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.