Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Winter 1995, Volume 2, Issue 1

JAPAN

Parliament passed a bill to revise Japanese patent law to conform to the multilateral GATT-TRIPS agreement and the bilateral JPO-USPTO agreement. In addition to the JPO's proposals for GATT-TRIPS implementation, which were discussed in the prior issue of the CASRIP Newsletter, the bill included (1) a provision on patent claim interpretation, which affirms that interpretation should make reference to the patent's specification and drawings but does not refer to a doctrine of equivalents, and (2) a provision shifting the opposition procedure from "pre-grant" to "post-grant."

The provisions of the bill implementing GATT and on claim interpretation become effective July 1, 1995. The provisions on opposition become effective on January 1, 199

Patent Claim Interpretation

The current Japanese provision on claim interpretation requires simply that a patented invention's technological scope be determined on the basis of the patent claim language. Japanese courts established the practice of interpreting the scope by referring to the specification and drawings. United States and European patent owners have criticized the practice extensively, asserting that the courts unreasonably limit patents' scope to the specification description, namely, the embodiments expressly set forth in the specification. The new patent law affirms the legality of the general practice of referring to the specification and drawings to clarify the significance of claim reference.

The amendment parallels Article 21(1) of the World Intellectual Property Organization (WIPO) draft "Patent Law Treaty", which evolved as a product of a series of meetings on patent harmonization but which has not yet been adopted in a diplomatic conference because of the reluctance of the United States to alter its first-to-invent priority system to conform to the draft treaty's first-to-file principle.

In the draft treaty, Article 21(1) is followed by Article 21(2) and (3), which provide that courts should not limit a patent's protection scope to the literal meaning of claim language and should guarantee fair protection for patent owners under the doctrine of equivalents. The new amendment in Japan does not include the Article 21(2) and (3) provisions. The Japanese legislature was aware of the unsettled state of the law on the doctrine of equivalents in the United States and Europe and decided it would not be appropriate to introduce statutory language to affirm a practice of expanding the scope of protection beyond claim language when the practice may be significantly changed in Japan's major trading partners.

The basic principle that patent claim interpretation is determined by the claim in the light of the description and drawing should be interpreted and applied so as to balance a fair scope of protection with a reasonable degree of legal certainty. Affirming the old practice, which emphasized legal certainty, without mentioning the need for fair protection scope may result in an acceleration of what many criticize as an imbalance in Japanese patent claim interpretation. The reason for not introducing statutory language on the doctrine of equivalents in the revision is understandable, but the revision may increase United States and European patent owners' concerns over Japanese patent scope.

Post-Grant Opposition

United States and European patent owners have criticized Japanese Patent Office practice because of delays in granting patents. One reason for delay is that the JPO publishes applications for opposition before granting a patent and allows third parties to file oppositions. Commercially important applications tend to attract many oppositions from competitors. The procedures for responding and examining oppositions consume considerable time. The European Patent Office (EPO) also has an opposition procedure, but it occurs after grant.

Current Japanese law provides a de facto exclusive right (kari hogo no kenri) for applications after publication for opposition but before grant. The right closely resembles a patent right, but United States and European patent owners have been reluctant to enforce such rights before grant because they might be liable for damages caused by the enforcement if the JPO subsequently rejects the application or modifies it to exclude the accused infringer's product.

Under the new law, the JPO will publish applications after grant. The procedure will closely resemble EPO opposition. It meets the requirements of the WIPO draft Patent Law Treaty. Any person can file an opposition within six months after a patent issues. Reasons for opposition are limited to lack of novelty or inventive step and insufficient disclosure. An ownership claim, that is an assertion that the application was filed by a non-inventor, cannot be asserted in an opposition.

If two or more oppositions are filed, the opponents become parties to a single proceeding, and the JPO will dispose of all oppositions at the same time. The patentee can amend claims, specifications, and drawings during the period for responding to oppositions.

During the opposition period, a person can also file an invalidation trial proceeding.

Revision of Examination Guidelines: The Identical Invention Standard

In December, the JPO published a new examination guideline standard for identity of inventions. The standard is commonly used to decide novelty, first-to-file priority, and permissible scope of amendments and divisional applications. The adoption in 1990 of a multiple claim system, which resembles that in the United States and Europe, changed the definition of an invention and claim in the Japanese patent system. An English examination is available from the Japan Patent Office (011-81-3-3581-1101).

Toshiko Takenaka

Last updated 4/27/2012