Japanese Patent Law - Patent Prosecution

Patent Prosecution

The procedures for obtaining a patent right in Japan is described in detail on the website of Japan Patent Office. The patent prosecution procedure under Japanese law is similar to that in most other patent systems. Article 39 states that a person who is the first to file an application for a patent for an invention may obtain that patent, rather than a different person who is the first to invent the same invention.

A patent may be granted for an invention if:

• the invention as claimed is industrially applicable (Article 29, paragraph 1),
• the claims are novel (Article 29, paragraph 1),
• the claims are inventive (Article 29, paragraph 2),
• the patent does not harm public order, morality or public health (Article 32),
• amendments to the specification, claims or drawings remain within the scope of the features disclosed in the original version (Article 17bis),
• the specification discloses the invention in a manner sufficiently clear and complete for a person skilled in the art to carry it out (Article 36, paragraph 4),
• the statement of the claims is clear (Article 36, paragraph 6),
• the application meets the requirement for unity of invention (Article 37),
• the applicant is the first to file an application for a patent for the invention (Articles 29bis and 39), and
• the applicant has the right to obtain a patent for the invention (Article 25 and 38, and Article 49, paragraph 7).

(This is a summary; Article 49 contains a full list of conditions.)

Article 30 provides a six-month grace period for disclosures made through an experiment, publication, presentation at a study meeting or an exhibition (a trade fair or the World's Fair) or for if the invention becomes known to public against the applicant's will. Such disclosures do not form part of the prior art. This is a much broader exemption than the one available under European patent law (Article 55 EPC) but is significantly narrower than that provided under United States patent law.