Patent Japan

Tuesday, October 31, 2006

TRIPS Dispute Resolution Measures against China

On October 29, 2006, it is reported that US is preparing to file suit under WTO's Trade-Related Aspects of Intellectual Property Rights (TRIPS) against People's Republic of China by reason of rampant IP piracy therein, and that Japan, Canada and EU will follow suit.

Under the WTO's framework, contested members shall have bilateral talks firstly, then, a panel will be set up if a settlement is not reached.

China became a new WTO member in 2001. Probably it will be the first case that goes into a WTO dispute settlement proceeding on IP issues.

Friday, October 27, 2006

Exceptions to Lack of Novelty

On October 26, Japan Patent Office released a new manual (available only in Japanese) for applicants regarding the procedure for applying the exceptions to lack of novelty (Patent Law Section 30).

According to the new manual,
1) applicants can present the evidence as to publication based on the format indicated in the manual (formerly, the certificates issued by the organizers of academic conference had been required);
2) they can also present the evidence as to the relationship between inventors and themselves based on the format indicated in the manual (formerly, the oaths by each concerned parties had been required); and
3) they are not to required to present the publication document as evidence, accordingly, the translation of the document will be no more required.

Applying for the exceptions to lack of novelty (Patent Law Section 30) is still NOT a practical procedure for foreign applicants using the priority of Paris Convention, and is NOT recommended (except for using international patent applications based on Patent Cooperation Treaty).

Wednesday, October 25, 2006

Patent Examination Reform Acceleration Plan (2)

1. Promotion of Global Acquisition of Patents and Reinforcement of Intellectual Property Protection
(see my previous blog)

2. Further Measures for the Acceleration and Rationalization at the Patent Office
2.1.1 Increase of 149 patent examiners, including 100 fixed-term examiners in FY 2007.
2.1.2 Expansion of outsourcing of prior art searches to 226,000 in FY 2007.
2.2.1 Reinforcement of quality management of patent examination by the feedback of analyzed results. Opinion exchange among major patent offices on patent examination quality management.
2.2.2 Improvement on academic document database.

3. Promotion of Strategic Management of Intellectual Property at Business Enterprises
3.1.1 Continuation of opinion exchange between JPO's Commissioner and private companies' CEOs.
3.1.2 Compilation and publication of "Strategic Invention Management Guidelines."
3.1.3 Holding of Patent Strategic Forum for the opinion exchange between the Minister and expertise.
3.2 Improvement of Industrial Property Digital Library, and development of integrated search system of patent/non-patent document.

4. Strengthening of the Support for Intellectual Property Utilization at Regional or Small/Medium-Sized Enterprises
4.1 Reinforcement of regional IP strategic headquarters.
4.2.1 Further expansion of support for prior art search for SMEs.
4.2.2 Reinforcement of "IP Helpdesks" as regional contact points.
4.2.3 Expansion of support system for SMEs, such as the promotion of fee reductions.

Monday, October 23, 2006

Patent Examination Reform Acceleration Plan

On October 19, 2006, the Headquarters for the Acceleration and Rationalization for Patent Examination headed by the Minister of Economy, Trade and Industry issued the "Patent Examination Reform Acceleration Plan for the Promotion of Innovation," which is said to be a new basic policy for the patent administration.
This plan is composed of four areas with 20 items.

1. Promotion of Global Acquisition of Patents and Reinforcement of Intellectual Property Protection
1.1. Exploring the realization of "Patent Examination Highway" with EPO, UK, Germany, Canada, and Australia, followed by US and Korea. Compilation of "Guidelines for the utilization of search and examination results conducted by foreign patent offices" within this fiscal year.
1.2. Cooperation for the improvement on IP frameworks and practices in developing countries through economic partnership agreements, so as JPO's examination results to be accepted in these countries.
1.3. Reaching for an agreement on substantive patent law harmonization at developed nations' meeting in this November, including the first-to-file provision.
1.4. Reaching for an agreement on the unification of patent application format at the Trilateral Meeting in this November.
1.5. Agreement on the so-called "Treaty on Counterfeits and Piracy Anti-Proliferation."
1.6. Incorporation of anti-counterfeits measures in EPAs negotiated with developed countries (Australia, Switzerland, etc).
1.7. Enlargement of joint dispatches from public/private sectors for anti-counterfeits missions to China and other Asian countries, aiming at supporting effective IP protection to be established.
1.8. Expansions of the support for enterprises for anti-counterfeits measures and holding of “Counterfeits and Piracy Crackdown Campaign” for consumers in this December.

2. Further Measures for the Acceleration and Rationalization at the Patent Office (to be uploaded later on my blog)
3. Promotion of Strategic Management of Intellectual Property at Business Entities
4. Strengthening of the Support for Intellectual Property Utilization at Regional or Small/Medium-Sized Enterprises

Wednesday, October 18, 2006

Employee's Invention

On October 17, 2006, the Supreme Court dismissed the appeal from the decision of the Tokyo High Court on the employee's invention case ("Hitachi Case").

On January 29, 2004, the Tokyo High Court had ruled in the decision that
(i) regarding the patent transfer contract at issue, Japanese law should be the applicable, irrespective of the implied intentions of the parties, because it was made between a Japanese company and its employee;
(ii) "the appropriate compensation" under the section 35 of the Patent Law should encompass the rights to foreign patents, because it should be decided based upon the national industrial policy in which the company and its employee reside, not upon that of other countries where patents are registered; and,
(iii) in case of a comprehensive cross license contract, it would be reasonable to include the royalty which would have been received in "the amount of the profit that an employer would make" under the section 35.

The Supreme Court upheld this decision by ruling as follows on the first two points.
(i) The issues whether an assignee has the right to compensation as a result of the transfer of foreign patents, and how much its compensation amounts to, are regarded to be the issue of legal effects arising from a contract, and, therefore the applicable law for these issues should be decided based on the intention of both parties.
In this case, because an implied intention was found to exist between both parties, Japanese law is to be applicable.
(ii) Since it is difficult, by literal interpretation, to include foreign patents in "a right to a patent" under the section 35 of the Patent Law, the section could not be directly applicable for the claim to the compensation based on foreign patents.
However, while this section is provided considering the difficulty for an employee to make a patent transfer contract with its employer on an equal footing, it makes no difference for this difficulty in case of foreign patents.
Also, corresponding patents in various countries have resulted from a single inventive activity and from a single employment relationship.
Therefore, the sections 35 (3) and (4) should apply mutatis mutandis for the claim to the compensation as a result of the transfer of foreign patents.

By the Patent Law revision of 2004, the provisions regarding the compensation (section 35) have been changed.
New provisions shall be applicable ONLY to cases where patent rights are TRANSFERED on and after April 1, 2005.

Monday, October 16, 2006

Patent Law Harmonization

On October 16, 2006, Japan Patent Office issued a summary paper on the plenary session of B+ Group in Geneva on September 24. This is the official summary of the meeting, which I reported on my previous blog.
According to this paper, the next meeting will be held in Tokyo on November 20-21.

Tuesday, October 10, 2006

Patent Prosecution Highway Program

On October 1, 2006, a revised patent law regulation was enacted in Korea regarding accelerated examinations.

Based on the revision, corresponding patent applications to Korea originated in Japan could enjoy the procedure of accelerated examinations, provided that (i) search results written by Japan Patent Office, (ii) copies of the prior art cited in the results, and (iii) comparative explanations between claims and the prior art, are submitted to Korean Intellectual Property Office.

The similar procedural scheme has been already available between US Patent and Trademark Office and Japan Patent Office.

Wednesday, October 04, 2006

Action Plan of JPO Appeal Department

In March, 2005, the Appeal Department of Japan Patent Office issued a paper called “Action Plan for improving examination/appeal.” This Action Plan is summarized in JPO's Annual Report.

2) Measures for the Reform of Appeal/Trial System
The Appeal/Trial Examination Department addressed the urgent issues of responding to the expected increase in the number of demand for trials in accordance with the remarkable increase in the number of examinations being processed. By exploiting the following steps, the Appeal/Trial Examination Department intends to reduce the number of cases from the Examination Department, and to maintain timely and high quality trials.
b. Execution of Strict Trial Procedures
In order to reduce the number of cases of appeal and trial examinations, there is an urgent need to conduct management which, whenever possible, leads to confirmation of the establishment of rights or decisions of rejection at the examination phase. With regards to inventions eligible for patent, it is important to make them patentable with adequate objections and revisions at the phase of reconsideration by the examiner before appeal. To this end, applicants abide by the system to promote adequate objections and revisions at the examination phase, and a strict appeal and trial examination approach was put into place so that appeals and trials become a serious issue between the examiner who made the decision of rejection and the person demanding for trial objecting to this, in order to realize fair and productive appeal and trial examinations. The operation of such a system promotes the granting of patent at the examination phase to applicants for inventions that are eligible for patent, allowing at the same time for burden and cost reductions for both the applicants and the JPO.

In short, this passage makes it clear that, once the case enters the appeal stage, appeal boards would not easily accept allowable claims by amendment and would make decisions of refusal based on the claims as it stands, when they are considered to be rejected. In the past, when appeal boards would consider that allowable subject matters exist, a prevailing practice was that they would give appellants the chance to file amended claims and would grant patents, even though main claims should be refused.

This change of practice is apparently reflected in the recent trend in the figure [Rate of Decisions to Refuse Patent Applications in Appeals against Decision of Refusal] at page 21 of the JPO's Annual Report.