 defines an invention as "the highly advanced creation of technical ideas utilizing the law of nature".

First to file (FTF) and first to invent (FTI) are legal concepts that define who has the right to the grant of a patent for an invention. The first-to-file system is used in all countries.

Japan Constitutional monarchy in East Asia

Japan is an island country in East Asia. Located in the Pacific Ocean, it lies off the eastern coast of the Asian continent and stretches from the Sea of Okhotsk in the north to the East China Sea and the Philippine Sea in the south.

Invention the act of inventing something

An invention is a unique or novel device, method, composition or process. The invention process is a process within an overall engineering and product development process. It may be an improvement upon a machine or product or a new process for creating an object or a result. An invention that achieves a completely unique function or result may be a radical breakthrough. Such works are novel and not obvious to others skilled in the same field. An inventor may be taking a big step in success or failure.

Contents

English translation

The definitive version of Japanese law is the text in the Japanese language. An official English-language translation of the law does not exist, but the Ministry of Justice Japan has the website "Japanese Law Translation", [2] where one can search for Japanese laws and their unofficial English translation. Intellectual property (IP) laws such as Patent Act, Copyright Act, Trademark Act, Design Act and Unfair Competition Prevention Act are included there.

Japanese is an East Asian language spoken by about 128 million people, primarily in Japan, where it is the national language. It is a member of the Japonic language family, and its relation to other languages, such as Korean, is debated. Japanese has been grouped with language families such as Ainu, Austroasiatic, and the now-discredited Altaic, but none of these proposals has gained widespread acceptance.

A Ministry of Justice is a common type of government department that serves as a justice ministry.

In addition, the Industrial Property Digital Library (IPDL) offers public access to IP Gazettes of the Japan Patent Office (JPO) free of charge through the Internet.

The Industrial Property Digital Library (IPDL) is a free online service for searching Japanese patents, patent applications, utility models, designs and trademarks. It makes available to the public the intellectual property Gazettes of the Japan Patent Office (JPO). The IPDL provides around 55.5 million documents and their relevant information as published since the end of the 19th century.

Japan Patent Office

The Japan Patent Office is a Japanese governmental agency in charge of industrial property right affairs, under the Ministry of Economy, Trade and Industry. The Japan Patent Office is located in Kasumigaseki, Chiyoda, Tokyo and is one of the world's largest patent offices. The Japan Patent Office's mission is to promote the growth of the Japanese economy and industry by administering the laws relating to patents, utility models, designs, and trademarks.

Reliable information on Japanese IP law in English is also provided by the websites of Intellectual Property High Court, [3] Japan Patent Office, [4] "Transparency of Japanese Law Project", [5] European Patent Office, [6] and Institute of Intellectual Property (IIP) of Japan. [7] For more details, see "External links" at the bottom of this page.

The Intellectual Property High Court, sometimes abbreviated IPHC, is a special branch of Tokyo High Court in the judicial system of Japan. It is based in Kasumigaseki, a district in Chiyoda Ward in Tokyo, Japan.

Definition of invention

Article 2, paragraph 1, of the Patent Act of Japan defines invention as "the highly advanced creation of technical ideas by which a law of nature is utilized". This definition was introduced in 1959 following German jurist Josef Kohler's definition. Although the substance of the definition is almost accepted, there is opposition against giving a definition of "invention" in a written law (in many other patent systems, invention is not defined directly).

Germany Federal parliamentary republic in central-western Europe

Germany, officially the Federal Republic of Germany, is a country in Central and Western Europe, lying between the Baltic and North Seas to the north, and the Alps to the south. It borders Denmark to the north, Poland and the Czech Republic to the east, Austria and Switzerland to the south, France to the southwest, and Luxembourg, Belgium and the Netherlands to the west.

Josef Kohler German poet

Josef Kohler was a German jurist, author and poet.

In the generally accepted interpretation, the phrase highly advanced does not imply a requirement for an inventive step since the matter of inventive step is dealt with in Article 29, paragraph 2. The definition may have been included in light of the Utility Model Act of Japan which gives a definition of a device as "the creation of technical ideas by which a law of nature is utilized".

The inventive step and non-obviousness reflect a general patentability requirement present in most patent laws, according to which an invention should be sufficiently inventive—i.e., non-obvious—in order to be patented. In other words, "[the] nonobviousness principle asks whether the invention is an adequate distance beyond or above the state of the art".

Patent prosecution

The procedures for obtaining a patent right in Japan is described in detail on the website of Japan Patent Office. [8] The patent prosecution procedure under Japanese law is similar to that in most other patent systems. Article 39 states that a person who is the first to file an application for a patent for an invention may obtain that patent, rather than a different person who is the first to invent the same invention.

A patent may be granted for an invention if:

(This is a summary; Article 49 contains a full list of conditions.)

Article 30 provides a six-month grace period for disclosures made through an experiment, publication, presentation at a study meeting or an exhibition (a trade fair or the World's Fair) or for if the invention becomes known to public against the applicant's will. Such disclosures do not form part of the prior art. This is a much broader exemption than the one available under European patent law (Article 55 EPC) but is significantly narrower than that provided under United States patent law.

Application

A person desiring to obtain a patent has to submit a request, specification, claims, any drawings necessary, and the abstract to the commissioner of the Japan Patent Office (Article 36). Article 36bis allows an application in foreign languages (currently only in English) if the applicant submits a Japanese translation within two months from the filing date. However, the applicant may not amend the foreign language file (Article 17, paragraph 2). In 2007 there was a revision of Japan Patent Law. Pursuant to a 2007 revision of the law, the period for filing a Japanese translation for a Foreign Language Application is 14 months from the filing date or the priority date. [9]

Publication of application

Patent applications are published without a search report after 18 months has expired from the filing date (Article 64). The applicant may request for early publication (Article 64bis).

Examination

Request for examination and payment of examination fee are needed for an application to be examined (Article 48bis). The applicant, or a third party, [10] may request examination within three years from the filing date (Article 48ter), (this time limit is to be applied for patent applications filed after October 1, 2001) [11] if they stand examination fee (Article 195, paragraph 2).

A qualified examiner examines the application (Article 47). The examiner notifies the applicant of the reasons for refusal before making the decision to refuse a patent (Article 50), pointing out that some of the above conditions for patent are not met. The applicant may submit a statement or amendments against the reasons for refusal, within a time limit designated by the examiner (Article 17bis and 50). The time limit is normally 60 days after the date of notification for applicants living in Japan, or three months after the date of notification for applicants living in foreign countries.

If the examiner finds that some reasons for refusal notified to the applicant have not dissolved by the applicant's statement or amendment, the examiner issues a decision to refuse a patent (Article 49); otherwise the examiner issues the decision to grant a patent (Article 51).

Opposition procedure after an examiner's decision to grant a patent was abandoned in 2003; trial for invalidation (Article 123) serves as the alternative.

Whenever the applicant is allowed to amend the claims, specification, and drawings of a certain application, the applicant may derive a new application from the application (Article 44). This is called "division of application". Division of application is not allowed after the applicant received a copy of the examiner's decision to grant a patent.

The Japan Patent Office's interpretation of the patent law related to examination procedure is provided for in the "Examination Guidelines for Patent and Utility Model in Japan" in English." [12]

Trial against examiner's decision of refusal

Applicants dissatisfied at the decision of refusal may demand a trial within 3 months from receiving a copy of the decision (Article 121). Amendments are allowed when they demand for the trial (Article 17bis, paragraph 1).

If amendments are made, an examiner re-examines the application (Article 162). Usually the examiner who made the decision of refusal is appointed for re-examination. The examiner then issues a decision to grant a patent, or reports to the Commissioner if there are reasons for refusal that have not dissolved by the amendments (Article 164).

In case amendments were not made, or the examiner reported that reasons for refusal still remain, a group of three or five qualified trial examiners (Article 136) conduct the trial by communicating with the applicant in letters (Article 145, paragraph 2).

A person dissatisfied at the trial may demand a retrial (Article 171), or may sue the commissioner of the Japan Patent Office in quest of the patent (Article 178 and 179).

Trial for invalidation

Anyone may demand the commissioner of the patent office a trial for invalidation of a patent against the patentee (Article 123). A group of three or five trial examiners (Article 136) conduct the trial, gathering the parties to the patent office (Article 145, paragraph 1 and 3). The patentee may demand restriction of claims, or correction of errors or ambiguity (Article 134bis, added in 2003) to avoid the invalidation.

A lawsuit against patent infringement may be suspended until a trial decision of the patent office has become final and conclusive (Article 168, paragraph 2).

Patentability

Summary of the rules on patentability is as follows. More detailed description is found in "Examination Guidelines for Patent and Utility Model in Japan" [12] with summaries of significant court decisions.

Patentable subject matter

Novelty

Sharing the same rule as other jurisdictions, Japanese patent law does not grant exclusionary rights to existing technologies. Article 29(1) of Patent Act stipulates this point; an inventor may not obtain a patent for inventions that were known to the public ("publicly known") (Item (i)), inventions that were publicly worked ("publicly used") (Item (ii)) or inventions that were described in a distributed publication or made publicly available through an electric telecommunication line (Item (iii)), in Japan or a foreign country prior to the filing of the patent application. [5]

Inventive step

Where at the time of the application a person ordinarily skilled in the field of art to which the invention belongs (a “person skilled in the art”) would have been able to easily make the invention based on a technology falling under any of the items under Article 29(1) of the Patent Act (that is, an invention involving prior art or that is publicly known), the invention cannot be patented (Patent Act Article 29(2)). For this decision to be made, in the abstract, an accurate assessment is firstly to be made of the standard of art in the field of art to which the invention belongs as at the time of the application, and the points where the application invention varies from the prior art are to be made clear. Then, while making allowance for the purpose and effect of the invention, a decision is to be made depending on whether or not it is possible to logically support a person skilled in the art having been easily able to achieve the application invention by altering the prior art. [5]

Industrial applicability

In order to be granted a patent, it must first be industrially applicable: proviso to Patent Act Article 29(1). In particular, with respect to inventions such as those concerning genes, chemical substances or organisms, a concrete applicable use must be specified.

“Industry” is a broad concept that includes manufacturing industries, agricultural, fishing and forestry industries, mining industries, commercial industries, and service industries. Medical industries are excluded from “industries”, however, and grants of patents for inventions of acts of medical treatment are not recognized, on the ground that they are not industrially applicable. This exclusion stems from the ethical consideration that diagnoses and treatments available to medical practitioners in their treatment of patients must not be limited in any way by the presence of any kind of patent rights, and it is a legal construction adopted due to the lack of any statutory provision expressly denying the validity of patent rights vis-à-vis acts of medical treatment. However, patent rights can be obtained over aspects of medical treatment including pharmaceuticals and medical devices, and the methods of their manufacture (note that Article 69(3) of the Patent Act however stipulates certain limitations on the effect of patent rights obtained for pharmaceuticals). [5]

Effects of patent rights

After payment of the annual fees for the first three years, a patent right comes into force by registration (Article 66). The commissioner issues the certificate of patent to the patentee (Article 28). The term of patent is 20 years from the filing date. It may be extended for medicines and pesticides (Article 67).

A patentee have an exclusive right to commercially work the patented invention (Article 68), where "work" an invention means (Article 2, paragraph 3)

The statements of patent claims determine the technical scope of the patented invention (Article 70). However, the doctrine of equivalents may be employed.

A patentee may grant an exclusive license (Article 77) or a non-exclusive license (Article 78).

Infringement and remedies

Civil remedies

Right to demand an injunction

The patentee may exercise a right to demand an injunction against the person who infringes or is likely to infringe its rights: Article 100(1) of the Patent Act. A “person who infringes or is likely to infringe the patent rights” in that paragraph means a person who works (Article 2(3)) a patented invention without the patentee's permission, or a person who commits an act of indirect infringement.

In making a demand for an injunction under Paragraph (1) of Article 100, the patentee may also demand measures necessary for the prevention of an act of infringement, including the disposal of products constituting the act of infringement and the removal of facilities used for the act of infringement: Article 100(2). [5]

Damages

Since a patent right is also a kind of property right, an act of infringement of a patent right constitutes a tort, and a patentee who sustains damages as a result of an act of infringement may demand damages from the infringer in tort (Article 709 of the Civil Code). Unlike an ordinary tortious act however, in the case of the infringement of a patent right, it is often difficult to prove the amount of the loss, as well as intent or negligence on the part of the infringer. For that reason, the Patent Act contains a special provision for calculating the amount of loss (Article 102), a provision on the presumption of negligence (Article 103), and a provision permitting the determination of a reasonable amount of loss (Article 105-3). [5]

Case law in infringement litigation

Doctrine of equivalents

In 1998, the Supreme Court of Japan showed in judgment the requirements for applying the doctrine of equivalents. The judgment says:

even if, within the construction as indicated in the claim in the patent specification, there is a part which is different from the products, if (a) this part is not the essential part of the patented invention, (b) the purpose of the patented invention can be achieved by replacing this part with a part in the products and an identical function and effect can be obtained, (c) a person who has an average knowledge in the area of technology where this invention belongs could easily come up with the idea of such replacement at the time of the production of the products, (d) the products are not identical to the technology in the public domain at the time of the patent application of the patented invention or could have been easily conceived at that time by a person who has an average knowledge in the area of technology where this invention belongs, and (e) there were no special circumstances such as the fact that the products had been intentionally excluded from the scope of the patent claim in the patent application process, the products should be regarded as identical with the construction as indicated in the scope of the patent claim and fall within the scope of the technical scope of the patented invention. [13]

Exercise of patent that would be invalid

In 2000, the Supreme Court of Japan said in judgment:

a court considering a claim of patent infringement should be capable of judging whether or not there exists sufficient reasons to invalidate the patent, even prior to the Japan Patent Office's issuance of a final decision invalidating the patent. If during the hearings the court finds that there exists sufficient cause to invalidate the patent, a claim of injunction, damages, or other claims based on such patent would be an extension of rights beyond the scope contemplated under the law unless it can be demonstrated that circumstances exist which justify special treatment. [14]

and clarified that a court may judge the invalidity of patent in a patent infringement lawsuit.

Summary of the judgment:

In the event there is clear and convincing evidence that a patent is invalid, a claim for injunction, damages, or other claims based on such patent is beyond the scope of rights intended by the act, except in extenuating circumstances. [14]

Criminal penalty

Japanese patent law provides that patent infringement is a crime. A person who has infringed a patent right must be engaged in penal servitude for at most ten years, and/or must pay a fine of at most ten million yen (Article 196). In addition to the above penalty for an infringer, a firm that the infringer belongs to must pay a fine of at most 300 million yen (Article 201).

According to statistics of the National Police Agency of Japan, however, only four people were arrested for the infringement of patent in 2003.

History

The history of Japanese patent law began with the opening of the country that began in the Meiji era. Fukuzawa Yukichi introduced the concept of the patent to Japan in his 1867 writings. The next year, the Meiji Restoration occurred, and the modernization of Japan began.

In 1871the fourth year of the Meiji era, an experimental patent system was implemented. It was abandoned the following year.

The first substantial patent law in Japan was established by the "Patent Monopoly Act" (專賣特許條例 Senbai tokkyo jōrei) on April 18, 1885. (In 1954, the Ministry of International Trade and Industry of Japan declared April 18 to be Invention Day.)

The first seven patents under the Patent Monopoly Act were granted on August 14, 1885. Hotta Zuisho obtained Japanese Patent No. 1 for an anticorrosive paint. Takabayashi Kenzo obtained Patent No. 24 for tea processing machines.

During the Meiji era, all governmental systems underwent frequent changes, and the patent law was no exception. The Patent Monopoly Act was replaced by the Patent Act (特許條例 Tokkyo jōrei) in 1888; the Patent Act was replaced by the Patent Law (特許法 Tokkyohō) of 1899, which was completely revised in 1909. After the Meiji era, the Patent Act was completely revised twice, in 1921 and 1959.

The 1959 Japanese patent law was amended several times, especially pertaining to opposition proceedings, the term of patent, and compliance with the Patent Cooperation Treaty (PCT) in relation to criteria of novelty. [15] [16]

See also

Related Research Articles

Prior art, in most systems of patent law, is constituted by all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality. If an invention has been described in the prior art or would have been obvious over what has been described in the prior art, a patent on that invention is not valid.

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder. Permission may typically be granted in the form of a license. The definition of patent infringement may vary by jurisdiction, but it typically includes using or selling the patented invention. In many countries, a use is required to be commercial to constitute patent infringement.

A patent attorney is an attorney who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice, such as filing an opposition. The term is used differently in different countries, and thus may or may not require the same legal qualifications as a general legal practitioner.

In a patent or patent application, the claims define, in technical terms, the extent, i.e. the scope, of the protection conferred by a patent, or the protection sought in a patent application. In other words, the purpose of the claims is to define which subject-matter is protected by the patent. This is termed as the "notice function" of a patent claim—to warn others of what they must not do if they are to avoid infringement liability. The claims are of the utmost importance both during prosecution and litigation alike.

A person having ordinary skill in the art, a person of (ordinary) skill in the art, a person skilled in the art, a skilled addressee or simply a skilled person is a legal fiction found in many patent laws throughout the world. This fictional person is considered to have the normal skills and knowledge in a particular technical field, without being a genius. He or she mainly serves as a reference for determining, or at least evaluating, whether an invention is non-obvious or not, or involves an inventive step or not. If it would have been obvious for this fictional person to come up with the invention while starting from the prior art, then the particular invention is considered not patentable.

Patent pending designations or expression that can be used in relation to a product or process once a patent application for the product or process has been filed, but prior to the patent being issued or the application abandoned.

"Patent pending" or "patent applied for" are legal designations or expressions that can be used in relation to a product or process once a patent application for the product or process has been filed, but prior to the patent being issued or the application abandoned. The marking serves to notify the public, business, or potential infringers who would copy the invention that they may be liable for damages, seizure, and injunction once a patent is issued.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as post-grant amendment and opposition.

Sufficiency of disclosure or enablement is a patent law requirement according to which a patent application must disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. The requirement is fundamental to patent law: a monopoly is granted for a given period of time in exchange for a disclosure to the public how to make or practice the invention.

A utility model is a patent-like intellectual property right to protect inventions. This type of right is only available in some countries. Although a utility model is similar to a patent, it is generally cheaper to obtain and maintain, has a shorter term, shorter grant lag, and less stringent patentability requirements. In some countries, it is only available for inventions in certain fields of technology and/or only for products. Utility models can be described as second-class patents.

Under United States law, a patent is a right granted to the inventor of a (1) process, machine, article of manufacture, or composition of matter, (2) that is new, useful, and non-obvious. A patent is the right to exclude others from using a new technology. Specifically, it is the right to exclude others from making, using, selling, offering for sale, importing, inducing others to infringe, and/or offering a product specially adapted for practice of the patent.

In United States patent law, inequitable conduct is a breach of the applicant's duty of candor and good faith during patent prosecution or similar proceedings. A claim of inequitable conduct is a defense to allegations of patent infringement. Even in an instance when a valid patent suffers infringement, a court ruling on an allegation of infringement may exercise its power of equitable discretion not to enforce the patent if the patentee has engaged in inequitable conduct.

A patent application is a request pending at a patent office for the grant of a patent for an invention described in the patent specification and a set of one or more claims stated in a formal document, including necessary official forms and related correspondence. It is the combination of the document and its processing within the administrative and legal framework of the patent office.

This is a list of legal terms relating to patents. A patent is not a right to practice or use the invention, but a territorial right to exclude others from commercially exploiting the invention, granted to an inventor or his successor in rights in exchange to a public disclosure of the invention.

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

In Canada, every patent application must include the “specification”. The patent specification has three parts: the disclosure, the claims, and the abstract. The contents of the specification are crucial in patent litigation.

Patent law in modern mainland China began with the promulgation of the Patent Law of the People's Republic of China, in 1984. In 1985, China acceded to the Paris Convention for the Protection of Industrial Property, followed by the Patent Cooperation Treaty in 1994. When China joined the World Trade Organization (WTO) in 2001, it became a member of the TRIPS agreement.

The Atomic Energy Generation Device Case (原子力エネルギー発生装置事件) is a 1969 decision of the Supreme Court of Japan concerning the patentability of a method of transformation of atomic nuclei. All members of the patent family had been granted in other countries, and the Japan Patent Office (JPO) did not find any prior art which could destroy the novelty and inventive step of claimed inventions. However, the JPO rejected the patent application as being lack of industrial safety requirements. This is the first Japanese Supreme Court case concerning patentable subject matter.

The following outline is provided as an overview of and topical guide to patents:

Republic Act No. 8293, otherwise known as The Intellectual Property Code of the Philippines lays down the rules and regulations that grant, and enforce patents in the Philippines. Patents may be granted to technical solutions such as an inventions, machines, devices, processes, or an improvement of any of the foregoing. The technical solution must be novel, innovative, and industrially useful. In order for a technical solution to be granted a patent, the inventor must file an application to the Bureau of Patents, which will examine, and in some cases, grant its approval. The law is designed as to foster domestic creativity, to attract foreign investors, and to motivate inventors to release their products for public access.

References

  1. "法庫(Houko.com)特許法". Archived from the original on 2009-04-20. Retrieved 2009-07-30.
  2. Japanese Law Translation
  3. Intellectual Property High Court in English
  4. Japan Patent Office in English
  5. 1 2 3 4 5 6 Japanese Copyright Law and Japanese Patent Law Archived 2012-08-16 at the Wayback Machine in English
  6. "Patent information from Japan". Archived from the original on 2012-09-21. Retrieved 2012-08-16.
  7. Institute of Intellectual Property (IIP) of Japan in English
  8. Procedures for Obtaining a Patent Right
  9. "2007 Revisions to Japanese Patent Law" in Shobayashi International Patent & Trademark Office [JP: 特許事務所:正林国際特許商標事務所] web site, Page 5 and Page 6. Assessed on November 27, 2008.
  10. Japan Patent Office web site, Procedures for Obtaining a Patent Right. Consulted on October 19, 2011.
  11. "Any application for which a request for examination has not been filed within a period of *three years from filing date will automatically be regarded as withdrawal and cannot be patented thereafter." and Note: "The revised time limit is to be applied for patent applications filed after October 1, 2001." in Japan Patent Office web site, Procedures for Obtaining a Patent Right. Consulted on April 24, 2007.
  12. 1 2 Examination Guidelines for Patent and Utility Model in Japan Examination Guidelines for Patent and Utility Model in Japan
  13. 1994(O)No.1083 (Supreme Court of Japan, 3d Petit Bench; 1998).
  14. 1 2 1998(O)No.364 (Supreme Court of Japan, 3d Petit Bench; 2000). Minshu Vol.54, No.4 at 1368.
  15. "Archived copy". Archived from the original on 2009-02-12. Retrieved 2008-09-01.CS1 maint: Archived copy as title (link) Japan: Patents (PCT), Law (Consolidation), 26 April 1978 (22 December 1999), No. 30 (No. 220)
  16. "Archived copy" (PDF). Archived from the original (PDF) on 2012-02-16. Retrieved 2012-03-06.CS1 maint: Archived copy as title (link) Major Amendments to the Japanese Patent Law (since 1985)