Японское патентное право: основные аспекты и особенности

Aspect of Japanese law

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

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

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). 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".

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.

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).

Request for examination and payment of examination fee are needed for an application to be examined (Article 48bis). The applicant, or a third party, 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) 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."

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).

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).

Summary of the rules on patentability is as follows. More detailed description is found in "Examination Guidelines for Patent and Utility Model in Japan"</blockquote>