Realizing Your Idea
<<Procedure for preparing the filing documents for obtaining an industrial property right (including patent, utility model, design and trademark rights）>>
When you invent or discover any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof (hereinafter referred to as “invention”), and so wish to obtain a patent right in Japan, you can apply through us to the Japan Patent Office and have your application undergo examination to determine whether the application fulfills all the necessary requirements.
We can provide you with an estimate of the costs you may incur, approximate length of time to obtain a patent right and the possibility of success of obtaining such patent in Japan. In addition, we can thoroughly explain those matters (including your concerns) from various points of view.
Based on your detailed explanation of the invention, we can prepare the necessary documents to apply to the Japan Patent Office, such as Claims (which are entitled to be patented), specification and drawings (which are described the invention with the embodiments in detail).
Generally speaking, it is important to accurately describe the Claims, specification and drawings at the time of filing at the Japan Patent Office in Japanese. This is where we can be most helpful to non Japanese as we can provide excellent translation of documents into Japanese which will best represent your ideas.
Also, as it is desirable to obtain a patent right as broad as possible, we can provide advice on how you should accurately describe the Claims, specification and drawings. However, in the case the Claims are made as wide as possible, these Claims may include conventional techniques which cannot be granted as a patent. On the other hand, if we make the Claims too narrow, these Claims are more likely to be granted as a patent, but such a narrower patent right may not be useful. Therefore, not to make the Claims too narrow but to get an allowance within the scope of the invention as wide as possible is desirable. After due consideration of the idea, we can advise you on how such Claims may be made.
<<How to deal with the “Notification of Reasons for Refusal” (having no novelty and no inventiveness) in the examination procedure>>
An examination is carried out by an Examiner of the Japan Patent Office. The Examiner decides whether or not the invention should be patented. (Please note that an examination is carried out only for an application for which an Applicant or a third party has filed a request for examination and paid the examination fees.) If the Examiner finds no reasons for refusal, then a “Notice of Allowance” will be issued to the Applicant. However, if the Examiner finds reasons for refusal, then a “Notification of Reason for Refusal” will be issued.
The major reasons for refusing an application by an Examiner are that:
(1) the technical idea of the invention existed before the filing of the current application (novelty); and
(2) the invention could have been easily invented by a person skilled in the art based on the prior art(s) which has/have a similar technique in the same technical field of the invention (inventiveness).
The Applicant who has received the “Notification of Reasons for Refusal” shall be given an opportunity to submit either a Written Argument claiming that the invention differs from the prior art(s) to which the “Notification of Reasons for Refusal” refers, or an Amendment of the Claims in the case that this would nullify the reasons for refusal.
In order to refute the reasons for refusal, we should first determine whether or not the Examiner’s reasoning is reasonable. Then, if the Examiner’s reasoning is not reasonable, we have to submit the Written Argument to make a counterargument. However, even though the Examiner may think that the counterargument is acceptable for him, such counterargument may not contribute to solving the problem of inventiveness, consequently the reasons for refusal would not be overcome.
If we agree with the Examiner that his reasoning is reasonable, we have to submit the Amendment to amend the Claims in order to refute the reasons for refusal.
How the Claims should be amended is as follows:
(i) The constituent feature of the independent Claim can be changed to a configuration, which does not exist in the prior art(s) cited by the Examiner. Or some of features (of course, which have to be described in the original specification or drawings) can be added to make the constituent feature of the independent Claim having the different configuration from the prior art(s) cited by the Examiner;
(ii) The independent Claim can be combined with the dependent Claim(s). (When the “Notification of Reasons for Refusal” is issued, not only the independent Claim but also the dependent Claim(s) are usually rejected. Even in such case, the rejected independent Claim can be combined with the rejected dependent Claim(s). As a result of such combination, the scope of the amended invention (Claims) is, of course, narrower than the original invention (Claims). However, even though such Claim amendments make the scope of the invention narrower, these Claim amendments still may not overcome the reasons for refusal since the rejected independent Claim is just combined with the rejected dependent Claim(s));
(iii) The Claim amendments include the above (i) and (ii); or
(iv) If there are any Claims for which no reasons for refusal have been found when the “Notification of Reasons for Refusal” is issued, only those Claims may be left in the current application or the Claims may be amended to Claims which include features recited in such non-rejected Claims. Other Claims, which do not share such features, should be canceled.
Based on the examination, the Examiner will make a decision to grant a patent at the final assessment of the examination stage if no reasons for refusal have been found. The Examiner will also make the same decision if the reasons for refusal have been eliminated by a Written Argument or an Amendment.
We can analyze the “Notification of Reasons for Refusal” and the references cited by the Examiner, and advice you on how it should be dealt with (including making a draft of Claim amendments).
<<How to deal with the invention which enters the national phase in Japan based on PCT international application>>
If you wish to obtain a patent right in Japan based on the PCT international application, you need to enter the national phase in Japan. In order to advance a PCT international application into the national phase in Japan, if the PCT international application is not written in Japanese, then a Japanese translation of this PCT international application must be submitted to the Japan Patent Office within the designated period. Then, as similar to non-exclusive applications (applications other than PCT international applications), the application needs to go through examinations to determine whether it fulfills all the necessary requirements.
Even though the original (PCT international) application is written in a foreign language (e.g. English), a patent right has to be, of course, obtained based on the Japanese language (translation), not the original language application.
An Examination to determine whether or not the invention has novelty or inventiveness is carried out based on the Japanese translation. Therefore, it is necessary that a proper description be given in the original application so as be able to make a proper Japanese translation for obtaining a patent right.
When the examination is carried out, even though the translation itself may be correct, such translation sometimes includes an improper description under Japanese Patent Law making the Claims redundant or making what is claimed in the Claims be ambiguous in Japanese.
Furthermore, when the examination is carried out, such improper description sometimes induces the problem of lack of novelty and inventiveness of the Claims. Of course, even though the translation does not have any improper description according to Japanese Patent Law, the invention may still not have inventiveness if the invention is described to include embodiments which have already been described in the prior art(s).
As similar to non-exclusive applications, in order to refute the reasons for refusal stated by the Examiner, we should first determine whether or not the Examiner’s reasoning is reasonable. In the case the Examiner’s reasoning is not reasonable, we have to submit the Written Argument to make a counterargument.
However, in most situations, we usually address the reasons for refusal by amending the Claims. How to amend the Claims for the application based on the PCT international application involves a similar process to that of the Amendment of non-exclusive applications.
When we make Claim amendments, we must carefully address the “Notification of Reasons for Refusal” and, based on the result of consulting with you on what scope of invention you wish to have, make a draft for submittal.
In certain cases, we may have to restrict the invention in order to make the invention have inventiveness. We will advise you on such matters as soon as we receive the “Notification of Reasons for Refusal”.
Above is just examples of the approaches we can take to get the desired patent right on your behalf.Back to previous page