June 2016

New articles in our Info Center

On June 11th, 2016 Japan’s accession to the International Patent Law Treaty will take effect. Various changes in the Japanese Patent Law related to Japan joining the treaty have recently come into force, of which we are providing an overview in this article.
Further, we are covering the revised Examination Guidelines which now allow for the protection and utilization of food inventions and the revision of the employees’ invention system in Japan.

Please follow the links above or refer to the PDF available for download below. As always, please feel free to contact us if you have any questions in particular regarding the topics covered in this news update.

Sonderhoff & Einsel News Update, June 2016 available as PDF for download.

Continue Reading

Use inventions of foods

Revised Examination Guidelines allow patenting of food/drink inventions

 

According to the Examination Guidelines in place before the revision, it used to be considered that the discovery of a new attribute of publicly-known foods provides no new application which is distinguishable from publicly-known foods. Therefore, an invention of foods specifying a use application in a claim is not acknowledged as a use invention. Thus, even if a new attribute of publicly-known foods is discovered, the food cannot be protected by a patent.

Meanwhile, due to recent increasing health consciousness and desire for health enhancement, the health food market has expanded and R&D relating to functionality of foods has been promoted. In the above context, the user’s needs for patent protection have increased. Additionally, there are countries where a use invention of foods is patentable.
Due to the above, the Examination Guidelines regarding a use invention of foods were inspected and revised so as to protect and utilize an invention of foods in related technical fields.

 

A. Details of revised Examination Guidelines regarding a use invention of foods

The novelty of a use invention of foods is determined first, and subsequently the requirements such as inventive step and description requirements are examined in a manner similar to other fields.

(1) When a claim of an invention of foods specifies a product by use application, it is recognized that the limitation of use application specifies the invention according to the claim.
Cases in which an invention of a product with an expression specifying the product by use application such as “for use in …” (the limitation of use application) in a claim should be interpreted as a use invention:
A use invention is defined as the invention based on

a) discovering an unknown attribute of a product and
b) finding out that the product is suitable for a novel use application because of such an attribute.

(2) When limitation of use application refers to animals or plants, since such limitation of use merely indicates the utility of the animals or plants, the animals or plants are interpreted as animals or plants per se without limitation of use application.

(3) As a test for verification of an effect of a use invention of foods, it is sufficient that, as in other technical fields, the person skilled in the art can understand from the description in the specification and common technical knowledge that the foods can be used in the application.

 

B. Example 1

Claim 1: A food composition for use in preventing a hangover containing an ingredient A as an active ingredient.

The cited invention: A food composition containing ingredient A.

Even if the above food compositions have no difference except the limitation of use application such as “for use in preventing a hangover”, the examiner acknowledges the claimed invention including the limitation of use application provided that both of the following conditions (a) and (b) are satisfied. Accordingly, the above inventions are recognized as different inventions = a novel invention.

a) “The use in preventing a hangover” is derived from discovery of an unknown attribute that promotes alcohol metabolism by an ingredient A.
b) The use application which is derived from the attribute is different from conventionally known applications of “food composition containing an ingredient A” and is novel.

 

C. Example 2

Claim 1: A food composition for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 2: Grapefruit juice for preventing periodontal disease comprising ingredient A as an active ingredient.
Claim 3: Grapefruit for preventing periodontal disease comprising ingredient A as an active ingredient.

Examples: The examples describe that ingredient A was isolated from grapefruits and that an antibacterial effect was confirmed.

Citation: The Citation describes that ingredient A was isolated from grapefruits as an ingredient for lowering LDL cholesterol in the blood and that LDL cholesterol was lowered by taking a supplement containing ingredient A or juice containing ingredient A produced by squeezing grapefruits.

The inventions according to Claims 1 and 2 differ from the cited invention in the presence of the limitation of use application such as “for preventing periodontal disease” and thus have novelty. If the citation does not suggest the feature wherein the ingredient A has an effect of preventing periodontal disease, inventive step is also acknowledged.
Meanwhile, in the invention according to Claim 3, the limitation of use application such as preventing periodontal disease merely indicates the utility of plants, i.e. grapefruits. Therefore, it is recognized that the invention according to Claim 3 is a grapefruit without limitation of use application. Since the citation describes a grapefruit containing ingredient A, the invention according to Claim 3 has no novelty.

Please contact us any time for more detailed information about patentability of food inventions.

Continue Reading

Japan’s accession to the Patent Law Treaty

Related revision of the Japanese Patent Law

Upon joining the Patent Law Treaty (PLT), Japanese Patent Law was partially revised in 2015 with the aim of integrating and streamlining formal procedures so as to improve user-friendliness and mitigate the applicants’ burden. This treaty will come into force for Japan on June 11, 2016.
Specifically, the partial revision of the Patent Law allows expansion of the opportunity to request an extension of the term for procedure and also eases the requirements for obtaining a filing date. The revised Patent Law came into force on April 1, 2016.

In accordance with the revised Patent Law, the Examination Guidelines as well as the Examination Handbook for Patent and Utility Model have been revised.
The most important amendments are outlined below:

(1) Clarification of the requirements for obtaining a filing date and supplement of procedures;
(2) Patent application filed by reference to an earlier patent application;
(3) Supplement of a missing part of a specification or drawings;
(4) Extension of time limits; and
(5) Handling of a translation of a foreign language application.

Please refer to the News Update dated March 2, 2016 for information on (4) “Extension of time limits”.

 

(1) Clarification of the requirements for obtaining a filing date and supplement of procedures (Art. 38bis of the Patent Law)

The filing date of a patent application shall be the date on which a patent request is submitted except for the following cases:

a) The indication that a patent is sought is not clear;
b) The name of the applicant is not stated, or the statement thereof is not clear enough to identify the applicant; or
c) A specification is not attached.

When coming under any of the above cases (a) to (c), the Japan Patent Office shall notify the applicant accordingly. The applicant is allowed to submit a correction in writing within a time limit prescribed in the regulations (2 months). When a correction in writing is submitted, the submission date shall be acknowledged to be the filing date. When receiving a notification of the above effect from the Japan Patent Office but not submitting a correction in writing, the application shall be dismissed.

 

(2) Patent application filed by reference to an earlier application

Without attaching a specification to a patent request, a filing date shall be obtained under certain conditions.

The matters that should be stated in a patent request are as follows:

  • A statement that the present application is a patent application filed by reference to the applicant’s earlier application (including an application filed in a foreign country) (hereinafter referred to as “Reference Application”) and
  • The application number of the earlier application, the filing date thereof and a country (organization) in which the earlier application was filed.

A specification, necessary drawings and a certified copy of the earlier application should be submitted within 4 months from the filing date. If the previous application is written in a foreign language, a Japanese translation should be submitted. In addition, a payment of JPY 14,000 is required in addition to the filing fee.
In principle, the filing date of the Reference Application shall be the date on which a patent request is submitted. However, if the scope of the description in the specification and drawings submitted after the filing of the application is not within the scope of the original disclosure of the specification, etc. attached to the earlier application, the filing date shall be the date on which the specification and drawings are submitted. Therefore, it should be noted that when adding an example, etc., the filing date shall become the later date on which the specification and drawings are submitted.
Also, please note that the above patent application shall not apply to foreign language applications, divisional applications and converted applications. Additionally, please note that even when the specification, etc. of the earlier application is written in a foreign language, making an amendment by filing a Correction of Mistranslation is not allowed.

 

(3) Supplement of a missing part of a specification or drawings

If a specification or drawings attached to a patent request is/are partially missing, the Japan Patent Office shall notify the applicant accordingly and the applicant shall be permitted to supplement the missing part.
A missing part can be submitted within 2 months from the date of notification (or from the date on which the Japan Patent Office received the application if the missing part is filed on the applicants initiative before receiving a notification). The submitted specification and drawings are acknowledged as documents attached to the patent request.

In principle, when missing parts are submitted, the submission date shall be acknowledged to be the filing date of the application. However, if the application claims a priority and the missing part is completely encompassed in the priority application (in principle, submission of a copy thereof is required), the filing date shall be the date on which a patent request of the application is submitted.

 

(4) Extension of time limits

Please refer to our News Upate dated March 2, 2016 for this topic.

 

(5) Handling of a translation of a foreign language application

The time limit for submitting a translation of the foreign language application before the revision, previously 14 months, has been extended by 2 months to be 16 months from the filing date (or priority date).
When a translation of the foreign language application is not submitted within the time limits, the Japan Patent Office shall notify the applicant accordingly and the applicant is allowed to submit a translation within 2 months from the notification.

Foreign language applications, previously only accepted in English, are now accepted in any foreign language.

 

Continue Reading

Revision of the Employees’ Invention System in Japan (as of April 1, 2016)

1. Outline of the Amendment (Article 35, Paragraphs 1 to 7)

When an invention is made by an employee, the right to obtain a patent belongs to the employer, if any provision in an agreement, work rules or any other contract stipulates in advance that the right to obtain a patent for an employee invention attributes to the employer. (In the absence of such provision, the right to obtain a patent belongs to the employee in consideration of the basic rule set forth in Article 29 of the Japanese Patent Law providing that the right to obtain a patent primaryly belongs to the inventor).

If the employer is attributed the right to obtain a patent based upon the aforementioned provision, the employee is entitled to receive a reasonable remuneration or other economic profits.

The Ministry of Economy, Trade and Industry (METI) has now established guidelines on the decision-making procedure for determining what is to be regarded as a reasonable monetary or other economic benefit.

 

2. Amended Article 35 of the Patent Act

Article 35 of the Japanese Patent Act will be amended as of April 1, 2016 as follows:

A new Article 35 Paragraph 3 is implemented: In a case of an employee’s invention, the right to obtain a patent shall belong to the employer from the time of its occurrence, as long as the contract, work rules or any other provision stipulates so in advance.

The existing Article 35 Paragraph 3 concerning the remuneration rights of an employee is shifted to Paragraph 4 with a modification: The right to a “reasonable remuneration” will be changed into a “reasonable monetary or other economical profit” (hereinafter “reasonable profit”).

The existing Article 35 Paragraph 4 is shifted to Paragraph 5 with a modification: When deciding on the content of the reasonable profit, the situation of the consultation to set forth the criteria between the employer and employees, the situation of the disclosure of the criteria set forth, and the situation of hearing of the employees’ opinion have to be taken into consideration, and the assignment of the reasonable profit shall not be such that it is recognized to be unreasonable.

A new Article 35 Paragraph 6 is added: The METI shall establish guidelines for the situations that need to be taken into consideration according to the previous paragraph, and announce such guidelines.

 

3. Some Details of the METI Guidelines

The METI has announced guidelines on the decision-making procedure for determining what is to be regarded as a reasonable monetary or other economic benefit. During the decision-making procedure, consultation, disclosure of criteria, and hearing of the opinion are required.

(1) Consultation
There is no limitation as to how to conduct the consultation. Consultation with a representative of the employees is possible. An agreement as the result of the consultation is not required.

(2) Disclosure
There is no limitation as to how to disclose the criteria. Notice boards, distribution of the documents via e-mails etc., uploading on intranets or websites may be considered appropriate measures. The degree of the disclosure shall be such that the content of the reasonable profit, conditions for granting the profit, or other items for deciding the content of the reasonable profit need to be concretely disclosed.

(3) Hearing of the opinion
There is no limitation as to how to conduct the hearing. The timing of the hearing can be prior to the decision of the content of the reasonable profit or after the tentative grant of the reasonable profit based on the criteria. Employers have to give a sincere response to opinions from employees. An agreement on the decision of the content of the reasonable profit is not required.

The METI guidelines do not mention the details/specifics of the reasonable amount of monetary profit etc., so that the focus will be on the decision-making procedure. If you need assistance in regard to such procedure, please let us know.

Continue Reading