WIPO Lex

Patent Act (Act No. 121 of April 13, 1959, as amended up to Act No. 55 of 2015)

Patent Act (Act No. 121 of 1959)

Table of Contents

Chapter I General Provisions (Article 1 to Article 28)

Chapter II Patents and Patent Applications (Article 29 to Article 46-2)

Chapter III Examination (Article 47 to Article 63)

Chapter III-2 Laying Open of Applications (Article 64 to Article 65)

Chapter IV Patent Rights

Section 1 Patent Rights (Article 66 to Article 99)

Section 2 Infringement of rights (Article 100 to Article 106)

Section 3 Patent Fees (Article 107 to Article 112-3)

この特許法の翻訳は、平成二十七年法律第五十五号までの改正（平成２８年４月１日

施行）について作成したものです。

この法令の翻訳は公定訳ではありません。法的効力を有するのは日本語の法令自体で

あり、翻訳はあくまでその理解を助けるための参考資料です。この翻訳の利用に伴って

発生した問題について、一切の責任を負いかねますので、法律上の問題に関しては、官

報に掲載された日本語の法令を参照してください。

This English translation of the Patent Act has been prepared (up to the revisions

of Act No. 55 of 2015 (Effective April 1, 2016)).

This is an unofficial translation. Only the original Japanese texts of laws and

regulations have legal effect, and the translations are to be used solely as reference

material to aid in the understanding of Japanese laws and regulations.

The Government of Japan shall not be responsible for the accuracy, reliability or

currency of the legislative material provided in this Website, or for any consequence

resulting from use of the information in this Website. For all purposes of

interpreting and applying law to any legal issue or dispute, users should consult the

original Japanese texts published in the Official Gazette.

Chapter V Opposition to a granted patent (Article 113 to Article 120-8)

Chapter VI Trials and Appeals (Article 121 to Article 170)

Chapter VII Retrial (Article 171 to Article 177)

Chapter VIII Litigation (Article 178 to Article 184-2)

Chapter IX Special Provisions Concerning International Applications under the Patent

Cooperation Treaty (Article 184-3 to Article 184-20)

Chapter X Miscellaneous Provisions (Article 185 to Article 195-4)

Chapter XI Penal Provisions (Article 196 to Article 204)

Supplementary Provisions

Chapter I General Provisions (Article 1 to Article 28)

(Purpose)

Article 1 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.

(Definitions)

Article 2 (1) "Invention" in this Act means the highly advanced creation of

technical ideas utilizing the laws of nature.

(2) "Patented invention" in this Act means an invention for which a patent has been

granted.

(3) "Working" of an invention in this Act means the following acts:

(i) in the case of an invention of a product (including a computer program, etc., the

same shall apply hereinafter), producing, using, assigning, etc. (assigning and

leasing and, in the case where the product is a computer program, etc.,

including providing through an electric telecommunication line, the same shall

apply hereinafter), exporting or importing, or offering for assignment, etc.

(including displaying for the purpose of assignment, etc., the same shall apply

hereinafter) thereof;

(ii) in the case of an invention of a process, the use thereof; and

(iii) in the case of an invention of a process for producing a product, in addition to

the action as provided in the preceding item, acts of using, assigning, etc.,

exporting or importing, or offering for assignment, etc. the product produced by

the process.

(4) A "computer program, etc." in this Act means a computer program (a set of

instructions given to an electronic computer which are combined in order to

produce a specific result, hereinafter the same shall apply in this paragraph) and

any other information that is to be processed by an electronic computer

to a computer program.

(Calculation of time periods)

Article 3 (1) The calculation of time periods under this Act or any order issued

under this Act shall be made in accordance with the following provisions.

(i) The first day of the period shall not be included in the calculation; provided,

however, that this shall not apply where the period of time commences at 00:00

hours.

(ii) Where the period is indicated by months or years, such months or years shall

refer to calendar months or calendar years. Where the period is not calculated

from the beginning of a month or a year, the period shall expire on the

day of the day corresponding to the first day of the calculation in the last month

or year; provided, however, that where there is no corresponding day in the last

month, the period shall expire on the last day of the last month.

(2) Where the last day of the prescribed period for any procedures relating to a

patent (hereinafter referred to as "procedures") including filing a patent

application and a request, is any of the days provided for in Article 1(1) of the Act

on Holidays of Administrative Organs (Act No. 91 of 1988), the day following such

day shall be the last day of the period.

(Extension of time limits, etc.)

Article 4 The Commissioner of the Patent Office may, upon request or ex officio,

extend the period provided for in Articles 46-2(1)(iii), 108(1), 121(1) and 173(1),

a person in a remote area or an area with transportation difficulty.

Article 5 (1) Where the Commissioner of the Patent Office, the chief

judge, or the examiner has designated a time limit by which procedures are to be

undertaken under this Act, the said official may, upon request or ex officio, extend

the time limit.

(2) Where the chief administrative judge has designated a specific date under this

Act, the said official may, upon request or ex officio, change such date.

(3) The extension of the time limit under paragraph (1) (the time limit as provided

Ordinance of the Ministry of Economy, Trade and Industry only) may be

requested even after the expiration of the said time limit, but not later than the

time limit as provided in Ordinance of the Ministry of Economy, Trade and

Industry.

(Capacity of associations, etc. which are not juridical persons to undertake

procedures)

Article 6 (1) An association or foundation which is not a juridical person but for

which a representative or an administrator has been designated may, in its name:

(i) file a request for examination of an application;

(ii) file an opposition to a granted patent;

(iii) file a request for an invalidation trial or a trial for invalidation of the

registration of extension of duration; and

(iv) file a request for a retrial in accordance with Article 171(1), against a final

and binding decision in an invalidation trial or a trial for invalidation of the

registration of extension of duration.

(2) An association or foundation which is not a juridical person but for which a

representative or an administrator has been designated may be named as a

demandee in a request filed for a retrial against a final and binding decision in an

invalidation trial or a trial for invalidation of the registration of extension of

duration.

(Capacity of minors or adult wards etc. to undertake procedures)

Article 7 (1) Minors or adult wards may not undertake procedures except through

their statutory representatives; provided, however, that this shall not apply

where a minor is capable of independently performing a juristic act.

(2) Where a person under curatorship undertakes procedures, the consent of a

curator is required.

(3) Where a statutory representative undertakes procedures, the consent of a

supervisor of the guardian, if any, is required.

(4) Where a person under curatorship or a statutory representative files an opposition to

a granted patent concerning his/ her patent right or an adverse party files a request

for a trial or retrial involving the person under curatorship or the statutory

representative, the preceding two paragraphs shall not apply.

(Patent administrators for overseas residents)

Article 8 (1) Unless otherwise provided for by Cabinet Order, no person domiciled

or resident (or, in the case of a juridical person, with a business office) outside

Japan (hereinafter referred to as an "overseas resident") may undertake

procedures or institute action against measures taken by a relevant

administrative agency in accordance with the provisions of this Act or an order

issued under this Act, except through a representative domiciled or resident in

Japan, who is acting for such person in handling matters related to the person's

patent (hereinafter referred to as a "patent administrator").

(2) The patent administrator shall represent the principal in all procedures and

litigation against measures taken by any relevant administrative agency in

accordance with the provisions of this Act or an order issued under this Act;

provided, however, that this shall not apply where the overseas resident limits

the scope of authority of representation of the patent administrator.

(Scope of authority of representation)

Article 9 An agent of a person domiciled or resident in Japan (or, in the case of a

juridical person, with a business office) and who is undertaking a procedure shall

not, unless expressly so empowered, convert, waive or withdraw a patent

application, withdraw an application for registration of extension of the duration

of a patent right, withdraw a request, application or motion, make or withdraw a

priority claim under Article 41(1), file a patent application based on a registration

of a utility model in accordance with Article 46-2(1), file a request for laying open

of an application, file a request for a appeal against an examiner's decision of

refusal, waive a patent right or appoint a subagent.

Article 10 Deleted

(No extinction of authority of representation)

Article 11 The authority of representation of an authorized agent acting for a

person undertaking procedures shall not be extinct upon the death of the

principal, or in the case of a juridical person, merger of the principal, termination

of trust duties of a trustee who is the principal, the death of a legal representative,

or change or extinction of the statutory representative's authority of

representation.

(Independent representation by representatives)

Article 12 Where there are two or more representatives acting for a person who

undertakes procedures, each representative may represent the principal before

the Patent Office.

(Replacement of representatives, etc.)

Article 13 (1) When the Commissioner of the Patent Office or the chief

administrative judge finds that a person undertaking procedures is not competent

or suitable for undertaking such procedures, the official may order the person to

undertake the procedures through a representative.

(2) When the Commissioner of the Patent Office or the chief administrative judge

finds that a representative acting for a person undertaking procedures is not

competent or suitable for undertaking such procedures, the official may order

that the representative be replaced.

(3) In the case of the preceding two paragraphs, the Commissioner of the Patent

Office or the chief administrative judge may order that a patent attorney be the

representative.

(4) The Commissioner of the Patent Office or the chief administrative judge may,

after the issuance of an order under paragraph (1) or (2), dismiss the procedures

before the Patent Office undertaken by the person undertaking procedures under

paragraph (1) or the representative under paragraph (2).

(Mutual representation of multiple parties in the case)

Article 14 Where two or more persons are jointly undertaking a procedure, each of

them shall represent the other or others with respect to procedures other than the

conversion, waiver and withdrawal of a patent application, the withdrawal of an

application for registration of extension of the duration of a patent right, the

withdrawal of a request, application, or motion, the making and withdrawal of a

priority claim under Article 41(1), the request for laying open of an application,

and the request for a appeal against an examiner's decision of refusal; provided,

however, that this shall not apply where the said persons have appointed a

representative for both/all of them and have notified the Patent Office

accordingly.

(Jurisdiction over overseas residents)

Article 15 Regarding a patent right or other right relating to the patent of an

overseas resident, the location of the property under Article 5(iv) of the Code of

Civil Procedure (Act No. 109 of 1996) shall be the domicile or residence of the

overseas resident's patent administrator, or if there is no such patent

administrator, the address of the Patent Office.

(Ratification of acts of persons lacking legal capacity)

Article 16 (1) Any procedures undertaken by a minor (excluding one who has a

legal capacity to juristic act independently) or an adult ward may be ratified by

the person's statutory representative (or by the said adult ward, if the person

later acquires a legal capacity to undertake the procedures).

(2) Any procedures undertaken by a person with no authority of representation may

be ratified by the principal holding legal capacity to undertake the procedures or

the principal's statutory representative.

(3) Any procedures undertaken by a person under curatorship without the consent

of his curator may be ratified if the person under curatorship obtains the approval

of his curator.

(4) Any procedures undertaken by a statutory representative without the consent of

a supervisor of a guardian may be ratified by the statutory representative if the

approval of the supervisor of the guardian is obtained, or by the principal if the

principal acquires a legal capacity to undertake the procedures.

(Amendment of proceedings)

Article 17 (1) A person undertaking a procedure before the Patent Office may

make amendments only while the case is pending; provided, however, that the

person may not amend the description, scope of claims, drawing(s) or the abstract

attached to the application, or a document prescribed in Article 41(4) or Article

43(1) (including its mutatis mutandis application under Article 43-3(3)), or the

corrected description, scope of claims or drawings attached to the written request

for correction or a correction trial under Article 120-5(2) or Article 134-2(1),

unless an amendment may be made pursuant to the provisions the following

Article to Article 17-5 inclusive.

(2) Notwithstanding the main clause of the preceding paragraph, an applicant of a

foreign-language-written-application as provided in Article 36-2(2) may not

amend foreign-language-documents and as provided in Article 36-2(1).

(3) The Commissioner of the Patent Office may require an applicant to amend a

procedure, designating an adequate time limit, in the following cases:

(i) where the procedures do not comply with paragraphs (1) to (3) of Article 7 or

Article 9;

(ii) where the procedures do not comply with the formal requirements prescribed

by this Act or an order thereunder; and

(iii) where the fees relating to the procedures payable under paragraphs (1) to (3)

of Article 195 are not paid.

(4) For any amendment of procedures (except in the case of the payment of fees),

written amendment shall be submitted in writing, except for cases provided by

Article 17-2(2).

(Amendment of Description, Claim or Drawing attached to the application)

Article 17-2 (1) An applicant for a patent may amend the description, scope of

claims, or drawings attached to the application, before the service of the certified

copy of the examiner's decision notifying that a patent is to be granted; provided,

however, that following the receipt of a notice provided under Article 50, an

amendment may only be made in the following cases:

(i) where the applicant has received the first notice (hereinafter referred to in this

Article as the "notice of reasons for refusal") under Article 50 (including the

cases where it is applied mutatis mutandis pursuant to Article 159(2)

(including the cases where it is applied mutatis mutandis pursuant to Article

174(2))and Article 163(2), hereinafter the same shall apply in this paragraph)

and the said amendment is made within the designated time limit under

Article 50;]

(ii) where, following the receipt of the notice of reasons for refusal, the applicant

has received a notice under Article 48-7 and the said amendment is made

within the designated time limit under the said Article;

(iii) where, following the receipt of the notice of reasons for refusal, the applicant

has received a further notice of reasons for refusal and the said amendment is

made within the designated time limit under Article 50 with regard to the final

notice of reasons for refusal; and

(iv) where the applicant files a request for a appeal against an examiner's decision

of refusal and the said amendment is made at the same time as the said request

for the said appeal.

(2) Where an applicant of a foreign-language-written-application as provided in

Article 36-2(2) amends the description, scope of claims or drawings under the

preceding paragraph for the purpose of correcting an incorrect translation, the

applicant shall submit the statement of correction of the incorrect translation,

stating the grounds thereof.

(3) Except in the case where the said amendment is made through the submission of

a statement of correction of an incorrect translation, any amendment of the

description, scope of claims or drawings under paragraph (1) shall be made within

the scope of the matters described in the description, scope of claims or drawings

originally attached to the application (in the case of a

foreign-language-written-application under Article 36-2(2), the translation of the

foreign-language-documents as provided in Article 36-2(2) that is deemed to be

the description, scope of claims and drawings under Article 36-2(8) (in the case

where the amendment to the description, scope of claims or drawings has been

made through the submission of the statement of correction of an incorrect

translation, the said translation or the amended description, scope of claims or

drawings), the same shall apply in Articles 34-2(1) and 34-3(1))

(4) In addition to the case provided in the preceding paragraph, where any

amendment of the scope of claims is made in the cases listed in the items of

paragraph (1), the invention for which determination on its patentability is stated

in the notice of reasons for refusal received prior to making the amendment and

the invention constituted by the matters described in the amended scope of claims

shall be of a group of inventions recognized as fulfilling the requirements of unity

of invention set forth in Article 37.

(5) In addition to the requirements provided in the preceding two paragraphs, in the

cases of items (i), (iii) and (iv) of paragraph (1) (in the case of item (i) of the said

paragraph, limited to the case where the applicant has received a notice under

Article 50-2 along with the notice of reasons for refusal), the amendment of the

scope of claims shall be limited to those for the following purposes:

(i) the deletion of a claim or claims as provided in Article 36(5);

(ii) restriction of the scope of claims (limited to the cases where the restriction is

to restrict matters required to identify the invention stated in a claim or claims

under Article 36(5), and the industrial applicability and the problem to be

solved of the invention stated in the said claim or claims prior to the

amendment are identical with those after the amendment.);

(iii) the correction of errors; and

(iv) the clarification of an ambiguous statement (limited to the matters stated in

the reasons for refusal in the notice of reasons for refusal).

(6) Article 126(7) shall apply mutatis mutandis to cases under item (ii) of the

preceding paragraph.

(Amendment of abstract)

Article 17-3 An applicant for a patent may amend the abstract attached to the

application within a period provided in Ordinance of the Ministry of Economy,

Trade and Industry.

(Amendment of document of priority claim)

Article 17-4 A person who claims priority pursuant to the provisions under Article

41(1) or Article 43(1), Article 43-2(1) (including its mutatis mutandis application

under Article 43-3(3)), or Article 43-3(1) or (2) may amend the document

prescribed in Article 41(4) or Article 43(1) (including its mutatis mutandis

application under Article 43-2(2) (including its mutatis mutandis application

under Article 43-3(3)) and Article 43-3(3)) within a period provided in Ordinance

of the Ministry of Economy, Trade and Industry.

(Amendment of corrected description, scope of claims or drawings)

Article 17-5 A patentee may amend corrected description, scope of claims or

drawings attached to the written request for correction under Article 120-5(2)

within the designated time limit under Article 120-5(1) or (6)

Article 17-4 (2) The demandee of an invalidation trial may amend the corrected

description, scope of claims or drawings attached to the written request for

correction under Article 134-2(1) only within the time limit designated under

Article 134(1) or 134(2), 134-2(5), 134-3, 153(2) or 164-2(2).

(3) The demandant of a correction trial may amend the corrected description, scope

of claims or drawings attached to the written request for a correction trial, only

prior to notice under Article 156(1) (in the case where the proceedings has been

reopened under Article 156(3), prior to further notice under Article 156(1)).

(Dismissal of procedures)

Article 18 (1) The Commissioner of the Patent Office may dismiss the procedures

where a person ordered to make an amendment to the procedures under Article

17(3) fails to make such amendment within the designated time limit under the

said provision, or where a person obtaining the registration establishing a patent

right fails to pay patent fees within the designated time limit under Article

108(1).

(2) The Commissioner of The Patent Office may dismiss a patent application where

the applicant ordered under Article 17(3) to pay patent fees provided for in Article

195(3) fails to pay such patent fees within the designated time limit under Article

17(3).

(Dismissal of unlawful procedure)

Article 18-2 (1) The Commissioner of the Patent Office shall dismiss a procedure

where the procedure is unlawful and not amendable; provided, however, that this

shall not apply where the said procedure falls under any of the items of Article

38-2(1).

(2) Where the Commissioner of the Patent Office intends to dismiss a procedure

under the preceding paragraph, he/she shall notify the person who undertook the

procedure of the reasons therefor and give the said person an opportunity to

submit a document stating an explanation (hereinafter referred to as a

"statement of explanation"), designating an adequate time limit.

(Effective time of submission of application)

Article 19 An application, a document or any other item submitted by mail to the

Patent Office under this Act, or any order rendered under this Act, that is subject

to a time limit, shall be deemed to have arrived at the Office at the date and time

when such application or item is presented to the post office if such date and time

are proven by the receipt of the mail, at the date and time of the date stamp on

the mail if such date and time are clearly legible, or at noon of the day of the date

stamp on the mail if only the day, but not the time, of the date stamp is clearly

legible.

(Succession of effects of procedures)

Article 20 The effects of the procedures relating to a patent right or any right

relating to a patent shall extend to a successor in title.

(Continuation of procedures)

Article 21 Where a patent right or any right relating to a patent is transferred

while a case is pending before the Patent Office, the Commissioner of the Patent

Office or the chief administrative judge may proceed with the procedures relating

to the case to which the successor in title shall be the party.

(Suspension or termination of procedures)

Article 22 (1) Where a motion for the resumption of procedures suspended after a

certified copy of a ruling, an examiner's decision or a trial decision has been

served is filed, the Commissioner of the Patent Office or the administrative judge

shall render a ruling on whether the resumption shall be accepted.

(2) The ruling under the preceding paragraph shall be made in writing and state the

grounds therefor.

Article 23 (1) Where a procedure for an examination, proceedings and a ruling on

an opposition to a granted patent, or trial or retrial has been suspended and the

person responsible for resuming the procedure fails to do so, the Commissioner of

the Patent Office or the administrative judge shall, upon a motion or ex officio,

order the said person to resume the procedure and designate an adequate time

limit for this purpose.

(2) Where the resumption does not occur within the time limit designated under

the preceding paragraph, the resumption may be deemed by the Commissioner of

the Patent Office or the administrative judge to have commenced on the date the

time limit lapsed.

(3) When the resumption is deemed to have commenced under the preceding

paragraph, the Commissioner of the Patent Office or the chief administrative

judge shall notify the parties in the case thereof.

Article 24 The Code of Civil Procedure, Articles 124 (excluding paragraph (1)(vi)),

126 to 127, 128(1), 130, 131 and 132(2) (suspension or termination of court

proceedings) shall apply mutatis mutandis to a procedure for an examination,

proceedings and a ruling on an opposition to a granted patent, or a trial or retrial.

In this case, the term "counsel" in Article 124(2) of the said Code shall be deemed

to be replaced with "agent entrusted with the examination, or proceedings and a

ruling on an opposition to a granted patent, or trial or retrial", the term "court" in

Article 127 of the said Code shall be deemed to be replaced with "commissioner of

the patent office or the chief administrative judge", the term "court" in Articles

128(1) and 131 of the said Code shall be deemed to be replaced with

"commissioner of the patent office or the administrative judge", and the term

"court" in Article 130 of the said Code shall be deemed to be replaced with "patent

office".

(Enjoyment of rights by foreign nationals)

Article 25 A foreign national not domiciled or resident (or, in the case of a juridical

person, with a business office) in Japan may not enjoy a patent right or other

rights relating to a patent, except in the following cases:

(i) where the country of the foreign national allows Japanese nationals to enjoy a

patent right or other rights relating to a patent under the same conditions as

for its own nationals;

(ii) where the country of the foreign national allows Japanese nationals to enjoy a

patent right or other rights relating to a patent under the same conditions as

for its own nationals in the case where Japan allows nationals of that country

to enjoy a patent right or others right relating to a patent; and

(iii) where specifically provided by treaty.

(Effect of treaties)

Article 26 Where specific provisions relating to a patent are provided by treaty,

such provisions shall prevail.

(Registration in the patent registry)

Article 27 (1) The following matters shall be registered in the patent registry

maintained in the Patent Office:

(i) the establishment, extension of the duration, transfer, modification due to

trust, lapse, restoration or restriction on disposition, of a patent right;

(ii) the establishment, maintenance, transfer, modification, lapse or restriction on

disposal of an exclusive license;

(iii) the establishment, transfer, modification, lapse or restriction on disposal of a

right of pledge on a patent right or exclusive license; and

(iv) the establishment, maintenance, transfer, modification, lapse or restriction

on disposal of a provisional exclusive license.

(2) The patent registry may be prepared, in whole or in part, in the form of magnetic

tapes (including other storage media using a similar method that is able to record

and reliably store certain matters, the same shall apply hereinafter).

(3) In addition to those prescribed in this Act, matters relating to registration shall

be prescribed by Cabinet Order.

(Issuance of certificate of patent)

Article 28 (1) The Commissioner of the Patent Office shall issue the certificate of

patent to the patentee where the establishment of a patent right has been

registered, where the transfer of a patent right has been registered based on a

request under Article 74(1), or where a ruling or a trial decision to the effect that

the description, scope of claims or drawings attached to the application are to be

corrected has become final and binding and the said trial decision has been

registered.

(2) Re-issuance of the certificate of patent shall be prescribed by Ordinance of the

Ministry of Economy, Trade and Industry.

Chapter II Patents and Patent Applications (Article 29 to Article 46-2)

(Conditions for Patentability)

Article 29 (1) An inventor of an invention that is industrially applicable may be

entitled to obtain a patent for the said invention, except for the following cases:

(i) inventions that were publicly known in Japan or a foreign country prior to the

filing of the patent application;

(ii) inventions that were publicly worked in Japan or a foreign country prior to the

filing of the patent application; or

(iii) inventions that were described in a distributed publication, or inventions that

were made publicly available through an electric telecommunication line in

Japan or a foreign country prior to the filing of the patent application.

(2) Where, prior to the filing of the patent application, a person ordinarily skilled in

the art of the invention would have been able to easily make the invention based

on an invention prescribed in any of the items of the preceding paragraph, a

patent shall not be granted for such an invention notwithstanding the preceding

paragraph.

Article 29-2 Where an invention claimed in a patent application is identical with

an invention or device (excluding an invention or device made by the inventor of

the invention claimed in the said patent application) disclosed in the description,

scope of claims for a patent or utility model registration or drawings (in the case

of a foreign-language-written-application under Article 36-2(2),

foreign-language-documents as provided in Article 36-2(1)) originally attached to

the application of another application for a patent or for a utility model

registration which has been filed prior to the date of filing of the said patent

application and published after the filing of the said patent application in the

patent gazette under Article 66(3) of the Patent Act (hereinafter referred to as

"gazette containing the patent") or in the utility model bulletin under Article

14(3) of the utility Model Act (Act No. 123 of 1959) (hereinafter referred to as

"utility model bulletin") describing matters provided for in each of the paragraphs

of the respective Article or in the laying open of the application, a patent

application has been effected, a patent shall not be granted for the invention

notwithstanding Article 29(1); provided, however, that this shall not apply where,

at the time of the filing of the said patent application, the applicant of the said

patent application and the applicant of the other application for a patent or for

registration of a utility model are the same person.

(Exception to lack of novelty of invention)

Article 30 In the case of an invention which has fallen under any of the items of

Article 29 (1) against the will of the person having the right to obtain a patent,

such invention shall be deemed not to have fallen under any of the items of Article

29 (1) for the purpose of Article 29 (1) and (2) for the invention claimed in a patent

application which has been filed by the said person within six months from the

date on which the invention first fell under any of said items.

(2) In the case of an invention which has fallen under any of the items of Article

29(1) as a result of an act of the person having the right to obtain a patent

(excluding those which have fallen under any of the items of the preceding

paragraph by being contained in gazette relating to an invention, utility model,

design or trademark), the preceding paragraph shall also apply for the purposes

of Article 29(1) and (2) the invention claimed in the patent application which has

been filed by the said person within six months from the date on which the

invention first fell under any of those items.

(3) Any person seeking the application of the preceding paragraph shall submit to

the Commissioner of the Patent Office, at the time of filing of the patent

application, a document stating thereof and, within thirty days from the date of

filing of the patent application, a document proving the fact that the invention

which has otherwise fallen under any of the items of Article 29(1) is an invention

to which the preceding paragraph may be applicable (referred to as a "certificate"

in the following paragraph).

(4) Notwithstanding the preceding paragraph, where, due to reasons beyond the

control of a person who submits a certificate under the said paragraph, the person

is unable to submit the certificate within the time limit as provided in the said

paragraph, the person may submit to the Commissioner of the Patent Office the

certificate within 14 days (where overseas resident, within two months) from the

date on which the reasons ceased to be applicable, but not later than six months

following the expiration of the said time limit.

Article 31 Deleted

(Unpatentable inventions)

Article 32 Notwithstanding Article 29, any invention that is liable to injure public

order, morality or public health shall not be patented.

(Right to obtain patent)

Article 33 (1) The right to obtain a patent may be transferred.

(2) The right to obtain a patent may not be the subject of a pledge.

(3) Where the right to obtain a patent is jointly owned, no joint owner may assign

his respective share without the consent of all the other joint owners.

(4) Where the right to obtain a patent is jointly owned, no joint owner may grant a

provisional exclusive license or provisional non-exclusive license on the patent

right to be obtained based on the right to obtain a patent to any third party

without the consent of all the other joint owners.

Article 34 (1) The succession of the right to obtain a patent prior to the filing of the

patent application shall have no effect on any third party unless the successor in

title files the patent application.

(2) Where two or more patent applications are filed on the same date based on the

right to obtain the same patent based on succession from the same person, any

succession(s) by a person(s) other than those selected by consultations between

the applicants shall have no effect on any third party.

(3) The preceding paragraph shall apply where applications for a patent and a

utility model registration are filed on the same date based on the right to obtain a

patent and the right to obtain a utility model registration for the same invention

and device based on succession from the same person.

(4) Any succession to the right to obtain a patent after the filing of the patent

application shall have no effect, except in the case of general successions

including inheritance, without notification to the Commissioner of the Patent

Office.

(5) Where a general succession to the right to obtain a patent including inheritance

thereof occurs, the successor in title shall notify the Commissioner of the Patent

Office thereof without delay.

(6) Where two or more notifications are submitted on the same date regarding

successions to the right to obtain the same patent based on succession from the

same person, any notification(s) by a person(s) other than the person selected by

consultations between the persons submitting the notifications shall have no

effect.

(7) Articles 39(6) and 39(7) shall apply mutatis mutandis to the cases prescribed in

paragraphs (2), (3) and (6).

(Provisional exclusive license)

Article 34-2 (1) A person who has the right to obtain a patent may grant a

provisional exclusive license with regard to the patent right to be obtained based

on the right to obtain a patent within the scope of the matters described in the

description, scope of claims or drawings originally attached to the application.

(2) Where the establishment of a patent right has been registered with regard to a

patent application pertaining to a provisional exclusive license, the exclusive

license shall be deemed to have been granted on patent right to the extent

permitted by the contract granting the said provisional exclusive license.

(3) A provisional exclusive license may be transferred only where the business

involving the working of the invention pertaining to the patent application is also

transferred, where the consent of a person who has the right to obtain a patent is

obtained or where the transfer occurs as a result of general succession including

inheritance.

(4) A provisional exclusive licensee may grant a provisional non-exclusive license on

his exclusive license to be obtained based on said provisional exclusive license to a

third party only where the consent of a person who has the right to obtain a

patent is obtained.

(5) Where a patent application pertaining to a provisional exclusive license is

divided pursuant to Article 44(1), the provisional exclusive license shall be

deemed to have been granted with regard to the patent right to be obtained based

on the right to obtain a patent pertaining to a new patent application pertaining

to the division of the said patent application to the extent permitted by the

contract granting the said provisional exclusive license; provided, however, that

this shall not apply where it is otherwise provided in the contract.

(6) A provisional exclusive license shall be extinguished where the establishment of

a patent right has been registered, where the patent application has been

abandoned, withdrawn or declined, or where an examiner's decision or trial

decision has become final and conclusive to the effect that the patent application

is to be refused.

(7) Where there is a provisional non-exclusive licensee as provided in the main

clause of paragraph (4) or paragraph (7) of the following Article, a provisional

exclusive licensee may waive the provisional exclusive license; only where the

consent of the said provisional non-exclusive licensee is obtained.

(8) Article 33(2) to Article 33 (4) shall apply mutatis mutandis to a provisional

exclusive license.

(Provisional non-exclusive license)

Article 34-3 (1) A person who has the right to obtain a patent may grant a

provisional non-exclusive license on the patent right to be obtained based on the

right to obtain a patent to a third party within the scope of the matters described

in the description, scope of claims or drawings originally attached to the

application of the said patent application.

(2) Where the establishment of a patent right has been registered with regard to a

patent application pertaining to a provisional non-exclusive license pursuant to

the preceding paragraph, a non-exclusive license shall be deemed to have been

granted on the patent right to a person who has the said provisional non-exclusive

license to the extent permitted by the contract granting the said provisional

non-exclusive license.

(3) Where an exclusive license is deemed to have been granted with regard to a

provisional exclusive license pertaining to the provisional non-exclusive license

under 34-2 (4) pursuant to 34-2 (2), the non-exclusive license shall be deemed to

have been granted to a person who has the said provisional non-exclusive license

on the said exclusive license to the extent permitted by the contract granting the

said provisional non-exclusive license.

(4) A provisional non-exclusive license may be transferred only where the business

involving the working of invention pertaining to the patent application is also

transferred, where the consent of a person who has the right to obtain a patent (or,

in the case of provisional non-exclusive license on the exclusive license to be

obtained based on the provisional exclusive license, a person who has the right to

obtain a patent and a provisional exclusive licensee ) is obtained, or where the

transfer occurs as a result of general succession including inheritance.

(5) Where a priority claim under Article 41(1) is made based on the invention

described in the description, scope of claims or drawings (in the case of the earlier

application being the foreign-language-written-application under Article 36-2(2),

foreign-language-documents as provided in Article 36-2(1)) originally attached to

the application of the earlier application under Article 41(1) pertaining to a

provisional non-exclusive license under paragraph (1) or Article 34-2(4), or Article

4-2(1) of the Utility Model Act, the provisional non-exclusive license shall be

deemed to have been granted to a person who has the said provisional

non-exclusive license on the patent right to be obtained based on the right to

obtain a patent pertaining to the patent application containing the said priority

claim to the extent permitted by the contract granting the said provisional

non-exclusive license; provided, however, that this shall not apply where it is

otherwise provided in the contract.

(6) Where a patent application pertaining to a provisional non-exclusive license is

divided pursuant to Article 44(1), the provisional non-exclusive license shall be

deemed to have been granted to a person who has the said provisional

non-exclusive license on the patent right to be obtained based on the right to

obtain a patent pertaining to a new patent application pertaining to the division

of the said patent application to the extent permitted by the contract granting the

said provisional non-exclusive license; provided, however, that this shall not

apply where it is otherwise provided in the contract.

(7) Where a provisional exclusive license on a patent right to be obtained based on

the right to obtain a patent pertaining to a new patent application under 34-2(5)

(hereinafter in this paragraph referred to as a "provisional exclusive license

pertaining to the new patent application") is deemed to have been granted

pursuant to the main clause of Article 34-2(5), the provisional non-exclusive

license shall be deemed to have been granted to a person who has the provisional

non-exclusive license with regard to an exclusive license to be obtained based on

the provisional exclusive license on the patent right to be obtained based on the

right to obtain a patent pertaining to the original patent application pertaining to

the said new patent application ,on the exclusive license to be obtained based on

the said provisional exclusive license pertaining to the new patent application to

the extent permitted by the contract granting the said provisional non-exclusive

license; provided, however, that this shall not apply where it is otherwise

provided in the contract.

(8) Where an application is converted pursuant to Article 46(1) with regard to an

application for utility model registration pertaining to a provisional non-exclusive

license under Article 4-2(1) of the Utility Model Act, the provisional non-exclusive

license shall be deemed to have been granted to a person who has the said

provisional non-exclusive license on a patent right to be obtained based on the

right to obtain a patent pertaining to the patent application pertaining to the

conversion of the said application to the extent permitted by the contract granting

the said provisional non-exclusive license; provided, however, that this shall not

apply where it is otherwise provided in the contract.

(9) Where an application is converted pursuant to Article 46(2) with regard to an

application for design registration pertaining to a provisional non-exclusive

license under Article 5-2(1) of the Design Act (Act No.125 of 1959), the provisional

non-exclusive license shall be deemed to have been granted to a person who has

the said provisional non-exclusive license with regard to a patent right to be

obtained based on the right to obtain a patent pertaining to the patent application

pertaining to the conversion of the said application to the extent permitted by the

contract granting the said provisional non-exclusive license; provided, however,

that this shall not apply where it is otherwise provided in the contract.

(10) A provisional non-exclusive license shall be extinguished where the

establishment of a patent right has been registered, where the patent application

has been abandoned, withdrawn or declined, or where an examiner's decision or

trial decision has become final and conclusive to the effect that the patent

application is to be refused.

(11) In addition to the case provided for in the preceding paragraph, the provisional

non-exclusive license under Article 34-2(4) or the main clause of paragraph (7)

shall be extinguished in the case where the said provisional exclusive license is

extinguished.

(12) Article 33(2) and Article 33(3) shall apply mutatis mutandis to a provisional

non-exclusive license.

(Effect of the registration)

Article 34-4 (1) The grant, transfer (except for a transfer arising from general

succession including inheritance), amendment, lapse (except for a lapse arising

from a merger or under Article 34-2(6)) or restriction on disposition of a

provisional exclusive license shall have no effect unless it is registered.

(2) Matters of general succession including inheritance under the preceding

paragraph shall be notified to the Commissioner of the Patent Office without

delay.

(Perfection of provisional non-exclusive license)

Article 34-5 A provisional non-exclusive license shall have effect on any person who,

after the grant thereof, has obtained the right to obtain a patent pertaining to the

said provisional non-exclusive license or a provisional exclusive license, or a

provisional exclusive license on the right to obtain a patent pertaining to the

provisional non-exclusive license.

(Inventions by Employees)

Article 35 (1) An employer, a juridical person or a national or local government

(hereinafter referred to as "employer, etc."), where an employee, an officer of the

juridical person, or a national or local government employee (hereinafter referred

to as "employee, etc.") has obtained a patent for an invention which, by the nature

of the said invention, falls within the scope of the business of the said employer,

etc. and was achieved by an act(s) categorized as a present or past duty of the said

employee, etc. performed for the employer, etc. (hereinafter referred to as

"employee invention") or where a successor to the right to obtain a patent for the

employee invention has obtained a patent therefor, shall have a non-exclusive

license on the said patent right.

(2) In the case of an invention by an employee, etc., any provision in any agreement,

employment regulation or any other stipulation providing in advance that the

right to obtain a patent shall be acquired by an employer, etc., that the patent

rights for any invention made by an employee, etc. shall vest in the employer, etc.,

or that a provisional exclusive license or exclusive license for the said invention

shall be granted to the employer, etc., shall be null and void unless the said

invention is an employee invention.

(3) In the case of an invention by an employee, etc., where it is prescribed in any

agreement, employment regulation or any other stipulation providing in advance

that the right to obtain a patent for any employee invention made by an employee,

etc. shall vest in the employer, etc., the said right to obtain a patent shall belong

to the said employer, etc. from its occurrence.

(4) Where the employee, etc., in accordance with any agreement, employment

regulation or any other stipulation, vests the right to obtain a patent and the

patent right for an employee invention in the employer, etc., or grants an

exclusive license therefor to the employer, etc., or where an exclusive license is

deemed to have been granted pursuant to Article 34-2(2) in the case where the

employee, etc., in accordance with any agreement, employment regulation or any

other stipulation, grants a provisional exclusive license therefor to the employer,

etc., for an employee invention, the said employee, etc. shall have the right to

receive reasonable money or any other economic benefits(referred to as

"reasonable benefits" in the next paragraph and paragraph (7)).

(5) Where an agreement, employment regulation or any other stipulation provides

for the reasonable benefits, providing reasonable benefits in accordance with the

said provision(s) shall not be considered unreasonable in light of circumstances

where a negotiation between the employer, etc. and the employee, etc. had taken

place in order to set standards for the determination of the said reasonable

benefits, the set standards had been disclosed, the opinions of the employee, etc.

on the determination of the content of the said reasonable benefits had been

received and any other relevant circumstances.

(6) In order to encourage inventions, the Minister of Economy, Trade and Industry

shall establish guidelines on matters concerning circumstances, etc. to be

considered under the preceding paragraph and publish them after hearing the

opinion of Industrial Structure Council.

(7) Where no provision setting forth the reasonable benefits exists, or where it is

recognized under paragraph (5) that the reasonable benefits to be granted in

accordance with the relevant provision(s) is unreasonable, the content of the

reasonable benefits to receive under paragraph (4) shall be determined by taking

into consideration the amount of profit to be received by the employer, etc. from

the invention, the employer, etc.'s burden, contribution, and treatment of the

employee, etc. and any other circumstances relating to the invention.

(Patent applications)

Article 36 (1) A person requesting the grant of a patent shall submit an

application to the Commissioner of the Patent Office stating the following:

(i) the name and domicile or residence of the applicant(s) for the patent; and

(ii) the name and domicile or residence of the inventor(s).

(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.

(5) The scope of claims as provided in paragraph (2) shall state a claim or claims and

state for each claim all matters used necessary to specify the invention for which

the applicant requests the grant of a patent. In such case, an invention specified

by a statement in one claim may be the same invention specified by a statement

in another claim.

(6) The statement of the scope of claims as provided in paragraph (2) shall comply

with each of the following items:

(i) the invention for which a patent is sought is stated in the detailed explanation

of the invention;

(ii) the invention for which a patent is sought is clear;

(iii) the statement for each claim is concise; and

(iv) the statement is composed in accordance with Ordinance of the Ministry of

Economy, Trade and Industry.

(7) The abstract as provided in paragraph (2) shall state a summary of the invention

disclosed in the description, scope of claims or drawings, and any other matters as

provided by Ordinance of the Ministry of Economy, Trade and Industry.

Article 36-2 (1) A person requesting the grant of a patent may, in lieu of the

description, scope of claims, drawings (where required) and abstract as provided

in paragraph (2) of the preceding Article, attach to the application a document in

foreign language as provided by Ordinance of the Ministry of Economy, Trade and

Industry, stating matters required to be stated in the description or the scope of

claims under paragraphs (3) to (6) of the said Article, and drawing(s) (where

required) which contain any descriptive text in the said foreign

language(hereinafter referred to as "foreign-language-documents"), and a

document in the said foreign language stating matters required to be stated in the

abstract under paragraph (7) of the said Article (hereinafter referred to as

"foreign-language-abstract").

(2) The applicant for a patent application in which foreign-language-documents and

foreign-language-abstract are attached to the application under the preceding

paragraph (hereinafter referred to as "foreign-language-written-application")

shall submit to the Commissioner of the Patent Office Japanese translations of

the foreign-language-documents and the foreign-language-abstract within one

year and four months from the date of filing of the patent application (or in the

case of a patent application containing a priority claim under Article 41(1), the

filing date of the earlier application provided for in the said paragraph, in the case

of a patent application containing a priority claim under Article 43(1), 43-2(1)

(including its mutatis mutandis application under Article 43-3(3)), or 43-3(1) or

43-3(2), the filing date of the earliest application, a patent application that is

deemed to be the earliest application under Article 4.C(4) of the Paris Convention

(refers to the Paris Convention for the Protection of Industrial Property of March

20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2,

1911, at Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on

October 31, 1958, and at Stockholm on July 14, 1967, the same shall apply

hereinafter) or a patent application that is recognized as the earliest application

under Article 4.A(2) of the Paris Convention, and in the case of a patent

application containing two or more priority claims under Article 41(1), 43-2(1)

(including its mutatis mutandis application under Article 43-3(3)), or 43-3(1) or

43-3(2), the earliest day of the filing dates on which the said priority claims are

based, the same shall apply to Article 64(1)); provided, however, that where the

foreign-language-written-application is 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 (2), or a patent

application based on a utility model registration under Article 46-2(1), the

applicant may submit Japanese translations of the foreign-language-documents

and the foreign-language-abstract even after the lapse of the time limit

prescribed in the main clause, but not later than two months following the

division of a patent application, conversion of application or filing of patent

application based on a utility model registration.

(3) Where the translation of foreign-language-documents and the foreign-language

abstract as provided in the preceding paragraph have not been submitted within

the time limit prescribed in the main clause of the said paragraph (the time limit

prescribed in the proviso to the said paragraph where the translation of

foreign-language-documents and the foreign-language abstract may be submitted

under the proviso to the said paragraph; hereinafter the same shall apply in this

Article), the Commissioner of the Patent Office shall notify the applicant of the

foreign-language-written-application thereof.

(4) A person who has received the notice as provided in the preceding paragraph

may submit the translation of foreign-language-documents and the

foreign-language abstract as provided in paragraph (2) to the Commissioner of

the Patent Office only within the time limit as provided in Ordinance of the

Ministry of Economy, Trade and Industry.

(5) Where the translation of foreign-language-documents (excluding drawings) as

provided in paragraph (2) has not been submitted within the time limit as

provided in paragraph (4), the patent application shall be deemed to have been

withdrawn upon expiration of the time limit prescribed in the main clause of the

said paragraph.

(6) An applicant of a patent application that was deemed to have been withdrawn

pursuant to the provision of the preceding paragraph, where there are justifiable

reasons for having not been able to submit the said translation within the time

limit under paragraph(4), may submit to the Commissioner of the Patent Office

translations of the foreign-language-documents and the

foreign-language-abstract under paragraph (2), only within the time limit as

provided in Ordinance of the Ministry of Economy, Trade and Industry.

(7) The translation submitted under paragraph (4) or the preceding paragraph shall

be deemed to have been submitted to the Commissioner of the Patent Office at the

time of expiration of the time limit under the main clause of paragraph (2).

(8) The translation of foreign-language-documents as provided in paragraph (2)

shall be deemed to be the description, scope of claims and drawings submitted

with the application under paragraph (2) of the preceding Article and the

translation of foreign-language-abstract as provided in paragraph (2) shall be

deemed to be the abstract submitted with the application under paragraph (2) of

the preceding Article.

Article 37 Two or more inventions may be the subject of a single patent

application in the same application provided that, these inventions are of a group

of inventions recognized as fulfilling the requirements of unity of invention based

on their technical relationship designated in Ordinance of the Ministry of

Economy, Trade and Industry,.

(Joint applications)

Article 38 Where the right to obtain a patent is jointly owned, a patent application

may only be filed by all the joint owners.

(Certification of filing date)

Article 38-2 (1) The Commissioner of the Patent Office shall certify the date on

which the application with regard to a patent application is submitted as the date

of the filing of a patent application, except in cases where the patent application

falls under any of the following items:

(i) where it is recognized that indication of requesting the grant of a patent is not

clear;

(ii) where the statement of the name of the applicant(s) does not exist or it is

recognized that the said statement is not so clear to specify the applicant(s); and

(iii) where description (in foreign-language-written-application, the matters to be

stated in the description are stated in foreign-language as provided by

Ordinance of the Ministry of Economy, Trade and Industry under Article

36-2(1); hereinafter, the same shall apply in this Article) is not attached to the

said application (except in the case where a patent application is filed by a

method prescribed in the paragraph (1) of the immediately following Article).

(2) Where the patent application falls under any of the items of the preceding

paragraph, the Commissioner of the Patent Office shall notify a person requesting

the grant of a patent to the effect that the patent application may be

complemented.

(3) A person who has received a notice provided under the preceding paragraph may

make supplement only within the time limit as provided by Ordinance of the

Ministry of Economy, Trade and Industry.

(4) For making any supplement under the preceding paragraph, a document with

respect to supplement (hereinafter referred to as "written supplement") shall be

submitted in accordance with Ordinance of the Ministry of Economy, Trade and

Industry; provided however, where making the supplement for the description

under the preceding paragraph, the said description shall be submitted at the

same time as the submission of the written supplement.

(5) In a case of making supplement under paragraph (3), drawing(s) (where

required) of Article 36 (2) may be submitted at the same time as the submission of

the written supplement (in the case where a foreign-language-written-application,

drawing(s) (where required) which contain any descriptive text in foreign

language as provided by Ordinance of the Ministry of Economy, Trade and

Industry under Article 36-2(1); hereinafter the same shall apply in this Article).

(6) Where a supplement under paragraph (3) has been made by a person who has

received a notice provided under paragraph (2), the patent application shall be

deemed to be filed at the time of submission of the written supplement. In this

case, the Commissioner of the Patent Office shall determine the date on which the

written supplement is submitted as the date of filing of the patent application.

(7) The description submitted under the proviso to paragraph (4) shall be deemed to

be submitted with the application, and the drawing(s) submitted under

paragraph (5) shall be deemed to be submitted with the application.

(8) Where a supplement has not been made by a person who has received a notice as

provided in paragraph (2) within the time limit under paragraph (3), the

Commissioner of the Patent Office may dismiss the said patent application.

(9) Where, prior to receiving a notice provided under paragraph (2), a person

requesting the grant of a patent has undertaken the procedures to be undertaken

by the person upon reception of the notice, the said procedures shall be deemed to

be undertaken by the person by receiving the notice, unless otherwise provided

for by Ordinance of the Ministry of Economy, Trade and Industry.

(Patent application by a method for claiming to refer an earlier patent

application)

Article 38-3 (1) Except for a case of filing a foreign-language-written-application, a

person requesting the grant of a patent, notwithstanding Article 36(2), may file a

patent application by a method for claiming to refer a patent application made by

the person (including one made in a foreign country, hereinafter referred to as

"earlier patent application" in this Article); provided, however, that this shall not

apply where the patent application falls under item (i) or (ii) of Article 38-2(1).

(2) A person filing a patent application by a method under the preceding paragraph

shall submit to the Commissioner of the Patent Office a document stating thereof

and matters as provided by Ordinance of the Ministry of Economy, Trade and

Industry, at the time of filing the said patent application.

(3) A person who has filed a patent application by the method under paragraph (1)

shall submit the description and drawing(s) (if necessary) to be submitted with

the application of the said patent application, and the document as provided by

Ordinance of the Ministry of Economy, Trade and Industry with regard to the

earlier patent application referred in the method under the said paragraph within

the time limit as provided in Ordinance of the Ministry of Economy, Trade and

Industry.

(4) Where the matters stated in the description and drawing(s) submitted under the

preceding paragraph do not remain the matters stated in the description, claims

or drawing(s) attached to the application of the earlier patent application referred

in the method under paragraph(1) (in the case where the said earlier patent

application is a foreign-language-written-application,

foreign-language-documents; in the case where the said earlier patent application

is filed in a foreign country, documents which are submitted at the time of filing

the application and correspond to the description, claims or drawing(s)), the said

patent application, notwithstanding Article 38-2(1), shall be deemed to have been

filed at the time of submission of the description and drawing(s) under the

preceding paragraph.

(5) The description and drawing(s) submitted under paragraph (3) shall be deemed

to be submitted with the application.

(6) Any of the preceding paragraphs shall not apply to a new patent application

arising from the division of a patent application under Article 44(1), a patent

application arising from the conversion of an application under Article 46(1) or (2),

and a patent application based on a utility model registration under Article

46-2(1).

(Notice, etc. for lack of the statement of a part of the description or drawing(s))

Article 38-4 (1) In determining the date of filing of a patent application, the

Commissioner of the Patent Office, upon finding out lack of statement of a part of

the description or drawing(s) (in the case of a

foreign-language-written-application, a document in foreign language as provided

by Ordinance of the Ministry of Economy, Trade and Industry, stating matters

required to be stated in the description under Article 36-2(1) and drawing(s)

(where required) which contain any descriptive text in the said foreign language,

hereinafter the same shall apply in this article) attached to the application, shall

notice the applicant thereof.

(2) A person who has received a notice provided under the preceding paragraph may

make supplement of the description or drawing(s) only within the time limit as

provided in Ordinance of the Ministry of Economy, Trade and Industry.

(3) For any supplement under the preceding paragraph, a document with regard to

the supplement of the description or drawing(s) (hereinafter referred to as

"written supplement of the description, etc.") shall be submitted in accordance

with Ordinance of the Ministry of Economy, Trade and Industry.

(4) Where a person who has received a notice provided under paragraph (1) makes

the supplement of a patent application within the time limit as provided in

paragraph (2), notwithstanding Article 38-2(1) or (6), the said patent application

shall be deemed to have been filed at the time of submitting the written

supplement of the description, etc.; provided however, that this shall not apply

where the supplement have been made with regard to a patent application

containing a priority claim under Article 41(1), 43(1), 43-2(1) (including its

mutatis mutandis application under Article 43-3(3)), 43-3(1), or 43-3(2), and

where the contents stated in the written supplement of the description, etc.

submitted under the preceding paragraph are within the scope as provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(5) Where a patent application supplemented under paragraph (2) falls under

Article 38-2(1)(i) or (ii), and where the written supplement of the said supplement

have been submitted after the submission of the written supplement of the

description, etc. under paragraph (3), notwithstanding the preceding paragraph,

the said patent application shall be deemed to have been filed at the time of

submitting the said written supplement.

(6) The description or drawing(s) supplemented under paragraph (2) shall be

deemed to have been submitted with the application.

(7) A person who has made supplement under paragraph (2) may withdraw the

written supplement of the description, etc. submitted under paragraph (3) only

within the time limit as provided in Ordinance of the Ministry of Economy, Trade

and Industry.

(8) Where the written supplement of the description, etc. has been withdrawn under

the preceding paragraph, the said supplement shall be deemed to have not been

made.

(9) Article 38-2(9) shall apply mutatis mutandis to the procedures made before

receiving the notice under paragraph (1).

(10) Any of the preceding paragraphs shall not apply to a new patent application

arising from the division of a patent application under Article 44(1), a patent

application arising from the conversion of an application under Article 46(1) or (2),

and a patent application based on a utility model registration under Article

46-2(1).

(Waiver or withdrawal of patent application)

Article 38-5 Where there is a person who has a provisional exclusive license on the

patent application, an applicant of the patent may waive or withdraw the said

patent application, only where the consent of the person is obtained.

(Prior application)

Article 39 (1) Where two or more patent applications claiming identical inventions

have been filed on different dates, only the applicant who filed the patent

application on the earliest date shall be entitled to obtain a patent for the

invention claimed.

(2) Where two or more patent applications claiming identical inventions have been

filed on the same date, only one applicant, who was selected by consultations

between the applicants who filed the said applications, shall be entitled to obtain

a patent for the invention claimed. Where no agreement is reached by

consultations or consultations are unable to be held, none of the applicants shall

be entitled to obtain a patent for the invention claimed.

(3) Where an invention and a device claimed in applications for a patent and a

utility model registration are identical and the applications for a patent and a

utility model registration are filed on different dates, the applicant for a patent

may obtain a patent for the invention claimed therein, only if the application for a

patent is filed prior to the application for a utility model registration.

(4) Where an invention and a device claimed in applications for a patent and a

utility model registration are identical (excluding the case where an invention

claimed in a patent application based on a utility model registration under Article

46-2(1) (including a patent application that is deemed to have been filed at the

time of filing of the said patent application under Article 44(2) (including its

mutatis mutandis application under Article 46(6)) and a device relating to the

said utility model registration are identical) and the applications for a patent and

a utility model registration are filed on the same date, only one of the applicants,

selected by consultations between the applicants, shall be entitled to obtain a

patent or a utility model registration. Where no agreement is reached by

consultations or no consultations are able to be held, the applicant for a patent

shall not be entitled to obtain a patent for the invention claimed therein.

(5) Where an application for a patent or a utility model registration has been waived,

withdrawn or dismissed, or where the examiner's decision or trial decision to the

effect that a patent application is to be refused has become final and binding, the

application for a patent or a utility model registration shall, for the purpose of

paragraphs (1) to (4), be deemed never to have been filed; provided, however, that

this shall not apply to the case where the examiner's decision or trial decision to

the effect that the patent application is to be refused has become final and

binding on the basis that the latter sentence of paragraph (2) or (4) is applicable

to the said patent application.

(6) The Commissioner of the Patent Office shall, in the case of paragraph (2) or (4),

order the applicant to hold consultations as specified under paragraph (2) or (4)

and to report the result thereof, designating an adequate time limit.

(7) Where no report under the preceding paragraph is submitted within the time

limited designated under the said paragraph, the Commissioner of the Patent

Office may deem that no agreement under paragraph (2) or (4) has been reached.

Article 40 Deleted

(Priority claim based on patent application, etc.)

Article 41 (1) A person requesting the grant of a patent may make a priority claim

for an invention claimed in the patent application, based on an invention

disclosed in the description or scope of claims for a patent or utility model

registration, or drawings (in the case where the earlier application was a

foreign-language-written-application, foreign-language-documents) originally

attached to the application of an earlier application filed for a patent or utility

model registration which the said person has the right to obtain (hereinafter

referred to as "earlier application"), except in the following cases: provided,

however, where there is a person who has a provisional exclusive license on the

earlier application, priority claim may be made only where the consent of the

person is obtained at the time of filing of the patent:

(i) where the said patent application is not filed within one year from the date of

the filing of the earlier application (excluding the case where there is a

reasonable ground for failing to file the patent application within one years

from the filing date of the earlier application and the patent application is filed

within the time limit provided in Ordinance of the Ministry of Economy, Trade

and Industry);

(ii) where the earlier application is a new divisional patent application extracted

from a patent application under Article 44(1), a patent application converted

from a patent application under Article 46(1) or 46(2) or a patent application

based on a utility model registration under Article 46-2(1), or a new divisional

utility model registration application extracted from a utility model

registration application under Article 44(1) of the Patent Act as applied mutatis

mutandis under Article 11(1) of the Utility Model Act or a utility model

registration application converted from a utility model registration application

under Article 10(1) or 10(2) of the Utility Model Act;

(iii) where at the time of the filing of the said patent application, the earlier

application had been waived, withdrawn or dismissed;

(iv) where, at the time of the filing of the said patent application, the examiner's

decision or the trial decision on the earlier application had become final and

binding; and

(v) where, at the time of the filing of the said patent application, the registration

establishing a utility model right under Article 14(2) of the Utility Model Act

with respect to the earlier application had been effected.

(2) For inventions among those claimed in a patent application containing a priority

claim under paragraph (1), for those that are stated in the description, scope of

claims for a patent or utility model registration or drawings (in the case where

the earlier application was a foreign-language-written-application,

foreign-language-documents) originally attached to the application of the earlier

application on which the priority claim is based (in the case where the earlier

application contains a priority claim under that paragraph or Article 8(1) of the

Utility Model Act, or Article 43(1), Article 43-2(1) (including its mutatis mutandis

application under Article 43-3(3)), or Article 43-3(1) or (2) of the Patent Act

(including their mutatis mutandis application under Article 11(1) of the Utility

Model Act), excluding any inventions disclosed in any documents (limited to those

equivalent to the description, scope of claims for a patent or utility model

registration or drawings) submitted at the time of the filing of the application on

which the priority claim in the earlier application is based), the said patent

application shall be deemed to have been filed at the time when the earlier

application was filed, in the case of the application of Article 29, the main clause

of Article 29-2, Articles 30(1), (2), 39(1) to (4), 69(2)(ii), 72, 79, 81, 82(1), 104

(including its mutatis mutandis application under Article 65(5) (including its

mutatis mutandis application under Article 184-10(2))) and 126(7) (including its

mutatis mutandis application under Articles 17-2(6), 120-5(9) and 134-2(9)) of the

Patent Act, Articles 7(3) and 17 of the Utility Model Act, Articles 26, 31(2) and

32(2) of the Design Act, and Article 29, 33-2(1) and 33-3(1) (including their

mutatis mutandis application under Article 68(3) of the Trademark Act) of the

Trademark Act (Act No. 127 of 1959 ).

(3) Among inventions disclosed in the description, scope of claims or drawings (in

the case of a foreign-language-written-application, foreign-language-documents)

originally attached to the application in a patent application containing a priority

claim under paragraph (1), for those that are stated in the description, scope of

claims for a patent or utility model registration or drawings (in the case where

the earlier application was a foreign-language-written-application,

foreign-language-documents) originally attached to the application of the earlier

application on which the priority claim is based (in the case where the earlier

application contains a priority claim under the said paragraph or Article 8(1) of

the Utility Model Act, or Article 43(1), Article 43-2(1) (including its mutatis

mutandis application under Article 43-3(3)), or Article 43-3(1) or (2) of the patent

Act (including their mutatis mutandis application under Article 11(1) of the

Utility Model Act), excluding any inventions disclosed in any documents (limited

to those equivalent to the description, scope of claim for a patent or utility model

registration or drawing) submitted at the time of the filing of the application on

which the priority claim in the earlier application is based), the laying open of

application or the bulletin containing the Utility Model pertaining to the earlier

application shall be deemed to have been effected or issued at the time when the

patent gazette containing patent or the laying open of application pertaining to

the said patent application was issued or effected, and the main clause of Article

29-2 of the patent Act or Article 3-2 of the Utility Model Act shall apply.

(4) A person requesting to make a priority claim under paragraph (1) shall submit

to the Commissioner of the Patent Office a document stating thereof and the

indication of the earlier application along with the patent application within the

time limit provided in Ordinance of the Ministry of Economy, Trade and Industry.

(Withdrawal, etc. of earlier application)

Article 42 (1) The earlier application on which a priority claim is based under

Article 41(1) shall be deemed to have been withdrawn when the time limit

provided in Ordinance of the Ministry of Economy, Trade and Industry has lapsed

from the filing date of the earlier application; provided, however, that this shall

not apply to the case where the earlier application has been waived, withdrawn or

dismissed, where the examiner's decision or trial decision on the earlier

application has become final and binding, where the registration establishing a

utility model right under Article 14(2) of the Utility Model Act with respect to the

earlier application has been effected or where all priority claims based on the

earlier application have been withdrawn.

(2) The applicant of a patent application containing a priority claim under Article

41(1) may not withdraw the priority claim after the time limit provided in

Ordinance of the Ministry of Economy, Trade and Industry has passed from the

filing date of the earlier application.

(3) Where the patent application containing a priority claim under Article 41(1) is

withdrawn within the time limit provided in Ordinance of the Ministry of

Economy, Trade and Industry from the filing date of the earlier application, the

said priority claim shall be deemed withdrawn simultaneously.

(Procedures for a priority claim under the Paris Convention)

Article 43 (1) A person desiring to take advantage of the priority under Article

4.D(1) of the Paris Convention regarding a patent application shall, within the

time limit provided in Ordinance of the Ministry of Economy, Trade and Industry,

submit to the Commissioner of the Patent Office a document stating thereof, and

specify the country of the Union of the Paris Convention in which the application

was first filed, deemed to have been first filed under C(4) of the said Article, or

recognized to have been first filed under A(2) of the said Article, and the date of

filing of the said application.

(2) A person who has made a declaration of priority under the preceding paragraph

shall submit to the Commissioner of the Patent Office a certificate showing the

date of filing from the country of the Union of the Paris Convention in which the

application was first made, or deemed to have been first made under Article

4.C(4) of the Paris Convention, or recognized to have been first made under A(2)

of the said Article, as well as certified copies of those equivalent to the description,

scope of claims for patent or utility model registration and drawings submitted at

the time of the filing of the application, or any bulletin or certificate equivalent

thereto issued by the government of the said country, within one year and four

months from the earliest of the following dates:

(i) the date of filing which was first made, deemed to have been first made under

Article 4.C(4) of the Paris Convention, or recognized to have been first made

under A(2) of the said Article;

(ii) where such patent application contains a priority claim under Article 41(1),

the date of filing of the application on which the said priority claim is based; or

(iii) where such patent application contains other priority claims under 43(2),

paragraph (1) of the next Article (including its mutatis mutandis application

under Article 43-3(3)), or 43-3(1) or 43-3(2), the date of filing of the application

on which the said priority claim is based.

(3) A person who has made a declaration of priority under paragraph (1) shall, in

addition to the documents as provided in the preceding paragraph, submit to the

Commissioner of the Patent Office a document specifying the filing number of the

application which was first filed, deemed to have been first filed under Article

4.C(4) of the Paris Convention, or recognized to have been first filed under A(2) of

the said Article; provided, however, that where such filing number is not

available to the person prior to the submission of the documents as provided in

the said paragraph, in lieu of the said document, a document specifying the

reason thereof shall be submitted and the document specifying such filing number

shall be submitted without delay when such number becomes available to the

said person.

(4) Where a person who has made a declaration of priority under paragraph (1) fails

to submit the documents specified in paragraph (2) within the time limit provided

therein, the said priority claim shall lose its effect.

(5) In relation to the application of the preceding two paragraphs, where a person,

having made a declaration of priority under paragraph (1) in the case as provided

by Ordinance of the Ministry of Economy, Trade and Industry in which a

conversion of matters stated in the documents as provided in paragraph 2

through an electromagnetic devices (devices that are not perceivable by senses

including electronic and magnetic devices) with a country of the Union of the

Paris Convention or an international organization for industrial property rights is

allowed, submits to the Commissioner of the Patent Office the document stating

the said filing number of the application and other matters as provided by

Ordinance of the Ministry of Economy, Trade and Industry as matters necessary

for converting the said matters, within the designated time limit under

paragraph (2), the documents as provided in paragraph (2) shall be deemed to

have been submitted.

(6) Where a document under paragraph (2) or a document under the preceding

paragraph have not been submitted within the time limit under paragraph (2),

the Commissioner of the Patent Office shall notify a person who has made a

priority claim under paragraph (1) thereof.

(7) A person who has received a notice provided under the preceding paragraph may

submit a document under paragraph (2) or a document under paragraph (5) to the

Commissioner of the Patent Office only within the time limit as provided in

Ordinance of the Ministry of Economy, Trade and Industry.

(8) Notwithstanding the preceding paragraph, where, due to reasons beyond the

control of a person who has received a notice provided under paragraph (6), the

person is unable to submit the documents as provided in paragraph (2) or the

document as provided in paragraph (5) within the time limit provided under the

preceding paragraph, the person may submit to the Commissioner of the Patent

Office the documents or the document within the time limit as provided in

Ordinance of the Ministry of Economy, Trade and Industry.

(9) Where the documents specified in paragraph (2) or the document specified in

paragraph (5) are submitted under paragraph (7) or the preceding paragraph,

paragraph (4) shall not apply.

(Priority claims recognized under the Paris Convention)

Article 43-2 (1) A person, despite of desiring to take advantage of priority under

Article 4.D(1) of the Paris Convention regarding a patent application, who have

been unable to file a patent application containing a priority claim within a period

of priority (hereinafter referred to as the "period of priority") provided in C(1) of

the said Article, where there is a reasonable ground for failing to file the patent

application and he/she files the patent application within the time limit provided

in Ordinance of the Ministry, Trade and Industry, may take advantage regarding

to the said patent application under the said Article, even after the lapse of the

time limit of the period of priority.

(2) Article 43 shall apply mutatis mutandis to the case where a priority claim is

declared under the preceding paragraph.

Article 43-3 (1) A priority claim may be declared in a patent application under

Article 4 of the Paris Convention, where the priority claim is based on an

application filed by a person specified in the left-hand column of the following

table in a country specified in the corresponding right-hand column.

Japanese nationals or nationals of a country of the Union of the Paris Convention (including nationals deemed to be the nationals of the country of the Union in accordance with Article 3 of the Paris Convention - hereinafter the same shall apply in paragraph (2)).

Member of the World Trade Organization

Nationals of a Member of the World Trade Organization (meaning the nationals of Members provided for in paragraph (3) of Article 1 of the Annex 1C to the Marrakesh

Country of the Union of the Paris Convention or Member of the World Trade Organization

(2) The preceding two articles shall apply mutatis mutandis to the case where a

priority claim is declared under the preceding two paragraphs.

(Division of patent applications)

Article 44 (1) An applicant for a patent may extract one or more new patent

applications out of a patent application containing two or more inventions only

within the following cases:

(i) at the allowable time or within the allowable time limit for amendments of the

description, scope of claims or drawings attached to the application;

(ii) within 30 days from the date on which a certified copy of the examiner's

decision to the effect that a patent is to be granted (excluding the examiner's

decision to the effect that a patent is to be granted under Article 51 as applied

mutatis mutandis under Article 163(3) and the examiner's decision to the effect

that a patent is to be granted with regard to a patent application that has been

subject to examination as provided in Article 160(1)) has been served; and

(iii) within three months from the date on which a certified copy of the examiner's

initial decision to the effect that the application is to be refused has been

served.

(2) In the case referred to in the preceding paragraph, the new patent application

shall be deemed to have been filed at the time of filing of the original patent

application; provided, however, that this shall not apply for the purposes of

applications of: Article 29-2 of the Patent Act where the new patent application

falls under another patent application in the said Article; Article 3-2 of the Utility

Model Act where the new patent application falls under a patent application in

the said Article; and Articles 30(3) of the Patent Act.

(3) For the purpose of application of Article 43(2) (including its mutatis mutandis

application under Article 43-2(2) (including its mutatis mutandis application

under paragraph (3) of the preceding Article) and paragraph (3) of the preceding

Article) where a new patent application is filed under paragraph (1), "within one

year and four months from the earliest of the following dates" in Article 43(2)

shall read "within one year and four months from the earliest of the following

dates or three months from the date of filing of the new patent application,

whichever is later."

(4) Where a new patent application is filed under paragraph (1), any statements or

documents which have been submitted in relation to the original patent

application and are required to be submitted in relation to the new patent

application under Article 30(3), 41(4), or Articles 43(1) and 43(2) (including their

mutatis mutandis application under Article 43-2(2) (including its mutatis

mutandis application under paragraph (3) of the preceding Article) and

paragraph (3) of the preceding Article) shall be deemed to have been submitted to

the Commissioner of the Patent Office along with the new patent application.

(5) Where the period as provided in Article 108(1) is extended under Article 4 or

Article 108(3), the 30-day period as provided in paragraph (1)(ii) shall be deemed

to have been extended only for that period as extended.

(6) Where the period as provided in Article 121(1) is extended under Article 4, the

three-month period as provided in paragraph (1)(iii) shall be deemed to have been

extended only for that period as extended.

(7) Notwithstanding items (ii) and (iii) of the said paragraph, where, due to reasons

beyond the control of an applicant for a new patent under paragraph (1), the

applicant is unable to file the new patent application within the time limit as

provided under these items, the applicant may file the new patent application

within 14 days (where overseas resident, within two months) from the date on

which the reasons ceased to be applicable, but not later than six months following

the expiration of the said time limit.

Article 45 Deleted

(Conversion of application)

Article 46 (1) An applicant of a utility model registration may convert the

application into a patent application; provided, however, that this shall not apply

after the expiration of 3 years from the date of filing of the utility model

registration application.

(2) An applicant of a design registration may convert the application into a patent

application; provided, however, that this shall not apply after the expiration of 3

months from the date the certified copy of the examiner's initial decision to the

effect that the application for a design registration is to be refused has been

served or after the expiration of 3 years from the date of filing of the design

registration application (excluding the period of a maximum of 3 months after the

date the certified copy of the examiner's initial decision to the effect that the

application for a design registration is to be refused has been served).

(3) Where the period as provided in Article 46(1) of the Design Act is extended under

Article 4 of the Patent Act as applied mutatis mutandis under Article 68(1) of the

Design Act, the 3-month period as provided in the proviso to the preceding

paragraph shall be deemed to have been extended only for that period as

extended.

(4) Where an application is converted under paragraph (1) or (2), the original

application shall be deemed to have been withdrawn.

(5) Notwithstanding the proviso to paragraph (1) or the proviso to paragraph (2),

where, due to reasons beyond the control of a person who converts his or her

application under paragraph (1), the person is unable to convert his or her

application within the time limit as provided in the proviso to paragraph (1) or

within the time limit of three years as provided in the proviso to paragraph (2),

the person may convert his or her application within 14 days (where overseas

resident, within two months) from the date on which the reasons ceased to be

applicable, but not later than six months following the expiration of the time

limits provided under these paragraphs.

(6) Paragraphs (2) to (4) of Article 44 shall apply mutatis mutandis to the case of

conversion of an application under paragraph (1) or (2).

(Patent applications based on utility model registration)

Article 46-2 (1) Except for the following cases, a holder of utility model right may

file a patent application based on his/her own utility model registration as

provided by Ordinance of the Ministry of Economy, Trade and Industry.; In such a

case, the utility model right shall be waived:

(i) where 3 years have lapsed from the date of filing of an application for the said

utility model registration;

(ii) where a petition requesting the examiner's technical opinion as to the

registrability of the utility model claimed in the utility model registration

application or of the utility model registration, (in the following paragraph

simply referred to as "utility model technical opinion"), is filed by the applicant

of the utility model registration or the utility model right holder;

(iii) where 30 days have lapsed from the date of receipt of initial notice under

Article 13(2) of the Utility Model Act pertaining to a petition requesting the

utility model technical opinion on the application for the utility model

registration, or on the utility model registration filed by a person who is neither

the applicant of the said utility model registration nor the said holder of Utility

Model right; and

(iv) where the time limit initially designated under Article 39(1) of the Utility

Model Act for a utility model registration invalidation trial filed against the

said utility model registration under Article 37(1) of the Utility Model Act has

expired.

(2) A patent application under the preceding paragraph shall be deemed to have

been filed at the time of filing of the application for the said utility model

registration, provided that matters stated in the description, scope of claims or

drawings attached to the application in the said patent application are within the

scope of the matters stated in the description, scope of claims or drawings

attached to the application in the said utility model registration application on

which the said patent application is based; provided, however, that this shall not

apply for the purpose of application of Article 29-2 of the Patent Act or Article 3-2

of the Utility Model Act, where the patent application falls under another patent

application under the said Article of the Patent Act or the patent application

under the said Article of the Utility Model Act, or for the purpose of application of

Articles 30(3), the proviso to 36-2(2) and 48-3(2).

(3) Notwithstanding item (i) or item (iii) of paragraph (1), where, due to reasons

beyond the control of an applicant for a patent under paragraph (1), the applicant

is unable to file an application for a patent within the time limits as provided in

the said items, the applicant may file the patent application within 14 days

(where overseas resident, within two months) from the date on which the reasons

ceased to be applicable, but not later than six months following the expiration of

time limits under these provisions.

(4) Where there is an exclusive licensee, a pledgee or, in the case where Article 35(1)

of the Patent Act as applied under Article 11(3) of the Utility Model Act or Article

77(4) of the Patent Act as applied under Article 18(3) of the Utility Model Act or

Article 19(1) of the Utility Model Act is applicable, a non-exclusive licensee, the

holder of a utility model right may file a patent application under paragraph (1),

provided that the consent of the said exclusive licensee, pledgee or non-exclusive

licensee is obtained.

(5) Articles 44(3) and 44(4) shall apply mutatis mutandis to the case where a patent

application is filed under paragraph (1).

Chapter III Examination

(Examination by examiner)

Article 47 (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.

(Exclusion of examiners)

Article 48 Articles 139(i) to 139(v) and 139(vii) shall apply mutatis mutandis to

examiners.

(Examination of patent applications)

Article 48-2 The examination of a patent application shall be initiated after the

filing of a request for examination.

(Request for examination of application)

Article 48-3 (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), the said patent application shall be

deemed to have been withdrawn.

(5) An applicant of a patent application that was deemed to have been withdrawn

under the preceding paragraph, where there are reasonable grounds for failing to

file a request for examination of the patent application, may file a request for

examination only within the time limit as provided in Ordinance of the Ministry,

Trade and Industry.

(6) The request for examination filed under the preceding paragraph shall be

deemed to have been filed to the Commissioner of the Patent Office at the time of

expiration of the time limit provided in paragraph (1).

(7) Paragraph (3) shall apply mutatis mutandis to the case where the request for

examination has not been filed within the time limit provided in paragraph (2).

(8) Where an request for examination of a patent application is filed under

paragraph (5) (including its mutatis mutandis application in the preceding

paragraph; herein after the same shall apply in this paragraph) and the

establishment of a patent right for the patent application has been registered, a

person who has been working the invention or preparing for the working of the

invention in Japan without knowledge, after the fact that the patent application

has been deemed to be withdrawn under paragraph (4) (including its mutatis

mutandis application in the preceding paragraph) has been published in the

patent gazette and before the fact that the request for examination of the patent

application has been filed under paragraph (5) is published in the patent gazette,

shall have a non-exclusive license on the patent right, only to the extent of the

invention and the purpose of such business worked or prepared.

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.

(Preferential examination)

Article 48-6 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.

(Notice of statement of information concerning invention known to the public

through publication)

Article 48-7 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.

(Examiner's decision of refusal)

Article 49 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 does not have the right to obtain a patent

for the said invention.

(Notice of reasons for refusal)

Article 50 Where the examiner intends to render an examiner's decision to the

effect that an application is to be refused, the examiner shall notify the applicant

for the patent of the reasons therefor and give the said applicant an opportunity

to submit a written opinion, designating an adequate time limit for such purpose;

provided, however, that in cases referred to in Article 17-2(1) (i) or (iii) (in the case

of Article 17-2(1)(i), limited to the case where the examiner has given a notice

under the next Article along with the notice of reasons for refusal), this shall not

apply where a ruling dismissing an amendment under Article 53(1) is rendered.

(Notice to the effect that the reasons for refusal stated therein are the same as

those stated in the previous notice)

Article 50-2 Where the examiner intends to give a notice of reasons for refusal for

a patent application under the preceding Article, and these reasons for refusal are

the same as the reasons for refusal stated in the previous notice under the

preceding Article (including its application mutatis mutandis under Article 159(2)

(including its application mutatis mutandis under Article 174(2)) and Article

163(2)) with regard to another patent application (limited to the case where both

patent applications are deemed to have been filed simultaneously by applying the

provision of Article 44(2) to either or both of them) (excluding such a notice of

reasons for refusal of which the applicant of the patent application could have

never known the content prior to the filing of a request for examination of the

patent application), the examiner shall also give a notice to that effect.

(Examiner's decision to the effect that a patent is to be granted)

Article 51 Where no reasons for refusal are found for a patent application, the

examiner shall render a decision to the effect that a patent is to be granted.

(Formal requirements for decision)

Article 52 (1) The examiner's decision shall be in writing and specify the reasons

therefor.

(2) Where the examiner's decision is rendered, the Commissioner of the Patent

Office shall serve to the applicant of a Patent a certified copy of the examiner's

decision.

(Dismissal of amendments)

Article 53 (1) In the case of Article 17-2(1)(i) or 17-2(1)(iii) (in the case of Article

17-2(1)(i), limited to the case where the examiner has given a notice under Article

50-2 along with the notice of reasons for refusal), where, prior to the service of the

certified copy of the examiner's decision notifying to the effect that a patent is to

be granted, an amendment made to the description, scope of claims or drawings

attached to the application is found not to comply with paragraphs (3) to (6) of

Article 17-2, the examiner shall dismiss the amendment by a ruling.

(2) The ruling dismissing an amendment under the preceding paragraph shall be

made in writing and state the reasons therefor.

(3) The ruling dismissing an amendment under paragraph (1) shall not be subject to

appeal; provided, however, that where a request for an appeal against an

examiner's decision of refusal has been filed, this shall not apply to the appeal

made in the proceeding in the said trial.

(In relation to litigation)

Article 54 (1) Where deemed necessary during an examination, the examination

procedure may be suspended until a ruling or a trial decision on an opposition to a

granted patent has become final and binding or court proceedings have been

concluded.

(2) Where an action is instituted or a motion for an order of provisional seizure or

provisional disposition is filed, the court may, if it considers it necessary, suspend

the court proceedings until the examiner's decision becomes final and binding.

Articles 55 through 63 Deleted

Chapter III-2 Laying Open of Applications

(Laying open of applications)

Article 64 (1) After a lapse of one year and six months from the date of the filing of

a patent application, the Commissioner of the Patent Office shall lay open the

patent application, except in the case where gazette containing the patent has

already been published. The same shall apply where a request for the laying open

of the patent application under paragraph (1) of the following Article is filed.

(2) The laying open of a patent application shall be effected by stating the following

matters in the patent gazette; provided, however, that this shall not apply to the

matters prescribed in items (iv) to (vi) where the Commissioner of the Patent

Office recognizes that public order or morality is liable to be injured by stating

such matters in the patent gazette:

(i) the name, and the domicile or residence of the applicant(s) for the patent;

(ii) the number and the filing date of the patent application;

(iii) the name, and the domicile or residence of the inventor(s);

(iv) the matters stated in the description, scope of claims attached to the

application and the contents of the drawings attached to the said application;

(v) the matters stated in the abstract attached to the application;

(vi) in the case of a foreign-language-written-application, the matters stated in

documents in foreign language and the abstract in foreign language;

(vii) the number and the date of laying open of the patent application; and

(viii) other necessary matters.

(3) When anything stated in the abstract attached to the application does not

comply with Article 36(7), or in cases where the Commissioner of the Patent

Office finds it otherwise necessary, the Commissioner of the Patent Office may

publish in the patent gazette, in lieu of the matters stated in the abstract under

item (v) of the preceding paragraph, matters prepared by the Commissioner of the

Patent Office.

(Request for laying open of a patent application)

Article 64-2 (1) An applicant for a patent may file a request for the laying open of

the patent application with the Commissioner of the Patent Office except in the

following cases:

(i) where the patent application has already been laid open;

(ii) where the patent application contains a priority claim under Article 43(1), ,

Article 43-2(1) (including its mutatis mutandis application under Article

43-3(3)), or Article 43-3(1) or (2), and documents relating thereto under Article

43(2) (including its mutatis mutandis application under Articles 43-2(2)

(including its mutatis mutandis application under Article 43-2(3)) and 43-3(3))

and a document relating thereto under Articles 43(5) (including its mutatis

mutandis application under Article 43-2(2)) and 43-3(3), have not been

submitted to the Commissioner of the Patent Office; and

(iii) where the patent application is a foreign-language-written-application and

translations of foreign-language-documents under Article 36-2(2) have not been

submitted to the Commissioner of the Patent Office.

(2) A request for the laying open of a patent application may not be withdrawn.

Article 64-3 An applicant filing a request for the laying open of a patent

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 laying open is

requested.

(Effect of the laying open of applications)

Article 65 (1) After the laying open of a patent application, where the applicant for

the patent has given warning with documents stating the contents of the

invention claimed in the patent application, the applicant may claim

compensation against a person who has worked the invention as a business after

the warning and prior to the registration establishing a patent right, and the

amount of compensation shall be equivalent to the amount the applicant would be

entitled to receive for the working of the invention if the invention were patented.

Even where the said warning has not been given, the same shall apply to a person

who knowingly commercially worked an invention claimed in a laid open patent

application, prior to the registration establishing a patent right.

(2) The right to claim compensation under the preceding paragraph may not be

exercised until the registration establishing a patent right has been effected.

(3) Where a provisional exclusive licensee or a provisional non-exclusive licensee

has worked an invention pertaining to the patent application to the extent

permitted by the contract granting a license, the applicant for the patent may not

claim compensation under paragraph (1).

(4) The exercise of the right to claim compensation under paragraph (1) shall not

preclude the exercise of the patent right.

(5) Where a patent application has been waived, withdrawn or dismissed after the

laying open of the patent application, or where the examiner's decision or a trial

decision refusing the patent application has become final and binding, or where

the patent right has been deemed never to have existed from the beginning under

Article 112(6) (except in the case where it is further found that the patent right is

deemed to have existed from the beginning under Article 112-2(2)), or where

revocation decision under Article 114(2) has become final and binding, or where,

with exception of cases coming under the proviso to Article 125, a trial decision to

the effect that the patent is to be invalidated has become final and binding, the

right to claim under paragraph (1) shall be deemed never to have been

established from the beginning.

(6) Articles 101, 104 to 104-3, 105, 105-2, 105-4 to 105-7 and 168(3) to 168(6) of this

Act and Articles 719 and 724 (tort) of the Civil Code (Act No. 89 of 1896) shall

apply mutatis mutandis to the exercise of the right to claim compensation under

paragraph (1). In this case, where a person having the right to claim

compensation has become aware of the fact that the invention claimed in the

patent application had been worked and of the person who had worked the

invention prior to the registration establishing a patent right, the term "by the

victim or his/her legal representative within three years from the time when

he/she comes to know of the damages and the identity of the perpetrator" in

Article 724 of the Civil Code shall be deemed to be replaced with "by the person

having the right to claim within three years from the date of the registration

establishing a patent right."

Chapter IV Patent Rights

Section 1 Patent Rights (Article 66 to Article 99)

(Registration of establishment of a patent right)

Article 66 (1) A patent right shall become effective upon registration of its

establishment.

(2) The establishment of a patent right shall be registered where patent fees for

each year during the period from the first year to the third year under Article

107(1) have been paid or an exemption or deferment thereof has been granted.

(3) Where the registration under the preceding paragraph has been effected, the

following matters shall be published in the patent gazette; provided, however,

that this shall not apply to the matters prescribed in paragraph (v) where the

patent application has already been laid open:

(i) the name, and the domicile or residence of the patentee(s);

(ii) the number and the filing date of the patent application;

(iii) the name, and the domicile or residence of the inventor(s);

(iv) the matters stated in the description and scope of claims attached to the

application and the contents of the drawings attached to the said application;

(v) the matters stated in the abstract attached to the application;

(vi) the patent number and the date of registration of establishment; and

(vii) other necessary matters.

(4) Article 64(3) shall apply mutatis mutandis where the matters stated in the

abstract as provided in Article 64(3)(v) are published in the patent gazette under

the preceding paragraph.

(Duration of patent rights)

Article 67 (1) The duration of a patent right shall expire after a period of 20 years

from the filing date of the patent application.

(2) Where there is a period during which the patented invention is unable to be

worked because approvals prescribed by relevant Acts that are intended to ensure

the safely, etc. or any other disposition designated by Cabinet Order as requiring

considerable time for the proper execution of the disposition in light of the

purpose, procedures, etc., of such a disposition is necessary to obtain for the

working of the patented invention, the duration of the patent right may be

extended, upon the filing an application to register an extension of the duration,

by a period not exceeding 5 years.

(Registration of extension of duration)

Article 67-2 (1) A person(s) filing an application to register an extension of the

duration of a patent right shall submit an application to the Commissioner of the

Patent Office stating the following:

(i) the name, and the domicile or residence of the applicant;

(ii) the patent number;

(iii) the period for which the extension is requested (not exceeding 5 years); and

(iv) the contents of the disposition designated by Cabinet Order under Article

67(2).

(2) The written application under the preceding paragraph shall be accompanied by

materials specifying the reason(s) for the extension, as provided by Ordinance of

the Ministry of Economy, Trade and Industry.

(3) The application to register an extension of the duration of a patent right shall be

filed within the time limit prescribed by Cabinet Order after the disposition

prescribed by Cabinet Order under Article 67(2) is obtained; provided, however,

that the said written application may not be filed after the expiration of the

duration of a patent right under Article 67(1).

(4) Where a patent right is jointly owned, none of the joint owners may file an

application to register an extension of the duration of a patent right unless jointly

with all the other joint owners.

(5) Where an application to register an extension of the duration of a patent right is

filed, the duration shall be deemed to have been extended; provided, however,

that this shall not apply where the examiner's decision to the effect that the

application is to be refused has become final and binding or where the extension

of the duration of a patent right has been registered.

(6) Where an application to register an extension of the duration of a patent right is

filed, matters stated in paragraph (1) and the number and the filing date of the

application shall be published in the patent gazette.

Article 67-2-2 (1) Where the disposition designated by Cabinet Order under

Article 67(2) is unlikely to be obtained prior to 6 months before the expiration of

the duration of a patent right under Article 67(1), a person filing an application to

Commissioner of the Patent Office, on or before the time limit, a document stating

the following:

(i) the name, and domicile or residence of the person filing the application;

(ii) the patent number; and

(iii) the disposition designated by Cabinet Order under Article 67(2).

(2) Unless the document required to be submitted under the preceding paragraph is

submitted, an application to register an extension of the duration of a patent right

may not be filed after 6 months before the expiration of the duration of the patent

right under Article 67(1).

(3) Where the document as provided in paragraph (1) is submitted, the matters

prescribed in the said paragraph shall be published in the patent gazette.

(4) Where, due to reasons beyond the control of a person who submits a document

under paragraph (1), the person is unable to submit the document within the time

limit as provided in the said paragraph, the person may, notwithstanding the said

paragraph, submit the document within 14 days (where overseas resident, within

one months) from the date on which the reasons ceased to be applicable, but not

later than two months following the date under the said paragraph.

Article 67-3 (1) Where an application to register an extension of the duration of a

patent right falls under any of the following items, the examiner shall render the

examiner's decision to the effect that the application is to be refused:

(i) where the disposition designated by Cabinet Order under Article 67(2) is not

deemed to have been necessary to obtain for the working of the patented

invention;

(ii) where the patentee, or the exclusive licensee or the non-exclusive licensee of

the patent has not obtained the disposition designated by Cabinet Order under

Article 67(2);

(iii) where the period for which the extension is requested exceeds the period

during which the patented invention was unable to be worked;

(iv) where the person filing the application is not the patentee; and

(v) where the application does not meet the requirements under Article 67-2(4).

(2) Where no reasons for refusal are found for the application to register an

extension of the duration of a patent right, the examiner shall render an

examiner's decision to the effect that the extension is to be registered.

(3) Where the examiner's decision or trial decision to the effect that the extension of

the duration of the patent right is to be registered is rendered, the extension of

the duration of the patent right shall be registered.

(4) Where the registration under the preceding paragraph is made, the following

matters shall be published in the patent gazette:

(i) the name and domicile or residence of the patentee;

(ii) the patent number;

(iii) the number and filing date of the application to register an extension of the

duration of the patent right;

(iv) the date of the registration of extension;

(v) the period of extension; and

(vi) the contents of the disposition designated by Cabinet Order under Article

67(2).

Article 67-4 Articles 47(1), 48, 50 and 52 shall apply mutatis mutandis to the

examination of the application to register an extension of the duration of a patent

right.

(Effect of patent right)

Article 68 A patentee shall have the exclusive right to work the patented invention

as a business; provided, however, that where an exclusive license regarding the

patent right is granted to a licensee, this shall not apply to the extent that the

exclusive licensee is licensed to exclusively work the patented invention.

(Effect of patent right in the case of duration extension)

Article 68-2 Where the duration of a patent right is extended (including the case

where the duration is deemed to have been extended under Article 67-2(5)), such

patent right shall not be effective against any act other than the working of the

patented invention for the product which was the subject of the disposition

designated by Cabinet Order under Article 67(2) which constituted the reason for

the registration of extension (where the specific usage of the product is prescribed

by the disposition, the product used for that usage).

(Limitations of patent right)

Article 69 (1) A patent right shall not be effective against the working of the

patented invention for experimental or research purposes.

(2) A patent right shall not be effective against the following products:

(i) vessels or aircrafts merely passing through Japan, or machines, apparatus,

equipment or other products used therefor; and

(ii) products existing in Japan prior to the filing of the patent application.

(3) A patent right for the invention of a medicine (refers to a product used for the

diagnosis, therapy, treatment or prevention of human diseases, hereinafter the

same shall apply in this paragraph) to be manufactured by mixing two or more

medicines or for the invention of a process to manufacture a medicine by mixing

two or more medicines shall not be effective against the act of preparation of a

medicine as is written in a prescription from a physician or a dentist and the

medicine prepared as is written in a prescription from a physician or a dentist.

(Technical scope of patented invention)

Article 70 (1) The technical scope of a patented invention shall be determined

based upon the statements in the scope of claims attached to the application.

(2) In the case of the preceding paragraph, the meaning of each term used in the

scope of claims shall be interpreted in consideration of the statements in the

description and drawings attached to the application.

(3) In the case of the preceding two paragraphs, statements in the abstract attached

to the application shall not be taken into consideration.

Article 71 (1) A request may be made to the Patent Office for its advisory opinion

on the technical scope of a patented invention.

(2) Where a request under the preceding paragraph is made, the Commissioner of

the Patent Office shall designate three administrative judges to make an advisory

opinion on the requested matter.

(3) Articles 131(1), the main clause of 131-2(1), 132(1) and (2), 133, 133-2, 134(1), (3)

and (4), 135, 136(1) and (2), 137(2), 138, 139 (excluding (vi)), 140 to 144, 144-2(1)

and (3) to (5), 145(2) to (5), 146, 147(1) and (2), 150(1) to (5), 151 to 154, 155(1),

157 and 169(3), (4) and (6) shall apply mutatis mutandis to the advisory opinion

under paragraph (1). In this case, the term "trial decision" in Article 135 shall be

deemed to be replaced with "ruling", the term "trial other than the trial under the

preceding paragraph" in Article 145(2) shall be deemed to be replaced with

"proceedings for advisory opinion", the term "where public order or morality is

liable to be injured thereby" in the proviso to Article 145(5) shall be deemed to be

replaced with "where the chief administrative judge considers it necessary", the

term "Article 147" in Article 151 shall be deemed to be replaced with "Article

147(1) and (2)", the term "before a trial decision becomes final and binding" in

Article 155(1) shall be deemed to be replaced with "before the certified copy of the

written advisory opinion is served".

(4) No appeal shall be available against a ruling under Article 135 to be applied

mutatis mutandis in the preceding paragraph.

Article 71-2 (1) Where the Commissioner of the Patent Office is commissioned by

the court for the provision of an expert opinion on the technical scope of a

patented invention, the Commissioner of the Patent Office shall appoint three

administrative judges and direct them to provide an expert opinion on the

requested matter.

(2) Articles 36(1), 36(2), 137(2) and 138 shall apply mutatis mutandis to the

commissioning of the provision of an expert opinion prescribed in the preceding

paragraph.

(Related to patented inventions, etc., by others)

Article 72 Where a patented invention uses another person's patented invention,

registered utility model, registered design or design similar thereto for which an

application was filed prior to the date of filing of the said patent application, or

where the patent right is in conflict with another person's design right or

trademark right obtained based on an application filed prior to the date of filing of

the said patent application, the patentee, exclusive licensee or non-exclusive

licensees may not work the patented invention as a business.

(Jointly owned patent rights)

Article 73 (1) Where a patent right is jointly owned, no joint owner may assign or

establish a right of pledge on the said joint owner's own share without the consent

of all the other joint owners.

(2) Where a patent right is jointly owned, unless otherwise agreed upon by contract,

each of the joint owners of the patent right may work the patented invention

without the consent of the other joint owners.

(3) Where a patent right is jointly owned, no joint owner may grant an exclusive

license or non-exclusive license with regard to the patent right to any third party

without the consent of all the other joint owners.

(Special provisions pertaining to transfer of patent right)

Article 74 (1) Where a patent falls under the requirements as provided in Article

123(1)(ii) (limited to cases where the patent is obtained in violation of Article 38)

or the requirements as provided in item (vi) of the said paragraph, a person who

has the right to obtain a patent for the invention pertaining to the said patent

may request the patentee thereof to transfer the said patent right as provided by

Ordinance of the Ministry of Economy, Trade and Industry.

(2) Where the transfer of a patent right has been registered based on the request

under the preceding paragraph, the patent right shall be deemed to have

belonged to a person who has obtained the said registration from the beginning.

The same shall apply to the right to claim compensation under Article 65(1) or

Article 184-10(1) on the invention pertaining to the said patent right.

(3) Paragraph (1) of the preceding Article shall not apply where the share of a

jointly owned patent right is transferred based on the request under paragraph

(1).

Articles 75 Deleted

(Lapse of patent rights in absence of heir)

Article 76 A patent right shall lapse where no person claims the right as an heir

within the time limit designated in Article 958 of the Civil Code.

(Exclusive license)

Article 77 (1) A patentee may grant an exclusive license on the patent right.

(2) An exclusive licensee shall have an exclusive right to work the patented

invention as a business to the extent permitted by the contract granting the

license.

(3) An exclusive license may be transferred only where the business involving the

working of the relevant invention is also transferred, where the consent of the

patentee is obtained or where the transfer occurs as a result of general succession

including inheritance.

(4) An exclusive licensee may establish a right of pledge or grant a non-exclusive

license on his exclusive license to a third party only where the consent of the

patentee is obtained.

(5) Article 73 shall apply mutatis mutandis to exclusive licenses.

(Non-exclusive license)

Article 78 (1) A patentee may grant a non-exclusive license on the patent right to

any third party.

(2) A non-exclusive licensee shall have a right to work the patented invention as a

business to the extent prescribed by this Act or permitted by the contract

granting the license.

(Non-exclusive license based on prior use)

Article 79 A person who, without knowledge of the content of an invention claimed

in a patent application, made an invention identical to the said invention, or a

person who, without knowledge of the content of an invention claimed in a patent

application, learned the invention from a person who made an invention identical

to the said invention and has been working the invention or preparing for the

working of the invention in Japan at the time of the filing of the patent

application, shall have a non-exclusive license on the patent right, only to the

extent of the invention and the purpose of such business worked or prepared.

(Non-exclusive license due to the working of the invention prior to the

registration of transfer of patent right)

Article 79-2 A person who had a patent right, or an exclusive license on the patent

right or a non-exclusive license on the patent right, or the exclusive license at the

time of the registration of transfer of the patent right based on the request

pursuant to Article 74(1), who is doing a business working an invention in Japan

or preparing such business, before the registration of transfer of the patent right,

without knowledge that the patent falls under the requirements as provided in

Article 123(1)(ii) (limited to cases where the said patent has been obtained in

violation of Article 38) or the requirements as provided in item (vi) of the said

paragraph, shall have a non-exclusive license on the patent right only to the

extent of the invention and the purpose of such business worked or prepared.

(Non-exclusive license due to the working of the invention prior to the

registration of the request for an invalidation trial)

Article 80 (1) A person falling under any of the following items, who is doing a

business working an invention in Japan or preparing such business, before the

registration of a request for an invalidation trial, without knowledge that the

patent falls under any of the paragraphs of Article 123(1), shall have a

non-exclusive license regarding the invalidated patent right or the exclusive

license existing at the time of the invalidation, only to the extent of the invention

and the purpose of such business worked or prepared:

(i) the original patentee in the case where one of two or more patents granted for

the same invention has been invalidated;

(ii) the original patentee in the case where, after a patent has been invalidated, a

patent is granted to the person who is entitled to obtain a patent for the same

invention; and

(iii) in the case referred to in items (i) and (ii), a person that, at the time of the

registration of the request for an invalidation trial, has an exclusive license

regarding the patent right to be invalidated, or a non-exclusive license

regarding the patent right or an exclusive license on the patent right.

(2) The patentee or the exclusive licensee shall have a right to receive reasonable

consideration from the non-exclusive licensee under the preceding paragraph.

(Non-exclusive license after expiration of duration of design right)

Article 81 Where a design right with regard to an application for a design

registration filed on or before the date of filing of a patent application is in conflict

with the patent right with regard to the patent application, the original holder of

design right shall, upon expiration of the duration of the design right, have a

non-exclusive license on the said patent right or on the exclusive license actually

existing at the time of expiration of the duration of the design right, limited to the

extent of the original design right.

Article 82 (1) Where a design right with regard to an application for a design

registration filed on or before the date of filing of a patent application is in conflict

with the patent right with regard to the patent application, a person who, at the

time of expiration of the duration of the design right, actually owns the exclusive

license on the design right, or a non-exclusive license on the design right or on the

exclusive license shall, upon expiration of the duration of the design right, have a

non-exclusive license on the patent right or on the exclusive license actually

existing at the time of expiration of the duration of the design right, limited to the

extent of the original right.

(2) The patentee or the exclusive licensee shall have a right to receive reasonable

consideration from the non-exclusive licensee under the preceding paragraph.

(Award granting non-exclusive license where invention is not worked)

Article 83 (1) Where a patented invention is not sufficiently and continuously

worked for 3 years or longer in Japan, a person intending to work the patented

invention may request the patentee or the exclusive licensee to hold consultations

to discuss granting a non-exclusive license; provided, however, that this shall not

apply unless 4 years have lapsed from the filing date of the patent application in

which the patented invention was filed.

(2) Where no agreement is reached by consultations or no consultations are able to

be held as provided in the preceding paragraph, the person intending to work the

patented invention may request the Commissioner of the Patent Office for an

award.

(Submission of a written answer)

Article 84 Where a request for an award has been filed under Article 83(2), the

Commissioner of the Patent Office shall serve a copy of the written request to the

patentee or exclusive licensee pertaining to the request, or any other person

having a registered right pertaining to the patent, and give such a person an

opportunity to submit a written answer, designating an adequate time limit.

(Statement of opinions of non-exclusive licensee)

Article 84-2 Where a request for an award has been filed under Article 83(2), a

person who has a non-exclusive license on the patent may state opinions on the

said request for the award within the time limit under the preceding Article.

(Hearing of opinions of councils, etc.)

Article 85 (1) In rendering an award under Article 83(2), the Commissioner of the

Patent Office shall hear the opinions of those provided by Cabinet Order,

including councils, etc. (refer to organs provided in Article 8 of National

Government Organization Act (Act No. 120 of 1948)).

(2) Where there is a reasonable ground for failing to properly work the patented

invention, the Commissioner of the Patent Office shall not render an award to the

effect that a non-exclusive license is to be granted.

(Formal requirements for award)

Article 86 (1) The award under Article 83(2) shall be rendered in writing and state

the grounds therefor.

(2) The following matters shall be determined in an award to the effect that a

non-exclusive license is to be granted:

(i) the scope of the non-exclusive license to be granted; and

(ii) the amount of consideration, and the method and time of payment thereof.

(Service of certified copy of award)

Article 87 (1) The Commissioner of the Patent Office shall, upon rendering an

award under Article 83(2), serve a certified copy of the award to the parties,

non-parties having registered rights relating to the patent and a non-exclusive

licensee who has stated opinions under Article 84-2.

(2) Where a certified copy of an award to the effect that a non-exclusive license is to

be granted is served to the parties under the preceding paragraph, an agreement

as prescribed in the award is deemed to have been reached between the parties.

(Deposit of consideration)

Article 88 A person(s) required to pay consideration under Article 86(2)(ii) shall

deposit the said consideration in the following cases:

(i) where the person(s) entitled to the consideration refuses or is unable to receive

such consideration;

(ii) where an action with respect to the consideration is instituted under Article

183(1); or

(iii) where a right of pledge is established on the patent right or the exclusive

license; provided, however, that this shall not apply where the consent of the

pledgee is obtained.

(Loss of effect of award)

Article 89 Where a person(s) who desires a non-exclusive license to be granted

fails to pay or deposit consideration (or, where such consideration is to be paid

periodically or by installments, the first installment thereof) within the time of

payment determined in the award under Article 83(2), the award to the effect

that a non-exclusive license is to be granted shall lose its effect.

(Rescission of award)

Article 90 (1) After rendering an award to the effect that a non-exclusive license is

to be granted under Article 83(2), where the enforcement of the award becomes

inappropriate due to specific reason(s) including the case where the grounds for

the award have ceased to exist, or where the person to whom the non-exclusive

license was granted fails to properly work the patented invention, the

Commissioner of the Patent Office may, upon request of an interested person or

ex officio, rescind the award.

(2) Articles 84, 84-2, 85(1), 86(1) and 87(1) shall apply mutatis mutandis to the

rescission of awards under the preceding paragraph and Article 85(2) shall apply

mutatis mutandis to the rescission of awards under the preceding paragraph

where the person to whom a non-exclusive license is granted fails to properly

work the patented invention.

Article 91 A non-exclusive license shall lapse after the rescission of the award

under Article 90(1).

(Restriction on grounds for objection to award)

Article 91-2 No objection under the Administrative Appeal Act (Act No. 160 of

1962) to the award rendered under Article 83(2) may be raised on the ground that

the consideration prescribed in the award is unsatisfactory.

(Award granting non-exclusive license to work own patented invention)

Article 92 (1) Where a patented invention falls under any of the cases as provided

in Article 72, the patentee or exclusive licensee may request the other person

under the said Article to hold consultations to discuss granting a non-exclusive

license to work the patented invention or a non-exclusive license on the utility

model right or the design right.

(2) The other person under Article 72 who is requested to hold consultations under

the preceding paragraph may request the patentee or exclusive licensee

requesting such consultations to hold consultations to discuss granting a

non-exclusive license to the extent of the patented invention that the said

patentee or exclusive licensee intend to work with a non-exclusive license on the

patent right, on the utility model right or on the design right granted through

consultations.

(3) Where no agreement is reached by consultations or no consultations are able to

be held as provided in paragraph (1), the patentee or the exclusive licensee may

request the Commissioner of the Patent Office for an award.

(4) Where no agreement is reached by consultations or no consultations are able to

be held as provided in paragraph (2) and where a request for an award is filed

under the preceding paragraph, the other person under Article 72 may request

the Commissioner of the Patent Office for an award only within the time limit for

the submission of a written answer by the said other person designated by the

Commissioner of the Patent Office under Article 84 as applied mutatis mutandis

under paragraph (7).

(5) In the case of paragraph (3) or (4), the Commissioner of the Patent Office shall

not render an award to the effect that a non-exclusive license is to be granted

where the granting of the non-exclusive license will be unreasonably prejudicial

to interest of the other person under Article 72, the patentee or the exclusive

licensee.

(6) In the case of paragraph (4), in addition to the case provided for in the preceding

paragraph, the Commissioner of the Patent Office shall not render an award

ordering a non-exclusive license to be granted if an award ordering a

non-exclusive license to be granted is not rendered with respect to the request for

an award under paragraph (3).

(7) Articles 84, 84-2, 85(1) and 86 through the preceding Article shall apply mutatis

mutandis to the award under paragraph (3) or (4).

(Award granting non-exclusive license for public interest)

Article 93 (1) Where the working of a patented invention is particularly necessary

for the public interest, a person(s) intending to work the patented invention may

request the patentee or the exclusive licensee to hold consultations to discuss

granting a non-exclusive license.

(2) Where no agreement is reached by consultations or no consultations are able to

be held as provided in the preceding paragraph, the person intending to work the

patented invention may request the Minister of Economy, Trade and Industry for

an award.

(3) Articles 84, 84-2, 85(1) and 86 through 91-2 shall apply mutatis mutandis to the

award under the preceding paragraph.

(Transfer, etc. of non-exclusive license)

Article 94 (1) Except for a non-exclusive license granted by an award under Article

83(2), 92(3), 92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act

or Article 33(3) of the Design Act, a non-exclusive license may be transferred only

where the business involving the working of the relevant invention is also

transferred, where the consent of the patentee (or, in the case of non-exclusive

license on the exclusive license, the patentee and the exclusive licensee) is

obtained and where the transfer occurs as a result of general succession including

inheritance.

(2) Except for a non-exclusive license granted by an award under Article 83(2), 92(3),

92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act or Article

33(3) of the Design Act, a non-exclusive licensee may establish a right of pledge on

the non-exclusive right only where the consent of the patentee (or, in the case of

non-exclusive license on the exclusive license, the patentee and the exclusive

licensee) is obtained.

(3) A non-exclusive license granted by an award under Article 83(2) or 93(2) may be

transferred only where the business involving the working of the relevant

invention is also transferred.

(4) Where a non-exclusive license is granted by an award under Article 92(3) of the

Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act,

the said non-exclusive license shall be transferred together with the patent right,

utility model right or design right of the non-exclusive licensee on which the

non-exclusive license is granted and the business involving the working of the

relevant invention in the case where each right is transferred together with the

said business, and shall be extinguished in the case where each right of the said

non-exclusive licensee is extinguished or transferred independently of the said

business.

(5) A non-exclusive license granted by an award under Article 92(4) shall be

transferred together with the patent right, utility model right or design right of

the non-exclusive licensee on which the non-exclusive license is granted, and shall

be extinguished in the case where the said patent right, utility model right or

design right is extinguished.

(6) Article 73(1) shall apply mutatis mutandis to non-exclusive licenses.

(Right of pledge)

Article 95 Unless otherwise agreed upon by contract, where a right of pledge is

established on a patent right, exclusive license or non-exclusive license, the

pledgee may not work the patented invention.

Article 96 A right of pledge on a patent right, exclusive license or non-exclusive

license may be exercised against any consideration to be paid for the patent right,

exclusive license or non-exclusive license or any money or goods to be received by

the patentee or the exclusive licensee for the working of the patented invention;

provided, however, that the pledgee have to attach the consideration, money or

goods prior to the payment of money or delivery of goods.

(Waiver of patent right, etc.)

Article 97 (1) Where there is an exclusive licensee, pledgee or non-exclusive

licensee as provided in Article 35(1), 77(4) or 78(1), a patentee may waive the

patent right, only where the consent of the said exclusive licensee, pledgee or

non-exclusive licensee is obtained.

(2) Where there is a pledgee or non-exclusive licensee as provided in Article 77(4),

an exclusive licensee may waive the exclusive license, only where the consent of

the said pledgee or non-exclusive licensee is obtained.

(3) Where there is a pledgee, a non-exclusive licensee may waive the non-exclusive

license, only where the consent of the said pledgee is obtained.

(Effect of registration)

Article 98 (1) The following matters must be registered to take effect:

(i) the transfer (except for a transfer arising from general succession including

inheritance), modification due to trust, lapse due to waiver or restriction on

disposition of a patent right;

(ii) the grant, transfer (except for a transfer arising from general succession

including inheritance), amendment, lapse (except for a lapse arising from a

merger or a lapse of the patent right) or restriction on disposition of an

exclusive license; and

(iii) the establishment, transfer (except for a transfer arising from general

succession including inheritance), amendment, lapse (except for a lapse arising

from a merger or extinguishment of credit secured thereby) or restriction on

disposition of a right of pledge of a patent right or exclusive license.

(2) Matters of general succession including inheritance under the preceding

paragraph shall be notified to the Commissioner of the Patent Office without

delay.

(Perfection of non-exclusive license)

Article 99 When a non-exclusive license is registered, the non-exclusive license

shall have effect on any person who subsequently acquires the patentee or the

exclusive licensee, or the exclusive license on the patent right.

Section 2 Infringement of rights (Article 100 to Article 106)

(Right to seek injunction)

Article 100 (1) A patentee or exclusive licensee may demand a person who

infringes or is likely to infringe the patent right or exclusive license to stop or

prevent such infringement.

(2) In making a demand under the preceding paragraph, the patentee or exclusive

licensee may demand measures necessary for the prevention of such infringement

including the disposal of products constituting such act of infringement (including,

in the case of a patented invention of a process of producing products, products

produced by the act of infringement; the same shall apply in Article 102(1)) and

the removal of facilities used for the act of infringement.

(Acts Deemed to constitute infringement)

Article 101 The following acts shall be deemed to constitute infringement of a

patent right or an exclusive license:

(i) where a patent has been granted for an invention of a product, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product to be used exclusively for the producing of the said product as a

business;

(ii) where a patent has been granted for an invention of a product, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product (excluding those widely distributed within Japan) to be used for the

producing of the said product and indispensable for the resolution of the

problem by the said invention as a business, knowing that the said invention is

a patented invention and the said product is used for the working of the

invention;

(iii) where a patent has been granted for an invention of a product, acts of

possessing the said product for the purpose of assigning, etc. or exporting it as a

business;

(iv) where a patent has been granted for an invention of a process, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product to be used exclusively for the use of the said process as a business; and

(v) where a patent has been granted for an invention of a process, acts of

producing, assigning, etc., importing or offering for assignment, etc. any

product (excluding those widely distributed within Japan) to be used for the use

of the said process and indispensable for the resolution of the problem by the

said invention, knowing that the said invention is a patented invention and the

said product is used for the working of the invention as a business;

(vi) where a patent has been granted for an invention of a process of producing a

product, acts of possessing the product produced by the said process for the

purpose of assigning, etc. or exporting it as a business.

(Presumption of Amount of Damage, etc.)

Article 102 (1) Where a patentee or an exclusive licensee claims against an

infringer compensation for damage sustained as a result of the intentional or

negligent infringement of the patent right or exclusive license, and the infringer

assigned articles that composed the act of infringement, the amount of damage

sustained by the patentee or the exclusive licensee may be presumed to be the

amount of profit per unit of articles which would have been sold by the patentee

or the exclusive licensee if there had been no such act of infringement, multiplied

by the quantity (hereinafter referred to in this paragraph as the "assigned

quantity") of articles assigned by the infringer, the maximum of which shall be

the amount attainable by the patentee or the exclusive licensee in light of the

capability of the patentee or the exclusive licensee to work such articles; provided,

however, that if any circumstances exist under which the patentee or the

exclusive licensee would have been unable to sell the assigned quantity in whole

or in part, the amount calculated as the number of articles not able to be sold due

to such circumstances shall be deducted.

(2) Where a patentee or an exclusive licensee claims against an infringer

compensation for damage sustained as a result of the intentional or negligent

infringement of the patent right or exclusive license, and the infringer earned

profits from the act of infringement, the amount of profits earned by the infringer

shall be presumed to be the amount of damage sustained by the patentee or

exclusive licensee.

(3) A patentee or an exclusive licensee may claim against an infringer compensation

for damage sustained as a result of the intentional or negligent infringement of

the patent right or exclusive license, by regarding the amount the patentee or

exclusive licensee would have been entitled to receive for the working of the

patented invention as the amount of damage sustained.

(4) The preceding paragraphs shall not prevent any relevant party from claiming

compensation for damage in an amount exceeding the amount provided for

therein. In such a case, where the infringer committed the infringement of the

patent right or exclusive license without intent or gross negligence, the court may

take these circumstances into consideration in determining the amount of

damages.

(Presumption of negligence)

Article 103 An infringer of a patent right or exclusive license of another person is

presumed negligent in the commission of the said act of infringement.

(Presumption of (patented) producing process)

Article 104 Where the invention of a process of producing a product has been

patented and the product was not publicly known in Japan prior to the filing of

the patent application, a product identical with such product shall be presumed to

have been produced by the patented process.

(Obligation to clarify the specific conditions (of infringement))

Article 104-2 In litigation concerning the infringement of a patent right or an

exclusive license, in order to deny the specific conditions of an article or process

that a patentee or an exclusive licensee claims as one that composed an act of

infringement, the adverse party shall clarify the specific conditions of his/her act;

provided, however, that this shall not apply where there exist reasonable grounds

preventing the adverse party from so doing.

(Restriction on exercise of rights of patentee, etc.)

Article 104-3 (1) Where, in litigation concerning the infringement of a patent right

or an exclusive license, the said patent is recognized as one that should be

invalidated by an invalidation trial or the registration of extension of duration of

the said patent right is recognized as one that should be invalidated by a trial for

invalidation of the registration of extension, the rights of the patentee or

exclusive licensee may not be exercised against the adverse party.

(2) Where the court considers that the materials used for an allegation or defense

under the preceding paragraph are submitted for the purpose of unreasonably

delaying the proceedings, the court may, upon a motion or ex officio, render a

ruling to the effect that the allegation or the defense is to be dismissed.

(3) Article 123(2) shall not preclude any person other than a person who may file a

request for invalidation trial on the said patented invention from submitting a

method of allegation or defense as provided in paragraph (1).

(Limitation to assertion)

Article 104-4 (1) Where the following ruling or trial decision has become final and

binding after a final judgment on a litigation pertaining to an infringement of a

patent right or an exclusive license or to a claim of compensation as provided in

Article 65(1) or Article 184-10(1) has become final and binding, a person who was

a party in the said litigation may not claim the fact that the said ruling or the said

trial decision has become final and binding in an appeal for retrial against the

said final judgment (including appeals for the purpose of the claim of

compensation for damage against an obligee of a case of provisional seizure order

in which the said litigation is the case and appeals for the purpose of the claim of

the compensation for damage and the return for unjust enrichment against an

obligee of the case of provisional disposition order in which the said litigation is

the case):

(i) a ruling to the effect that the said patent is to be revoked or a trial decision to

the effect that the said patent is to be invalidated;

(ii) a trial decision to the effect that the registration of extension of the duration of

the said patent is to be invalidated;

(iii) a ruling or a trial decision as provided by Cabinet Order to the effect that the

description, scope of claims or drawings attached the application for the said

patent is to be corrected.

(Production of documents, etc.)

Article 105 (1) In litigation concerning the infringement of a patent right or

exclusive license, the court may, upon a motion of a party, order the other party to

produce documents that are required to prove the said act of infringement or to

calculate the damage arising from the said act of infringement; provided, however,

that this shall not apply where there are reasonable grounds for the person

possessing the documents to refuse production of the said documents.

(2) When the court finds it necessary for determining whether or not there are

reasonable grounds as provided in the proviso to the preceding paragraph, the

court may cause the person possessing the documents to present such documents.

In such a case, no person may request the disclosure of the documents presented.

(3) In the case of the preceding paragraph, where the court finds it necessary to hear

opinions by disclosing the documents as provided in the latter sentence of the

preceding paragraph to make a decision concerning the existence of reasonable

grounds as provided in the proviso to paragraph (1), the court may disclose the

documents to the parties, etc. (the parties (or, in the case of juridical persons,

their representatives), their representatives (excluding attorneys and assistant),

employees and other workers, the same shall apply hereinafter), attorneys or

assistant.

(4) The preceding three paragraphs shall apply mutatis mutandis to the

presentation of the subject-matter of the inspection that is required to prove the

act of infringement in litigation concerning the infringement of a patent right or

exclusive license.

(Expert opinion for calculation of damages)

Article 105-2 In litigation concerning the infringement of a patent right or

exclusive license, where, upon the motion of a party, the court orders that an

expert opinion be obtained for the calculation of damage arising from the act of

infringement, the other party shall explain to the expert witness the matters

necessary for the expert witness's expert opinion.

(Determination of reasonable damages)

Article 105-3 In litigation concerning the infringement of a patent right or

exclusive license, where the court has determined that damage actually arose and

where it is extremely difficult for the court, due to the nature of the facts, to prove

the facts necessary to determine the amount of damage, the court may determine

a reasonable amount of damage based on the entire import of oral argument and

the result of the examination of evidence.

(Protective order)

Article 105-4 (1) In litigation concerning the infringement of a patent right or

exclusive license, where there is prima-facie evidence of the fact that trade secrets

(refers to trade secrets as provided in Article 2(6) of the Unfair Competition

Prevention Act (Act No. 47 of 1993), the same shall apply hereinafter) possessed

by a party satisfy all of the following paragraphs, the court may, upon a motion of

the party, order by a ruling that the parties, etc., attorneys or assistants shall

neither use the trade secrets for any purpose other than those for the proceedings

of the litigation nor disclose the trade secrets to any person other than those who

receive the order regarding the trade secrets under this provision; provided,

however, that this shall not apply where the parties, etc., attorneys or assistants

have, prior to the filing of the motion, already obtained or been in the possession

of the trade secrets by a method other than by reading of the briefs under item (i)

or through the examination or disclosure of evidence under the said item:

(i) where the trade secrets possessed by the party were or are contained in the

briefs already submitted or to be submitted or such trade secrets were or are

contained in the evidence already examined or to be examined (including

documents disclosed under Article 105(3) and under Article 105-7(4)); and

(ii) where it is necessary to restrict the use or the disclosure of the trade secrets

under the preceding paragraph to prevent any possible interference with the

party's business activities based on the trade secrets, that might arise if the

trade secrets are used for any purpose other than those for the proceedings of

the litigation or if the said trade secrets are disclosed.

(2) A motion requesting the order under the preceding paragraph (hereinafter

referred to as a "protective order") shall be made in writing specifying the

following matters:

(i) the person(s) to whom the protective order is to be issued;

(ii) the facts that clearly identify the trade secrets to be protected by the

protective order; and

(iii) the facts corresponding to the reasons each of the items in the preceding

paragraph is applicable.

(3) Where the protective order is issued, a written ruling thereof shall be served to

the person(s) to whom the protective order is issued.

(4) The protective order shall take effect as of the date the written ruling is served

to the person(s) to whom the protective order is issued.

(5) The decision dismissing a motion requesting the protective order shall be subject

to immediate appeal.

(Rescission of protective order)

Article 105-5 (1) A person(s) who has filed a motion requesting a protective order

or to whom a protective order is issued may file a motion with the court where the

record of a case(s) is maintained (or, in the case of no such court maintaining the

record of a case(s), the court issuing the protective order), requesting the

rescission of the protective order on the ground that the requirements as provided

in Article 105-4(1) are not met or are no longer met.

(2) Where a decision on a motion requesting the rescission of a protective order is

rendered, a written ruling thereof shall be served to the person who filed the

motion and the adverse party in the case.

(3) The decision on a motion requesting the rescission of a protective order shall be

subject to immediate appeal.

(4) A decision to the effect that a protective order is to be rescinded shall have no

effect unless the decision becomes final and binding.

(5) Where a decision to the effect that a protective order is to be rescinded is

rendered, the court shall immediately notify the person(s) who, in the litigation in

which the said protective order was issued, received the protective order

pertaining to the trade secrets who are neither the person filing the motion

requesting the rescission of the protective order nor the adverse party, if any, of

the fact that the decision to the effect that the protective order is to be rescinded

was rendered.

(Notice, etc. of a request inspection of record, etc)

Article 105-6 (1) Where a ruling under Article 92(1) of the Code of Civil Procedure

was rendered concerning the record of litigation in which a protective order was

issued (excluding litigation in which all protective orders have been rescinded),

where a party to whom the protective order was not issued in the litigation

requests inspection etc. of a part of the record in which the confidential

information is contained, etc under the said Article., immediately after the filing

of the request, the court clerk shall notify the party who filed the motion

(restricting access to the record) under the said Article (excluding the person who

filed the request, the same in paragraph (3)) of the fact that the said request has

been filed.

(2) In the case of the preceding paragraph, the court clerk shall not allow the person

who filed the request to inspect etc. the part in which confidential information is

contained under Article 92(1) of the Code of Civil Procedure before a lapse of two

weeks from the date of filing of the said request (or, where a motion requesting a

protective order is filed prior to the day in which two weeks have lapsed, against

the person who filed the request, before the decision on the motion becomes final

and binding).

(3) The preceding two paragraphs shall not apply where the consent of all the

parties who filed a motion under Article 92(1) of the Code of Civil Procedure is

obtained, allowing the person who filed a request under paragraph (1) to inspect

etc. the part in which confidential information is contained.

(Ban on open examination of parties, etc.)

Article 105-7 (1) When a party, etc., to litigation concerning the infringement of a

patent right or exclusive license is to be examined as a party to the litigation, as

its statutory representative or as a witness, with regard to matters that will be a

basis for the determination of the existence or non-existence of the said

infringement, and such matters are trade secrets possessed by a party, the court

may, by a ruling, elect to hold closed examinations of such matters where the

court, upon the unanimous consent of all judges, finds that the parties, etc. will be

unable to make sufficient statements regarding the matters due to the obvious

fact that making statements regarding the matters at an open examination will

significantly interfere with the business activities of the party based on such

trade secrets and that, without such statements, a proper decision on the fact of

the existence or non-existence of the infringement of a patent right or exclusive

license that ought to be made based on the said matters may not be made based

solely on other evidence.

(2) The court shall, in rendering the ruling as provided in the preceding paragraph,

hear the opinions of the parties, etc. in advance.

(3) In the case of the preceding paragraph, where necessary, the court may cause

the parties, etc., to present a document stating the gist of the matters to be stated.

In such a case, no person may request the disclosure of the document presented.

(4) When the court finds it necessary to hear opinions by disclosing the document as

provided in the latter sentence of the preceding paragraph, the court may disclose

the document to the parties, etc., their attorneys or assistants.

(5) Where the examination on certain matters is to be closed under paragraph (1),

the court shall declare such fact and reasons therefor prior to requiring the public

to leave the court. Upon completion of the examination on the said matters, the

court shall allow the public to re-enter the court.

(Measures to restore credibility)

Article 106 The court may, upon the request of a patentee or exclusive licensee,

order the person(s) who harmed the business credibility of the patentee or

exclusive licensee by intentionally or negligently infringing upon the patent right

or exclusive license to take measures necessary to restore the business credibility

of the patentee or exclusive licensee in lieu of or in addition to compensation for

damages.

Section 3 Patent Fees

(Patent fees)

Article 107 (1) A person obtaining the registration establishing a patent right, or a

patentee, shall pay as patent fees the amount specified in the right-hand column

of the following table, corresponding to the relevant period in the left-hand

column, for each patent registration and for each year from the date of the

registration establishing the patent right to the expiration of the duration as

provided in Article 67(1), (and, where the said duration is extended by Article

67(2), for such additional period):

Period within term Amount

First to third year Annually 2,100 yen plus 200 yen per claim

Fourth to sixth year Annually 6,400 yen plus 500 yen per claim

Seventh to ninth year Annually 19,300 yen plus 1,500 yen per claim

Tenth to twenty-fifth year Annually 55,400 yen plus 4,300 yen per claim

(2) The preceding paragraph shall not apply to patent rights belonging to the State.

(3) Notwithstanding the provisions of paragraph (1), where a patent right is jointly

owned by persons including the State and/or a person entitled to receive a

reduction of the patent fees or exemption therefrom under Article 109 or the

provisions of any other laws or ordinances (hereinafter referred to as a

"reduction/exemption" in this paragraph), and the portion of their respective

shares of the said patent right has been agreed, the patent fees payable under

paragraph (1) shall be determined as the sum of the amounts calculated for each

person other than the State jointly owning the patent right by multiplying the

applicable patent fees as provided in paragraph (1) (in the case of a person

receiving a reduction/exemption, the amount after the said reduction/exemption)

by the ratio of the share of each person other than the State jointly owning the

patent right, and, the persons other than the State shall pay such sum.

(4) For the amount of patent fees calculated under the preceding paragraph,

fractional figures of less than ten yen shall be discarded.

(5) The payment of patent fees under paragraph (1) shall be made by patent

revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and

Industry; provided, however, that where so provided by Ordinance of the Ministry

of Economy, Trade and Industry, a cash payment thereof shall be accepted.

(Time limit for payment of patent fees)

Article 108 (1) The patent fees for each year from the first to the third year under

Article 107(1) shall be paid in a lump sum within 30 days from the date on which

a certified copy of the examiner's decision or the trial decision to the effect that

the patent is to be granted has been served.

(2) The patent fees for each year from the fourth and subsequent years under

Article 107(1) shall be paid by the end of the previous year; provided, however,

that where the date on which a certified copy of the examiner's decision or the

trial decision to the effect that the extension of the duration of the patent right is

to be registered is served (hereinafter referred to in this paragraph as the

"certified copy service date") is on or after the thirtieth day before the end of the

year in which the duration of the patent right would have expired if the said

extension of duration had not been registered, the patent fees for each year from

the year following that year to the year in which the certified copy service date

falls (or, in the case where a period from the certified copy service date to the last

day of the year in which the certified copy service date falls is shorter than 30

days, the year following the year in which the certified copy service date falls)

shall be paid in a lump sum within 30 days from the certified copy service date.

(3) The Commissioner of the Patent Office may, upon a request by a person by

whom the patent fees are to be paid, extend the time limit under paragraph (1) by

a period not exceeding 30 days.

(4) Where, due to reasons beyond the control of a person who pays patent fees, the

person is unable to pay the patent fees within the time limit (where the time limit

has been extended under the preceding paragraph, the time limit after extended)

as provided in paragraph (1), the person may, notwithstanding paragraph (1), pay

the patent fees within 14 days (where overseas resident, within two months) from

the date on which the reasons ceased to be applicable, but not later than six

months following the expiration of the said time limit.

(Reduction, exemption or deferment of patent fees)

Article 109 Where the Commissioner of the Patent Office recognizes that a person

who receives the registration of establishment of a patent right or a patentee, who

meets the requirements of Cabinet Order to be recognized as a person with

insufficient funds, has difficulties paying the patent fees, the Commissioner of the

Patent Office may, pursuant to the provisions of Cabinet Order, grant the person

a reduction of, exemption from or deferment of the payment of the patent fees for

each year from the first to the tenth year under Article 107(1):

(Payment of patent fees by any person other than a person by whom the patent

fees are to be paid)

Article 110 (1) An interested person and other person than a person by whom the

patent fees are to be paid may pay the patent fees even against the will of the

person by whom the patent fees are to be paid.

(2) The person who has paid the patent fees under the preceding paragraph may

request the reimbursement of the expenses arising therefrom to the extent of the

actual benefit obtained by the person by whom the patent fees were to be paid.

(Refund of patent fees)

Article 111 (1) The following patent fees shall be refunded upon the request of the

person that paid them:

(i) patent fees paid in error or in excess;

(ii) patent fees for each year following the year in which a revocation decision

under Article 114(2) or a trial decision to the effect that the patent is to be

invalidated has become final and binding; and

(iii) patent fees for the year following the year in which a trial decision to the

effect that the registration of extension of the duration of a patent right is to be

invalidated became final and binding, and subsequent years (limited to those

for the year following the year in which the duration of a patent right would

have expired if the said extension of duration had not been registered, and

subsequent years).

(2) A request for refund of patent fees under the preceding paragraph may not be

filed after one year from the date of payment in the case of patent fees under item

(i) above, or after six months from the date on which a revocation decision under

Article 114(2) or a trial decision became final and binding in the case of patent

fees under items (ii) and (iii) above.

(3) Where, due to reasons beyond the control of a person who files a request for

refund of patent fees, the person is unable to file the request within the time limit

as provided in paragraph (1), the person may, notwithstanding the said

paragraph, file the request within 14 days (where overseas resident, within two

months) from the date on which the reasons ceased to be applicable, but not later

than six months following the expiration of the said time limit.

(Late payment of patent fees)

Article 112 (1) Where a patentee is unable to pay the patent fees within the time

limit under Article 108(2) or the time limit for deferred payment under Article

109, the patentee may make a late payment of the patent fees after the expiration

of the said time limit, but not later than 6 months following the expiration of the

said time limit.

(2) The patentee who makes a late payment of the patent fees under the preceding

paragraph shall pay, in addition to the patent fees to be paid under Article 107(1),

a patent surcharge in the same amount as the patent fees.

(3) The payment of the patent surcharge under the preceding paragraph shall be

made by patent revenue stamps as provided by Ordinance of the Ministry of

Economy, Trade and Industry; provided, however, that where so provided by

Ordinance of the Ministry of Economy, Trade and Industry, a cash payment

thereof shall be accepted.

(4) Where a patentee fails to pay, within the time limit for late payment of the

patent fees under paragraph (1), the patent fees that were due and payable

within the time limit as provided in the main clause of Article 108(2) and the

patent surcharge under paragraph (2), the patent right shall be deemed to have

been extinguished retroactively upon expiration of the time limit as provided in

the main clause of Article 108(2).

(5) Where a patentee fails to pay, within the time limit for late payment of the

patent fees under paragraph (1), the patent fees as provided in the proviso to

Article 108(2) and the surcharge under paragraph (2), the patent right shall be

deemed to have been extinguished retroactively upon the lapse of the year in

which the duration of the patent right would have expired if the said extension of

the duration had not been registered.

(6) Where a patentee fails to pay, within the time limit for late payment of the

patent fees under paragraph (1), the patent fees for which the deferment was

granted under Article 109 and the patent surcharge under paragraph (2), the

patent right shall be deemed never to have existed.

(Restoration of patent right by late payment of patent fees)

Article 112-2 (1) Where an original patentee of the patent right which was deemed

to have been extinguished under Article 112(4) or 112(5), or which was deemed

never to have existed under Article 112(6), has justifiable reasons for having been

unable to pay the patent fees and the patent surcharge under paragraphs (4) to

(6) of Article 112 within the time limit for late payment of the patent fees under

Article 112(1), the original patentee may make a late payment of the patent fees

and the surcharge only within the time limit as provided in Ordinance of the

Ministry of Economy, Trade and Industry.

(2) Where the patent fees and the surcharge are paid under the preceding

paragraph, the patent right shall be deemed to have been maintained

retroactively from the time of expiration of the time limit as provided in the main

clause of Article 108(2) or the lapse of the year in which the day of the expiration

of the duration of the patent right falls or existed from the beginning.

(Restriction on effect of restored patent right)

Article 112-3 (1) Where a patent right has been restored under paragraph (2) of

the preceding Article, where the patent has been granted for the invention of a

product, such patent right shall not be effective against the product which was

imported into, produced or acquired within Japan after the lapse of the time limit

during which the late payment of the patent fees is allowed under Article 112(1)

but before the registration of the restoration of the patent right.

(2) A restored patent right under paragraph (2) of the preceding Article shall not be

effective against the following acts conducted after the lapse of the time limit

during which the late payment of the patent fees is allowed under Article 112(1)

but before the registration of the restoration of the patent right:

(i) the working of the said invention;

(ii) where a patent has been granted for an invention of a product, producing,

assigning, etc., importing or offering for assignment, etc. of any product to be

used for producing of the said product; and

(iii) where a patent has been granted for an invention of a product, possessing the

said product for the purpose of assigning, etc. or exporting it;

(iv) where a patent has been granted for an invention of a process, producing,

assigning, etc., importing or offering for assignment, etc. of any product to be

used for the use of the said process; and

(v) where a patent has been granted for an invention of a process of producing a

product, possessing the product produced by the said process for the purpose of

assigning, etc. or exporting it.

Chapter V Opposition to a granted patent (Article 113 to Article 120-8)

(Opposition to a granted patent)

Article 113 Any person may file to the Commissioner of the Patent Office an

opposition to a granted patent on the ground that a patent falls under any of the

following items. In the event that a patent has two or more claims, an opposition

to a granted patent may be filed for each claim.

(i) where the patent has been granted on a patent application (excluding a

foreign-language-written-application) with an amendment that does not comply

with the requirements as provided in Article 17-2(3);

(ii) where the patent has been granted in violation of Articles 25, 29, 29-2, 32, or

39(1) to 39(4);

(iii) where the patent has been granted in violation of a treaty;

(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)); and

(v) where matters stated in the description, scope of claims or drawings attached

to the foreign-language-written-application are not within the scope of matters

stated in foreign-language-documents.

(Ruling)

Article 114 (1) Proceedings and a ruling on an opposition to a granted patent shall

be conducted by a panel consisting of three or five administrative judges.

(2) An administrative judge shall make a ruling that a patent related to an

opposition to a granted patent is to be revoked (hereinafter, referred to as a

"revocation decision") if the administrative judge recognizes that the patent falls

under any of items of the preceding Article.

(3) Where a revocation decision has become final and binding, the patent right shall

be deemed never to have existed.

(4) An administrative judge shall make a ruling that a patent related to an

opposition to a granted patent is to be maintained if the administrative judge

does not recognize that the patent falls under any of items of the preceding

Article.

(5) No appeal shall be available from the ruling under the preceding paragraph.

(Formal requirements, etc. for filing)

Article 115 (1) A person who files an opposition to a granted patent shall submit to

the Commissioner of the Patent Office a statement of opposition to a granted

patent stating the following matters:

(i) the name, and domicile or residence of the patent opponent and his/her

representative;

(ii) the mark of a patent related to an opposition to a granted patent; and

(iii) the identification of the grounds and the necessary evidence for an opposition

to a granted patent.

(2) An amendment of the statement of opposition to a granted patent filed under the

preceding paragraph shall not change the gist thereof; provided, however, that

this shall not apply where the said amendment falls under any of the matters

provided in item (iii) of the preceding paragraph and is made until an earlier date

between the date on which the time limit under Article 113 expires and the date

on which a notice under Article 120-5(1) is received.

(3) The chief administrative judge shall deliver a copy of the statement of opposition

to a granted patent to the patentee.

(4) Article 123(4) shall apply mutatis mutandis to the case where an opposition to a

granted patent is filed.

(Designation of administrative judges, etc.)

Article 116 Articles 136(2) and 137 to 144 shall apply mutatis mutandis to a panel

and administrative judges who are the members of the panel.

(Trial clerk)

Article 117 (1) The Commissioner of the Patent Office shall designate the trial

clerk for each case of an opposition to a granted patent.

(2) Paragraphs (3) to (5) in Article 144-2 shall apply mutatis mutandis to the trial

clerk of the preceding paragraph.

(Procedure of Proceedings, etc.)

Article 118 (1) The proceedings with regard to an opposition to a granted patent

shall be conducted by documentary proceedings.

(2) Where there is a ground for suspension or termination of procedures of

proceedings and a ruling on an opposition to a granted patent, on one of the

patentees of a jointly owned patent right, the said suspension or termination shall

have effect on all of the joint owners.

(Intervention)

Article 119 (1) A person who has a right on a patent right and all other persons

with an interest in the patent right may intervene in the proceedings on an

opposition to a granted patent to assist the patentee until a ruling on the motion

is rendered.

(2) Articles 148(4) and (5) and 149 shall apply mutatis mutandis to the intervenors

under the preceding paragraph.

(Examination and preservation of evidence)

Article 120 Articles 150 and 151 shall apply mutatis mutandis to the examination

and preservation of evidence in the proceedings on an opposition to a granted

patent.

(Ex officio proceedings)

Article 120-2 (1) Any grounds not pleaded by the patentee or the patent opponent

or the intervenor may be examined in proceedings on an opposition to a granted

patent.

(2) Any claim to which an opposition to a granted patent is not filed may not be

examined in the proceedings on an opposition to a granted patent.

(Joint or separate conduct of motions)

Article 120-3 (1) Where there are two or more motions of an opposition to a

granted patent related to the same patent right, the proceedings shall be jointly

conducted except for a case where special circumstances exist.

(2) Proceedings that have been jointly conducted under the preceding paragraph

may later be separately conducted.

(Withdrawal of a motion)

Article 120-4 (1) An opposition to a granted patent may not be withdrawn, after

the notice under paragraph(1) of the next Article has been given.

(2) Article 155(3) shall apply mutatis mutandis to the withdrawal of an opposition

to a granted patent.

(Submission of a written opinion, etc.)

Article 120-5 (1) Where the chief administrative judge intends to render a

revocation decision, the chief administrative judge shall notify the patentee and

the intervenors of the reasons therefor and give them an opportunity to submit a

written opinion, designating an adequate time limit for such purpose.

(2) The patentee 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 the preceding paragraph; 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;

(iv) correction of a statement of claims which cites other statement of claims to

the statement which does not cite the said other statement of claims.

(3) Where the scope of claims attached to the application covering two or more

claims is corrected, a request for correction may be filed in the preceding

paragraph for each claim; provided, however, where an opposition to a granted

patent has been filed for each claim, a request for correction shall be filed for each

claim.

(4) In the case of the preceding paragraph, where there is a group of claims which

has the relationship in which the statement of one claim is cited by another claim

or any other relationship as provided by Ordinance of Ministry of the Economy,

Trade and Industry (hereinafter referred to as "group of claims"), in the said

claims, the said request shall be filed for each group of claims.

(5) Where a request for correction has been filed under paragraph (2) within a time

limit designated under paragraph (1), the chief administrative judge shall serve

to the patent opponent a copy of a document stating the reasons for revoking a

patent notified under paragraph (1) and the written request for correction as well

as the corrected description, scope of claims or drawings attached to the request

and give the said applicant an opportunity to submit a written opinion,

designating an adequate time limit for such purpose; provided, however, this

shall not apply where the opponent offers not to submit a written opinion or

special circumstances exist under which it is recognized that giving an

opportunity to the opponent to submit a written opinion is not required.

(6) Where a request for correction under paragraph (2) does not correspond to one of

the purposes provided in the proviso to the said paragraph or does not comply

with paragraphs (5) to (7) of Article 126 to be applied mutatis mutandis in

paragraph (9), the chief administrative judge shall notify the patentee and

intervenors of the reasons therefore and give them an opportunity to submit an

written opinion, designating an adequate time limit.

(7) Where a request for correction under paragraph (2) is made, if another request

for correction has been previously made in the said case of an opposition to a

granted patent, such previous request shall be deemed to have been withdrawn.

(8) The request for correction in paragraph (2) may be withdrawn only within the

time limit during which the amendment under Article 17-5(1) may be made with

regard to the corrected description, scope of claims or drawings attached to the

written request for correction in the said paragraph. In this case, where requests

for correction in paragraph (2) have been filed for each claim or each group of

claims under paragraph (3) or (4), all those requests shall be withdrawn.

(9) Articles 126(4) to (7), 127, 128, 131(1), (3) and (4), 131-2(1), 132(3) and (4), and

133(1), (3) and (4) shall apply mutatis mutandis to the case of paragraph (2). In

this case, the term "item (i) or (ii) of the proviso to paragraph (1)" in Article 126(7)

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 an opposition to a granted patent is not

filed."

(Formal requirements of ruling)

Article 120-6 (1) A ruling on motion of an opposition to a granted patent shall be

rendered in writing stating the following matters:

(i) the number of a case of an opposition to a granted patent;

(ii) the name, and domicile or residence of each of the patentee, the patent

opponent, intervenor(s) and their representatives;

(iii) the mark of the patent related to the ruling;

(iv) the conclusion of and reasons for the ruling; and

(v) the date of the ruling.

(3) Where a ruling has been rendered, the Commissioner of the Patent Office shall

serve a certified copy of the ruling to the patentee, the patent opponent,

intervenor(s) and person whose application for intervention has been refused.

(Scope of final and binding ruling)

Article 120-7 Ruling on an opposition to a granted patent shall become final and

binding for each case of an opposition to a granted patent; provided, however, that,

in the cases listed in the following items, ruling shall become final and binding as

provided in the corresponding item:

(i) where an opposition to a granted patent has been filed for each claim and a

request for correction has been filed under Article 120-5(2) for each group of

claims: for the said group of claims; and

(ii) where an opposition to a granted patent has been filed for each claim and a

case other than those listed in the preceding item: for the said claim

(Application mutatis mutandis of provisions regarding trial, etc.)

Article 120-8 (1) Articles 133, 133-2, 134(4), 135, 152, 168, 169(3) to (6), and 170

shall apply mutatis mutandis to proceedings and a ruling on an opposition to a

granted patent

(2) Article 114-5 shall apply mutatis mutandis to a ruling under Article 135 as

applied mutatis mutandis under the preceding paragraph.

Chapter VI Trials and Appeals (Article 121 to Article 170)

(Appeals against examiner's decision of refusal)

Article 121 (1) A person who has received an examiner's decision to the effect that

an application is to be refused and is dissatisfied may file appeals against the

examiner's decision of refusal within three months from the date the certified

copy of the examiner's decision has been served.

(2) Where, due to reasons beyond the control of the person, the said person is unable

to file appeals against the examiner's decision of refusal within the time limit as

provided in the preceding paragraph, the said person may, notwithstanding the

said paragraph, file the request within 14 days (where overseas resident, within

two months) from the date on which the reasons ceased to be applicable, but not

later than six months following the expiration of the said time limit.

Article 122 Deleted

(Invalidation Trial)

Article 123 (1) Where a patent falls under any of the following, a request for

invalidation trial may be filed. In the event of two or more claims, a request for

invalidation trial may be filed for each claim.

(i) where the patent has been granted on a patent application (excluding a

foreign-language-written-application) with an amendment that does not comply

with the requirements as provided in Article 17-2(3);

(ii) where the patent has been granted in violation of Articles 25, 29, 29-2, 32, 38

or 39(1) to 39(4); (where the patent has been obtained in violation of Article 38,

excluding the case where the transfer of a patent right pertaining to the patent

has been registered based on the request under Article 74(1));

(iii) where the patent has been granted in violation of a treaty;

(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));

(v) where matters stated in the description, scope of claims or drawings attached

to the foreign-language-written-application are not within the scope of matters

stated in foreign-language-documents;

(vi) where the patent has been granted on a patent application filed by a person

who has not had the right to obtain a patent for the said invention; (excluding

the case where the transfer of a patent right pertaining to the patent has been

registered based on the request under Article 74(1));

(vii) where, after the grant of a patent, the patentee has become unable to hold a

patent right under Article 25, or the patent has become in violation of a treaty;

and

(viii) where the correction of the description, scope of claims or drawings attached

to the application for the patent has been obtained in violation of the proviso to

Article 126(1), Article 126(5) to (7) (including its application mutatis mutandis

under Article 120-5(9) or Article 134-2(9)), the proviso to Article 120-5(2) or the

proviso to Article 134-2(1).

(2) A request for invalidation trial may be filed only by an interested person (in a

case where a request for invalidation trial is filed on the ground that the patent

falls under item (ii) of the preceding paragraph (limited to cases where the patent

is obtained in violation of Article 38) or item (vi) of the said paragraph; a person

who has the right to obtain the patent).

(3) A request for invalidation trial may be filed even after the lapse of the patent

right.

(4) Where a request for invalidation trial has been filed, the chief administrative

judge shall notify the exclusive licensee of the patent right and other persons who

have any registered rights relating to the patent.

Article 124 Deleted

Article 125 Where a trial decision to the effect that a patent is to be invalidated

has become final and binding, the patent right shall be deemed never to have

existed; provided, however, that where a patent falls under Article 123(1)(vii) and

where a trial decision to the effect that the patent is to be invalidated has become

final and binding, the patent shall be deemed not to have existed from the time

the said item first became applicable to the patent.

(Invalidation trial of a registration of extension of duration)

Article 125-2 (1) A request for invalidation trial of the registration of extension of

duration of a patent right may be filed if the registration of extension falls under

any of the following:

(i) where the registration of extension has been made for an application filed

where the disposition as provided in Cabinet Order under Article 67(2) for the

working of the patented invention is not deemed to have been required;

(ii) where the registration of extension has been made for an application filed

where the patentee or an exclusive licensee or a non-exclusive licensee of the

patent right did not receive the disposition as provided in Cabinet Order under

Article 67(2);

(iii) where the duration extended by the registration of extension exceeds the

period during which the patented invention could be worked;

(iv) where the registration of extension has been made upon an application filed

by a person who is not the said patentee; and

(v) where the registration of extension has been made upon an application not

complying with the requirements as provided in Article 67-2(iv).

(2) Request for invalidation trial of a registration of extension of duration may be

filed only by an interested person.

(3) Paragraphs (3) to (4) of Article 123 shall apply mutatis mutandis to a request for

invalidation trial of the registration of extension of duration.

(4) Where a trial decision to the effect that the registration of extension is to be

invalidated has become final and binding, the extension of the duration by the

said registration of extension shall be deemed never to have been made; provided,

however, that where the registration of extension falls under paragraph (1)(iii)

and a trial decision to the effect that the registration of extension for the duration

exceeding the period during which the patented invention could be worked is to be

invalidated has become final and binding, the extension for the said excess period

shall be deemed not to have been made.

(Correction trial)

Article 126 (1) The patentee may file a request for correction trial with regard to

the correction of the description, scope of claims or drawings attached to the

application; provided, however, that such correction shall be limited to the

following:

(i) restriction of the scope of claims;

(ii) correction of errors or incorrect translations; and

(iii) clarification of an ambiguous statement.

(iv) correction of a statement of claims which cites other statement of claims to

the statement which does not cite the said other statement of claims.

(2) A request for correction trial may not be filed from the time the relevant

opposition to a granted patent or invalidation trial has become pending before

the Patent Office to the time the ruling on the opposition or the trial decision has

become final and binding (all the rulings on the opposition or trial decisions in

the case where a request has been filed for each claim).

(3) Where the scope of claims attached to the application covering two or more

claims is corrected, a request may be filed pursuant to paragraph (1) for each

claim. In this case, where there is a group of claims, said request shall be filed for

the said each group of claims.

(4) Where the description or drawings attached to the application is corrected and a

request is filed for each claim pursuant to paragraph (1), the request shall be filed

for all claims pertaining to the correction of the said description or drawings (in

the case where a request under paragraph (1) is filed for each group of claims

pursuant to the latter clause of the preceding paragraph, all groups of claims

including claims pertaining to the correction of the said description or drawings).

(5) The correction of the description, scope of claims or drawings under paragraph

(1) above shall remain within the scope of the matters disclosed in the description,

scope of claims, or drawings attached to the application (in the case of correction

for the purposes provided in item (ii) of the proviso to paragraph (1), the

description, scope of claims and drawings originally attached to the application

(in the case of a patent with regard to a foreign-language-written-application,

foreign-language-documents)).

(6) The correction of the description, scope of claims or drawings under paragraph

(1) shall not substantially enlarge or alter the scope of claims.

(7) In the case of correction for any of the purposes as provided in item (i) or (ii) of

the proviso to paragraph (1), an invention constituted by the matters described in

the corrected scope of claims must be one which could have been patented

independently at the time of filing of the patent application.

(8) A request for correction trial may be filed even after the lapse of the patent right;

provided, however, that this shall not apply after the patent has been revoked in

revocation decision or invalidated in invalidation trial.

Article 127 Where there is a non-exclusive licensee under Article 35(1), 77(4) or

78(1), an exclusive licensee, or a pledgee, the patentee may file a request for a

correction trial only with the consent of the said person.

Article 128 Where a trial decision to the effect that the description, scope of claims

or drawings attached to the application is to be corrected, has become final and

binding, the filing of the patent application, the laying open of the patent

application, the examiner's decision or the trial decision to the effect that the

patent is to be granted, or the registration of the establishment of the patent right,

shall be deemed to have been made based on the corrected description, scope of

claims or drawings.

Articles 129 and 130 Deleted

(Formal requirements of appeal/request for trial)

Article 131 (1) A person filing appeal/request for trial shall submit a written

request stating the following to the Commissioner of the Patent Office:

(i) the name, and the domicile or residence of the party and the representative

thereof;

(ii) the identification of the appeal/trial case; and

(iii) object and statement of the claim.

(2) When a request for invalidation trial is filed, the facts on which the invalidation

of the patent is based shall be specified in concrete terms, and the relationship of

each fact that is required to be proved with the relevant evidence shall be stated

in the grounds for the request as provided in item (iii) of the preceding paragraph.

(3) Where a request for correction trial is filed, the object and statement of the claim

listed in paragraph (1) item (iii) shall be stated as provided by Ordinance of the

Ministry of Economy, Trade and Industry.

(4) Where a request for correction trial is filed, the corrected description, scope of

claims or drawings shall be attached to the written request.

(Amendment of appeal/request for trial)

Article 131-2 (1) An amendment of the written request filed under paragraph (1)

of the preceding Article shall not change the gist thereof; provided, however, that

this shall not apply where the said amendment falls under any of the following

items:

(i) where the amendment is made with respect to the ground for the request as

provided in paragraph (1) item (iii) of the preceding Article in the course of

filling a request for a trial other than invalidation trial;

(ii) where the amendment is made in the event that approval is granted by the

chief administrative judge under the following paragraph; and

(iii) where an amendment is made with regard to a matter ordered, in the case

where it is ordered to make the amendment with regard to the said written

request pursuant to Article 133(1) (including cases where it is applied mutatis

mutandis in Article 120-5(9) and Article 134-2(9)).

(2) In the course of filing a request for invalidation trial, where an amendment of

the grounds for the request as provided in paragraph (1), item (iii) of the

preceding Article changes the gist thereof, the chief administrative judge may

make a ruling approving such amendment if the chief administrative judge

recognizes that there is no possibility of unreasonable delay of the proceedings by

such amendment and any of the following facts exists:

(i) a request for correction under Article 134-2(1) has been filed in the said

invalidation trial and such request for correction has given rise to a need for

amendment of the grounds for the request; and

(ii) other than the case as provided in the preceding paragraph there exist

reasonable grounds for not stating the grounds for the request with regard to

the amendment of the request at the time the request for trial was filed, and

the demandee has agreed to such amendment.

(3) The approval of the amendment as provided in the preceding paragraph may not

be granted if the written amendment of proceedings with regard to the said

amendment is submitted prior to the service of a copy of the written request

under Article 134(1).

(4) No appeal shall be available from a ruling under paragraph (2).

(Joint trial)

Article 132 (1) Where two or more persons file a request for invalidation trial or a

trial for invalidation of the registration of extension of duration concerning the

same patent right, the request may be filed jointly.

(2) Where a request for trial is filed against patentees jointly owning a patent right,

the demandees in the said request shall be all the joint owners of the said patent

right.

(3) Where appeal/request for trial is filed by a joint owner or owners of a patent

right or a right to obtain a patent, with regard to the right under joint ownership,

all of the said joint owners shall jointly file the request.

(4) Where there is a ground for suspension or termination of appeal/trial procedures

on any of the demandants of appeal/request for trial under paragraph (1) or (3) or

any of the demandees of appeal/request for trial under paragraph (2), the said

suspension or termination shall have effect on all of the demandants or

demandees.

(Dismissal by ruling in the case of non-compliance with formal requirements)

Article 133 (1) Where a written request does not comply with Article 131, the chief

administrative judge shall order the demandant to amend the written request,

designating an adequate time limit.

(2) Excluding the case as provided in the preceding paragraph, the chief

administrative judge may order the demandant to amend a procedure pertaining

to the trial, designating an adequate time limit, in any of the following cases:

(i) where the procedure does not comply with paragraphs (1) to (3) of Article 7 or

Article 9;

(ii) where the procedure does not comply with formal requirements as provided in

this Act or an order thereunder; and

(iii) where the fees for a procedure payable under Articles 195(1) or 195(2) have

not been paid;

(3) The chief administrative judge may dismiss the procedure by a ruling where a

person ordered to make an amendment to a procedure pertaining to appeal/trial

cases to make such amendment within the time limit designated under the

preceding two paragraphs or where such amendment is made in violation of

Article 131-2(1).

(4) The ruling under the preceding paragraph shall be made in writing and state the

grounds thereof.

(Dismissal of unlawful procedures)

Article 133-2 (1) In the procedures pertaining to appeal/trial case (excluding

appeal/request for trial), the chief administrative judge may, by a ruling, dismiss

procedures that are unlawful and not amendable.

(2) Where the chief administrative judge intends to dismiss a procedure under the

preceding paragraph, he/she shall notify the person who undertook the

procedures of the reasons therefor, and give the said person an opportunity to

submit a statement of explanation, designating an adequate time limit.

(3) The ruling under this paragraph (1) shall be in writing and state the grounds

therefor.

(Submission of a written answer, etc.)

Article 134 (1) Where appeal/request for trial has been filed, the chief

administrative judge shall serve a copy of the written request to the demandee

and give the demandee an opportunity to submit a written answer, designating

an adequate time limit.

(2) When the chief administrative judge approves the correction of the written

request under Article 131-2(2), the chief administrative judge shall serve a copy of

the statement of the amendment of proceedings with regard to such amendment

to the demandee, and shall give the demandee an opportunity to submit a written

answer, designating an adequate time limit; provided, however, that this shall

not apply where special circumstances exist under which it is recognized that

giving an opportunity to the demandee to submit a written answer is not

required.

(3) Upon receipt thereof, the chief administrative judge shall serve to the

demandant a copy of the written answer under paragraph (1) or the main clause

of the preceding paragraph.

(4) The chief administrative judge may question the parties and the intervenors

with regard to the appeal and trial.

(Request for correction in invalidation trial)

Article 134-2 (1) The demandee in invalidation trial 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, the following Article, Article 153(2) or Article

164-2(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.

(iv) correction of a statement of claims which cites other statement of claims to

the statement which does not cite the said other statement of claims.

(2) A request for correction in the preceding paragraph may be filed for each claim

in the case where the scope of claims attached to the application covering two or

more claims is corrected; provided, however, that a request for correction in the

said paragraph shall be filed for each claim in the case where a request for

invalidation trial has been filed for each claim.

(3) In the case of the preceding paragraph, where there is a group of claims in the

said claims, the said request shall be filed for each group of claims.

(4) Upon receipt thereof, the chief administrative judge 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 paragraph

(1).

(5) The administrative judge may examine grounds that have not been pleaded by

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 (5) to (7) of Article 126 that shall be applied mutatis mutandis upon

reading the specified terms in accordance with paragraph (9). In such a case,

where the request for correction on the above grounds is not approved of, the chief

administrative judge 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.

(6) 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.

(7) The request for correction in paragraph (1) may be withdrawn only within the

time limit during which the amendment under Article 17-5(2) may be made with

regard to the corrected description, scope of claims or drawings attached to the

written request for correction in the said paragraph. In this case, where requests

for correction have been filed for each claim or each group of claims pursuant to

paragraph (2) or (3), all those requests shall be withdrawn.

(8) Where a request for invalidation trial has been withdrawn for each claim

pursuant to Article 155(3), the request for correction in paragraph (1) shall be

deemed to have been withdrawn for each claim, and where all requests pertaining

to the trial case of the invalidation trial have been withdrawn, all the requests for

correction in the said paragraph pertaining to the said trial case shall be deemed

to have been withdrawn.

(9) Articles 126(4) to (8), 127, 128, 131(1), (3) and (4), 131-2(1),132(3) and (4), and

133(1), (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(7)

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 invalidation trial is not

filed."

(Request for correction where rescission judgment is rendered)

Article 134-3 Where a judgment rescinding a trial decision in a trial for patent

invalidation (limited to a trial decision concluding that the request for a trial is

groundless) under Article 181(1) has become final and binding, and following

which proceedings are initiated under paragraph (2) of the said Article, the chief

trial examiner may designate to the demandee an adequate time limit for filing a

request for correction of the description, scope of claim(s) or drawing(s) attached

to the application, only if such motion is made by the demandee within one week

from the date such judgment became final and binding.

(Dismissal of inadequate appeal/request for trial by appeal/trial decision)

Article 135 An unlawful appeal/request for trial, that is not amendable, may be

dismissed by appeal/trial decision without giving the demandee an opportunity to

submit a written answer.

(Panel system for trial)

Article 136 (1) A trial shall be conducted by a panel consisting of three or five

administrative judges.

(2) A decision of the panel under the preceding paragraph shall be made by a

majority vote.

(3) Qualifications of administrative judges shall be as provided by Cabinet Order.

(Designation of administrative judges)

Article 137 (1) The Commissioner of the Patent Office shall designate the

administrative judges constituting a panel under Article 136(1) for each

appeal/trial (for appeal/trial that is to be examined by an examiner under Article

162, limited to the case where a report is submitted under Article 164(3)).

(2) Where any of the administrative judges designated under the preceding

paragraph is unable to participate in the appeal/trial, the Commissioner of the

Patent Office shall terminate the designation and appoint another administrative

judge to fill the vacancy.

(Exclusion of administrative judges)

Article 139 A administrative judge shall be excluded from performing his/her

duties in any of the following cases:

(i) where the administrative judge or his/her spouse or former spouse is or was a

party in the case or an intervenor or a patent opponent in the case;

(iii) where the administrative judge is a guardian, a supervisor of a guardian, a

curator, a supervisor of the curator, an assistant or a supervisor of the assistant

of a party in the case or an intervenor or a patent opponent in the case;

(iv) where the administrative judge has become a witness or an expert witness in

the case;

(iv): (snip)

(v) where the administrative judge is or was a representative of a party in the

case or an intervenor or a patent opponent in the case;

(v) where the administrative judge is or was a representative of a party in the

case or an intervenor or a patent opponent in the case;

(vi) where the administrative judge was involved in the procedures relating to the

examiner's decision who is being appealed in the case as the examiner; and

(vii) where the administrative judge has a direct interest in the case.

Article 140 Where there exists any ground for exclusion under Article 139, a party

or an intervenor may file a motion requesting the exclusion.

(Recusation to administrative judge)

Article 141 (1) Where there exists any circumstances of an administrative judge

that might hinder fair proceedings of the trial, a party or an intervenor may

recuse the administrative judge.

(2) A party or an intervenor may not recuse an administrative judge after making a

written or oral statement to the administrative judge with regard to the case;

provided, however, that this shall not apply where the party or the intervenor was

not aware of the ground of the recusation or the ground of the recusation occurred

after making such statement.

(Formal requirements for a motion requesting exclusion or recusation)

Article 142 (1) A person filing a motion requesting an exclusion or recusation shall

submit a document to the Commissioner of the Patent Office stating the grounds

therefor; provided, however, that in the case of oral proceedings such request may

be made orally.

(2) The grounds for the exclusion or recusation shall be showed of a prima facie

within 3 days from the date the motion under the preceding paragraph has been

filed. The same shall apply to the facts prescribed in the proviso to Article 141(2).

(Ruling on motion requesting exclusion or recusation)

Article 143 (1) Where a motion requesting an exclusion or recusation has been

filed, administrative judges who are not the administrative judge named in the

motion shall render a ruling thereon through a trial; provided, however, that the

administrative judge named in the motion may present his opinion.

(2) The ruling under the preceding paragraph shall be made in writing and state the

grounds therefor.

(3) The ruling under paragraph (1) shall not be subject to appeal.

Article 144 Where a motion requesting an exclusion or recusation has been filed,

the trial procedures shall be suspended until a ruling on the motion is rendered;

provided, however, that this shall not apply to the case requiring urgent action.

(Trial Clerk)

Article 144-2 (1) The Commissioner of the Patent Office shall designate the trial

clerk for each trial case (in the case of a trial case for which a request is to be

examined by the examiner in accordance with Article 162, limited to a trial case

in which a report has been submitted under Article 164(3)).

(2) Qualifications of trial clerks shall be as provided by Cabinet Order

(3) Where the trial clerk designated under paragraph (1) is unable to participate in

the trial, the Commissioner of the Patent Office shall relieve the designated trial

clerk and appoint another trial clerk.

(4) The trial clerk shall undertake affairs relating to the preparation of the trial

record and service for each trial case and, upon the order of the chief

administrative judge, undertake any other affairs relating thereto.

(5) Article 139 (excluding item (vi)) and 140 to 144 shall apply mutatis mutandis to

the trial clerk. In such a case, the trial clerk named in the motion requesting the

exclusion or recusation may not participate in the trial with regard to the said

exclusion or recusation.

(Procedure of Proceedings)

Article 145 (1) An invalidation trial or a trial for invalidation of the registration of

extension of the duration of a patent shall be conducted by oral proceedings;

provided, however, that the chief administrative judge may, upon a motion by a

party or intervenor in the case, or ex officio decide to conduct the trial by

documentary proceedings.

(2) Trials, excluding those as provided in the preceding paragraph, shall be

conducted by documentary proceedings; provided, however, that the chief

administrative judge may, upon a motion by the party or ex officio, decide to

conduct the trial by oral proceedings.

(3) Where a trial is conducted by oral proceedings under paragraph (1) or the

proviso to the preceding paragraph, the chief administrative judge shall designate

the date and place thereof and summon the parties and the intervenor on the

designated date.

(4) Article 94 (Summon on the designated date) of the Code of Civil Procedure shall

apply mutatis mutandis to a summon on the designated date as provided in the

preceding paragraph.

(5) The oral proceedings under paragraph (1) or the proviso to paragraph (2) shall be

conducted in public; provided, however, that this shall not apply where public

order or morality is liable to be injured thereby.

Article 146 Article 154 (attendance of interpreter, etc.) of the Code of Civil

Procedure shall apply mutatis mutandis to a trial.

(Trial Records)

Article 147 (1) In oral proceedings under paragraph (1) or the proviso to paragraph

(2) of Article 145, the trial clerk shall prepare a trial record stating the gist of the

proceedings and all other necessary matters on each trial date.

(2) When the trial clerk finds that an order received from the chief administrative

judge with regard to the preparation or amendment of the trial record under the

preceding paragraph is inappropriate, the trial clerk may add his/her opinion.

(3) Paragraphs (2) and (3) of Article 160(record of oral proceedings) shall apply

mutatis mutandis to the trial record under paragraph (1).

(Intervention)

Article 148 (1) A person who may file a request for a trial under Article 132(1) may

intervene in the trial as a demandant until the conclusion of the proceedings.

(2) An intervenor under the preceding paragraph may continue the trial procedures

even after the withdrawal of the request for a trial by the original party.

(3) A person with an interest in the result of the trial may intervene in the trial to

assist one of the original parties until the conclusion of the proceedings.

(4) The intervenor under the preceding paragraph may undertake all trial

procedures.

(5) Where there is a ground for interruption or suspension of trial procedures on

behalf of the intervenor under paragraph (1) or (3), the said interruption or

suspension shall have effect on the original parties.

Article 149 (1) A person applying to intervene shall submit an application for

intervention to the chief administrative judge.

(2) Where an application for intervention is submitted, the chief administrative

judge shall serve a copy of the application for intervention to the original parties

and intervenor(s) and give such persons an opportunity to present opinions,

designating an adequate time limit.

(3) Where an application for intervention is filed, the administrative judge of the

trial in which the applicant intends to intervene shall render a ruling through a

trial.

(4) The ruling under the preceding paragraph shall be made in writing and state the

grounds therefor.

(5) The ruling under paragraph (3) shall not be subject to appeal

(Examination and preservation of evidence)

Article 150 (1) Evidence may be examined in a trial, upon a motion by a party or

an intervenor, or ex officio.

(2) Evidence may be preserved in a trial, upon a motion by an interested person

prior to the filing of a request for a trial, or by a party to or an intervenor in the

trial, or ex officio when the trial is pending.

(3) A motion prior to the filing of a request for a trial under the preceding paragraph

shall be filed to the Commissioner of the Patent Office.

(4) Where a motion has been filed prior to the filing of a petition for a trial under

paragraph (2), the Commissioner of the Patent Office shall designate the

administrative judge and the trial clerk who shall be in charge of preservation of

evidence.

(5) Where evidence has been, ex officio, examined or preserved under paragraph (1)

or (2), the chief administrative judge shall notify the parties and intervenor(s) of

the result thereof and give such persons an opportunity to present opinions,

designating an adequate time limit.

(6) The examination or preservation of evidence under paragraph (1) or (2) may be

entrusted to a district court or summary court having jurisdiction over the

matter.

Article 151 Article 147 of this Act and Articles 93(1) (designation of date), 94

(summons on designated date), 179 to 181, 183 to 186, 188, 190, 191, 195 to 198,

199(1), 201 to 204, 206, 207, 210 to 213, 214(1) to 214(3), 215 to 222, 223(1) to

223(6), 226 to 228, 229(1) to 229(3), 231, 232(1), 233, 234, 236 to 238, 240 to 242

(evidence) and 278 (submission of document in lieu of examination, etc) of the

Code of Civil Procedure shall apply mutatis mutandis to the examination and

preservation of evidence under the preceding Article. In this case, the term "facts

that are admitted by the party in court or that are obvious" in Article 179 of the

said Code shall be deemed to be replaced with "obvious facts", and the term

"Supreme Court Rules" in Article 204 and 215-3 of the said Code shall be deemed

to be replaced with "Ordinance of the Ministry of Economy, Trade and Industry."

(Ex officio proceedings)

Article 152 The chief administrative judge may proceed with the trial procedures,

even if a party or intervenor fails to undertake required procedures within the

legal or designated time limit or the said person fails to appear pursuant to the

provision of Article 145(3).

Article 153 (1) Any grounds not pleaded by a party or intervenor may be examined

in a trial.

(2) Where any grounds not pleaded by a party or intervenor has been examined

under the preceding paragraph, the chief administrative judge shall notify the

parties and the intervenor(s) of the result thereof and give such persons an

opportunity to present opinions, designating an adequate time limit.

(3) Any object of claim not claimed by the demandant may not be examined in a

trial.

(Joint or separate conduct of proceedings)

Article 154 (1) Where one or both parties to two or more trials are identical, the

proceedings may be jointly conducted.

(2) Proceedings that have been jointly conducted under the preceding paragraph

may later be separately conducted.

(Withdrawal of request for trial)

Article 155 (1) A request for a trial may be withdrawn before a trial decision

becomes final and binding.

(2) A request for a trial may not be withdrawn without the consent of the adverse

party, after the written answer under Article 134(1) has been submitted.

(3) When a request for invalidation trial has been filed with regard to two or more

claims covered by a patent that has two or more claims, the request may be

withdrawn for any of the claims.

(4) Where requests for correction trial are filed for each claim or each group of

claims, the withdrawal of the said requests shall be made for all those requests.

(Notice of conclusion of proceedings)

Article 156 (1) Where the case has reached the point at which a trial decision may

be rendered, the chief administrative judge shall, in a trial other than

invalidation trial, notify the parties and intervenor(s) of the conclusion of the

proceedings.

(2) In invalidation trial, the chief administrative judge shall, where the case has

reached the point at which a trial decision may be rendered, and an

announcement of a trial decision under Article 164-2(1) is not made or an

announcement of a trial decision in the said paragraph has been made but a

defendant does not file a request for correction under Article 134-2(1) or does not

make an amendment under Article 17-5(2) within the time limit under paragraph

(2) of the said Article, notify the parties and intervenors of the conclusion of the

proceedings.

(3) The chief administrative judge may, upon a motion by a party or intervenor, or

ex officio, resume proceedings, where necessary, even after the notice has been

given under the preceding two paragraphs.

(4) The trial decision shall be rendered within 20 days from the date on which the

notice under paragraph (1) or (2) has been issued; provided, however, that this

shall not apply where the case is complex or there are unavoidable reasons

therefor.

(Appeal/Trial decision)

Article 157 (1) When appeal/trial decision has been rendered, the appeal/trial

shall be concluded.

(2) Appeal/trial decision shall be rendered in writing stating the following matters:

(i) the trial number;

(ii) the name, and domicile or residence of each of the parties, intervenor(s) and

their representatives;

(iii) the identification of the appeal/trial case;

(iv) the conclusion of and reasons for the appeal/trial decision; and

(v) the date of the appeal/trial decision.

(3) Where appeal/trial decision has been rendered, the Commissioner of the Patent

Office shall serve a certified copy of the appeal/trial decision to the parties,

intervenor(s) and person whose application for intervention has been refused.

(Special provisions regarding trials against examiner's decision of refusal)

Article 158 Any procedure taken during the examination procedure shall also be

effective in appeal against an examiner's decision of refusal.

Article 159 (1) Article 53 shall apply mutatis mutandis to appeal against an

examiner's decision of refusal. In this case, the term "Article 17-2(1)(i) or (iii)" in

Article 53(1) shall be deemed to be replaced with "Article 17-2(1)(i), (iii) or (iv)",

and the term "an amendment" in Article 53(1) shall be deemed to be replaced with

"an amendment (in the case of Article 17-2(1)(i) or (iii), excluding the amendment

made prior to the request for appeal against the examiner's decision of refusal)".

(2) Article 50 and Article 50-2 shall apply mutatis mutandis where a reason for

refusal found in appeal against an examiner's decision of refusal is different from

the reason(s) of the examiner's decision. In this case, the term "in the case of

Article 17-2(1)(i) or (iii) (in the case of Article 17-2(1)(i), limited to the case where

the examiner has given a notice under the next Article along with the notice of

reasons for refusal)" in the proviso to Article 50 shall be deemed to be replaced

with "in the case of Article 17-2(1)(i) (limited to the case where the examiner has

given a notice under the next Article along with the notice of reasons for refusal,

and excluding the case where the applicant has made an amendment prior to the

filing of a request for appeal against an examiner's decision of refusal), (iii)

(excluding the case where the applicant has made an amendment prior to the

filing of a request for appeal against an examiner's decision of refusal) or (iv)."

(3) Articles 51 and 67-3(2) shall apply mutatis mutandis where a request for appeal

against an examiner's decision of refusal is found to have reasonable grounds.

Article 160 (1) Where an examiner's decision has been rescinded in appeal against

the examiner's decision of refusal, appeal decision may be made to order a further

examination to be carried out.

(2) The decision made in the appeal decision under the preceding paragraph shall be

binding upon the examiner with respect to the case.

(3) Article 159(3) shall not apply where appeal decision under paragraph (1) is

rendered.

Article 161 Articles 134(1) to (3), 134-2, 134-3, 148 and 149 shall not apply to

appeal against the examiner's decision of refusal.

Article 162 Where, in the case of a request for appeal against an examiner's

decision of refusal, where an amendment has been made to the description, scope

of claims or drawings attached to the application in the patent application

pertaining to the request at the time of filing the request, the Commissioner of

the Patent Office shall direct the examiner to examine the request.

Article 163 (1) Articles 48, 53 and 54 shall apply mutatis mutandis to an

examination under the preceding Article. In this case, the term "Article 17-2(1)(i)

or (iii)" in Article 53(1) shall be deemed to be replaced with "Article 17-2(1)(i), (iii)

or (iv)" and the term "an amendment" in Article 53(1) shall be deemed to be

replaced with "an amendment (in the case of Article 17-2(1)(i) or (iii), excluding

the amendment made prior to the request for appeal against an examiner's

decision of refusal)."

(2) Article 50 and Article 50-2 shall apply mutatis mutandis where a reason for

refusal which was not contained in the examiner's decision concerned in the

request for appeal is found in the examination under the preceding Article. In this

case, the term "in the case of Article 17-2(1)(i) or (iii) (in the case of Article

17-2(1)(i), limited to the case where the examiner has given a notice under the

next Article along with the notice of reasons for refusal)" in the proviso to Article

50 shall be deemed to be replaced with "in the case of Article 17-2(1) (limited to

the case where the examiner has given a notice under the next Article along with

the notice of reasons for refusal, and excluding the case where the applicant has

made an amendment prior to the filing of a request for appeal against an

examiner's decision of refusal), (iii) (excluding the case where the applicant has

made an amendment prior to the filing of a request for appeal against an

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examiner's decision of refusal) or (iv)."

(3) Articles 51 and 52 shall apply mutatis mutandis where appeal is found to have

reasonable grounds in the examination under the preceding Article.

Article 164 (1) In an examination under Article 162, where the examiner renders a

decision to the effect that a patent is to be granted, the examiner shall rescind the

examiner's decision of refusal that is the basis of the appeal.

(2) Except in the case of the preceding paragraph, the examiner may not render a

ruling dismissing an amendment under Article 53(1) as applied under Article

163(1).

(3) Except in the case of paragraph (1), the examiner shall report to the

Commissioner of the Patent Office the result of the examination without

rendering a decision on the appeal.

(Special provisions for invalidation trial)

Article 164-2 (1) Where the case of invalidation trial has reached the point at

which a trial decision may be rendered, the chief administrative judge shall,

where he or she finds a reasonable ground for request for a trial or it is as

provided by Ordinance of the Ministry of Economy, Trade and Industry, notify the

parties and intervenors of an advance notice of the trial decision.

(2) Where an advance notice of a trial decision is notified pursuant to the preceding

paragraph, the chief administrative judge shall designate to the defendant an

adequate time limit for filing a request for correction of the description, scope of

claims or drawings attached to the application.

(3) Article 157(2) shall apply mutatis mutandis to an advance notice of trial decision

under paragraph (1).

(Special provisions for correction trial)

Article 165 Where a request for correction trial does not correspond to one of the

purposes provided in the proviso to Article 126(1) or does not comply with

paragraphs (5) to (7) of Article 126, the chief administrative judge shall notify the

demandant of the reasons therefore and give the demandant an opportunity to

submit an written opinion, designating an adequate time limit.

Article 166 Articles 134(1) to (3), 134-2, 134-3, 148 and 149 shall not apply to a

correction trial.

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(Effect of trial decision)

Article 167 Where a final and binding trial decision in an invalidation trial or a

trial for invalidation of the registration of extension of the duration has been

registered, neither parties nor intervenors may file a request for a trial on the

basis of the same facts and evidence.

(Scope of final and binding trial decision)

Article 167-2 (1) Appeal/trial decision shall become final and binding for each

appeal/trial case; provided, however, that, in the cases listed in the following

items, appeal/trial decision shall become final and binding as provided in the

corresponding item:

(i) where a request for invalidation trial has been filed for each claim and a

request for correction has been filed under Article 134-2(1) for each group of

claims: for the said group of claims;

(ii) where a request for correction trial has been filed for each group of claims: for

the said group of claims; and,

(iii) where a request for trial has been filed for each claim and a case other than

those listed in item (i): for the said claim

(In relation to litigation)

Article 168 (1) Where deemed necessary during appeal/trial, the appeal/trial

proceedings may be suspended until the ruling on an opposition to a granted

patent or the decision in another trial has become final and binding or court

proceedings have been concluded.

(2) Where an action is instituted or a motion for order of provisional seizure or order

of provisional disposition is filed, the court may, if it considers it necessary,

suspend the court proceedings until the appeal/trial decision becomes final and

binding.

(3) Where an action with respect to infringement of a patent right or an exclusive

license is instituted, the court shall notify the Commissioner of the Patent Office

thereof. The same shall apply when the said court proceedings have been

concluded.

(4) Where the Commissioner of the Patent Office receives the notice as provided in

the preceding paragraph, the Commissioner of the Patent Office shall notify the

court of whether appeal/request for a trial with regard to the said patent right has

102

been filed. The same shall apply when, with regard to the said trial, a ruling

dismissing the written request or appeal/trial decision has been rendered or the

request has been withdrawn.

(5) Where the court receives the notice to the effect that a request for appeal/trial

with regard to the said patent right has been filed under the preceding paragraph,

if a document stating a method of allegation or defense as provided in Article

104-3(1) has already been submitted in the action prior to the said notice or if the

said document is submitted for the first time after the said notice, the court shall

notify the Commissioner of the Patent Office thereof.

(6) Where the Commissioner of the Patent Office receives the notice as provided in

the preceding paragraph, the Commissioner of the Patent Office may request the

court to deliver copies of any record of the said action which the administrative

judge considers necessary for the trial.

(Burden of costs of appeal/trial)

Article 169 (1) The burden of costs in connection with invalidation trial or

invalidation trial of the registration of extension of the duration shall be decided

ex officio by a trial decision where the trial is terminated by a trial decision or by

a ruling in the trial where the trial is terminated otherwise than by a trial

decision.

(2) Articles 61 to 66, 69(1), 69(2), 70 and 71(2) (Bearing of litigation costs) of the

Code of Civil Procedure shall apply mutatis mutandis to the costs in connection

with the trial under the preceding paragraph. In this case, the term "Supreme

Court Rules" in Article 71(2) of the said Code shall be deemed to be replaced with

"Ordinance of the Ministry of Economy, Trade and Industry."

(3) The costs in connection with appeal against an examiner's decision of refusal

and a correction trial shall be borne by the demandant.

(4) Article 65 (Bearing of litigation costs in joint litigation) of the Code of Civil

Procedure shall apply mutatis mutandis to the costs to be borne by the

demandant under the preceding paragraph.

(5) The amount of costs in connection with appeal/trial shall be determined by the

Commissioner of the Patent Office upon request, after appeal/trial decision or a

ruling has become final and binding.

(6) The scope, the amount and the payment of the costs in connection with

appeal/trial, and the payment required for undertaking a procedure for a trial

shall be governed by the relevant provisions of the Act on Civil Procedure Costs,

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etc. (Act No. 40 of 1971) (excluding provisions in Chapter II, Sections 1 and 3 of

the said Act) unless such provisions are contrary to the nature of the said

matters.

(Enforceability of ruling on amount of costs)

Article 170 A final and binding ruling on the amount of costs for appeal/trial shall

have the same effect as that of an enforceable title of obligation.

Chapter VII Retrial (Article 171 to Article 177)

(Request for retrial)

Article 171 (1) A party or an intervenor may file a request for a retrial against a

final and binding revocation decision and a final and binding trial decision.

(2) Articles 338(1), 338(2) and 339 (Grounds for retrial) of the Code of Civil

Procedure shall apply mutatis mutandis to a request for a retrial under the

preceding paragraph.

Article 172 (1) Where a demandant for a trial, in conspiracy with the demandee,

has caused the trial decision to be rendered for the purpose of harming the right

or interest of a third party, the third party may file a request for a retrial against

the final and binding trial decision.

(2) A request for a retrial under the preceding paragraph shall be filed against the

demandant and the demandee in the trial as joint demandees.

(Time limit for request for retrial)

Article 173 (1) A request for a retrial shall be filed within 30 days from the date on

which the demandant became aware of the grounds for the retrial after the

revocation decision or the trial decision became final and binding.

(2) Where a person intending to file a request for a retrial is unable to file the said

request within the time limit as provided in the preceding paragraph due to

reasons beyond the control of the person, notwithstanding the said paragraph, the

said person may file the request within 14 days (in the case of an overseas

resident, within two months) from the date on which the said reasons ceased to

exist, prior to the lapse of six months from the expiration of the said time limit.

(3) Where a request for a retrial is filed on the ground that the demandant was not

represented in accordance with the applicable legal provisions, the time limit as

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provided in paragraph (1) shall be counted from the day following the date on

which, by being served a copy of the trial decision, the demandant or his statutory

representative became aware that the revocation decision or the trial decision had

been rendered.

(4) No request for a retrial may be filed after the expiration of three years from the

date on which the revocation decision or the trial decision became final and

binding.

(5) Where a ground for a retrial has arisen after the revocation decision or the trial

decision became final and binding, the time limit as provided in the preceding

paragraph shall be counted from the day following the date on which the ground

first arose.

(6) Paragraphs (1) and (4) shall not apply to a request for a retrial filed on the

ground that the trial decision is in conflict with a final and binding trial decision

previously rendered.

(Application mutatis mutandis of provisions regarding trial, etc.)

Article 174 (1) Articles 114, 116 to 120-2, 120-5 to 120-8, 131(1), the main clause of

131-2(1), 132(3), 154, 155(1) and (3), and 156(1), (3) and (4) shall apply mutatis

mutandis to a retrial against a final and binding revocation decision.

(2) Articles 131(1), the main clause of 131-2(1), 132(3) and (4), 133, 133-2, 134(4),

135 to 147, 150 to 152, 155(1), 156(1), (3) and (4), 157 to 160, the main clause of

167-2, 168, 169(3) to (6), and 170 shall apply mutatis mutandis to a retrial against

a final and binding trial decision in an appeal against an examiner's decision of

refusal.

(3) Articles 131(1), the main clause of 131-2(1), 132(1), (2) and (4), 133, 133-2, 134(1),

(3) and (4), 135 to 152, 154, 155(1) to (3), 156(1), (3) and (4), 157, 167, 168, 169(1),

(2), (5) and (6), and 170 shall apply mutatis mutandis to a retrial against a final

and binding trial decision in an invalidation trial or a trial for invalidation of the

registration of extension of the duration.

(4) Articles 131(1) and (4), the main clause of 131-2(1), 132(3) and (4), 133, 133-2,

134(4), 135 to 147, 150 to 152, 155(1) and (4), 156(1), (3) and (4), 157, 165, 167-2,

168, 169(3) to (6), and 170 shall apply mutatis mutandis to a retrial against a

final and binding trial decision in a correction trial.

(5) Article 348(1) (Scope of proceedings) of the Code of Civil Procedure shall apply

mutatis mutandis to a retrial.

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(Restriction on effect of patent right restored by retrial)

Article 175 (1) Where a patent right pertaining to a revoked or invalidated patent

or a patent right pertaining to the invalidated registration of extension of the

duration thereof has been restored by a retrial, or where the establishment of a

patent right or the extension of the duration of a patent right with respect to a

patent application or an application for the registration of extension of the

duration of a patent right which was refused by a trial decision has been

registered by a retrial, and where the patent has been granted for the invention of

a product, such patent right shall not be effective against any product imported

into or produced or acquired in Japan without knowledge, after the revocation

decision or the trial decision became final and binding but before the registration

of the request for a retrial.

(2) Where a patent right pertaining to a revoked or invalidated patent or a patent

right pertaining to the invalidated registration of extension of the duration

thereof has been restored by a retrial or where the establishment of a patent right

or the extension of the duration of a patent right with respect to a patent

application or an application for the registration of extension of the duration of a

patent right which was refused by a trial decision has been registered by a retrial,

such patent right shall not be effective against the following acts conducted after

the revocation decision or the trial decision became final and binding but before

the registration of the request for a retrial:

(i) working of the said invention without knowledge;

(ii) where a patent has been granted for the invention of a product, producing,

assigning, etc., importing or offering for assignment, etc. any product to be used

for producing of the said product without knowledge; and

(iii) where a patent has been granted for an invention of a product, possessing the

said product for the purpose of assigning, etc. or exporting it without

knowledge;

(iv) where a patent has been granted for the invention of a process, producing,

assigning, etc., importing or offering for assignment, etc. any product to be used

for the use of the said process without knowledge; and

(v) where a patent has been granted for an invention of a process of producing a

product, possessing the product produced by the said process for the purpose of

assigning, etc. or exporting it without knowledge.

Article 176 Where a patent right pertaining to a revoked or invalidated patent or a

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patent right pertaining to the invalidated registration of an extension of the

duration thereof has been restored through a retrial or where the establishment

of a patent right or the extension of the duration of a patent right with respect to

a patent application or an application for registration of an extension of the

duration of a patent right refused by a trial decision has been registered through

a retrial, and where a person has, without knowledge, been working the invention

in Japan or has, without knowledge, been making preparations therefore, after

the revocation decision or the trial decision became final and binding but before

the registration of the demand for a retrial, such person shall have a

non-exclusive license on the patent right, to the extent of the invention and the

purpose of such business worked or prepared.

Article 177 Deleted

Chapter VIII Litigation (Article 178 to Article 184-2)

(Actions against trial decisions, etc.)

Article 178 (1) The Tokyo High Court shall have exclusive jurisdiction over any

action against a revocation decision or a trial decision, a ruling to dismiss a

written request for an opposition to a granted patent, a trial or a retrial or a

written request for correction under Article 120-5(2) or Article 134-2(1).

(2) An action under paragraph (1) may be instituted only by a party in the case, an

intervenor, or a person whose application for intervention in the proceedings on

the said opposition to a granted patent, in the trial or in the retrial has been

refused.

(3) An action under paragraph (1) may not be instituted after the expiration of

thirty days from the date on which a certified copy of the trial decision or the

ruling has been served.

(4) The time limit as provided in the preceding paragraph shall be invariable.

(5) The chief administrative judge may ex officio designate an additional period

extending the invariable time limit under the preceding paragraph for a person in

a remote area or an area with transportation difficulty.

(6) An action with regard to a matter for which a request for a trial may be made

may be instituted only against a trial decision.

(Appropriate party as defendant)

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Article 179 In an action under Article 178(1), the Commissioner of the Patent

Office shall be the defendant; provided, however, that in the case of an action

against a trial decision in an invalidation trial, or a trial for invalidation of the

registration of extension of duration, or in a retrial under Article 171(1) against a

final and binding trial decision in such trial, the demandant or the demandee in

the trial or retrial shall be the defendant.

(Notice of institution of action, etc.)

Article 180 Where an action under the proviso to the preceding Article has been

instituted, the court shall notify the Commissioner of the Patent Office thereof

without delay.

(2) In the case of the preceding paragraph, where an action is against an

invalidation trial requested for each claim or a trial decision of a retrial against a

final and binding trial decision of the trial, the court shall deliver to the

Commissioner of the Patent Office the documents necessary for identifying claims

pertaining to the said action.

(Opinion of the Commissioner of the Patent Office in litigation rescinding the trial

decision)

Article 180-2 (1) Where an action under the proviso to Article 179 is instituted, the

court may seek the opinion of the Commissioner of the Patent Office regarding

the application of this Act or any other necessary matters relating to such case.

(2) Where an action under the proviso to Article 179 is instituted, upon the court's

consent, the Commissioner of the Patent Office may express his/her opinions to

the court regarding the application of this Act or any other necessary matters

relating to such case.

(3) The Commissioner of the Patent Office may designate another Patent Office

official to express the Commissioner's opinions for the purpose of the preceding

two paragraphs.

(Rescission of the trial decision or ruling)

Article 181 (1) Where the court finds for the plaintiff in an action instituted under

Article 178(1), it shall rescind the trial decision or ruling.

(2) Where the court's decision rescinding a trial decision or ruling or the court's

ruling rescinding a trial decision under the preceding paragraph has become final

and binding, the administrative judges shall carry out further proceedings and

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render a trial decision or ruling. In this case, the court's decision rescinding the

trial decision or the ruling has become final and binding with regard to some

claims in a group of claims for which a request for correction under Article

120-5(2) or Article 134-2(1) has been filed, the administrative judge shall, in

carrying out the proceedings, rescind the trial decision or the ruling on the other

claims in the said group of claims.

(Delivery of original copy of judgment)

Article 182 Where the court procedures with respect to an action under the proviso

to Article 179 have been concluded, the court shall, without delay, deliver the

original copy of the judgment rendered by the court of each instance to the

Commissioner of the Patent Office.

(Composition of panel)

Article 182-2 With respect to an action under Article 178(1), the ruling that

proceedings and judgment shall be rendered by a panel consisting of five judges

may be made if so determined by the said panel.

(Action against amount of compensation)

Article 183 (1) A person(s) who has received an award under Article 83(2), 92(3),

92(4), or 93(2) may, if not satisfied with the amount of the compensation

determined in the award, institute an action demanding an increase or decrease

of the said amount.

(2) An action under the preceding paragraph may not be instituted after the

expiration of six months from the date on which a certified copy of the award has

been served.

(Appropriate party as defendant)

Article 184 In an action under Article 183(1), the following person shall have

standing as a defendant:

(i) in an action against an award under Article 83(2), 92(4) or 93(2), the

non-exclusive licensee, patentee or exclusive licensee; and

(ii) in an action against an award under Article 92(3), the non-exclusive licensee

or the other person under Article 72.

(Relationship between (administrative) objection and litigation)

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Article 184-2 An action demanding the rescission of dispositions imposed by this

Act or an order thereunder (excluding dispositions under Article 195(4)), may be

instituted only after the rendering of a ruling or an award on an objection against

the dispositions or on the request for examination thereof.

Chapter IX Special Provisions Concerning International Applications under

the Patent Cooperation Treaty (Article 184-3 to Article 184-20)

(Patent application based on international application)

Article 184-3 (1) An international application (a patent application only) to which

the international application date is accorded under Article 11(1), 11(2)(b) or

14(2) of the Patent Cooperation Treaty signed in Washington on June 19, 1970

(hereinafter referred to as the "Treaty" in this Chapter) and which specifies Japan

as a designated State under Article 4(1)(ii) of the Treaty shall be deemed to be a

patent application filed on the said international application date.

(2) Article 43 (including its mutatis mutandis application under Article 43-2(2)

(including its mutatis mutandis application under Article 43-3(3)) and Article

43-3(3)) shall not apply to the international application deemed to be a patent

application under the preceding paragraph (hereinafter referred to as

"international patent application").

(Translations of international patent application in foreign language)

Article 184-4 (1) An applicant of an international patent application in foreign

language (hereinafter referred to as a "patent application in foreign language")

shall submit to the Commissioner of the Patent Office Japanese translations of

the description, scope of claims, drawings (the descriptive text in such drawings

only, hereinafter the same shall apply in this article), and the abstract, as

provided in Article 3(2) of the Treaty, as of the international application date as

provided in paragraph (1) of the preceding Article (hereinafter referred to as the

"international application date") within the period from the priority date under

Article 2 (xi) of the Treaty (hereinafter referred to as the "priority date"), to two

years and six months (hereinafter referred to as the "time limit for the submission

of national documents") therefrom; provided, however, that the applicant of a

patent application in foreign language who has submitted the document under

paragraph (1) of the following Article during the period from two months before

the expiration of the time limit for the Submission of National Documents to the

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expiry date thereof (excluding the case where the said translations have been

submitted prior to the submission of the said documents) may submit the said

translations within two months from the date of submission of the said document

(hereinafter referred to as the "special time limit for the submission of

translations").

(2) In the case of the preceding paragraph, where the applicant of the patent

application in foreign language has made an amendment under Article 19(1) of

the Treaty, the applicant may, in lieu of the translation of scope of the claim(s) as

provided in the preceding paragraph, submit a translation of the amended scope

of claim(s).

(3) Where the translation of the description as provided in paragraph (1) and the

translation of the scope of claim(s) as provided in the preceding two paragraphs

(hereinafter referred to as "translation of the description, etc.") have not been

submitted within the time limit for the Submission of National Documents (in the

case of a patent application in foreign language under the proviso to paragraph

(1), the Special Time Limit for the Submission of Translations, hereinafter the

same shall apply in this Article), the international patent application shall be

deemed to have been withdrawn.

(4) An applicant of the international patent application that was deemed to have

been withdrawn pursuant to the preceding paragraph, where there are justifiable

reasons for having not been able to submit the said translation of the description,

etc. within the time limit for the Submission of National Documents, may submit

to the Commissioner of the Patent Office the translation of the description, etc.

and the translations of the drawings and abstracts under paragraph (1) only

within the time limit as provided in Ordinance of the Ministry of Economy, Trade

and Industry.

(5) The translations submitted under the preceding paragraph shall be deemed to

have been submitted to the Commissioner of the Patent Office at the time of

expiration of the Time Limit for the Submission of National Documents expires.

(6) Where an amendment under Article 19(1) of the Treaty has been made, an

applicant who has submitted the translation of the scope of claim(s) as provided

in paragraph (1) may further submit a Japanese translation of the said amended

scope of claim(s) no later than the date on which the Time Limit for the

Submission of National Documents expires (the time of requesting where the

applicant requests the examination of the application within the Time Limit for

the Submission of National Documents, hereinafter referred to as the "national

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processing standard time").

(7) The main clause of Article 184-7(3) shall apply mutatis mutandis to the case

where the translation under paragraph (2) or the preceding paragraph has not

been submitted.

(Submission of documents and order to amend procedures)

Article 184-5 (1) An applicant of an international patent application shall submit a

document to the Commissioner of the Patent Office within the time limit for the

Submission of National Documents stating the following:

(i) the name, and the domicile or residence of the applicant;

(ii) the name, and the domicile or residence of the inventor; and

(iii) matters as provided by Ordinance of the Ministry of Economy, Trade and

Industry, including the international application number.

(2) The Commissioner of the Patent Office may order the amendment of procedures

for an applicant, designating an adequate time limit, in the following cases:

(i) where the document to be submitted under the preceding paragraph is not

submitted within the time limit for the Submission of National Documents;

(ii) where the procedure as provided in the preceding paragraph does not comply

with paragraphs (1) to (3) of Article 7or Article 9;

(iii) where the procedure as provided in the preceding paragraph does not comply

with the formal requirements as provided by Ordinance of the Ministry of

Economy, Trade and Industry;

(iv) where a translation of the abstract to be submitted under paragraph (1) of the

preceding Article is not submitted within the time limit for the Submission of

National Documents (in the case of a patent application in foreign language

under the proviso to paragraph (1) of the preceding Article, the Special Time

Limit for the Submission of Translations); and

(v) where the fees payable under Article 195(2) are not paid within the time limit

for the Submission of National Documents.

(3) Where the person ordered to amend a procedure under the preceding paragraph

does not make the amendment within the designated time limit under the said

paragraph, the Commissioner of the Patent Office may dismiss the said

international patent application.

(Effect, etc. of application, description, etc. of international application)

Article 184-6 (1) The application of an international patent application as of the

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international application date shall be deemed to be an application submitted

under Article 36(1).

(2) The description of an international patent application in the Japanese language

(hereinafter referred to as a "patent application in Japanese language") as of the

international application date and translations of the description of a patent

application in foreign language as of the international application date shall be

deemed to be the description submitted with the application under Article 36(2);

scope of claim(s) of a patent application in Japanese language as of the

international application date and a translation of the scope of claim(s) of a

patent application in foreign language as of the international application date

shall be deemed to be the scope of claim(s) submitted with the application under

the said paragraph; drawing(s) of a patent application in Japanese language as of

the international application date, drawing(s) of a patent application in foreign

language as of the international application date (excluding the descriptive text

in the drawing(s)) and a translation of the descriptive text in the drawing(s) shall

be deemed to be the drawing(s) submitted with the application under the said

paragraph; and, the abstract of a patent application in Japanese language and a

translation of the abstract of a patent application in foreign language shall be

deemed to the abstract submitted with the application under the said paragraph.

(3) Where a translation of the amended scope of claim(s) under Article 19(1) of the

Treaty is submitted as provided in Article 184-4(2) or (6), notwithstanding the

preceding paragraph, a translation of the said amended scope of claim(s) shall be

deemed to be the scope of claim(s) submitted with the application under Article

36(2).

(Amendment under Article 19 of the Treaty with regard to patent application in

Japanese language)

Article 184-7 (1) Where an applicant of a patent application in Japanese language

has made an amendment under Article 19(1) of the Treaty, such applicant shall

submit to the Commissioner of the Patent Office a copy of the written amendment

submitted under Article 19(1) on or before the date which the National Processing

Standard Time falls into.

(2) Where a copy of a written amendment has been submitted under the preceding

paragraph, an amendment to the scope of claim(s) attached to the application

shall be deemed to have been made under Article 17-2(1) by the said copy of the

written amendment; provided, however, that where the written amendment has

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been served to the Patent Office under Article 20 of the Treaty within the time

limit under the preceding paragraph, the amendment is deemed to have been

made by the said written amendment.

(3) Where the procedure under paragraph (1) has not been taken by the applicant of

a patent application in Japanese language within the time limit under paragraph

(1), no amendment under Article 19(1) of the Treaty shall be deemed to have been

made; provided, however, that this shall not apply to the case as provided in the

proviso to the preceding paragraph.

(Amendment under Article 34 of the Treaty)

Article 184-8 (1) Where an applicant of an international patent application has

made an amendment under Article 34(2)(b) of the Treaty, such applicant shall

submit to the Commissioner of the Patent Office, in the case of amendment with

regard to a patent application in Japanese language, a copy of the written

amendment submitted under Article 34(2)(b) and, in the case of amendment with

regard to a patent application in foreign language, a Japanese translation of the

said written amendment, on or before the date which the National Processing

Standard Time falls into.

(2) Where a copy of the written amendment or a translation of the written

amendment has been submitted under the preceding paragraph, an amendment

to the description, scope of claim(s) or drawing(s) attached to the application shall

be deemed to have been made under Article 17-2(1) by the copy of the written

amendment or the translation of the written amendment; provided, however, that

where the written amendment with regard to a patent application in Japanese

language has been served to the Patent Office under Article 36(3)(a) of the Treaty

within the time limit under the preceding paragraph, the amendment is deemed

to have been made by the said written amendment.

(3) Where the procedure under paragraph (1) has not been taken by the applicant of

an international patent application within the time limit under paragraph (1), no

amendment under Article 34(2)(b) of the Treaty shall be deemed to have been

made; provided, however, that this shall not apply to the case as provided in the

proviso to the preceding paragraph.

(4) Where, in accordance with paragraph (2), an amendment to the description,

scope of claims or drawings attached to the application with regard to a patent

application in foreign language has been deemed to have been made under Article

17-2(1), such amendment shall be deemed to have been made by submitting the

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written correction of incorrect translation as provided in Article 17-2(2).

(National publication, etc.)

Article 184-9 (1) The national publication of a patent application in foreign

language, a translation of which has been submitted under Article 184-4(1) or (4),

excluding a patent application in foreign language, gazette containing the patent

of which has been published, shall be effected, without delay, by the

Commissioner of the Patent Office after the lapse of the time limit for the

Submission of National Documents (in the case of a patent application in foreign

language under the proviso to Article 184-4(1), the Special Time Limit for the

Submission of Translations, hereinafter the same shall apply in this paragraph)

(in the case of an international patent application for which the applicant has

requested an examination of the patent application within the time limit for the

Submission of National Documents and of which the international publication

under Article 21 of the Treaty (hereinafter referred to as "international

publication") has been effected, after such request for the examination of the

patent application).

(2) National publication shall be effected by publishing the following matters in the

patent gazette:

(i) the name, and the domicile or residence of the applicant;

(ii) the filing number of the application;

(iii) the international application date;

(iv) the name, and the domicile or residence of the inventor;

(v) the matters stated in the translations of the description and the descriptive

text in the drawing(s) as provided in Article 184-4(1); the matters stated in the

translation of the scope of claim(s) as provided in the said paragraph (in the

case where a translation has been submitted under paragraph (2) of the said

Article, the said translation); the matters stated in the translation under

paragraph (6) of the said Article; the contents of the drawing(s) (excluding the

descriptive text in the drawing(s)); and the matters stated in the translation of

the abstract (excluding matters, recognized by the Commissioner of the Patent

Office, to be liable to contravene public order or morality by stating those in the

patent gazette);

(vi) the number and the date of the national publication; and

(vii) other necessary matters.

(3) Article 64(3) shall apply mutatis mutandis where the matters stated in the

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translation of the abstract as provided in item (v) of the preceding paragraph are

to be contained in the patent gazette under the preceding paragraph.

(4) Article 64 shall not apply to an international patent application.

(5) For the purpose of an international patent application, the term "the laying open

of the patent application" in Articles 48-5(1), 48-6, the proviso to 66(3), 128,

186(1)(i) and (ii) and 193(2)(i), (ii), (vii) and (x) shall be deemed to be replaced

with "the international publication under Article 184-9(1)" in the case of a patent

application in Japanese language and "the national publication under Article

184-9(1)" in the case of a patent application in foreign language.

(6) For the purpose of a request for a certificate, etc., with regard to a patent

application in foreign language, the term "or the materials under Article 67-2(2)''

in Article 186(1)(i) shall be deemed to be replaced with "or an application, a

description, scope of claim(s), drawing(s), or an abstract in an international

application under Article 3(2) of the Patent Cooperation Treaty signed in

Washington on June 19, 1970 (excluding those with regard to an international

patent application where the establishment of a patent right has been registered

has been made or those contained in the international publication)."

(7) For the purpose of the matters to be contained in the patent gazette with regard

to an international patent application, the term "after the laying open of a patent

application" in Article 193(2)(iii) shall be deemed to be replaced with "with regard

to an international patent application, the international publication of which has

been effected."

(Effect etc., of international publication and National Publication)

Article 184-10 (1) After the international publication of a patent application in the

case of a patent application in Japanese language, or after the national

publication of a patent application in the case of a patent application in foreign

language, where the applicant of the international patent application has given

warning with documents stating the contents of the invention claimed in the

international patent application, the applicant of the international patent

application may claim compensation against a person who has worked the

invention as a business after the warning, prior to the registration establishing a

patent right, and the amount of compensation shall be equivalent to the amount

the applicant(s) would be entitled to receive for the working of the invention if the

invention were patented. Even where the said warning has not been given, the

same shall apply to a person who worked the invention as a business prior to the

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registration establishing a patent right, in the case of a patent application in

Japanese language, with knowledge of the invention having been claimed in the

international patent application that the international publication has been

effected, or, in the case of a patent application in foreign language, with

knowledge of the invention having been claimed in the international patent

application that the national publication has been effected.

(2) Paragraphs (2) to (6) of Article 65 shall apply mutatis mutandis to the exercise of

the right to claim compensation under the preceding paragraph.

(Special provisions concerning patent administrators for overseas residents)

Article 184-11 (1) Notwithstanding Article 8(1), an applicant of an international

patent application who is an overseas resident may, prior to the National

Processing Standard Time, undertake procedures without being represented by a

patent administrator.

(2) The person prescribed in the preceding paragraph shall appoint a patent

administrator and notify the Commissioner of the Patent Office thereof on or

after the National Processing Standard Time, but not later than the time limit as

provided in Ordinance of the Ministry of Economy, Trade and Industry.

(3) Where no appointment of a patent administrator has been notified within the

time limit as provided in the preceding paragraph, the Commissioner of the

Patent Office shall notify a person as provided in paragraph (1) thereof.

(4) A person who has received a notice provided under the preceding paragraph may

appoint a patent administrator and notify the Commissioner of the Patent Office

thereof only within the time limit as provided in Ordinance of the Ministry of

Economy, Trade and Industry.

(5) Where no appointment of a patent administrator has been notified within the

time limit as provided in the preceding paragraph, the international patent

application shall be deemed to have been withdrawn.

(6) Where there is a reasonable ground for failing to notify appointment of a patent

administrator within the time limit as provided in paragraph (4), the applicant of

an international patent application which has been deemed to have been

withdrawn under the preceding paragraph may appoint a patent administrator

and notify the Commissioner of the Patent Office thereof only within the time

limit as provided in Ordinance of the Ministry of Economy, Trade and Industry.

(7) The notification made under paragraph (4) or the preceding paragraph shall be

deemed to be a notification made at the time of expiration of the time limit as

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provided in paragraph (2).

(8) Where an applicant under paragraph (1) has undertaken procedures under

Article 184-4(4) with being represented by a patent administrator, paragraphs (2)

to (7) shall not apply.

(Special provisions concerning amendment)

Article 184-12 (1) Notwithstanding the main clause of Article 17(1), no

amendment of the procedures shall be allowed (excluding those under Articles

184-7(2) and 184-8(2)) unless, in the case of a patent application in Japanese

language, the procedure under Article 184-5(1) has been taken and the fee

payable under Article 195(2) has been paid, and, in the case of a patent

application in foreign language, the procedures under Articles 184-4(1) and

184-5(1) have been taken, the fee payable under Article 195(2) has been paid, and

the National Processing Standard Time has lapsed.

(2) For the purpose of the allowable scope of amendment to the description, scope of

claims or drawings with regard to a patent application in foreign language, the

term "a foreign-language-written-application as provided in Article 36-2(2)" in

Article 17-2(2) shall be deemed to be replaced with "a patent application in

foreign language as provided in Article 184-4(1)"; the term "the description, scope

of claims or drawings originally attached to the application (in the case of a

foreign-language-written-application under Article 36-2(2), the translation of

foreign-language-documents as provided in Article 36-2(2) that is deemed to be

the description, scope of claims and drawings under Article 36-2(8) (in the case

where the amendment to the description, scope of claims or drawing has been

made through the submission of the statement of correction of incorrect

translation, the said translations or the amended description, scope of claims or

drawings), the same shall apply in Articles 34-2(1) and 34-3(1))" in Article 17-2(3)

shall be deemed to be replaced with "a translation as provided in Article 184-4(1)

of the description or drawings (limited to the descriptive text in the drawings) of

an international patent application as provided in Article 184-3(2) (hereinafter

referred to as an "international patent application" in this paragraph) as of the

international application date as provided in Article 184-4(1) (hereinafter

referred to as the "international application date" in this paragraph), a

translation as provided in Article 184-4(1) of scope of the claims of an

international patent application as of the International Application Date (in the

case where a translation of the scope of claim(s) amended under Article 19(1) of

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the Patent Cooperation Treaty signed in Washington on June 19, 1970 has been

submitted under Article 184-4(2) or (6), the said translation) or drawings

(excluding the descriptive text in the drawings) of an international patent

application as of the International Application Date (hereinafter referred to as

the "translations, etc." in this paragraph) (in the case where an amendment to the

description, scope of claim(s) or drawing(s) has been made through the

submission of the statement of correction of incorrect translation, the

Translations, etc. or the said amended description, scope of claims or drawings)".

(Special provisions for registration in the patent registry)

Article 184-12-2 Notwithstanding Article 27(1)(iv), provisional exclusive license

shall not be registered, unless, in the case of a patent application in Japanese

language, procedures under Article 184-5(1) have been undertaken and the fee

relating to the procedures under Article 195(2) has been paid, and, in the case of a

patent application in foreign language, procedures under Articles 184-4(1) or (4)

and 184-5(1) have been undertaken, the fee relating to the procedures under

Article 195(2) has been paid, and the National Processing Standard Time has

lapsed.

(Special provision concerning patentability)

Article 184-13 For the purpose of the application of Article 29-2, in the case where

another patent application or a utility model registration application as provided

in Article 29-2 is an international patent application or an International utility

model registration application under Article 48-3(2) of the Utility Model Act, the

term "another patent application or a utility model registration application "

under Article 29-2 of this Act shall be deemed to be replaced with "another patent

application or utility model registration application (excluding a patent

application in foreign language under Article 184-4(1) or a utility model

registration application in foreign language under Article 48-4(1) of the Utility

Model Act which has been deemed to have been withdrawn in accordance with

Article 184-4(3) of this Act or Article 48-4(3) of the Utility Model Act)," the term

"the laying open of the patent application or" shall be deemed to be replaced with

"laying open of the patent application," the term "published" shall be deemed to

be replaced with "published or where international publication under Article 21 of

the Patent Cooperation Treaty signed in Washington on June 19, 1970 has been

effected," and the term "the description, scope of claims or drawings originally

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attached to the application" shall be deemed to be replaced with "the description,

scope of claims, or drawings of an international application as of the International

Application Date under Article 184-4(1)of this Act or Article 48-4(1) of the Utility

Model Act."

(Special provision concerning exception to lack of novelty of invention)

Article 184-14 Notwithstanding Article 30(3), an applicant of an international

patent application who requests the application of Article 30(2) may submit to the

Commissioner of the Patent Office, after the National Processing Standard Time,

but not later than the time limit as provided in Ordinance of the Ministry of

Economy, Trade and Industry, a document stating thereof and a document

proving the fact that the invention which has fallen under any of the paragraphs

of Article 29(1) has become applicable is an invention to which Article 30(2) may

be applicable.

(Special provisions concerning priority claim based on a patent application, etc.)

Article 184-15 (1) The proviso to Articles 41(1), 41(4) and 42(2) shall not apply to

an international patent application.

(2) For the purpose of application of Article 41(3) to a patent application in Japanese

language, the term "or the laying open of the patent application" in the said

Article shall be deemed to be replaced with "or the international publication

under Article 21 of the Patent Cooperation Treaty signed in Washington on June

19, 1970."

(3) For the purpose of the application of Article 41(3) for a patent application in

foreign language, the term "the description, scope of claims or drawings originally

attached to the application in a patent application" in the said Article shall be

deemed to be replaced with "the description, scope of claims or drawings of an

international application as of the international application date under Article

184-4(1)," and the teem "or the laying open of the application" shall be deemed to

be replaced with "or the international publication under Article 21 of the Patent

Cooperation Treaty done in Washington on June 19, 1970."

(4) For the purpose of application of paragraphs (1) to (3) of Article 41 and 42(1), in

the case where the earlier application under Article 41(1) of this Act is an

international patent application or an international utility model registration

application under Article 48-3(2) of the Utility Model Act, the term "the

description, scope of claims for a patent or utility model registration and drawings

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originally attached to the application" in Articles 41(1) and 41(2) shall be deemed

to be replaced with "the description, scope of claims or drawings of an

international application as of the international application date under Article

184-4(1) of this Act or Article 48-4(1) of the Utility Model Act,"; the term "the said

paragraph" in the said paragraph shall be deemed to be replaced with "the

preceding paragraph"; the term "the description, scope of claims for patent or

utility model registration and drawings originally attached to the application in

the earlier application," in Article 41(3) shall be deemed to be replaced with "the

description, scope of claims or drawings of an international application of the

earlier application as of the International Application Date under Article 184-4(1)

of this Act or Article 48-4(1) of the Utility Model Act," "the said paragraph" in

Article 41(3) shall be deemed to be replaced with "paragraph(1)"; the term "the

laying open of the patent application relating to" in Article 41(3) shall be deemed

to be replaced with "the international publication under Article 21 of the patent

Cooperation Treaty signed in Washington on June 19, 1970 relating to,"; and the

term "when the time limit provided in Ordinance of the Ministry of Economy,

Trade and Industry from the filing date has lapsed" in Article 42(1) shall be

deemed to be replaced with "at the later of the time of the National Processing

Standard Time under Article 184-4 (6) of this Act or Article 48-4(6) of the Utility

Model Act or the time when the time limit provided in Ordinance of the Ministry

of Economy, Trade and Industry has lapsed from the International Application

Date under Article 184-4 (1) of this Act or Article 48-4 (1) of the Utility Model

Act".

(Special provision concerning conversion of application)

Article 184-16 An international application that has been deemed to be an

application for utility model registration under Article 48-3(1) or 48-16(4) of the

Utility Model Act may be converted to a patent application, only after the fees

payable under Article 54(2) of the said Act have been paid (or, in the case of an

international application that is deemed to be a Utility Model registration

application under Article 48-16(4) of the said Act, after the ruling as provided in

Article 48-16(4) has been rendered), and, in the case of a Utility Model

Registration Application in Japanese Language under Article 48-5(4) of the said

Act, the procedures under Article 48-5(1) of the said Act has been completed, or,

in the case of a Utility Model Registration Application in Foreign Language under

48-4(1) of the said Act, the procedures under Article 48-4(1) or 48-4(4) and Article

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48-5(1) and of the said Act have been completed.

(Restriction on the time for request for examination of application)

Article 184-17 A request for an examination of an international patent application

shall not be allowed unless, for an applicant of the international patent

application, the procedure under Article 184-5 in the case of a patent application

in Japanese language or the procedures under Article 184-4(1) or (4) and 184-5(1)

in the case of a patent application in foreign language have been taken and the

fee payable under Article 195(2) has been paid, and, for any person who is not the

applicant of the international patent application, the time limit for the

Submission of National Documents (in the case of a patent application in foreign

language under the proviso to Article 184-4(1), the Special time limit for the

Submission of Translation) has lapsed.

(Provisions for reasons for refusal, etc.)

Article 184-18 For the purpose of an examiner's decision of refusal, an opposition

to a granted patent, and an invalidation trial, with respect to a patent application

in foreign language, the term "foreign-language-written-application" in Articles

49(vi), 113(i) and (v), and 123(1)(i) and (v) shall be deemed to be replaced with

"patent application in foreign language referred to in Article 184-4(1)," and the

term "in foreign-language-documents" in Article 49(vi), 113(v), and 123(1)(v) shall

be deemed to be replaced with "in the description, scope of claim(s) or drawing(s)

of the international application as of the international application date referred to

in Article 184-4(1)."

(Special provisions concerning correction)

Article 184-19 For the purpose of the request for correction under Article 120-5(2)

and134-2(1) and the request for a correction trial with respect to a patent

application in foreign language, the term "foreign-language-written-application"

in Article 126(5) shall be deemed to be replaced with

"foreign-language-written-application referred to in Article 184-4(1)" and the

term "foreign-language-documents)" shall be deemed to be replaced with "the

description, scope of claim(s) or drawing(s) of the international application as of

the international application date referred to in Article 184-4(1))."

Article 184-20 (1) Where a refusal under Article 25(1)(a) of the Treaty or a

declaration under Article 25(1)(a) or (b) of the Treaty has been made by the

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receiving Office under Article 2(xv) of the Treaty, or a finding under Article

25(1)(a) of the Treaty has been made by the International Bureau under Article

2(xix) of the Treaty in relation to an international application (a patent

application only) which specifies Japan as a designated State under Article

4(1)(ii) of the Treaty, the applicant of the international application under Article

2(vii) of the Treaty may make a request to the effect that the Commissioner of the

Patent Office shall render a decision under Article 25(2)(a) of the Treaty in

accordance with Ordinance of the Ministry of Economy, Trade and Industry

within the time limit provided in Ordinance of the Ministry of Economy, Trade

and Industry.

(2) A person making a request under the preceding paragraph with regard to an

international application in foreign language shall submit at the time of the

request to the Commissioner of the Patent Office Japanese translations of

documents concerning the international application as required by Ordinance of

the Ministry of Economy, Trade and Industry, including the description, scope of

claims, drawings (limited to the explanations in the drawings), and abstract.

(3) Upon receiving the request under paragraph (1), the Commissioner of the Patent

Office shall rule on whether the refusal, declaration or finding relating thereto

was justified under the provisions of the Treaty and the Regulations under the

Patent Cooperation Treaty.

(4) Where the Commissioner of the Patent Office has rendered a ruling under the

preceding paragraph to the effect that the refusal, declaration or finding under

the said paragraph was not justified under the provisions of the Treaty and the

Regulations under the Patent Cooperation Treaty, the international application

for which the decision is rendered shall be deemed to be a patent application filed

on the day which would have been be accorded as the international application

date if no such refusal, declaration or finding had been made for the international

application.

(5) For the purpose of laying open of an international application that is deemed to

be a patent application under the preceding paragraph, the term "the date of the

filing of a patent application" in Article 64(1) shall be deemed to be replaced with

"the priority date under Article 184-4(1)", the term

"foreign-language-written-application" and "foreign-language-documents and the

Abstract in foreign language" in Article 64(2)(vi) shall be deemed to be replaced

with "international application in foreign language " and "description, scope of

claim, drawing and abstract of an international application filed on the day to be

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accorded as the International application Date under Article 184-20(4)".

(6) Article 184-3(2), 184-6(1) and (2), 184-9(6), 184-12 to 184-14, 184-15(1), (3) and

(4), 184-17 to 184-19 shall apply mutatis mutandis to an international application

that is deemed to be a patent application under paragraph (4). In such a case, the

replacement of terms necessary for the application of the said provisions shall be

made as prescribed by Cabinet Order.

Chapter X Miscellaneous Provisions (Article 185 to Article 195-4)

(Special provisions for patent or patent right covering two or more claims)

Article 185 Pertaining to the patent or patent rights covering two or more claims,

for the purposes of the application of Articles 27(1)(i), 65(5) (including its

mutatis mutandis application under Article 184-10(2)), 80(1), 97(1), 98(1)(i),

111(1)(ii), 114(3) (including its mutatis mutandis application under Article

174(1)), 123(3), 125, 126(8) (including its mutatis mutandis application under

Article 134-2(9)), 128 (including its mutatis mutandis application under Articles

120-5(9) and 134-2(9), Article 174(1), 132(1) (including its mutatis mutandis

application under Article 174(3)) or 175, 176 or 193(2)(v) of this Act, or of Article

20(1) of the Utility Model Act, the patent shall be deemed to have been granted, or

the patent right shall be deemed to exist, for each claim.

(Request for certificate, etc.)

Article 186 (1) Any person may file a request with regard to patents to the

Commissioner of the Patent Office to issue a certificate, a certified copy of

documents or an extract of documents, to allow the inspection or copying of

documents, or to issue documents stored on the magnetic tapes that constitute

the part of the Patent Registry; provided, however, that if the Commissioner of

the Patent Office considers it necessary to keep such documents confidential, this

provision shall not apply in the case of the following documents:

(i) an application, or the description, scope of claims, drawings or abstract

attached to an application, foreign-language-documents, an

foreign-language-abstract or any document pertaining to the examination of a

patent application (except where the establishment of a patent right has been

registered or where the laying open of a patent application has been effected),

or the materials under Article 67-2(2);

(ii) documents concerning an appeal against an examiner's decision of refusal

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(except where the establishment of the patent right has been registered or

where the laying open of a patent application has been effected);

(iii) documents concerning an invalidation trial, a trial for invalidation of the

registration of extension of the duration or a retrial of the final and binding

trial decision in the such trials, with respect to which a party in the case or

intervenor has given notice that a trade secret owned by the said party in the

case or intervenor has been described (trade secret as provided in Article 2(4) of

the Unfair Competition Prevention Act (Act No. 47 of 1993));

(iv) documents which are liable to cause damage to an individual's reputation or

peaceful life; and

(v) documents which are liable to cause damage to public order or morality.

(2) Where the Commissioner of the Patent Office approves of the request under the

main clause of the preceding paragraph with regard to the documents as provided

in items (i) to (iv) of the said paragraph, the Commissioner of the Patent Office

shall notify the person who submitted the said documents thereof and reasons

therefor.

(3) Provisions of the Act on Access to Information Held by Administrative Organs

(Act No. 42 of 1999) shall not apply to the documents concerning patents and the

part of the Patent Registry stored on magnetic tapes.

(4) Provisions in Chapter 4 of the Act on Protection of Personal Information

Possessed by Administrative Organs (Act No. 58 of 2003) shall not apply to the

possessed personal information (refers to the possessed personal information as

provided in Article 2(3) of the said Act) recorded in the documents concerning

patents and the part of the Patent Registry stored on magnetic tapes.

(Mark of Patent)

Article 187 A patentee, exclusive licensee or non-exclusive licensee shall make

efforts to place a mark (hereinafter referred to as a "mark of patent") as provided

by Ordinance of the Ministry of Economy, Trade and Industry, on the patented

product, product produced by the patented process (hereinafter referred to as a

"patented product"), or package thereof, indicating that the product or process is

patented.

(Prohibition of false marking)

Article 188 It shall be prohibited for a person to do the following acts:

(i) putting a mark of patent or a mark confusing therewith on or in a

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non-patented product or the packaging thereof;

(ii) assigning, etc. or displaying for the purpose of assignment, etc. a non-patented

product or the packaging thereof on or in which a mark of a patent or a mark

confusing therewith is put;

(iii) giving in an advertisement an indication to the effect that a non-patented

product is related to a patent or an indication confusing therewith for the

purpose of having the product produced or used, or assigning, etc. the product;

(iv) giving in an advertisement an indication to the effect that a non-patented

process is related to a patent or an indication confusing therewith for the

purpose of having the process used, or assigning or leasing the process.

(Service)

Article 189 Documents to be served shall be as provided in this Act and by

ordinance of the Ministry of Economy, Trade and Industry.

Article 190 Articles 98(2), 99 to 103, 105, 106, 107(1) (excluding items (ii) and (iii)),

107(3) and 109 (Service) of the Code of Civil Procedure shall apply mutatis

mutandis to the service of documents as provided in this Act or Ordinance of the

Ministry of Economy, Trade and Industry under the preceding Article. In this

case, the term "a court clerk" in Articles 98(2) and 100 of the Code of Civil

Procedure shall be deemed to be replaced with "an official designated by the

Commissioner of the Patent Office or a trial clerk", the term "mail or court

enforcement officer" in Article 99(1) of the said Act shall be deemed to be replaced

with "mail", the term "where ... the court clerk" in Article 107(1) of the said Act

shall be deemed to be replaced with "where ... and where documents concerning

the examination are to be served, an official designated by the Commissioner of

the Patent Office or a trial clerk" and the term "Supreme Court Rules" in Article

107(1) of the said Act shall be deemed to be replaced with "an Ordinance of the

Ministry of Economy, Trade and Industry".

Article 191 (1) Where the domicile or residence of the person who is to be served or

any other place to which service is to be made is unknown, or where the service is

unable to be effected under Article 107(1) (excluding items (ii) and (iii)) of the

Code of Civil Procedure as applied mutatis mutandis under Article 190 of this Act,

service may be effected by public notification.

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(2) Service by public notification shall be effected by publishing in the Official

Gazette and the patent gazette and posting on the noticeboard of the Patent

Office a notification stating the fact that documents to be served are ready to be

served at any time to the person who is to be served.

(3) Service by public notification shall take effect following the duration of 20 days

from the day the notification is published in the Official Gazette.

Article 192 (1) Where an overseas resident has a patent administrator, service

shall be made to the patent administrator.

(2) Where an overseas resident has no patent administrator, documents may be

dispatched by registered mail, etc. (refers to service of registered mail under

Article 2(2) of the Act on service of Mail by Private Business Operator (Act No. 99

of 2002) provided by a general mail delivery service operator under Article 2(6) of

the said Act or by a special mail delivery service operator under Article 2(9) of the

said Act that is equivalent to registered mail by Ordinance of the Ministry of

Economy, Trade and Industry, hereinafter the same shall apply in paragraph (3)).

(3) Where documents are dispatched by registered mail, etc., under the preceding

paragraph, the documents shall be deemed to have been served at the time of

dispatch.

(Patent Gazette)

Article 193 (1) The Patent Office shall publish the patent gazette (Tokkyo Koho).

(2) In addition to the matters provided for in this Act, the patent gazette shall

contain:

(i) the examiner's decision to the effect that an application is to be refused, or the

waiver, withdrawal or dismissal of a patent application after the laying open of

the patent application, or the withdrawal of an application for the registration

of an extension of the duration of a patent right;

(ii) successions to the right to obtain a patent after the laying open of a patent

application;

(iii) amendments of the description, scope of claims or drawings attached to an

application under Article 17-2(1) after the laying open of a patent application

(in the case of an amendment under any of the items in the proviso to the said

paragraph, limited to an amendment made through the submission of a

statement of correction of an incorrect translation);

(iv) A request for the examination of an application under Article 48-3(5)

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(including its mutatis mutandis application under paragraph (7) of the said

Article)

(v) the extinguishment of patent rights (excluding extinguishment upon

expiration of the duration and under Article 112(4) or 112(5)) or the restoration

thereof (limited to restoration under Article 112-2(2));

(vi) an opposition to a granted patent or trials or retrials, or withdrawals thereof;

(vii) final and binding ruling on an opposition to a granted patent, final and

binding trial decisions or final and binding retrial decisions (limited to patent

applications in which the establishment of a patent right has been registered or

which have been laid open);

(viii) matters stated in the corrected description and scope of claims and the

contents of drawings (limited to those corrected following a final and binding

trial decision to the effect that the correction was to be made);

(ix) requests for an award, the withdrawal thereof or a Commissioner's decision;

and

(x) final and binding judgments in an action under Article 178(1) (limited to cases

where the establishment of a patent right has been registered or the laying

open of the patent application has been effected).

(Submission of documents, etc.)

Article 194 (1) The Commissioner of the Patent Office or the examiner may

request a party in a case to submit documents or other materials necessary for a

procedure other than one relating to an opposition to a granted patent, a trial or a

retrial.

(2) The Commissioner of the Patent Office or the examiner may commission related

administrative agencies, educational institutions or any other organizations to

conduct an investigation necessary for an examination.

(Fees)

Article 195 (1) Fees shall be paid by the following persons in an amount to be

provided by Cabinet Order in view of the actual costs:

(i) persons filing a request for an extension of the duration under Article 4, 5(1),

108(3), or a change of the date under Article 5(2);

(ii) persons filing a request for the re-issuance of the certificate of patent;

(iii) persons notifying of succession under Article 34(4);

(iv) persons filing a request for the issuance of a certificate under Article 186(1);

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(v) persons filing a request for the issuance of a certified copy of documents or an

extract of documents under Article 186(1);

(vi) persons filing a request to allow the inspection or copying of documents under

Article 186(1); and

(vii) persons filing a request for the issuance of documents whose contents are

stored on the magnetic tapes that constitute the part of the Patent Registry

under Article 186(1).

(2) The persons listed in the center column of the attached table shall pay fees in the

amount as provided by Cabinet Order within the range of the amounts specified

in the corresponding right-hand column of the table.

(3) Notwithstanding the provisions of the preceding paragraph, where, after a

request for the examination of an application has been filed by a person who is

not the applicant of the patent, the number of claims is increased due to the

amendment of the scope of claims attached to the application in the said patent

application, the fees for the request for the examination of the patent application

payable under the preceding paragraph regarding the increased claims shall be

paid by the applicant of the patent.

(4) The three preceding paragraphs shall not apply where the person to pay the fee

in accordance with these paragraphs is the State.

(5) Where the State has joint ownership of a patent right or a right to obtain a

patent with a person other than the State, and the portion of their respective

shares of the said right has been agreed, notwithstanding the provisions of

paragraph (1) or (2), the fees payable thereunder (limited to those provided by

Cabinet Order excluding the fees for the request for an examination) shall be

determined as the sum of the provided fees under these provisions multiplied by

the ratios of the share of each person other than the State, and, the person(s)

other than the State shall pay such sum.

(6) Where the State has joint ownership of a right to obtain a patent with person(s)

including a person entitled to receive a reduction of the fees for the request for an

examination or exemption therefrom under the following Article or provisions of

any other laws and ordinances (hereinafter in this paragraph referred to as a

"reduction/exemption"), and the portion of their respective shares of the said right

has been agreed, notwithstanding the provisions of paragraph (2), the fees for the

request for an examination payable by such person for their right to obtain a

patent thereunder shall be determined as the sum of the amounts calculated for

each person other than the State jointly owning the right, by multiplying the

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applicable fees for the request for an examination provided thereunder (in the

case of a person who receives the reduction or exemption, the amount after the

said reduction/exemption) by the ratios of the share of each person other than the

State, and the person(s) other than the State shall pay such sum.

(7) Where the amount of the fees calculated under the two preceding paragraphs

has a fractional figure of less than ten yen, the said portion shall be discarded.

(8) The payment of the fees under paragraphs (1) to (3) shall be made by patent

revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and

Industry; provided, however, that where so provided by Ordinance of the Ministry

of Economy, Trade and Industry, a cash payment thereof shall be accepted.

(9) After the request for examination of an application, where the said patent

application has been waived or withdrawn, upon the request of the person who

paid the fees for the request for examination under paragraph (2), such fees in the

amount prescribed by Cabinet Order shall be refunded, provided that the certified

copy of the examiner's decision has not been served, and none of the following

orders or notices has been made.

(i) an order under Article 39(6);

(ii) notice under Article 48-7;

(iii) notice under Article 50; and

(iv) service of a certified copy of the examiner's decision under Article 52(2).

(10) No request for a refund of fees under the preceding paragraph may be filed

after six months from the date on which a patent application has been waived or

withdrawn.

(11) Fees paid in excess or in error shall be refunded upon the request of the person

who made payment thereof.

(12) No request for a refund of the fees under the preceding paragraph may be filed

after one year from the date on which the payment thereof has been made.

(13) Where, due to reasons beyond the control of a person who makes a request for a

refund of fees under paragraph (9) or paragraph (11), the person is unable to

make the request within the time limit as provided in paragraph (10) or the

preceding paragraph, the person may, not withstanding these provisions, make

the request within 14 days (where overseas resident, within two months) from the

date on which the reasons ceased to be applicable, but not later than six months

following the expiration of the time limit under these provisions.

(Reduction of or exemption from fees for request for examination of application)

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Article 195-2 Where the Commissioner of the Patent Office recognizes that a

person who files a request for examination of an application and meets the

requirements of Cabinet Order considering his/her financial resources has

difficulties paying the fees for a request for the examination of an application, the

Commissioner of the Patent Office may, in accordance with Cabinet Order, grant

the person a reduction of or exemption from the payment of the fees for the

request for the examination of the person's own patent application payable under

paragraph (2) of the preceding Article.

(Exclusion of application of Administrative Procedures Act)

Article 195-3 Chapters II and III of the Administrative Procedures Act (Act No. 88

of 1993) shall not apply to dispositions under this Act or an order issued under

this Act.

(Restriction on appeals under Administrative Appeal Act)

Article 195-4 No appeal shall be available under the Administrative Appeal Act

against an examiner's decision, revocation decision, or a trial decision, or a ruling

to dismiss a statement of opposition to a granted patent, a written request for a

trial or retrial or a written request for correction under Article 120-5(2) or Article

134-2(1), or against dispositions against which no appeal lies in accordance with

this Act.

Chapter XI Penal Provisions (Article 196 to Article 204)

(Crime of infringement)

Article 196 An infringer of a patent right or exclusive license (excluding one who

has committed an act that shall be deemed to constitute infringement of a patent

right or an exclusive license under Article 101) shall be punished by

imprisonment with work for a term not exceeding ten years or a fine not

exceeding 10,000,000 yen or combination thereof.

Article 196-2 Any person who has committed an act that shall be deemed to

constitute infringement of a patent right or an exclusive license under Article 101

shall be punished by imprisonment with work for a term not exceeding five years

or a fine not exceeding 5,000,000 yen or combination thereof.

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(Crime of fraud)

Article 197 Any person who has obtained a patent, a registration of extension of

the duration of a patent right, a ruling on an opposition to a granted patent or a

trial decision by means of a fraudulent act shall be punished by imprisonment

with work for a term not exceeding three years or a fine not exceeding 3,000,000

yen.

(Crime of false marking)

Article 198 A person(s) who fails to comply with Article 188 shall be punished by

imprisonment with work for a term not exceeding three years or a fine not

exceeding 3,000,000 yen.

(Crime of perjury, etc.)

Article 199 (1) A witness, an expert witness or an interpreter who has sworn

under this Act and made a false statement or given an expert opinion or

interpretation to the Patent Office or the court commissioned thereby shall be

punished by imprisonment with work for a term between three month and ten

years.

(2) Where a person who has committed the crime in the preceding paragraph has

made a voluntary confession before a certified copy of the judgment on the case

has been served, or a ruling on an opposition to a granted patent or a trial

decision has become final and binding, the punishment may be reduced or

exculpated.

(Crime of divulging secrets)

Article 200 A present or former official of the Patent Office who has divulged or

appropriated any secret relating to an invention claimed in a pending patent

application that has become known to him/her in the course of performing his/her

duties shall be punished by imprisonment with work for a term not exceeding one

year or a fine not exceeding 500,000 yen.

(Crime of breach of protective order)

Article 200-2 (1) A person who fails to comply with a protective order shall be

punished by imprisonment with work for a term not exceeding five years or a fine

not exceeding 5,000,000 yen or combination thereof.

(2) The prosecution of the crime under the preceding paragraph may not be initiated

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unless a complaint is filed.

(3) The crime under paragraph (1) shall apply to a person who commits the crime

outside Japan.

(Dual liability)

Article 201 (1) Where a representative of a juridical person or an agent, employee

or other worker of a juridical person or an individual has committed in the course

of performing his/her duties for the juridical person or individual, any act in

violation prescribed in the following items, in addition to the offender, the

juridical person shall be punished by a fine as provided in the corresponding item

and the individual shall be punished by a fine as provided in the Article

prescribed in the corresponding item:

(i) Article 196, Article 196-2 or 200-2(1), a fine not exceeding 300 million yen; and

(ii) Article 197 or 198, a fine not exceeding 100 million yen.

(2) In the case of the preceding paragraph, the complaint under Article 200-2(2)

against the offender shall have effect on the juridical person or individual and the

complaint against the juridical person or individual shall have effect on the

offender.

(3) Where a fine is imposed on a juridical person or individual under Article 200-2(1)

with regard to a violation of Article 196, 196-2 or 200-2(1), the period of

prescription shall be governed by the same rules as for crimes in the provisions

thereof.

(Civil fine)

Article 202 Where a person who has sworn under Article 207(1) of the Code of

Civil Procedure as applied under Article 151 (including its mutatis mutandis

application under Articles 71(3), 120 (including its mutatis mutandis application

under Article 174(1)) and 174(2) to (4) of this Act) has made a false statement

before the Patent Office or a court commissioned thereby, the said person shall be

punished by a civil fine not exceeding 100,000 yen.

Article 203 A person(s) who has been summoned by the Patent Office or a court

commissioned thereby in accordance with this Act, and fails to appear or refuses

to swear, make a statement, testify, give an expert opinion or interpret without a

justifiable reason shall be punished by a civil fine not exceeding 100,000 yen.

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Article 204 A person(s) who has been ordered by the Patent Office or a court

commissioned thereby to submit or present documents or other materials for the

purpose of examination or preservation of evidence in accordance with this Act

and fails to comply with the order without a justifiable reason shall be punished

by a civil fine not exceeding 100,000 yen.

Supplementary provisions (Extract)

Appended Table (In relation to Article 195)

A person(s) who shall pay fees Amounts

1 A person filing a patent application (excluding one in the following item)

16,000 yen per case

2 A person filing a written application in foreign language

26,000 yen per case

3 A person responsible for the procedures under Article 38-3(3)

16,000 yen per case

4 A person responsible for the procedures under Article 184-5(1)

16,000 yen per case

5 A person responsible for the procedures under Article 184-20(1)

16,000 yen per case

6 A person filing an application for the registration of extension of the duration of a patent right

74,000 yen per case

7 A person filing a request for extension of time limits under Article 5(3) (excluding that with regard to the time limit designated under Article 50)

4,200 yen per case

8 A person filing a request for extension of time limits under Article 5(3) (that of the time limit designated under Article 50 only)

68,000 yen per case

9 A person requesting an examination of an application

168,600 yen per case plus 4,000 yen per claim

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10 A person amending a description, scope of claims or drawings through the submission of a statement of correction of incorrect translation

19,000 yen per case

11 A person requesting an advisory opinion under Article 71(1)

40,000 yen per case

12 A person requesting an award 55,000 yen per case

13 A person requesting canceling of an award

27,500 yen per case

14 a patent opponent 16,500 yen per case plus 2,400 yen per claim

15 a person applying intervention in proceedings on an opposition to a granted patent

11,000 yen per case

16 A person filing a request for a trial or retrial (excluding one in the following item)

49,500 yen per case plus 5,500 yen per claim

17 A person filing a request for a trial against an examiner's decision of refusal of the registration of extension of the duration of a patent right, a trial for invalidation of the registration of extension of the duration of a patent right, or a retrial against the final and binding administrative judge's decision in these trials.

55,000 yen per case

18 A person filing a request for a correction of the description, scope of claim(s) or drawing(s)

49,500 yen per case plus 5,500 yen per claim

19 A person applying intervention in a trial or retrial.

55,000 yen per case

Japón

JP206

Patent Act (Act No. 121 of April 13, 1959, as amended up to Act No. 55 of July 10, 2015)