Legislative Implementation of Flexibilities - Japan
| Title: | Articles 47-49 of the Patent Act No. 121 of 1959 as last amended by Act No. 109 of 2006(Effective September 30, 2007) |
| Field of IP: | Patents |
| Type of flexibility: | Substantive examination |
| Summary table: |  |
Provisions of Law
Article 47 (Examination by examiner)
(1) The Commissioner of the Patent Office shall direct the examination of patent applications by an examiner.
(2) The qualifications of examiners shall be as prescribed by Cabinet Order.
Article 48 (Exclusion of examiners)
Articles 139(i) to 139(v) and 139(vii) shall apply mutatis mutandis to examiners.
Article 48-2 (Examination of patent applications)
The examination of a patent application shall be initiated after the filing of a request for examination.
Article 48-3 (Request for examination of application)
(1) Where a patent application is filed, any person may, within 3 years from the filing date thereof, file with the Commissioner of the Patent Office a request for the examination of the said application.
(2) In the case of a new patent application arising from the division of a patent application under Article 44(1), or a patent application arising from the conversion of an application under Article 46(1) or 46(2), or a patent application based on a
utility model registration under Article 46-2(1), a request for the examination of the said patent application may be filed even after the lapse of the time limit prescribed in the preceding paragraph, but not later than 30 days following the division of a patent application, conversion of application or filing of patent application based on a utility model registration.
(3) A request for the examination of a patent application may not be withdrawn.
(4) Where a request for the examination of an application is not filed within the time limit as provided in paragraph (1) or (2), the said patent application shall be deemed to have been withdrawn.
Article 48-4
A person(s) filing a request for the examination of an application shall submit a written request to the Commissioner of the Patent Office stating the following :
(i) the name and domicile or residence of the demandant; and
(ii) the identification of the patent application for which the examination is requested.
Article 48-5
(1) Where a request for the examination of an application is filed, in the case where such request is filed prior to the laying open of the application, the Commissioner of the Patent Office shall publish the fact thereof in the patent gazette either at the time of laying open of the application or thereafter without delay, and in the case where such a request is filed after laying open of the application, without delay after laying open.
(2) Where a request for the examination of an application is filed by a person other than the applicant for a patent, the Commissioner of the Patent Office shall notify the applicant thereof.
Article 48-6 (Preferential examination)
Where it is recognized that a person other than the applicant is working the invention claimed in a patent application as a business after the laying open of the application, the Commissioner of the Patent Office may, where deemed necessary, cause the examiner to examine the patent application in preference to other patent applications.
Article 48-7 Notice of ( statement of information concerning invention known to the public through publication)
Where the examiner recognizes that a patent application does not comply with the requirements as provided in Article 36(4)(ii), the examiner may notify the applicant of the patent thereof and give the said applicant an opportunity to submit a written opinion, designating an adequate time limit for such purpose.
Article 49 (Examiner's decision of refusal)
The examiner shall render an examiner's decision to the effect that a patent application is to be refused where the patent application falls under any of the following:
(i) an amendment made to the description, scope of claims or drawings attached to the application of a patent application does not comply with the requirements as provided in Article 17-2(3) or (4);
(ii) the invention claimed in the patent application is not patentable under Article 25, 29, 29-2, 32, 38 or 39(1) to 39(4);
(iii) the invention claimed in the patent application is not patentable under the provisions of any relevant treaty;
(iv) the patent application does not comply with the requirements under Article 36(4)(i), 36(6), or 37;
(v) where notice under the preceding Article has been given, following the amendment of the description or submission of the written opinion, the patent application does not comply with the requirements under Article 36(4)(ii);
(vi) where the patent application is a foreign language written application, matters stated in the description, scope of claims or drawings attached to the application of the said patent application do not remain within the scope of matters stated in foreign language documents ; and
(vii) where the applicant for the patent is not the inventor, the applicant has not succeeded to the right to obtain a patent for the said invention.