News

Public Holidays – September 2016

Please note that Monday 19th September 2016 and Thursday 22nd September are public holidays in Japan. Our office will be closed on these days.

 

A list of all Japanese public holidays for the remaining year can be found on our contact page.

Continue Reading

Comments by Our Managing Partner, Felix Reinhard Einsel

Nikkei Shinbun on the Brexit and possible implications for the European Unitary Patent

 

Great Britain’s vote to leave the European Union and its possible implications for the European Unitary Patent system have also been a topic of interest in the Japanese media, as for example in the Japanese newspaper Nikkei Shinbun (July 4, 2016 issue), which included comments of our Managing Partner Felix Reinhard Einsel.

 

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

Submission of foreign language patent applications since April 1, 2016

Until March 31st, 2016 it was only possible to file a foreign language patent application in English. However, in accordance with revisions by the JPO, from April 1, 2016 it became possible to file a foreign language patent application with documents in other foreign languages as well and submit the Japanese translation thereof within one year and four months from the priority date.

  • The possible benefits of said new procedure are the following;
  • Applicants can decide on short notice whether to file an application in Japan
  • Applicants can file patent applications before the JPO with the original document filed in any other country
  • Applicants do not have to prepare English documents to be filed as the foreign language patent application
  • No surcharge for preparing the translation of the application documents shortly before the filing date
  • If a mistranslation is found later on, it is possible to correct the same based on the filed foreign language document

 

Accordingly, we started filing all patent applications from April 1, 2016 in the form of a foreign language patent application unless otherwise specified by our clients.

Continue Reading

Public Holidays – May 2016

Please note that the following days are public holidays in Japan, the so-called “Golden Week”. Our office will therefore be closed on:

  • Friday, April 29, 2016
  • Tuesday, May 3rd to Thursday, May 5th, 2016

 

Since the Patent Office is also closed on these days, all official terms being due during this period will expire on the next working day.

A list of all Japanese public holidays for the remaining year can be found on our contact page.

Continue Reading

Extensions of Patent Terms: Revised JPO Examination Guidelines

Art. 67 (2) Patent Act: extension for inventions underlying approval procedure

 

Following the decision of the Supreme Court of Japan (Decision of the Third Petty Bench of the Supreme Court, Nov. 17, 2015 (2014 (Gyo Hi) No. 356)), the Japanese Examination Guidelines for Extension of Patent Terms were revised. The JPO started examinations based on the revised Guidelines by the end of April 2016.

 

According to Article 67 (2), when there is a period during which a patented invention cannot be implemented, the term of the patent right may be extended by filing a request for a patent term extension for a period, however, not to exceed five years. A patented invention may be unable to be implemented if it is necessary to obtain approvals or any other dispositions* as designated by the Cabinet Order under Article 67 (2) of the Patent Act.

 

According to Article 67ter(1)(i) of the Patent Act, the examiner shall reject a request for a pa-tent term extension, if the disposition designated by Cabinet Order under Article 67 (2) is not deemed to have been necessary for the patented invention to be implemented.

 

In the case, where there has been a prior disposition and there is a request for extension based on a further disposition (the current disposition), under the past guidelines a reason for refusal would have been issued according to Article 67ter(1)(i) of the Patent Act, if the scope of the current disposition could have been implemented within the scope of the prior disposition. The scope of a disposition is defined by the features of the pharmaceutical product or agricultural chemical, which correspond to the features of the granted claims, as well as is defined by the use of the pharmaceutical product or agricultural chemical (even if the use in question is not part of the features of the granted scope of protection).

 

An example of a request for extensions of a pharmaceutical product that will be refused under the past guidelines is:

EN_example_dosage

Although the current disposition has different dosage/administration, since the active ingredient and the use (i.e., the features of the granted claims) of the current disposition is the same as that of the prior disposition, the request for extension based on the current disposition would be rejected.

 

Supreme Court Decision

In the Supreme Court’s November 15, 2015 decision, the Court looked at the comparison of prior and current dispositions and held that the comparison shall no longer be based strictly on the features of the granted claims, but will be based on the “examination matters related directly to substantial identity” of the pharmaceutical product or agricultural chemical in accordance with the types of the patented invention.

 

Guidelines

The revised Guidelines follow the Supreme Court’s decision, and explain that when the manufacture and sale of pharmaceutical products or the manufacture or import of agricultural chemicals of the prior disposition include that of the current disposition, then there will be a reason to reject the application for extension based on the current disposition. Whether or not the manufacture and sale of pharmaceutical products or the manufacture or import of agricultural chemicals of a prior disposition include that of the current disposition is determined by comparing the two dispositions with respect to the “examination matters related directly to substantial identity” of the pharmaceutical product or agricultural chemical.

 

Example of “the Examination Matters Related Directly to Substantial Identity” from the revised Guidelines

The following examples is a copy from the revised Guideline and includes the particular disposition as well as “the examination matters related directly to the substantial identity” in accordance with types of the patented invention (see the matters in red marked frame):

EN_cabinet_order

Therefore, in the aforementioned example where the dosage/administration is different in the prior and current dispositions (i.e., increase to 5 mg/use), under the revised Guidelines, this is considered different examination matters and will not likely lead to a reason to reject this request for a patent term extension. The revised Guidelines also allow such differences in the dispositions be clarified in the request document, for example, by stating the differences in dosage and administration.

* The following are dispositions to be designated by Cabinet Order:
(i) a registration related to agricultural chemicals based on the provisions of the Agricultural Chemicals Regulation Act; and
(ii) an approval and certification based on the provisions of the “Pharmaceutical products and Medical devices Act” concerning pharmaceutical products, pharmaceutical products for in vitro diagnosis, products for regeneration medicine and the like.

Continue Reading

Sonderhoff & Einsel News Update – March 2016

We would like to inform you about recent and upcoming revisions by the Japan Patent Office.

The first article of this Sonderhoff & Einsel News Update looks at the revision of the “Examination guidelines for Patents and Utility Models in Japan”. The second article outlines the upcoming revision of fees for patent and trademark applications, as well as the handling of extensions for office actions from April 1st, 2016.

Please click the links above to read the articles online in our Info Center or refer to the PDF below. As always, feel free to contact us if you have any questions with regards to the topics covered in this news update.

Download PDF

Continue Reading