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Legislative Implementation of Flexibilities - Japan

Title:Articles 36 (2), (3) and (4), 49 (iv) and (v), 123 and 134-2 (1) (iv) 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:Disclosure related flexibilities
Summary table:PDF

Provisions of Law

Article 36 (Patent applications)

(2) The description, scope of claims, drawings (where required), and abstract shall be attached to the application.

(3) The description as provided in the preceding paragraph shall state the following:

(i) the title of the invention;

(ii) a brief explanation of the drawing(s); and

(iii) a detailed explanation of the invention.

(4) The statement of the detailed explanation of the invention as provided in item (iii) of the preceding Paragraph shall comply with each of the following items:

(i) in accordance with Ordinance of the Ministry of Economy, Trade and Industry, the statement shall be clear and sufficient as to enable any person ordinarily skilled in the art to which the invention pertains to work the invention; and

(ii) where the person requesting the grant of a patent has knowledge of any invention(s) (inventions as provided in Article 29(1)(iii), hereinafter the same shall apply in this item) related to the said invention, that has been known to the public through publication at the time of filing of the patent application, the statement shall provide the source of the information concerning the invention(s) known to the public through publication such as the name of the publication and others.

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:

(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);

Article 123 (Trial for patent invalidation)

(1) Where a patent falls under any of the following, a request for a trial for patent invalidation may be filed. In the event of two or more claims, a request for a trial for patent invalidation may be filed for each claim.

(iv) where the patent has been granted on a patent application not complying with the requirements as provided in Article 36(4)(i) or 36(6) (excluding 36(6) (iv));

Article 134-2 (Request for correction in a trial for patent invalidation)

(1) The demandee in a trial for patent invalidation may file a request for a correction of the description, scope of claims or drawing(s) attached to the application only within the time limit designated in accordance with paragraph (1) or (2) of the preceding Article, paragraph (1) or (2) of the following Article or Article 153(2); provided, however, that such correction shall be limited to the following purposes:

(i) restriction of the scope of claims;

(ii) correction of errors in the description or of incorrect translations; and

(iii) clarification of an ambiguous description.

(2) Upon receipt thereof, the chief trial examiner shall serve to the demandant a copy of the written request for correction as well as the corrected description, scope of claims or drawings attached to the request under the preceding paragraph.

(3) The trial examiner may examine grounds that have not been pleaded by a the party in the case or an intervenor in determining whether the request for correction under paragraph (1) is not for any of the purposes provided in the items of the proviso to the said paragraph, or does not conform the provisions of Paragraphs(3) to (5) of Article 126 that shall be applied mutatis mutandis upon reading the specified terms in accordance with paragraph (5). In such a case, where the request for correction on the above grounds is not approved of, the chief trial examiner shall notify the parties in the case and the intervenors of the result of the proceedings and shall give them an opportunity to state their opinions, designating an adequate time limit.

(4) Where a request for correction under paragraph (1) is made, if another request for correction has been previously made in the said trial, such previous request shall be deemed to have been withdrawn.

(5) Articles 126(3) to (6), 127, 128, 131(1) and (3), 131-2(1) and 132(3) and (4) shall apply mutatis mutandis to the case of paragraph (1). In this case, the term "item (i) or (ii) of the proviso to paragraph (1)" in Article 126(5) shall be deemed to be replaced with "item (i) or (ii) of the proviso to paragraph (1) pertaining to a claim or claims for which a request for a trial for patent invalidation is not filed."

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