January 23, 2009
The Japanese Patent Office ("JPO") announced yesterday that it has revised its "Examination Guidelines for Patent and Utility Model" having an original effective date of December 28, 2000. Japanese Guidelines are provided within ten distinct parts, including Specification, Requirements for Patentability, Amendment of Specification and Drawings, Priority, Special Application, Patent Term Extension, Examination Guidelines for Inventions in Specific Fields, Foreign Language Application, Procedure of Examination, and Utility Model. While the Guidelines do not show the "redlined" changes, the individual Guideline Parts and Chapters are available at the first link below in their updated form in PDF format. I note specifically that Part VII (Examination Guidelines for Inventions in Specific Fields) contains three Chapters for specific inventions, including Computer Software-Related Inventions, Biological Inventions, and Medicinal Inventions, each having their own examination requirements.
(As an aside, and while many patent practitioners (including myself) rely on the guidance of their foreign agents, a general understanding of foreign patent practice can be most helpful. As noted within my brief bio on the DDIP blog, most of my professional time involves preparing and prosecuting life sciences patent applications, including those in the medical device field. After handling a good number of foreign prosecution matters, and with a good working knowledge of foreign patent practice in a handful of countries, I have learned, for example, to tailor the claims of each foreign application for initial prosecution in those countries. While I continue to seek input from my foreign agents on each matter, I know that the information being shared with them at the time of entering the national stage is at least in a form that will facilitate substantive examination, and, using Europe as an example, multiple dependent claim practice may be implemented as appropriate to avoid prohibitively high excess claim fees. Your clients will appreciate your extra efforts in this regard, especially in cases where currency exchange rates do not work out in you client’s favor.)
JPO Examination Guidelines Webpage: LINK
JPO Website: LINK
(As an aside, and while many patent practitioners (including myself) rely on the guidance of their foreign agents, a general understanding of foreign patent practice can be most helpful. As noted within my brief bio on the DDIP blog, most of my professional time involves preparing and prosecuting life sciences patent applications, including those in the medical device field. After handling a good number of foreign prosecution matters, and with a good working knowledge of foreign patent practice in a handful of countries, I have learned, for example, to tailor the claims of each foreign application for initial prosecution in those countries. While I continue to seek input from my foreign agents on each matter, I know that the information being shared with them at the time of entering the national stage is at least in a form that will facilitate substantive examination, and, using Europe as an example, multiple dependent claim practice may be implemented as appropriate to avoid prohibitively high excess claim fees. Your clients will appreciate your extra efforts in this regard, especially in cases where currency exchange rates do not work out in you client’s favor.)
JPO Examination Guidelines Webpage: LINK
JPO Website: LINK
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