The following is a part of a translation of an article that appeared in
January 4, 1994 edition of the Japanese publication "Nikkan Kogyo Shimbun".
It deals with changes in Japanese patent law that should help speedup the
processing of Japanese patent applications.
In what follows, what they refer to as Utility Models is what is referred
to in the United States as Design Patents. However the translation is worded
somewhat ambiguously with regards to patents and utility models. Probably
something Sir Humphrey wrote :-)
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As of January 4, 1994, the Patent Agency will accept applications for
patents and utility models (Jitsuyo Shin'an and denoted as UM hereafter) in
accordance with the new law. The new law will eliminate the examination of
UM applications. Under the new law, it will be the responsibility of
applicants to provide the validity of their applications by preparing a
comprehensive search document.
The examination period required for patents and UMs has traditionally
been, on the average, three years, which is too long to keep pace with the
rapidly changing technologies and products. There have been cases in which
patents were awarded only after the market life of the new products had
already expired.
This is the age of the world market in which product shipped out of
the factory today will be displayed in storefronts in countries overseas
tomorrow. If patent examinations in one country are slower than that of
the rest of the world, this will become a trade barrier preventing free
trade. This was the point made by the US delegation in the US-Japan
Structural Impediment Initiative talks of 1990. The World Intellectual
Propery Organization (WIPO) has also been trying to establish regulations
in its Patent Harmonization Treaty that could require member countries to
shorten the patent examination period. In accordance with the proposed
WIPO regulations, the member countries are required to initiate the patent
examination within three years after the submission of the application, and
to complete its examination within the following two years. At the time
of the application disclosure, the proposed WIPO also mentions a possible
ruling that the applicant prepares a search report on the existing technology
via-a-vis the validity of the application.
As long as Japan maintains its current examination practice, it cannot
join the Patent Harmonization Treaty of the WIPO. Especially difficult for
the Japanese is the preparation of the search report, which is equivalent
to doubling the examination burden. "It is as if one more Patent Office
will be created", explained a Patent Agency official during an industry
briefing meeting. The major reason for the introduction of a new patent law
is to shorten the examination process so that the proposed WIPO ruling can
be avoided.
The total number of UM applications is 95,000 per year (1992 data), and
yet it constitutes only one quarter of the total Japanese patent applications.
If these UM applications are excluded from the examination requirement, the
burden at the Patent Agency would be somewhat reduced. In addition, there
will be no need to publish these applications, which will help to reduce the
necessary paper work.
The New Patent Law is still applicable in providing formal inspection
such as the adequacy of the format, the structure of presentation, and the
compliance with issues pertaining to general public order and morals. Yet
the technical examination as to the uniqueness and the newness of the
application will not be conducted, so that the examination can be completed
within six months after the application.
Although no examination is given under the new law, once it is registered,
the same type of right protection will be given to those UMs as under the old
law. Yet there is no question that such a right protection obtained under
the new law is somewhat more unstable to right holders, since they will be
uncertain as to when the newly acquired right becomes invalid. On the other
hand, the third party (which is interested in a particular UM) will also feel
uneasy since unstable patent rights have been claimed by the right holder for
the product, the development of which will be affected by these claims.
In order to prevent potential patent disputes resulting from the
uncertainty associated with the new law pertaining to UMs, the Patent Agency
will issue a document entitled "Technology Evaluation", which is a summary
of the technical data for the existing technology. This document will
provide essentially the same criteria used in the examination with respect
to newness, uniqueness, and the order of existing technology. The document
will be available to anyone who requests it. When a patent dispute occurs,
the litigant is required to submit the Technology Evaluation Document to
his opponent. On the other hand, the third party can request the claim
invalidation hearing (muko simban). Once the claim invalidation hearing is
requested, the patent litigation activities in the court will be interrupted
until the hearing decision becomes clear. With these provisions, it is hoped
that misuse of this new patent law can be limited.
The abolishment of the UM examination is considered equivalent to the
establishment of the "civilian based patent law", requiring thorough search
activities prior to the application by the applicant. The old attitude
expressed as "since it is not clear whether the idea is patentable or not,
let's submit the application anyway" will no longer be valid. Since the
payment of the patent registration fee must be accompanied with the
application (it will be returned only in special cases), unsubstantiated
applications will not only be wasting the registration fee, but can also be
dangerous in case of future disputes.
Some small to medium size companies may not have the capacity to conduct
thorough search activities. These companies may be able to use the
pre-application support services provided by the Japan Invention Society.
There are also private patent search companies expanding their search service
activities to meet the increasing demand.
Since the new patent law will substantially decrease the effectiveness
period of UM protection from the current fifteen years after the application,
or ten years after the publication of the application whichever the shortest,
to six years, UMs will be used to protect products with short market life
such as toys and daily home necessities. On the other hand, since home
electronics, appliances and audiovisual equipment also go through model
changes approximately every five years, these high tech products may also
be able to take advantage of the new law. Some patent specialists claims
that the new law may also benefit computer programs as well.
Since the Utility Models are used mainly to protect the innovative ideas
for structures and assemblies of the products, it usually covers ideas related
to hardware. As long as these conditions are met, it is advantageous to seek
early protection under new law.
Under the revised patent law, the revisions of once registered patent
applications are severely curtailed. These revisions include the corrections
of existing applications by providing further detailed technical descriptions
and/or figures. In accordance with the new law, the revisions for new
applications will not be approved. The purpose of this new restriction is
to free examiners from requiring additional search on existing technical data.
This provision is also fair to applicants who have submitted revision-free
applications from the beginning.
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Greg Aharonian
Internet Patent News Service
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