Japanese Patent System
Objectives pursued when obtaining a patent
Why obtain a patent ? What are the main objectives pursued when obtaining a patent ?
The first article of the Patent Act of Japan states that “the purpose of this Act is, through promoting the protection and the utilization of inventions, to encourage inventions and thereby to contribute to the development of industry”. Underlying to this statement is the fact that several problems would occur if no such system to protect inventions existed.
- Indeed, while possession or ownership is usually visible for tangible property, such as real estate, this is not the case for inventions, which belong to the domain of ideas.
- If no system of protection of inventions existed, a novel invention, created at the end of a long process of research, could be easily plagiarized by a third party.
The research and development process required to create a new invention costs time and money ; accordingly, if it was possible to use an invention without the authorization of the entity who created it, nobody would ever try to create new inventions, and industrial development would be hindered. For this reason, the Japan Patent Act provides for the grant of a patent right to the person who has created a novel invention, in order to protect the invention. However, granting an unlimited protection to an invention would deprive third parties from the possibility to use it. Accordingly, taking into account both the necessity to protect inventions and the necessity to maintain equity of use, the Japan Patent Act stipulates that patent rights are to be granted for a limited period to the entity who created a new invention and disclosed it, thus encouraging technical progress and industrial development by providing other parties with the possibility to use the disclosed invention.
It can therefore be said that the ultimate objective of the Japan Patent Act is, by controlling the protection and use of inventions, to contribute to progress and to industrial development.
From the viewpoint of inventors and companies, patent rights are therefore a crucial tool to ensure profits, due to the fact that they provide an exclusive right over protected inventions. In concrete terms, the first company to create an invention must compensate for the financial investments incurred during the R&D process and the commercialization process. If it is unable to exclude from the market competitors which did not incur the same considerable development expenses, it might be difficult for the company to fully compensate its initial investment. By granting an exclusive right to implement the patented invention, and thus by making it possible to exclude competitors from the market, patent rights therefore play a crucial role
Accordingly, the main objectives pursued when obtaining a patent are to recover the invested capital and to ensure profits.
Outlook of the patent right
The persons able to acquire patent rights for a given invention are the actual inventor and its successor(s). “Actual inventor” refers to the person responsible for the actual manufacturing process of the invention ; assistants or investors are not considered as inventors. “Successor” refers to the entity which took over from the inventor the right to obtain a patent.
Non-Japanese must meet at least one of the following requirements to be entitled to the rights related to patent:
- 1) To have a domicile or residence (or a place of business in the case of a legal entity) in Japan
- 2) To be a national of a country which grants Japanese nationals equal national treatment or of a country which follows the principle of reciprocity
- 3) Requirements as provided for by other conventions.
The concept of invention according to Japanese patent law (Japan Patent Act Article 2 section 1)
An invention according to Japanese patent law differs from the standard understanding generally associated to the word invention.
The Japan Patent Act defines an invention as “an highly advanced creation of technical ideas utilizing the laws of nature”.
1) The utilization of the laws of nature being a requisite, laws of nature themselves (such as gravity law), purely mental activities (such as mnemonics), laws based on pure scholarship (such as mathematic laws) and human conventions (such as trade methods) are not inventions under Japanese patent law.
2) An invention must be a technical idea; accordingly, it must be a concrete way of achieving a determined result, must be reproducible and must be likely to be implemented. A method to throw a forkball or music playing techniques are therefore not inventions under Japanese patent law.
3) An invention being an act of creation, the mere discovery of pre-existing natural phenomena is not an invention under Japanese patent law.
4) The reference to an invention being “highly advanced” is used to distinguish patent inventions from utility model inventions.
Requirements for patentability
In order to obtain a patent, the invention must be worthy of receiving a patent before Japanese patent law. Further, documents as determined by the Japan Patent Act must be submitted to the Japan Patent Office (JPO) for examination. Requirements for patentability are provided for by the Japan Patent Act. A substantive examination to assess whether or not the requirements are met must be conducted.
1) Industrial applicability (Article 29-1 of the Japan Patent Act)
The invention must have industrial implementability. “Industrial” is taken here in a broad acceptation and includes domains of economic activity not related to the manufacturing of goods, such as services or transport.
2) Novelty (Article 29-1 of the Japan Patent Act)
No matter how wonderful an invention might appear, an objective lack of novelty will prevent it from meeting the patentability requirements.
Indeed, since the grant of a patent right implies the disclosure of a novel invention in exchange for protection, granting an exclusive right regarding an already known technology would go against the purpose of the patent system.
3) Inventive step (Article 29-2 of the Japan Patent Act)
Even if an invention has novelty, it isn’t deemed to meet the inventive step requirement in the case that it could have easily been made by a person having common knowledge in the technical field to which the invention pertains based on the existing prior art.
For example, inventive step is not recognized in the case of a ship comprising a publicly-known screw propeller from a screw propeller ship and a publicly-known aerial propeller from a aerial propeller ship, since it could have been achieved easily by a person having common knowledge in this technical field.
4) Earliest application (first-to-file principle) (Article 39 of the Japan Patent Act)
In the case that a third party has filed an earlier application, the application filed by the third party, provided it meets all requirements for patentability, will be registered, even if the applicant of the second application created the invention first.
5) The invention hasn’t been disclosed in the description of an earlier application (Article 29(2) of the Japan Patent Act)
Due to the fact that the content of a patent application is disclosed after a determined period following the date of filing, there is a possibility that earlier applications haven’t been disclosed yet at the time of filing of a new application. Accordingly, in some cases, the fact that an earlier application relating to a similar invention has been filed before the new application is known after the filing of the new application. The consequence, in such a case, is that the new application won’t be considered as the earliest application and that the related invention won’t be considered as being a new invention. Accordingly, if the invention related to the new application and the invention described in the application documents of the earlier application are identical, the new application cannot, in principle, be granted a patent.
6) Not contrary to public order (Article 32 of the Japan Patent Act)
Inventions liable to injure public morality, public order or public health shall not be patented.
7) Format of the specification and application documents
The JPO provides a specific format for the application documents. A patent application must comprise a specification, a set of claims and (if required) drawings. The objective is to enable the JPO to disclose the technical details of the invention, and to allow for easy reference of the scope of the right after registration.
Examination (Article 47 and following articles of the Japan Patent Act)
Completing an invention isn’t sufficient to make a patent right become effective. To obtain a patent right, it is necessary to file an application to the JPO.
Once the filing of the application is complete, the JPO, following the submission within a determined period of a Request for examination asking the JPO to conduct a substantive examination of the application documents, undertakes their examination. The examination is conducted based on written documents due to the necessity to render the content of the application as clear as possible, taking into account the fact that the examination will determine the grant of a patent right, that is of a powerful and exclusive right.
By comparing the invention with the prior art, the JPO Examiner determines whether or not there are reasons to refuse the application related to the invention. Reasons for refusal are provided for by the Japan Patent Act, and include failure to meet the novelty requirement and failure to meet the inventive step requirement.
If no reasons for refusal are found, the JPO issues, as examination result, an administrative disposition called Decision to grant a patent. If one or several reasons for refusal have been found, the JPO issues a Notification of reasons for refusal and gives the applicant an opportunity to submit a Amendment and/or an Argument. Then, following the study of the Amendment and/or Argument and in the case that they do not resolve the reason(s) for refusal, the JPO issues an administrative disposition called Decision of refusal. If the applicant is dissatisfied with the Decision of refusal, it is possible to file an Appeal against the Decision of refusal.
Patent right (Article 68 of the Japan Patent Act)
Following the issue of a Decision to grant a patent, the remittance of the registration fee allows the patent right to be registered by the JPO and to become effective. The duration of the right is set to twenty years after the filing date (or to a maximum of twenty-five years in the case of an extension of the duration of the patent right).
Effect of the patent right
The effect of the patent right can be divided between active effect and negative effect, the former referring to the ability to work the invention on an exclusive basis and the latter to the ability of preventing third parties from working the invention.
Limitations to the effect of the patent right
The patent right may be an exclusive right ; however, this does not mean that it is unlimited. Limitations to the patent right are determined so as to promote public interest and industrial development (as is the objective of the Japan Patent Act) and in order to maintain a balance with the rights of other parties.
For example, the effect of the patent right does not apply with regard to the working of the invention for experimental or research purposes, as such working may lead up to the creation of a better invention. The effect of the patent right doesn’t apply either to vessels or aircrafts merely passing through Japan or to the machines or other products used on said vessels or aircrafts. This is motivated by the fact that, while the degree of infringement of the goods is very limited due to the short time passed on Japanese territory, the application of an injunction is bound to severely obstruct public transport. Further, in connection with the necessity to maintain a balance with the rights of other parties, the effect of the patent right is limited in the case that the patented invention uses a patented invention related to an earlier patent application or to a utility model owned by a third party or interferes with a third party’s trademark right or design right, or in the case that the patented invention is worked by a legitimate licensee
OSAKA
