Japan Flashcards
What are the different types of patents and what are their terms?
Standard patent - 20 years
Utility model - 10 year term
Can you have both a patent and utility model for the same invention?
No.
What’s different about pre-filed, post-published applications in Japan?
They’re only novelty only prior art if filed by a different applicant.
Is there a grace period?
Yes - 1 year for abusive disclosures or disclosures by the applicant (provided not in a patent publication).
The applicant must give evidence on filing about which of the above circumstances applies and he must apply for the grace period in writing.
Are business methods, computer programs and methods of treatment patentable?
Business methods and computer programs: yes
Methods of treatment: no
Is there a national security first filing obligation?
No.
Are there excess claim fees?
Sort off - the number of claims determines the examination and maintenance fees.
When is the first renewal fee due?
30 days from grant. It covers the first three years.
When must a translation be filed if not originally in Japense?
Within 14 months of priority.
Summarise the examination process.
Examination must be requested within 3 years of filing with a fee. It can be requested by anyone, not just the applicant.
Examination reports have 3 month response deadlines. With a single fee this can be extended by one month. With a second fee this can be extended by a further month.
A rejection is appealable within 3 months.
Once allowed, pay the first renewal fee and then the application will grant.
Are MDNs allowed?
Yes, but an MDN cannot depend on another MDN.
Summarise the post-grant opposition system.
Anyone can oppose grant within 6 months on the grounds of patentability, added matter, and double patenting.
The fee depends on the number of claims being challenged. It’s cheaper than an invalidation trial.
This is an entirely written process - no hearings.
The patentee can appeal to the Japanese high court. The opponent cannot.
Summarise the invalidity trial system.
This can be filed any time after grant, and sometimes even after the patent has expired.
The fee depends on the number of claims being challenged. It’s more expensive than post-grant opposition.
The grounds are broader than post-grant opposition and cover patentability, enablement and lack of inventorship.
The case will first be heard at the JPO. Either party can appeal to the high court.
Losing party cannot re-litigate the same issue.
Litigation in Japan has a double track system. A separate court trial is needed for infringement. Infringement and validity cannot be contested in the same trial.
When must a priority declaration be made?
On filing. Certified copies of priority documents must be filed within 16 month of priority.
Which restoration of priority criterion is used?
Unintentional.
