Patent Japan

Thursday, November 16, 2006

New Guidelines of Office Actions

On November 16, 2006, Japan Patent Office released new guidelines on office actions.

Examiners are now required to indicate in the office actions the claims that should be rejected and allowable. But, it is alleged by users, in some cases, that this distinction is not apparently comprehensible in their actions.

Accordingly, examiners will be encouraged to use a uniform format to clearly indicate allowable claims, namely, "Claims _____ appears allowable at this time. Another office action would be issued, when new grounds of rejection should be found."

Monday, November 13, 2006

Trilateral Meeting

From November 13 to 17, 2006, Trilateral Meeting of Patent Offices (EPO, USPTO, JPO) is being held in Tokyo. It is reported that three Offices are exploring ways to establish "mutual recognition" or "world patent."

Of course, every practitioner knows that to realize so-called world patent is easier said than done and still a long way. The fact is that a working group will be established on this meeting to study the differences of practices (e.g. inventive step/nonobviousness) among these offices using hypothetical cases.
Information exchange as to search/examination results has been already available to these examiners.

Wednesday, November 08, 2006

Dossier Access System

On November 8, 2006, the results of the internal questionnaire to Japan Patent Office's patent examiners about dossier access system was circulated within the Office. The dossier access system which shows examination information in US Patent and Trademark Office and European Patent Office is now available on the Internet.

65% and 28% of JPO's examiners responded that they refer to the EPO's examination results of corresponding applications "in every case" and "most of the time," respectively. 24% said that refer to USPTO's results each of "in every case" and "most of the time."

Most of them take into account search reports (EPO) and referenced documents (USPTO). 60% and 35% responded that they read communications (EPO) and office actions (USPTO), respectively.

Monday, November 06, 2006

Report on Patent Attorney System

On November 3, 2006, the Patent Attorney System Subcommittee, a subcommittee of the Intellectual Property Committee of the Industrial Structure Council, released a draft report, and asked for public comments by December 2 thereon.

The points listed in the report are;
1. Training programs for patent attorneys;
2. Qualifying examination;
3. Scope of services stipulated in the patent attorneys law;
3.1 Foreign application related services;
3.2 Expansions of designated unfair competition related services;
3.3 Power of independent representation in infringement cases;
3.4 Power of representation in border measures;
4. Disciplinary punishment;
5. Roles of paralegal in patent law firms;
6. Disclosures of patent attorneys' information;
7. Structure of patent law firms;
8. Miscellaneous points;
8.1 Compulsory enrollment in the Japan Patent Attorneys Association;
8.2 Spin-off of intellectual property departments;
8.3 Conflict of interest.