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Japanese Patent Law
The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.
Table of Contents
- I. Who may apply for a patent
- II. Ownership rights
- III. Representation
- IV. Application procedures
- V. Examination
- VI. Appeals
- VII. Oppositions
- VIII. Duration of patent
- IX. Trial for invalidity
- X. Trial for correction
- XI. Working the patent
- XII. Licensing
- XIII. Infringement
- XIV. Prior Art Disclosure Requirement
I. Who may apply for a patent 
29(1)
, 25, 33(1)
An inventor or his assignee may apply for a patent in Japan.
A person who has neither a domicile nor residence in Japan may apply for and obtain a patent if the country in which he has a domicile or residence grants reciprocal privileges to Japanese nationals, or if a treaty specifically grants such privileges.
Under Article 35, in the absence of a contract stating otherwise, an employer may obtain the right to apply for, or take a non-exclusive license in, any patent which issues for an invention created by one of its employees. The nature of the invention must fall within the scope of the business of the employer, and the act or acts which resulted in the invention must have been within the present or past duties of the employee. The term "employee" also extends to officers of legal entities (such as corporations), as well as to public servants.
If the employer and employee have entered into a contract which grants to the employer the patent rights to the employee's invention or an exclusive license therein, the employee is entitled to reasonable compensation.
However, if the nature of the invention does not fall within the scope of the business of the employer, or the act or acts which resulted in the invention were not within the present or past duties of the employee, the employer is forbidden from enforcing any contractual provision which grants to the employer the rights to any patent on the invention or an exclusive license in the invention.
III. Representation 8,
15, The Benrishi Law 22.2
An applicant who has his/her domicile or residence in Japan may represent himself before the Patent Office, or may be represented by a patent attorney ("benrishi"). An applicant who does not have a domicile or residence in Japan must appoint a benrishi who has his/her domicile or residence in Japan.
If a patentee does not have a domicile or residence in Japan, the domicile or residence of his/her patent attorney may be considered as the venue for any infringement litigation concerning the patent.
A. Electronic v. Paper Filing, the exception of
proceedings concerning Industrial Property Law (Tokurei-Hou)6
- 8
The JPO has had a fully operational electronic filing system in place since 1990, and they now strongly recommend that all patent applications be filed "on-line" as well as most other documents filed during the pendency of the patent application.
The applicant may file a paper patent application, but the Patent Office will transfer this type of application to a computer-readable format and charge the applicant an additional fee for this service.
B. Provisional applications 41
Since 1985, priority may be claimed on an earlier filed Japanese patent application. However, the later application must be filed within one year of the earlier filed application. In addition, no internal priority may be claimed from (i) divisional applications; (ii) an earlier application which has been abandoned, withdrawn or invalidated at the time the later application is filed; (iii) an earlier filed application which has been finally rejected by the Examiner or after appeal; or (iv) a patent application which has been converted from a utility model or design patent application.
The earlier filed patent application upon which priority is claimed will be automatically withdrawn 15 months after its filing date. In addition, the applicant may not withdraw a priority claim on an earlier application after 15 months from the filing date of the earlier application.
C. Claiming priority on applications filed abroad
43, 43.2
Japan is a member of the Paris Convention and the World Trade Organization, and therefore an applicant in Japan may claim priority from a patent application filed in a country which is a member of one or both of these organizations. Of course, the patent application in Japan must be filed within one year of the earliest priority date claimed.
1. General form of application 36(1)
The application for patent must include the name(s) and address(es) of the inventor(s) and the name(s) and address(es) of the applicant(s). If the applicant is represented by a patent attorney, the application must include the name and address thereof. No power of attorney is required. The contents of the application must include a specification, any necessary drawings, and an abstract.
If the invention relates to a microorganism which is not available to the public, a culture of the microorganism must be deposited with an authorized institute before or on the filing date of the application (or the priority date). A certificate attesting to this fact must be filed together with the application with information concerning the microorganism's characteristics, the method of producing it, and its utility. Japan is a signatory to the Budapest Treaty. Therefore institutes authorized under the Treaty will be recognized as an authorized institute by the Japanese Patent Office.
The specification must include the title of the invention, a brief explanation of any drawings present, a detailed explanation of the invention, and at least one claim. The detailed explanation of the invention must describe the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains.
The JPO recommends that the specification be organized under the following headings:
- (1) Technological field
- (2) Background technology
- (3) Prior art document(s) relevant to the invention
- (4) Problem(s) that the invention attempts to solve
- (5) Means for solving the problem(s)
- (6) Effects of the invention
- (7) Best mode for carrying out the invention
- (8) Industrial applicability
- (9) Brief description of the drawings
- (10) Description of the reference numerals
A new law concerning the disclosure of prior art information by patent applicants came into effect in Japan on September 1, 2002. Under this new law, the patent specification is required to include one or more citations to relevant prior art documents that are known to the applicant(s) at the time the application is filed. A brief explanation of this law can be found below.
The claims must state, on a claim by claim basis, all matters which an applicant considers necessary for defining the invention for which a patent is sought. In addition, the claims are required to be clear, concise, and supported by the detailed explanation of the invention.
4. English language applications 36.2
Patent applications may be filed in English. An additional fee (see below) is charged, and a translation of the application into Japanese must be filed within two months of the filing date. The same is true for PCT applications entering the national phase in Japan. Note however that utility model applications may not be filed in English.
The Japanese translation of the application will be deemed to be the original specification. However, errors found in the Japanese translation after filing may be corrected.
5. Japanese Patent Office filing fees 195
Note that the filing fees will be revised as of January 1, 2004, and will vary depending upon the number of claims in the application. The new fees will be as follows:
| Current amount (yen) | New amount (yen) | The new fee schedule will be applied to: | |
| Filing completed Japanese language patent application | 21,000 | 16,000 | Applications filed on or after April 1, 2004 (Regarding the national phase of a PCT application, the new fee system will be applied to international applications filed on or after April 1, 2004.) |
| Filing completed English language patent application | 35,000 | 26,000 | Applications filed on or after April 1, 2004 |
| Request for Examination | 84,300 + 2,000 per claim | 168,600 + 4,000 per claim | Applications filed on or after April 1, 2004 |
| Request for Examination in the national phase of a PCT application(where ISA is the JPO) | 16,900 +400 per claim | 101,200 +2,400 per claim | Applications, in which the international filing date is on or after April 1, 2004 |
| Request for Examination in the national phase of a PCT application(where ISA is other than the JPO) | 67,400 +1,600 per claim | 151,700 +3,600 per claim | Applications, in which the international filing date is on or after April 1, 2004 |
| registration or annual fees | 1-3rd year: (annually) 13,000 + 1,100 per claim 4-6th year: (annually) 20,300 + 1,600 per claim 7-9th year: (annually) 40,600 + 3,200 per claim 10-25th year: (annually) 81,200 + 6,400 per claim |
1-3rd year: (annually) 2,600 + 200 per claim 4-6th year: (annually) 8,100 + 600 per claim 7-9th year: (annually) 24,300 + 1,900 per claim 10-25th. year: (annually) 81,200 + 6,400 per claim |
Applications, in which a request for examination is filed on or after April 1, 2004 |
A. Publication of application 64
Eighteen months after the filing date of the application (or, if priority is claimed, the priority date), the application is published in the Japanese Patent Office Patent Gazette. If the application was originally filed with the Japanese Patent Office in English, then both the original English application and its Japanese translation will be published.
After the application has been published, a third party aware of any relevant prior art may submit the same to the Patent Office.
B. Request for examination 48.2-48.5
& an attached table
In order for the patent application to be examined, a request for examination must be filed with the Patent Office within three years of the filing date (seven years for patent applications filed before October 1, 2001), together with the appropriate fee. This request may be made by any person or organization, and not just the applicant. If someone other than the applicant has filed a request for examination, the Patent Office will notify the applicant of this fact. In addition, notification that a request for examination was made will published in the Patent Gazette.
A request for accelerated examination may be filed. There are two ways in which an application may qualify for accelerated examination:
(1) The applicant or a licensee must be exploiting the invention on the date the request is submitted; or
(2) There must be a corresponding patent application on file with another national patent office.
In both cases, a request for normal examination must be filed either before or at the same time as the request for accelerated examination is filed. In addition, the applicant must provide a prior art search report concerning the claimed invention. This search report can be prepared by the applicant, or can simply be a copy of a PCT International Search Report, a PCT International Preliminary Examination Report, or a search report prepared by another national patent office. Finally, the applicant must provide comments that compare the claimed invention to the results of the prior art search. A comparison of the claimed invention to the prior art made in a PCT International Preliminary Examination Report or by an examiner in another national patent office will also satisfy this requirement.
The JPO does not require any additional fee for requesting accelerated examination.
C. Requirements for patentability
1. Patentable subject matter 
2(2),
29(1), 32
Generally, there are three types of inventions which are not patentable in Japan:
(1) "inventions" which do not fall under the statutory definition of an invention as defined in Article 2 (2);
(2) inventions which are not "industrially applicable"; and
(3) inventions which contravene public order, morality or public health.
Article 2 (2) states that an invention is to be defined as a highly advanced creation of technical ideas by which a law of nature is utilized. Although quite vague, this definition has been interpreted to preclude the patenting of mathematical formulae, drawing methods, teaching methods, methods of playing games, etc. However, Article 2 does allow for the patenting of computer software.
Article 29 (1) states that any person who has made an invention which is industrially applicable may obtain a patent therefor. It is now generally recognized that only surgical, or medical diagnostic or treatment methods fail to meet this standard. However, beginning in 2004 the JPO will begin to accept patent applications directed to methods of manufacturing medicines and medical equipment derived from human tissue (e.g., cultured epidermal sheets, artificial bones, gene therapy). These types of inventions had previously been considered unpatentable.
Under Article 29 (1), a patent for an invention will be denied if:
(1) the invention was publicly known anywhere prior to the filing date of the patent application;
(2) the invention was publicly worked anywhere prior to the filing date of the patent application; or
(3) the invention was described in a publication distributed anywhere or was made available to the public over telecommunication lines (e.g., the Internet) prior to the filing date of the patent application. Note, however, that under Article 29.2, a published patent application has an anticipatory effect that is retroactive to its effective filing date (which includes its Paris Convention filing date).
However, there are some exceptions to the above rules. First, the applicant may conduct public experiments with the invention prior to filing a patent application, so long as the patent application is filed within six months of the earliest date of the public experiments.
Second, the applicant may disclose the invention in a printed publication, over telecommunication lines (e.g., the Internet), or to a scientific body designated by the JPO, so long as the patent application is filed within six months of the earliest of any of such dates.
Third, if the invention was publicly disclosed or worked by a person not authorized by the applicant, the applicant may still file a patent application if done within six months of the earliest of such acts.
Finally, the invention may be publicly displayed by the applicant before certain types of exhibitions without loss of novelty. These exhibitions include those sponsored by Japanese governmental entities and held within Japan, those sponsored by non-governmental entities and held within Japan, and those sponsored by foreign governmental entities (or persons authorized by such entities) and held in other countries. Except for the exhibitions sponsored by a Japanese governmental entity, the Patent Office must have officially approved an exhibition in order for the applicant to display the invention without loss of novelty. In addition, the applicant must file a patent application within six months of the earliest of such displays.
Article 29 (2) states that a patent cannot be granted for an invention when that invention could have been easily made, prior to the filing date of the patent application, by a person with ordinary skill in the art to which the invention pertains. The prior art that can be used to make this determination is that described in Article 29 (1): inventions that have been publicly known or worked anywhere prior to the application for patent, and inventions that have been described in a printed publication anywhere prior to the application for patent.
Like most other countries, Japan operates under the first-to-file rule, i.e., when two or more patent applications made by different inventors are filed and claim the same invention, only the earliest filed application has the right to be patented.
When two or more patent applications made by different inventors and claiming the same invention are filed on the same day, the applicants must decide among themselves who has the right to file the application. If the applicants cannot reach agreement, then none of the applicants will receive a patent for the invention. Because of the harsh nature of this rule, it is often the case that the parties will reach some type of licensing agreement.
A patent application may include two or more inventions. Article 37 states that the plurality of inventions must consist of an invention stated in one claim (referred to as "the specified invention"), and one or more other inventions which relate to the specified invention. Up until the end of 2003, the JPO made this determination based upon their own unity of invention rules. However beginning in 2004, the JPO will adopt the unity of invention standard applied to international patent applications filed under the PCT, and thereby virtually eliminate the possibility that an applicant entering the national phase in Japan would be subject to a unity rejection.
Should a patent application claim two or more inventions that fail to meet the above criteria for unity of invention, the examiner will inform the applicant of such and require one invention to be selected for examination.
If the applicant decides to file a divisional application a divisional application may be filed at any time from the filing date up until the end of period for response to a first office action on the merits of the invention.
E. Rejection by the examiner 49,
50
If the examiner finds that the claimed invention fails to meet any of the requirements for patentability, a written notice of rejection will be issued and sent to the applicant or the patent attorney representing the applicant.
If the applicant wishes to respond to the rejection, the time limit in which this may be done depends on where the applicant is residing. If the applicant is residing in Japan, a 60 day time limit is set and no extensions of time are available. If the applicant resides outside of Japan, a three month time limit is set, with an additional three months available if a request for an extension of time is filed within the original three month time period.
Changes in the law have significantly restricted the content of amendments to the specification and claims, but have also relaxed the timing of such amendments.
For applications filed before January 1, 1994, it is possible to add new matter to the specification so long as the "gist" of the specification is not altered. In other words, it is possible to add new matter that would be obvious to one skilled in the art, based on the information disclosed in the specification. However, for applications filed on or after January 1, 1994, the standard that is applied is similar to that used in the U.S. or Europe, i.e., no new matter may be added that was not disclosed in the application as originally filed. Please note, however, that the JPO's no-new-matter rule may sometimes be more restrictive than in the U.S. or Europe.
An amendment may be filed at any time from the filing date up until the end of period for response to a first office action, during the time period for response defined in a final office action, and thereafter within thirty days from the date of filing an appeal of a final rejection.
G. Conversion of application 46,
The Utility Model Law 10, The
Design Patent Law 13
It is possible for a patent application to be converted into a utility model application. This option may be useful when the application is rejected, and it appears that the invention as disclosed does not involve a sufficient inventive step over the cited prior art.
A patent application may be converted into a utility model application within five years and six months from the filing date, or within 30 days of receipt of a first decision of rejection. If the applicant is residing outside of Japan, an additional 60 days is provided.
A patent application may also be converted into one or more design registrations. In order to do so, a request must be filed within 30 days of receipt of a first decision of rejection. If the applicant is residing outside of Japan, an additional 60 days is provided.
VI. Appeals 17.2(1)(iii),
121, 136
Should the applicant wish to dispute a final rejection of the patent application, an appeal may be filed within 30 days of the mailing date of the final decision of rejection. If the applicant is residing outside of Japan, an additional 60 days is provided.
If the applicant files an amendment together with a request for appeal, the examiner must reconsider the grounds for rejection in light of the new amendment before an appellate board inspects the appeal. If the examiner again rejects the application, the appeal will go to the appellate board.
Appeals are typically conducted before three examiners, but can be conducted before five examiners if the subject matter or issues involved are considered important to the public interest. Most appeals are conducted on documentary evidence only, but the applicant or examiner may choose to made an oral presentation.
It can take a number of years for an appeal board to render its decision, depending on the type of technology involved. Note however that no extensions to the patent term are provided if the appellate board overturns the rejection. Thus, a significant period of patent protection can be lost if an appeal is pursued.
However, a recent change in the law has created an accelerated appeal system. In order to qualify, an applicant must provide evidence that the invention in question is currently being exploited in Japan, a corresponding patent application has been filed with another national patent office, or that a third party may be infringing the invention.
The opposition system in Japan will be abolished as of January 1, 2004. Parties who wish to challenge the validity of a patent must file a request for an "Invalidation Trial" with the JPO. A detailed description of this is provided below.
The patent term is 20 years from the filing date.
If the subject matter of the patent requires regulatory approval by the government before it may be sold in Japan, a patent term extension may be available. Currently the only products eligible for patent term extension are agricultural chemicals, medical devices and pharmaceutical products.
If the patent owner (or an exclusive licensee) believes that they are entitled to an extension, a request for such must be submitted within three months of regulatory approval for the invention, but no request may be filed within six months from the end of the patent term. The request must show that the patent could not be worked for at least two years due to the need for regulatory approval. The two year period begins on the day the patent issues or the day regulatory approval is sought, whichever is later. If granted, the term extension may not be greater than five years.
Should the request be denied, the patentee may respond with additional arguments or documentation. If the examiner remains unconvinced, an appeal to an appellate board of three to five examiners may be brought, with an appeal to the Tokyo High Court possible after that. If a third party believes that a patent term extension was granted in error, that party may seek a trial to invalidate the extension, held before a board of three to five examiners.
A third party who is or may be adversely affected by a patent may demand a trial for the invalidation of the patent under the following circumstances:
(1) new matter was added to the application during prosecution;
(2) a patent was granted to an applicant that is a resident of a country which does not grant reciprocal privileges to Japanese residents;
(3) the invention is not industrially applicable;
(4) the invention was publicly known in Japan prior to the filing date of the application;
(5) the invention was publicly worked in Japan prior to the filing date of the application;
(6) the invention was described in a publication distributed in Japan or elsewhere prior to the filing date of the patent application;
(7) the invention could have been easily made, prior to the filing date of the application, by a person with ordinary skill in the art to which the invention pertains;
(8) the applicant was not the first one to file a patent application for the invention;
(9) the invention is liable to contravene public order, morality or public health;
(10) the patent was granted contrary to the provisions of a treaty;
(11) the specification does not describe the invention in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains;
(12) the allowed claims are not clear and concise;
(13) an English language patent application was originally filed, and the Japanese language translation of such includes matter not disclosed in the English version.
(14) the patent has been granted on a patent application filed by a person who is not the inventor and has not succeeded to the right to obtain a patent for the invention concerned;
(15) when the patentee has become a resident of a country that does not grant reciprocal privileges to residents of Japan, or the patent in question no longer complies with a treaty; and
(16) the patentee has been allowed to correct the specification or drawings of the patent after grant in a manner which adds new matter.
As with other hearings of this type, the trial for invalidity is conducted before an appellate body of three to five examiners. The request for trial can be made at any time during the life of the patent, and may in fact be requested after the patent in question has expired.
X. Trial for correction 126
-131, 136, 145(2)
A patentee may request that certain types of error in the specification or claims be corrected. These corrections are limited to the following:
(1) narrowing the scope of one or more claims;
(2) the correction of errors in the description, including those due to incorrect translations;
(3) the clarification of ambiguous terms in the description.
The trial for correction is typically conducted on documentary evidence alone, and is conducted before a board of three to five examiners.
XI. Exploiting the patent 2(3),
66, 107-8
A patent becomes valid and enforceable when the first three years of annual fees have been paid and registered.
A valid patent gives its owner the right to commercially exploit the claimed invention and exclude others from exploiting the claimed invention. Under Article 2(3), exploiting means the following acts:
(1) manufacturing, using, assigning, leasing, or importing a patented product (including computer software), or offering for assignment or lease (including advertising for the purpose of assignment or lease) a patented product;
(2) using a patented process;
(3) using, assigning, leasing, or importing a product (including computer software) manufactured by a patented process, or offering for assignment or lease (including advertising for the purpose of assignment or lease) a product manufactured by a patented process.
XII. Licensing 27(1)(ii),
77-78, 98-99
In Japan, like most other countries, the owner of a patent right may grant an exclusive or non-exclusive license to others. However, Japan's version of an exclusive license is somewhat different.
In Japan, an exclusive license grants an undivided interest to all or part of a patent to an exclusive licensee. An exclusive license is an in rem property right, and not a personal property right. Thus it is possible for a patent owner to grant exclusive licenses to more than one person, i.e., an exclusive license may be granted to one company to make and sell the invention in western Japan, and to another company to make and sell the invention in eastern Japan.
To be exclusive, a license must be registered at the JPO in order to be given effect. By registering the exclusive license, the licensor is prevented from granting a conflicting license to a third party, and the exclusive licensee is given the right to sue third parties for infringement. Note, however, that there is no duty on the part of the patent owner to register an exclusive license with the JPO, so a requirement to register the exclusive license is often included in the licensing agreement.
An exclusive license may be transferred only together with the business in which it is worked, or only with the consent of the patent owner. This does not include transfer by inheritance or other general succession. An exclusive licensee may not grant a non-exclusive license to another without express permission from the patent owner.
A non-exclusive license does not give the licensee the right to sue infringers. Non-exclusive licenses also do not have to be registered to be given effect as such. However, like the exclusive license, registration of the non-exclusive license prevents the patent owner from granting a conflicting license to third parties.
There are certain circumstances in which a non-exclusive license will be granted
to others without the consent of the patent holder (compulsory license). See the
Japanese Patent Law 35, 79-81,
83, 92
and 93.
A patent is literally infringed when someone other than the patent owner and his or her licensees:
(a) commercially makes, uses, sells, offers to sell or imports a patented product;
(b) commercially uses a patented process; or
(c) commercially makes, uses, sells, offers to sell or imports a product made by a patented process.
With respect to a patent for a process of manufacturing a product, any identical product will be presumed to have been manufactured by the patented process if the product was not publicly known in Japan before the effective filing date of the patent application.
Note that if the above acts are private and noncommercial, there is no infringement. In addition, there is no infringement in the following circumstances:
(a) when the patented product or process is used for the purposes of experiment or research;
(b) when the patented product, or products made by a patented process, are present on board vessels or aircraft merely passing through Japan; and
(c) with respect to patents for medicines which are produced by mixing two or more medicines together (or patents for processes thereof), the act of preparing the patented medicine in accordance with a prescription from a physician or a dentist, or the medicine itself.
Liability for indirect infringement may be found under the following circumstances:
(a) commercially making, using, assigning, offering to assign, or importing an article that is technically significant and important for the manufacture of a patented product if done with malicious intent; or
(b) commercially making, using, assigning, offering to assign, or importing an article that is technically significant and important for exploiting a patented process if done with malicious intent.
3. Infringement by equivalents
It had been relatively rare for a Japanese court to find a patent infringed by equivalents. However, the Supreme Court adopted the doctrine of equivalents for the first time in Kabushiki Kaisha Tsubakimoto Seiki v. Tei Eichi Kei Kabushiki Kaisha, Heisei 6 (o) No. 1083, on February 24, 1998. We expect Japanese courts will apply this doctrine more aggressively in the future.
The Supreme Court stated that even if a patent claim has an element which does not cover the accused product, the accused product would be regarded as being equivalent to the composition recited in the claim when:
(1) the element is not an essential feature of the claimed invention;
(2) the claimed invention achieved the object and effect of the invention even after the element is replaced with a feature owned by the accused product;
(3) the replacement would have been obvious, when the accused product was made, to a person having ordinary skill in the art to which the invention pertains;
(4) the accused product was not identical to or obvious from the prior art; and
(5) the accused product does not correspond to one which was intentionally excluded from the claim during its prosecution.
B. Patent litigation under the Code of Civil
Procedure 4-6
A patent infringement suit may be filed in any District Court where a defendant has an address or domicile, where a defendant company has a principal office or a place of business, or where the infringement occurs. In addition, even if the Tokyo District Court or the Osaka District Court is not the court which has jurisdiction under above rule, a plaintiff may file the suit in the Tokyo or the Osaka District Court. Only these courts have intellectual property divisions. The Patent Office has seconded a number of personnel to these intellectual property divisions to assist judges with technical matters. There is no High Court specialized for the patent litigation in Japan.
Patent infringement suits in Japan are typically handled by two attorneys. This is due to the fact that patent attorneys (benrishi) in Japan are licensed to appear before the courts as an assistant attorney for infringement matters. The patent attorney typically team up with a general attorney (bengoshi).
Like other civil law countries, Japan does not have pre-trial discovery procedure like the United States has. However, when the patentee has an urgent reason to obtain evidence, the patentee may ask a court to authorize collection or preservation of such evidence, even before a trial. There are some provisions in the Code of Civil Procedure to have the other party submit some documents during the trial, but they are limited. In addition, Article 105 of the Patent Law allows a court to order a party to "produce documents necessary for the assessment of the damage caused by the infringement". However, Article 105 goes on to state that "this provision shall not apply when the person possessing the documents has a legitimate reason for refusing to produce them". This last provision has been broadly interpreted by the courts. For example, it is possible for a party from whom documents have been requested to simply state that the documents requested contain sensitive information (i.e., trade secrets) and thereby avoid the court's order.
At trial, the jurisdiction of the court is limited to the question of whether the defendant has infringed the patent, and does not have the jurisdiction to find the patent invalid. If the defendant believes that the patent is invalid, a separate trial for invalidity must be held before an appellate board in the Patent Office.
It is quite rare for a plaintiff to be granted a preliminary injunction against the defendant, although technically possible. Thus, the remedies available to a patent owner consist primarily of a permanent injunction and monetary damages.
In order to collect monetary damages from an infringer, the plaintiff bears the burden of proving either negligent or willful infringement of the patent. However, the law presumes that any infringement found to have taken place was done negligently.
Assuming the defendant is liable for monetary damages, the amount is calculated in one of three ways. Article 102(1) assumes that the amount of damages would have been the amount calculated by multiplying the profits per unit which the patentee can normally make, by the number of the accused products which have been transferred by the infringer, if no other special circumstances exist. The patentee may also claim damages on the basis of the profits made by the infringer from the patented product or process. As noted above, the lack of an effective discovery process often means that the plaintiff will find it difficult to prove the amount of profits made by the defendant. Alternatively, a plaintiff may collect a reasonable royalty from the defendant in the event that the infringement is found to have been willful or grossly negligent. Further, the court has the discretion to order the infringer to publicly apologize for harming the business reputation of the patent holder.
The defendant can be liable for monetary damages as far back as the date of the first publication of the patent application in Japan. In order for this to occur, however, the patent applicant must have either notified the infringer in writing of the pending patent application, or prove at trial that the infringer knew of the publication but continued to work the invention.
Although the law requires that patented products and processes be marked, there is no penalty for not doing so, and the failure to do so will not be considered by the court when calculating damages. The law also provides for criminal penalties in the event of willful infringement, but it is extremely rare for a court to prosecute a willful infringer under this provision.
XIV. Prior art disclosure requirement
A. Preface
A new law concerning prior art information disclosure has become effective in Japan as of September 1, 2002. Under this new law, applicants are required to disclose information on prior art references known to them in the patent specification. This article provides an explanation of the new law, and how it is going to be implemented by the Japanese Patent Office, and what patent applicants need to do in order to comply with it.
Section 36(4)(ii) of the Patent Law reads as follows:
The detailed description of the invention under paragraph (iii) of the preceding
subsection shall comply with the following:
(i) [Omitted]
(ii) where a person desiring a patent knows, at the time of filing a patent application, any inventions publicly known through documents (inventions referred to in Section 29(1) (iii); the same meaning shall apply thereunder in this paragraph) which are related to the invention, the detailed description of the invention shall contain the source of information on the invention publicly known through a document such as the title of a publication in which the invention publicly known through a document is described.
Patent applicants are required to disclose bibliographic data on prior art documents publicly available in Japan or elsewhere (including the Internet) which are "related to" the claimed invention. In other words, patent applicants are not required to disclose information that has not been published, is not publicly available, or is not "related to" the claimed invention.
In determining whether a prior art document is "related to" the claimed invention, the following three points must be considered:
(i) whether the technical field of the claimed invention is related to the technical field of the invention disclosed in the prior art document;
(ii) whether the problem that the claimed invention solves is related to the problem the invention disclosed in the prior art document solves; and
(iii) whether the elements of the claimed invention are related to the elements of the invention disclosed in the prior art document.
In addition, patent applicants will be required to disclose documents:
(i) discovered in a prior art search conducted before the patent application was filed and which contain information related to the claimed invention;
(ii) documents (such as academic papers and the like) that were published by the patent applicant before the filing of the application and which contain information related to the claimed invention; and
(iii) prior patent applications filed by the patent applicant which contain information related to the claimed invention.
Applicants are required to disclose this information at the time the patent application is filed. An applicant is not required to disclose relevant prior art references discovered after the patent application is filed, but are nonetheless encouraged to do so by the Patent Office.
The prior art references must be identified in the patent specification. In other words, if a prior art reference is a patent or published patent application, then the applicant need only cite the patent or publication number. If it is another type of published document, then enough identifying information should be provided that will allow an examiner to locate it.
Article 48septies of the Patent Law reads as follows:
The examiner may, if he/she judges that a patent application fails to satisfy the requirement provided in Section 36(4)(ii), notify the applicant to that effect and give the applicant an opportunity to submit a written argument, designating an adequate time limit.
Under Article 48septies, the examiner will determine whether the patent application
is in compliance with Section 36(4)(ii) at the time of examination. If the examiner
determines that the patent application is not in compliance therewith, he or she
has the discretion to issue a notice requiring the applicant to amend the patent
application to cite relevant prior art references. The Patent Office states that
the examiner will typically determine that the patent application does not comply
with Section 36(4)(ii) in the following four situations:
(i) when there are no prior art references cited, and no reason for the absence
thereof is provided in the patent application;
(ii) when there are no prior art references cited in the patent application
and a reason for the absence thereof is provided therein, but the examiner believes
that it is highly likely that the applicant knew of relevant prior art documents
at the time of filing (e.g., in situations in which the applicant has previously
filed a number of patent applications in the same technical field);
(iii) when prior art is discussed or described in the specification or drawings,
but no identifying information is provided; and
(iv) when irrelevant prior art documents are cited in the application, but the examiner believes that it is highly likely that the applicant knew of relevant prior art documents at the time of filing (e.g., in situations in which relevant prior art documents are well known).
Should an applicant receive a Notice under Section 48septies, he or she can respond by submitting an argument or an amendment within 30 days (60 days for applicants residing abroad) of the date of the Notice. No extension of time is allowed. If the applicant chooses to dispute the Notice, he or she could simply state that they were unaware of any relevant prior art documents prior to filing the patent application. If the applicant was aware of one or more prior art documents prior to filing the patent application, then he or she can amend the application to include citations thereto.
If the examiner believes that the arguments or amendments submitted by the application in response to a Notice under Section 48septies do not satisfy Section 36(4)(ii), then Section 49(v) provides that the examiner shall reject the application. Section 49(v) reads as follows:
The examiner shall make a decision that a patent application is to be refused where it falls under any of the following paragraphs:
(i) - (iv) [Omitted]
(v) when a notice under the preceding Section was made, and the patent application still fails to satisfy the requirement provided in Section 36(4)(ii), despite the amendment of the specification or the submission of a written argument.
(vi) - (vii) [Omitted]
At this point, the applicant has 30 days (60 days for applicants residing abroad) from the date of the rejection to submit additional arguments or amendments to overcome the examiner's rejection. Should the applicant's arguments or amendments fail to overcome the rejection, then the application will stand as finally rejected, and the applicant's next course of action would be to appeal the examiner's decision before the Patent Office's internal appellate board.
| Q1. | Can one attempt to oppose or invalidate a patent on the grounds that the prior art disclosure was inadequate or that the applicant intentionally withheld prior art? |
| A1. | No. A patent cannot be opposed or invalidated for failure to comply with Section 36(4)(ii), even if the patentee was found to have intentionally failed to cite a relevant prior art reference in his or her application after the patent issues. |
| Q2. | How should an applicant respond to a Notice under Article 48septies? |
| A2. | If the applicant was unaware of any relevant prior art references before filing the patent application, then the examiner should be clearly informed of this. If the applicant did in fact know of relevant prior art references before filing the patent application, but failed to cite them in the specification, then the applicant should amend the application to cite those references. As noted above, however, assuming the examiner is eventually satisfied with the prior art references that are provided, there is no penalty for intentionally withholding one or more other relevant prior art references known to the applicant prior to filing, even those that could conceivably render the invention unpatentable. |
| Q3. | Does an applicant have to conduct a search to comply with the requirements? |
| A3. | No. An applicant is not required to conduct a prior art search prior to filing the patent application. Note, however, that if an applicant knows that a relevant prior art document exists but is unable to locate it, he or she must conduct a search. This situation could arise in a situation in which the patent applicant knows that a published patent application describes an invention similar to his or her invention, but does not know the publication number. Here, the applicant must conduct a search to locate the publication. |
| Q4. | Does an applicant have to provide physical copies of prior art references to the examiner? |
| A4. | No. The references need only be identified to the extent necessary for the examiner to locate them. However, if the examiner is unable to locate a prior art reference cited by the applicant, then he or she can require the applicant to provide a copy. |
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