Japanese patent law - AbsoluteAstronomy.com

Japanese patent law is based on the first-to-file

First to file and first to invent

First to file and first to invent 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 except for the United States, which will switch to a first-to-file system on March 16, 2013 after the enactment of the...

principle and is mainly given force by the Patent Act (特許法 Tokkyohō) of Japan

Japan

Japan is an island nation in East Asia. Located in the Pacific Ocean, it lies to the east of the Sea of Japan, China, North Korea, South Korea and Russia, stretching from the Sea of Okhotsk in the north to the East China Sea and Taiwan in the south...

. Article 2 defines an invention

Invention

An invention is a novel composition, device, or process. An invention may be derived from a pre-existing model or idea, or it could be independently conceived, in which case it may be a radical breakthrough. In addition, there is cultural invention, which is an innovative set of useful social...

as "the highly advanced creation of technical ideas by which a law of nature

Physical law

A physical law or scientific law is "a theoretical principle deduced from particular facts, applicable to a defined group or class of phenomena, and expressible by the statement that a particular phenomenon always occurs if certain conditions be present." Physical laws are typically conclusions...

is utilized". Other important Articles include Article 196 which states patent infringement

Patent infringement

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...

is a crime

Crime

Crime is the breach of rules or laws for which some governing authority can ultimately prescribe a conviction...

and Article 2, paragraph 3.

English translation

The definitive version of Japanese law

Japanese law

-Historical Developments:Pre-Modern History The early law of Japan was heavily influenced by Chinese law. Little is known about Japanese law prior to the seventh century, when the Ritsuryō was developed and codified. Before Chinese characters were transplanted and adopted by the Japanese, the...

is the text in the Japanese language

Japanese language

is a language spoken by over 130 million people in Japan and in Japanese emigrant communities. It is a member of the Japonic language family, which has a number of proposed relationships with other languages, none of which has gained wide acceptance among historical linguists .Japanese is an...

. An official English-language translation of the law does not exist, but the Japanese government have recently started discussing the possibility of providing one.

An English version of the Japanese Patent Act is published by the World Intellectual Property Organization

World Intellectual Property Organization

The World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....

. Also, a reference translation of the Patent Act is available from Japan Patent Office

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...

, which includes up to the revisions of Act No. 109 of 2006 (Effective September 30, 2007)). It does not reflect the revisions of Act No. 16 of 2008 (Effective June 1, 2008, September 30, 2008, and April 1, 2009)

This article is based on the translation available through WIPO.

The Institute of Intellectual Property of Japan has edited the English translation of Prof. Nobuhiro Nakayama
Industrial Property Law Volume1. Patent Law. 2nd Revised and Enlarged ed.（Law Lectures Series) Koubundou Publishers, 2000.4

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

Josef Kohler

Josef Kohler was a German jurist, author and poet.-Biography:He studied at Offenburg and Rastatt gymnasiums and Freiburg and Heidelberg universities. He became doctor of laws and was appointed judge at Mannheim . He was a professor at Würzburg and Berlin...

'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

Inventive step and non-obviousness

The inventive step and non-obviousness reflect a same 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....

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".

Patent prosecution

The patent prosecution

Patent prosecution

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...

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

First to file and first to invent

an application for a patent

Patent application

A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...

for an invention may obtain that patent, rather than a different person who is the first to invent

First to file and first to invent

the same invention.

A patent may be granted for an invention if:

the invention as claimed is industrially applicable
Industrial applicability
In patent law, industrial applicability or industrial application is a patentability requirement according to which a patent can only be granted for an invention which is susceptible of industrial application, i.e. for an invention which can be made or used in some kind of industry. In this...

(Article 29, paragraph 1),
the claims are novel
Novelty (patent)
Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....

(Article 29, paragraph 1),
the claims are inventive
Inventive step and non-obviousness
The inventive step and non-obviousness reflect a same 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....

(Article 29, paragraph 2),
the patent does not harm public order, morality
Morality
Morality is the differentiation among intentions, decisions, and actions between those that are good and bad . A moral code is a system of morality and a moral is any one practice or teaching within a moral code...

or public health
Public health
Public health is "the science and art of preventing disease, prolonging life and promoting health through the organized efforts and informed choices of society, organizations, public and private, communities and individuals" . It is concerned with threats to health based on population health...

(Article 32),
amendments to the specification, claim
Claim (patent)
Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

s or drawings remain within the scope of the features disclosed in the original version (Article 17bis),
the specification discloses the invention in a manner sufficiently clear and complete
Sufficiency of disclosure
Most patent law systems require that a patent application disclose a claimed invention in sufficient detail for the notional person skilled in the art to carry out that claimed invention. This requirement is often known as sufficiency of disclosure or enablement, depending on the...

for a person skilled in the art to carry it out (Article 36, paragraph 4),
the statement of the claims is clear (Article 36, paragraph 6),
the application meets the requirement for unity of invention
Unity of invention
In most patent laws, unity of invention is a formal administrative requirement that must be met by a patent application to become a granted patent. Basically, a patent application can relate only to one invention or a group of closely related inventions. The purpose of this requirement is...

(Article 37),
the applicant is the first to file an application for a patent for the invention (Articles 29bis and 39), and
the applicant has the right to obtain a patent for the invention (Article 25 and 38, and Article 49, paragraph 7).

(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

Trade fair

A trade fair is an exhibition organized so that companies in a specific industry can showcase and demonstrate their latest products, service, study activities of rivals and examine recent market trends and opportunities...

or the World's Fair

World's Fair

World's fair, World fair, Universal Exposition, and World Expo are various large public exhibitions held in different parts of the world. The first Expo was held in The Crystal Palace in Hyde Park, London, United Kingdom, in 1851, under the title "Great Exhibition of the Works of Industry of All...

) or for if the invention becomes known to public against the applicant's will. Such disclosures do not form part of the prior art

Prior art

Prior art , in most systems of patent law, constitutes 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...

. This is a much broader exemption than the one available under European patent law

European patent law

European patent law covers a wide range of legislations including national patent laws, the Strasbourg Convention of 1963, the European Patent Convention of 1973, and a number of European Union directives and regulations....

but is significantly narrower than that provided by the United States patent law

United States patent law

United States patent law was established "to promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries;" as provided by the United States Constitution. Congress implemented these...

Application

A person desiring a patent shall 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.

Publication of application

Applications

Patent application

are published without a search report

Search report

In patent law, a search report is a report established by a patent office, which mentions documents which may be taken into consideration in deciding whether the invention to which a patent application relates is patentable...

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, 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 will notify the applicant of the reasons for refusal before making the decision to refuse a patent (Article 50), pointing out 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.

Examination Guidelines

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. An English translation http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm is also available, though legal revisions in recent years are not reflected in the English version.

Trial against examiner's decision of refusal

Applicants dissatisfied at the decision of refusal may demand a trial within 30 days from they received a copy of the decision (Article 121). Amendments are allowed within 30 days from the date of demand for the trial (Article 17bis, paragraph 1).

If amendments are made, an examiner will re-examine the application (Article 162). Usually the examiner who made the decision of refusal is appointed for re-examination. The examiner will make a decision to grant a patent, or report 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).

Patent right

After payment of the annual fees

Maintenance fee (patent)

Maintenance fees or renewal fees are fees that are paid to maintain a granted patent in force. Some patent laws require the payment of maintenance fees for pending patent applications. Not all patent laws require the payment of maintenance fees and different laws provide different regulations...

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

Term of patent

The term of a patent is the maximum period during which it can be maintained into force. It is usually expressed in number of years either starting from the filing date of the patent application or from the date of grant of the patent. In most patent laws, renewal annuities or maintenance fees have...

is 20 years from the filing date. It may be extended for medicines

Medication

A pharmaceutical drug, also referred to as medicine, medication or medicament, can be loosely defined as any chemical substance intended for use in the medical diagnosis, cure, treatment, or prevention of disease.- Classification :...

(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)

make, use, assign, lease, import, or offer for assignment or lease a patented product,
use a patented process, or
use, assign, lease, import, or offer for assignment or lease the product made by a patented process.

The statements of patent claim

Claim (patent)

Patent claims are the part of a patent or patent application that defines the scope of protection granted by the patent. The claims define, in technical terms, the extent of the protection conferred by a patent, or the protection sought in a patent application...

s determine the technical scope of the patented invention (Article 70). However, the doctrine of equivalents

Doctrine of equivalents

The doctrine of equivalents is a legal rule in most of the world's patent systems that allows a court to hold a party liable for patent infringement even though the infringing device or process does not fall within the literal scope of a patent claim, but nevertheless is equivalent to the claimed...

may be employed.

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

Infringement

In case someone is infringing a patent, the patentee may

require them to stop infringing (Article 100, paragraph 1);
demand them to destroy articles or facilities related to the infringement (Article 100, paragraph 2);
request the court to order them to recover the patentee's business reputation damaged through the infringement (Article 106), for example, to post an apology on newspapers;
claim them to give the patentee the profit earned by infringing the patent (Article 703 of the Civil Code of Japan); and
claim them to compensate for the patentee's damage caused by the infringement (Article 706 of the Civil Code of Japan).

In case someone is likely to infringe a patent, the patentee may

require them to refrain from infringing a patent (Article 100, paragraph 1); and
demand them to destroy articles or facilities prepared for infringing the patent (Article 100, paragraph 2).

Trial for invalidation

Everyone 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).

Criminal penalty

Japanese patent law says patent infringement is a crime. A person who has infringed a patent right must be engaged in penal servitude for at most five years, or must pay a fine of at most five 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 150 million yen (Article 202).

According to statistics of the National Police Agency

National Police Agency (Japan)

The is an agency administered by the National Public Safety Commission of the Cabinet Office in the cabinet of Japan, and is the central coordinating agency of the Japanese police system....

of Japan, however, only four people were arrested for the infringement of patent in 2003.

Doctrine of equivalents

In 1998, the Supreme Court of Japan

Supreme Court of Japan

The Supreme Court of Japan , located in Chiyoda, Tokyo is the highest court in Japan. It has ultimate judicial authority to interpret the Japanese constitution and decide questions of national law...

showed in judgment the requirements for applying the doctrine of equivalents

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.

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.

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.

History

The history of Japanese patent law began with the opening of the country that began in the Meiji era. Fukuzawa Yukichi

Fukuzawa Yukichi

was a Japanese author, writer, teacher, translator, entrepreneur and political theorist who founded Keio University. His ideas about government and social institutions made a lasting impression on a rapidly changing Japan during the Meiji Era...

introduced the concept of the patent to Japan in his 1867 writings. The next year, the Meiji Restoration

Meiji Restoration

The , also known as the Meiji Ishin, Revolution, Reform or Renewal, was a chain of events that restored imperial rule to Japan in 1868...

occurred, and the modernization of Japan began.

In 1871—the 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

Ministry of International Trade and Industry

The Ministry of International Trade and Industry was one of the most powerful agencies of the Government of Japan. At the height of its influence, it effectively ran much of Japanese industrial policy, funding research and directing investment...

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. 2–4 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 proceeding

Opposition proceeding

An opposition proceeding is an administrative process available under the patent and trademark law of most jurisdictions which allows third parties to dispute the validity of a granted patent or trademark.-Patents:...

s, the term of patent

Term of patent

, and compliance with the Patent Cooperation Treaty

Patent Cooperation Treaty

The Patent Cooperation Treaty is an international patent law treaty, concluded in 1970. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states...

(PCT) in relation to criteria of novelty

Novelty (patent)

Novelty is a patentability requirement. An invention is not patentable if the claimed subject matter was disclosed before the date of filing, or before the date of priority if a priority is claimed, of the patent application....

External links

Institute of Intellectual Property (IIP) of Japan in English and including translated versions of selected courts decisions
Procedures for Obtaining a Patent Right by the JPO
Main changes of Japanese patent system and important decisions in chronological order from 1960, by Sekizo Hayashi
Patent Abstracts of Japan (PAJ)
Textbooks by the Asia-Pacific Industrial Property Center, Japan Institute of Invention and Innovation
Patent information from Japan on the European Patent Office
European Patent Organisation
The European Patent Organisation is a public international organisation created in 1977 by its contracting states to grant patents in Europe under the European Patent Convention of 1973...

web site
English out-dated version of the Japanese Patent Act, published by the World Intellectual Property Organization.
English version (unofficial)translation of the Japanese Patent Act, (up to the revisions of Act No. 109 of 2006 (Effective September 30, 2007)) translated in compliance with the Standard Bilingual Dictionary (March 2007 edition).

Historical documents

The following documents are archived in the Digital Library from the Meiji Era of the National Diet Library of Japan.

Fukuzawa Yukichi

Fukuzawa Yukichi

first introduced the idea of patent to Japan in his writings.

Fukuzawa Yukichi. Seiyō jijō [Western Circumstances], volume gaihen-3. Tokyo: Okadaya Kishichi, 1872? http://kindai.ndl.go.jp/cgi-bin/img/BIImgFrame.cgi?JP_NUM=56004551&VOL_NUM=00010&KOMA=31&ITYPE=0

Takahashi Korekiyo

Viscount was a Japanese politician and the 20th Prime Minister of Japan from 13 November 1921 to 12 June 1922. He was known as an expert on finance during his political career.-Early life :...

drafted the Patent Monopoly Act. He wrote the first book that covers Japanese patent system.

Ministry of Agriculture and Commerce. Senbai tokkyo gan'nin kokoroe [Monopoly Patent Applicant's Handbook]. Tokyo: Ministry of Agriculture and Commerce, 1885. http://kindai.ndl.go.jp/cgi-bin/img/BIImgFrame.cgi?JP_NUM=40029667&VOL_NUM=00000&KOMA=1&ITYPE=0

Patent specifications of seven patents granted on 1885-08-14 are archived in the Patent & Utility Model Gazette DB of the National Center for Industrial Property Information and Training of Japan. Let "Kind code" = C and "Number" = 1, and click "Search" to browse the specification of Japanese Patent No. 1, for example.

The following document is archived in the Max Planck Institute for European Law History.

German jurist Josef Kohler

Josef Kohler

defined invention in his book. This definition influenced the definition given by the Patent Act of 1959 of Japan.

Josef Kohler. Lehrbuch des Patentrechts. Mannheim: Bensheimer, 1908. http://dlib-pr.mpier.mpg.de/m/kleioc/0010/exec/bigpage/%22160692_00000023%22

The source of this article is wikipedia, the free encyclopedia. The text of this article is licensed under the GFDL.

English translation

Definition of invention

Patent prosecution

Application

Publication of application

Examination

Examination Guidelines

Trial against examiner's decision of refusal

Patent right

Infringement

Trial for invalidation

Criminal penalty

Doctrine of equivalents

Exercise of patent that would be invalid

History

See also

External links

Historical documents