Japanese patent law

A person desiring to obtain a patent has to 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.[9]

Patent 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).

Request for examination and payment of examination fee are needed for an application to be examined (Article 48bis). The applicant, or a third party,[10] 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) [11] if they stand examination fee (Article 195, paragraph 2).

A qualified examiner examines the application (Article 47). The examiner notifies the applicant of the reasons for refusal before making the decision to refuse a patent (Article 50), pointing out that 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.

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" in English."[12]

Applicants dissatisfied at the decision of refusal may demand a trial within 3 months from receiving a copy of the decision (Article 121). Amendments are allowed when they demand for the trial (Article 17bis, paragraph 1).

If amendments are made, an examiner re-examines the application (Article 162). Usually the examiner who made the decision of refusal is appointed for re-examination. The examiner then issues a decision to grant a patent, or reports 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).

Sharing the same rule as other jurisdictions, Japanese patent law does not grant exclusionary rights to existing technologies. Article 29(1) of Patent Act stipulates this point; an inventor may not obtain a patent for inventions that were known to the public ("publicly known") (Item (i)), inventions that were publicly worked ("publicly used") (Item (ii)) or inventions that were described in a distributed publication or made publicly available through an electric telecommunication line (Item (iii)), in Japan or a foreign country prior to the filing of the patent application.[5]

Where at the time of the application a person ordinarily skilled in the field of art to which the invention belongs (a “person skilled in the art”) would have been able to easily make the invention based on a technology falling under any of the items under Article 29(1) of the Patent Act (that is, an invention involving prior art or that is publicly known), the invention cannot be patented (Patent Act Article 29(2)). For this decision to be made, in the abstract, an accurate assessment is firstly to be made of the standard of art in the field of art to which the invention belongs as at the time of the application, and the points where the application invention varies from the prior art are to be made clear. Then, while making allowance for the purpose and effect of the invention, a decision is to be made depending on whether or not it is possible to logically support a person skilled in the art having been easily able to achieve the application invention by altering the prior art.[5]

In order to be granted a patent, it must first be industrially applicable: proviso to Patent Act Article 29(1). In particular, with respect to inventions such as those concerning genes, chemical substances or organisms, a concrete applicable use must be specified.

“Industry” is a broad concept that includes manufacturing industries, agricultural, fishing and forestry industries, mining industries, commercial industries, and service industries. Medical industries are excluded from “industries”, however, and grants of patents for inventions of acts of medical treatment are not recognized, on the ground that they are not industrially applicable. This exclusion stems from the ethical consideration that diagnoses and treatments available to medical practitioners in their treatment of patients must not be limited in any way by the presence of any kind of patent rights, and it is a legal construction adopted due to the lack of any statutory provision expressly denying the validity of patent rights vis-à-vis acts of medical treatment. However, patent rights can be obtained over aspects of medical treatment including pharmaceuticals and medical devices, and the methods of their manufacture (note that Article 69(3) of the Patent Act however stipulates certain limitations on the effect of patent rights obtained for pharmaceuticals).[5]

The patentee may exercise a right to demand an injunction against the person who infringes or is likely to infringe its rights: Article 100(1) of the Patent Act. A “person who infringes or is likely to infringe the patent rights” in that paragraph means a person who works (Article 2(3)) a patented invention without the patentee's permission, or a person who commits an act of indirect infringement.

In making a demand for an injunction under Paragraph (1) of Article 100, the patentee may also demand measures necessary for the prevention of an act of infringement, including the disposal of products constituting the act of infringement and the removal of facilities used for the act of infringement: Article 100(2).[5]

Since a patent right is also a kind of property right, an act of infringement of a patent right constitutes a tort, and a patentee who sustains damages as a result of an act of infringement may demand damages from the infringer in tort (Article 709 of the Civil Code). Unlike an ordinary tortious act however, in the case of the infringement of a patent right, it is often difficult to prove the amount of the loss, as well as intent or negligence on the part of the infringer. For that reason, the Patent Act contains a special provision for calculating the amount of loss (Article 102), a provision on the presumption of negligence (Article 103), and a provision permitting the determination of a reasonable amount of loss (Article 105-3).[5]

In 1998, the Supreme Court of Japan showed in judgment the requirements for applying the 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.[13]

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.[14]

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.[14]

Japanese patent law provides that patent infringement is a crime. A person who has infringed a patent right must be engaged in penal servitude for at most ten years, and/or must pay a fine of at most ten 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 300 million yen (Article 201).

According to statistics of the National Police Agency of Japan, however, only four people were arrested for the infringement of patent in 2003.