Japanese patent law

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Japanese patent law is based on the first-to-file principle and is mainly given force by the Patent Act (特許法 Tokkyohō) of Japan which consists of 204 articles. Article 2 defines an invention as "the highly advanced creation of technical ideas by which a law of nature is utilized". Other important Articles include Article 196 which states patent infringement is a crime and Article 2, paragraph 3, which, from 2002 states that a computer program is a product and therefore that patents can be granted for computer programs (in contrast to many other patent systems).

Contents

[edit] English translation

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 Japanese government have recently started discussing the possibility of providing one [1].

An English version of the Japanese Patent Act is published by the World Intellectual Property Organization [2]. Also, a reference translation of the Patent Act was once prepared Japanese Patent Office and archived in the Internet Archive [3], but it is no longer up-to-date.

This article is based on that reference translation.

[edit] 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'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".

[edit] Patent prosecution

The patent prosecution 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 an application for a patent for an invention may obtain that patent, rather than a different person who is the first to invent the same invention.

A patent may be granted for an invention if:

(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 or the World's Fair) or for if the invention becomes known to public against the applicant's will. Such disclosures do not form part of the prior art. This is in line with the European patent law but is significantly narrower than that provided by the United States patent law.

[edit] 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 submit Japanese translation within two months from the filing date. However, the applicant may not amend the foreign language file (Article 17, paragraph 2).

[edit] Publication of application

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).

[edit] Examination

Request for examination and payment of examination fee are needed for an application to be examined (Article 48bis). Everyone can request examination within three years from the filing date (Article 48ter), 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.

[edit] 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 [4] is also available, though legal revisions in recent years are not reflected in the English version.

[edit] 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).

[edit] Patent right

After payment of the annual fees 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 is 20 years from the filing date. It may be extended for medicines (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 claims determine the technical scope of the patented invention (Article 70). However, the doctrine of equivalents may be employed.

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

[edit] 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).

[edit] 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).

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

[edit] Judgments of the Supreme Court

[edit] Doctrine of equivalents

In 1998, the Supreme Court of Japan showed in judgment the requirements for applying the doctrine of equivalents. The judgment says [5]

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.

[edit] Exercise of patent that would be invalid

In 2000, the Supreme Court of Japan said in judgment [6]

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.

[edit] History

The history of Japanese patent law began with the opening of the Meiji era. Fukuzawa Yukichi introduced the concept of patent to Japan in his writings in 1867. In the next year, the Meiji Restoration occurred, and the modernization of Japan started.

In 1871—the fourth year of the Meiji era, an experimental patent system was implemented. It was abandoned in the next 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 of Japan declared April 18 as the "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 frequently changed, 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 Act" (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.

[edit] See also

[edit] External links

[edit] Historical documents

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

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? [7]

Takahashi Korekiyo 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. [8]

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 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. [9]
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