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Revised Japanese
Patent Law
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Revised Japanese Patent Law 2006
  • Increased opportunities for filing a divisional application.
  • Restriction on an amendment in relation to a divisional application.
  • Prohibition of an amendment switching to a non-unitary subject matter.





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Increased opportunities for a divisional application
  • You can file a divisional application after receiving a Notice of Decision of Refusal without filing an ex parte appeal.
  •       within 30 days (+60 days for a resident abroad, Current Law) or 3 months (Revision 2008) from receiving the first Notice of Decision of Refusal.
  • You can file a divisional application even after receiving a Notice of Decision of Allowance.
  •        within 30 days from receiving a Notice of Decision of Allowance and prior to registration.
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Increased opportunities for a divisional application
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Increased opportunities for a divisional application
  • Exception: Decisions of Refusal /Allowance after filing an ex parte appeal are excluded.


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Increased opportunities for a divisional application
  • Decision of Allowance
  •      Before registration, you can file a divisional application.
  •      Please kindly inform us of whether or not to file a divisional application.


  • Decision of Refusal
  •      Decision of Refusal
  •         You have 3 options:
  •         1.   appeal
  •         2.   appeal and divisional application in parallel
  •         3.   divisional application without filing an appeal (New!) .
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Increased opportunities for a divisional application

  • Applied to applications filed on or after April 1, 2007
  • A divisional application derived from a parent application filed before April 1, 2007
  •                       --> Not Applied


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Revised Japanese Patent Law 2006
  • Increased opportunities for filing a divisional application
  • Restriction on an amendment in relation to a divisional application
  • Prohibition of an amendment switching to a non-unitary subject matter



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Restriction on an amendment (div.)
  • Amendment of a divisional application (“instant application”) against a first office action may be restricted in the same manner as against a final office action, in case that  the reason(s) of rejection to the instant application is/are the same reason(s) as that (those) to a parent application or another divisional application derived from the same parent application (” another application”).
  • Amendment of a parent application (“instant application”) against a first office action may be restricted in the same manner as against a final office action, in case that  the reason(s) of rejection to the instant application is/are the same reason(s) as that (those) to a divisional application (“another application”).
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Restriction on an amendment (div.)
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Restriction on an amendment (div.)
  • In which case is the instant application restricted?
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Restriction on an amendment (div.)
  • How are “the same reasons” determined?


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Restriction on an amendment (div.)
  • Exception : In the event that an applicant was not in situations that he/she could not be aware of the reasons of rejection of “another application when filing a request for examination of the instant application.
  • For example, an applicant receives a notice of reasons of rejection of “another application” ”(e.g. a divisional) after he/she filed a request for examination of the instant application (e.g. a parent).


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Amendment in relation to a div. application
  • Only 4 types of amendment are allowed when restricted.
  • Canceling the claims
  • Limiting the scope of the claims
  • Correction of typographical errors
  • Clarifying an ambiguous description
  •        Note: The restriction above is the same as the one for a final office action
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Amendment in relation to a div. application
  • Recommended to take into consideration the reasons of rejection to a parent application upon filing a divisional application
  •                                   or
  • Recommended to file a voluntary amendment at the latest by the time when actual examination of the divisional application starts.
  •       Average waiting period from the date of requesting a substantial examination is 26 months (statistics in 2006 by the JPO)
  • Applied to  a parent application filed on or after April 1, 2007 and a divisional application derived from the parent application.


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Revised Japanese Patent Law 2006
  • Increased opportunities for filing a divisional application
  • Additional limitation to claim amendment of a divisional application
  • Prohibition of an amendment switching to a non-unitary subject matter.



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Amendment switching to a non-unitary subject matter
  • According to new Article 17-2 (4),
  •    an amendment shall be made so that
  •       (i) the present invention whose patentability has been already examined before the amendment
  •          and
  •      (ii) the amended invention
  •         fulfill the requirement of the unity of invention.
  •   Note: Very similar to EPC 2000 rule 137(4) or old EPC rule 86(4).


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Amendment switching to a non-unitary subject matter
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Amendment switching to a non-unitary subject matter
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Amendment switching to a non-unitary subject matter
  • A first Office Action: Reason of rejection.
  •     A final Office Action: Dismissal of Amendment
  •     No ground for invalidation.
  • Recommended to number the claims in the order of invention which you really want to be patented.
  • Applied to an application filed on or after April 1, 2007.


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Amendment switching to a non-unitary subject matter
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Amendment switching to a non-unitary subject matter
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Revised Japanese Patent Law 2008
  • Reduction of official fees.
  • Time Limit for Filing an ex parte Appeal.
  • License registration before patent registration.
  • Limitation of information disclosure on licensee.
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Reduction of official fees
  • Although official announcement has not made yet, JPO plans to apply below-mentioned new fee schedule to all cases from June 1, 2008.
  • Official Filing Fee and Official Annual fees for registration or maintenance of patent right or Trademark will be drastically reduced, as follows;


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Reduction of official fees
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Reduction of official fees
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Reduction of official fees
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Revised Japanese Patent Law 2008
  • Reduction of official fees.
  • Time Limit for Filing an ex parte Appeal.
  • License registration before patent registration.
  • Limitation of information disclosure on licensee.
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Time Limit for Filing an ex parte Appeal
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Time Limit for Filing an ex parte Appeal
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Time Limit for Filing an ex parte Appeal
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Revised Japanese Patent Law 2008
  • Reduction of official fees.
  • Time Limit for Filing an ex parte Appeal.
  • License registration before patent registration.
  • Limitation of information disclosure on licensee.



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License registration before patent registration.
  • Provisional-License system will be created by the revised JPL.  There are Provisional-exclusive-License and Provisional-nonexclusive-License.
  • The current JPL permits registration of License only after the registration of a patent right.
  • Under the revision, registration of Provisional-License can be permitted even before registration of a patent right.
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License registration before patent registration.
  • Provisional-exclusive-License becomes effective by registration in the JPO.  Provisional-nonexclusive-License needs to be registered in the JPO so as to preserve his right against a subsequent assignee of a right to obtain a patent.
  •   In the case of PCT application, Provisional-License can be registered only after the national phase entry into Japan is completed.
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License registration before patent registration.
  •  Provisional-License is deemed to be switched to registered License automatically once a patent right is registered.
  • In the meantime, when a patent application is withdrawn or abandoned, effect of the registered Provisional-License lapses also.
  • An applicant cannot withdraw or abandon his patent application without Provisional-License’s consent.
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Revised Japanese Patent Law 2008
  • Reduction of official fees.
  • Time Limit for Filing an ex parte Appeal.
  • License registration before patent registration.
  • Limitation of information disclosure on licensee.
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 Limitation of information disclosure on licensee
  • After the revision, certain information registered in the JPO such as a name of licensee or Provisional-nonexclusive-Licensee and scope of license will be disclosed only to a person such as assignee of patent designated by Cabinet Order.
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Limitation of information disclosure on licensee
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