Center for Advanced Study & Research on Intellectual Property

 

Excerpt of Japanese Patent Law
(Law No. 121 of April 13, 1959)

2.--(1)"Invention" in this Law means the highly advanced creation of technical ideas by which a law of nature is utilized.

(2)"Patented invention" in this Law means an invention for which a patent has been granted.

(3)"Working" of an invention in this Law means the following acts:

(i)in the case of an invention of a product, acts of manufacturing, using, assigning, leasing, importing or offering for assignment or lease (including displaying for the purpose of assignment or lease -- hereinafter the same) of, the product;

(ii)in the case of an invention of a process, acts of using the process;

(iii)in the case of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing or offering for assignment or lease of, the product manufactured by the process, in addition to the acts mentioned in the preceding paragraph.

17bis.--(1)An applicant for a patent may, before the transmittal of the copy of an examiner's decision that a patent is to be granted, amend the specification or drawings attached to the request. However, after the receipt of the notification under Section 50, the amendment may be made only in the following cases:

(i)where the applicant has received a first notification (referred to in this Section as "the notification of reasons for refusal") under Section 50 [including its application under Section 159(2) (including its application under Section 174(2) and under Section 163(2)) (hereinafter referred to in this paragraph as "Section 50")] and amendment is made within the time limit designated in accordance with Section 50;

(ii)where the applicant has received a notification of refusal and amendment is made within the time limit designated in accordance with Section 50 with respect to the final notification of reasons for refusal;

(iii)where the applicant demands a trial under Section 121(1) and amendment is made within 30 days of such demand.

(2)Where the applicant of a foreign language file application under Section 36bis(2) amends the specification or drawings under Subsection (1) for the object of the correction of an incorrect translation, he shall submit a written correction of an incorrect translation stating the grounds thereof.

(3)An amendment of the specification or drawings under Subsection (1) shall, except in the case of submission of the written correction of an incorrect translation, remains within the scope of the features disclosed in the specification or drawings originally attached to the request [in the case of a foreign language file application under Section 36bis(2), the translation of the foreign language file referred to in said Subsection (2) is considered to be a specification and drawings by virtue of the provisions of said Section (4) (in the case where the applicant amended the specification or drawings by submitting of the written correction of an incorrect translation, said translation, the specification or drawings as amended)].

(4)Subject to the provisions of the preceding subsection, in the case of Subsection (1)(ii) and (iii) of this Section, the amendment of the claim or claims shall be limited to the following:

(i)the cancellation of the claim or claims referred to in Section 36(5);

(ii)the restriction of the claim or claims (only the restriction of all or some of the matters necessary to define the invention claimed in the claim or claims under Section 36(5) and the industrial applicability and the problem to be solved of the invention claimed in the amended claim or claims are the same as those of the invention claimed in the claim or claims prior to the amendment);

(iii)the correction of errors in the description;

(iv)the clarification of an ambiguous description (only the amendment with respect to the matters mentioned in the reasons for the refusal concerned in the notification of the reasons for the refusal).

(5)Section 126(4) shall apply mutatis mutandis to the case of the preceding subsection.

29.--(1)Any person who has made an invention which is industrially applicable may obtain a patent therefor, except in the case of the following inventions:

(i)inventions which were publicly known in Japan prior to the filing of the patent application;

(ii)inventions which were publicly worked in Japan prior to the filing of the patent application;

(iii)inventions which were described in a publication distributed in Japan or elsewhere prior to the filing of the patent application.

(2)Where an invention could easily have been made, prior to the filing of the patent application, by a person with ordinary skill in the art to which the invention pertains, on the basis of an invention or inventions referred to in any of the paragraphs of Subsection (1), a patent shall not be granted for such an invention notwithstanding Subsection (1).

29bis.--Where an invention claimed in a patent application is identical with an invention or device (excluding an invention or device made by the same person as the inventor of the invention claimed in the patent application) disclosed in the specification or drawings originally attached to the request of another application for a patent (in the case of a foreign language file application referred to in Section 36bis(2) of this Law, the foreign language file referred to in Section 36bis(1) of the said Law) or of an application for a utility model registration which was filed earlier than the patent application and for which the Patent Gazette which states the matter referred to in each paragraph of Section 66(3) of the said Law (hereinafter referred to as "the Gazette containing the Patent") was published under the said subsection or the laying open for public inspection (Kokai) was effected or the Utility Model Gazette which states the matter referred to in each paragraph of Section 14(3) of Utility Model Law (No. 123 of 1959) (hereinafter referred to as "the Gazette containing the Utility Model") was published under the said subsection after the filing of the patent application, a patent shall not be granted for the invention notwithstanding Section 29(1). However, this provision shall not apply where, at the time of filing of the patent application, the applicant of the patent application and the applicant of the other application for a patent or the application for a utility model registration are the same person.

30.--(1)In the case of an invention which has fallen under any of the paragraphs of Section 29(1) by reason of the fact that the person having the right to obtain a patent has conducted an experiment, has made a presentation in a printed publication, or has made a presentation in writing at a study meeting held by a scientific body designated by the Commissioner of the Patent Office, such invention shall be deemed not to have fallen under any of the paragraphs referred to, provided that such person has filed a patent application within six months from the date on which the invention first fell under those paragraphs.

(2)In the case of an invention which has fallen under any of the paragraphs of Section 29(1) against the will of the person having the right to obtain a patent, the preceding subsection shall also apply, provided that such person has filed a patent application within six months from the date on which the invention first fell under those paragraphs.

(3)In the case of an invention which has fallen under any of the paragraphs of Section 29(1) by reason of the fact that the person having the right to obtain a patent has exhibited the invention at an exhibition held by the Government or by any local public entity (hereinafter referred to as the "Government, etc.") or at one which is not held by the Government, etc. but is designated by the Commissioner of the Patent Office, or at an international exhibition held in the territory of a country party to the Paris Convention or of a Member of the World Trade Organization by its government, etc. or by a person authorized thereby, or at an international exhibition held in the territory of a country not party to the Paris Convention nor a Member of the World Trade Organization by its government, etc. or by a person authorized thereby where such country has been designated by the Commissioner of the Patent Office, Subsection (1) shall also apply, provided that the person having the right to obtain a patent has filed a patent application within six months from the date on which the invention first fell under those paragraphs.

(4)Any person who desires the application of Subsection (1) or the preceding subsection with respect to an invention claimed in a patent application shall submit a written statement to that effect to the Commissioner of the Patent Office simultaneously with the patent application. Within 30 days of the filing of the patent application, he shall also submit to the Commissioner of the Patent Office a document proving that the invention claimed in the patent application is an invention falling under Subsection (1) or the preceding subsection.

32.--The inventions liable to contravene public order, morality or public health shall not be patented, notwithstanding Section 29.

36.--(1)Any person desiring a patent shall submit a request to the Commissioner of the Patent Office stating the following:

(i)the name and the domicile or residence of the applicant for the patent;

(ii)the title of the invention;

(iii)the name and the domicile or residence of the inventor.

(2)The request shall be accompanied by the specification, any drawings necessary and the abstract.

(3)The specification under Subsection (2) shall state the following:

(i)the title of the invention;

(ii)a brief explanation of the drawings;

(iii)a detailed explanation of the invention;

(iv)patent claim(s).

(4)The detailed explanation of the invention under the preceding Subsection (iii) shall state the invention, as provided for in an ordinance of the Ministry of International Trade and Industry, in a manner sufficiently clear and complete for the invention to be carried out by a person having ordinary skill in the art to which the invention pertains.

(5)In the patent claim under Subsection (3)(iv), there shall be set forth, by statements separated on a claim by a claim basis, all matters which an applicant for a patent considers necessary in defining an invention for which a patent is sought. In such a case, it shall not preclude the statements of the patent claim(s) to be such that an invention claimed in one claim is the same as an invention claimed in another claim.

(6)The statement of the patent claim(s) under Subsection (3)(iv) shall comply with each of the following paragraphs:

(i)statements setting forth the invention(s) for which patent is sought and which is described in the detailed explanation of the invention;

(ii)statements setting forth the invention(s) for which a patent is sought and which is clear;

(iii)statements setting forth the claim(s) which is concise;

(iv)statements which are as provided for in an ordinance of the Ministry of International Trade and Industry.

(7)The abstract under Subsection (2) shall state the summary of the invention disclosed in the specification or drawings and other matters provided for in an ordinance of the Ministry of International Trade and Industry.

39.--(1)Where two or more patent applications relating to the same invention are filed on different dates, only the first applicant may obtain a patent for the invention.

(2)Where two or more patent applications relating to the same invention are filed on the same date, only one such applicant, agreed upon after mutual consultation among all the applicants, may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention.

(3)Where an invention claimed in a patent application is the same as a device claimed in a utility model application and the applications are filed on different dates, the patent applicant may obtain a patent only if his application was filed before the utility model application.

(4)Where an invention claimed in a patent application is the same as a device claimed in a utility model application and the applications are filed on the same date, only one applicant, agreed upon after mutual consultation between the applicants, may obtain the patent or the utility model registration. If no agreement is reached or no consultation is possible, the patent applicant shall not obtain a patent for the invention.

(5)Where a patent application or a utility model applications is withdrawn or dismissed, such application shall, for the purposes of Subsections (1) to (4), be deemed never to have been made.

(6)A patent application or a utility model application filed by a person who is neither the inventor nor the creator nor the successor in title to the right to obtain a patent or utility model registration shall, for the purposes of Subsections (1) to (4), be deemed not to be a patent application or a utility model application.

(7)The Commissioner of the Patent Office shall, in the case of Subsection (2) or (4), order the applicants to hold consultations for an agreement under Subsection (2) or (4) and to report the result thereof, within an adequate time limit.

(8)Where the report under the preceding subsection is not made within the time limit designated in accordance with that subsection, the Commissioner of the Patent Office may deem that no agreement under Subsection (2) or (4) has been reached.

49.--The examiner shall make a decision that a patent application is to be refused where it falls under any of the following paragraphs:

(i)the amendment to the specification or drawings attached to the request does not comply with the requirements under Section 17bis(3);

(ii)the invention claimed in the patent application is not patentable under Section 25, 29, 29bis, 32, 38 or 39(1) to (4);

(iii)the invention claimed in the patent application is not patentable in accordance with the provisions of a treaty;

(iv)the patent application does not comply with the requirements under Section 36(4) or (6), or Section 37;

(v)when the patent application concerned is a foreign language file application, the features disclosed in the specification or drawings attached to the request of the patent application do not remain within the scope of the features disclosed in the foreign language document;

(vi)the applicant for a patent who is not the inventor has not succeeded to the right to obtain a patent for the invention concerned.

68.--A patentee shall have an exclusive right to commercially work the patented invention. However, where the patent right is the subject of an exclusive license, this provision shall not apply to the extent that the exclusive licensee exclusively possesses the right to work the patented invention.

70.--(1)The technical scope of a patented invention shall be determined on the basis of the statements of the patent claim(s) in the specification attached to the request.

(2)In the case of the preceding subsection, the meaning of a term or terms of the patent claim(s) shall be interpreted in the light of the specification excluding the patent claim(s) and the drawings.

(3)In the case of Subsections (1) and (2), no statements of the abstract attached to the request shall be taken into account for such purpose.

83.--(1)Where a patented invention has not been sufficiently and continuously worked during a period of three years or more in Japan, a person who intends to work the patented invention may request the patentee or the exclusive licensee to hold consultations on the grant of a non-exclusive license thereon. However, this provision shall not apply unless four years have elapsed since the filing date of the application corresponding to the patented invention.

(2)If no agreement is reached or no consultation is possible under the preceding subsection, a person who intends to work the patented invention may request the Commissioner of the Patent Office for an arbitration decision.

92.--(1)Where a patented invention falls under any of the cases provided for in Section 72, the patentee or the exclusive licensee may request the other person referred to in that section to hold consultations on the grant of a non-exclusive license to work the patented invention or of a non-exclusive license on the utility model right or the design right.

(2)The other person referred to in Section 72 who has been requested to hold the consultations under the preceding subsection may request the patentee or the exclusive licensee having requested the consultations to hold consultations on the grant of a non-exclusive license within the scope of the patented invention which the patentee or exclusive licensee desires to work by obtaining the non-exclusive license on the patent right, the utility model right or the design right through the consultations requested by the patentee or the exclusive licensee.

(3)If no agreement is reached or no consultation is possible under Subsection (1), the patentee or the exclusive licensee may request the Commissioner of the Patent Office for an arbitration decision.

(4)If no agreement is reached or no consultation is possible under Subsection (2) and an arbitration under the preceding subsection is requested, the other person referred to in Section 72 may request the Commissioner of the Patent Office for an arbitration decision only within the time limit which the Commissioner of the Patent Office designates as the time limit for the other person to submit a written reply in accordance with Section 84 as applied under Subsection (7).

(5)If, in the case of Subsection (3) or the preceding subsection, the grant of a non-exclusive license would unduly injure the interests of the other person referred to in Section 72 or the patentee or exclusive licensee, the Commissioner of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted.

(6)In the case of Subsection (4) in addition to the case provided for in the preceding subsection, the Commissioner of the Patent Office shall not render an arbitration decision ordering a non-exclusive license to be granted if an arbitration decision ordering a non-exclusive license to be granted is not rendered with respect to the request for the arbitration decision under Subsection (3).

(7)Sections 84, 85(1) and 86 to 91bis shall apply mutatis mutandis to the arbitration under Subsection (3) or (4).

93.--(1)Where the working of a patented invention is particularly necessary in the public interest, a person who intends to work the invention may request the patentee or the exclusive licensee to hold consultations on the grant of a non-exclusive license.

(2)If no agreement is reached or no consultation is possible under the preceding subsection, a person who intends to work the patented invention may request the Minister for International Trade and Industry for an arbitration decision.

(3)Sections 84, 85(1) and 86 to 91bis shall apply mutatis mutandis to the arbitration under the preceding subsection.

100.--(1)A patentee or exclusive licensee may require a person who is infringing or is likely to infringe the patent right or exclusive license to discontinue or refrain from such infringement.

(2)A patentee or an exclusive licensee who is acting under the preceding subsection may demand the destruction of the articles by which the act of infringement was committed (including the articles manufactured by the act of infringement in the case of a patented invention of a process of manufacture), the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement.

101.--The following acts shall be deemed to be an infringement of a patent right or exclusive license:

(i)in the case of a patent for an invention of product, acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, articles to be used exclusively for the manufacture of the product;

(ii)in the case of a patent for an invention of a process, acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, articles to be used exclusively for the working of such invention.

102.--(1)Where a patentee or exclusive licensee claims a recovery of damages to a person who negligently or willfully infringes patent right or exclusive license, provided that said person has assigned products which constitute infringement to a third party, said patentee or exclusive licensee, the patentee may claim to recover damages equal to the amount of the profits per unit of goods that would have been sold but for the infringement multiplied by the number of said assigned goods (hereinafter, " the number of assignment") as long as the amount does not extend to the ability to exploit the patented invention of said patentee or exclusive licensee. However, where circumstances indicate that said patentee or exclusive licensee would have been unable to sell all or some of said assigned goods, courts should deduct the unsold number from the number of assignment.

(2)Where a patentee or exclusive licensee claims, from a person who has intentionally or negligently infringed the patent right or exclusive license, compensation for damage caused to him by the infringement, the profits gained by the infringer through the infringement shall be presumed to be the amount of damage suffered by the patentee or exclusive licensee.

(3)A patentee or exclusive licensee may claim, from a person who has intentionally or negligently infringed the patent right or exclusive license, an amount of money which he would be entitled to receive for the working of the patented invention, as the amount of damage suffered by him.

(4)The preceding subsection shall not preclude a claim to damages exceeding the amount referred to therein. In such a case, where there has been neither willfulness nor gross negligence on the part of the person who has infringed the patent right or the exclusive license, the court may take this into consideration when awarding damages.

Last updated 6/13/2013