この特許法の翻訳は、平成三十年法律第三十三号（令和元年７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. 33 of 2018 (Effective July 1, 2019)).
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.
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)
Chapter V Opposition to a granted patent (Article 113 to Article 120-8)
Chapter VI Trials and Appeals (Article 121 to Article 170)
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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 equivalent
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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 preceding
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), for
a person in a remote area or an area with transportation difficulty.
Article 5 (1) Where the Commissioner of the Patent Office, the chief administrative
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
in 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.
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(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
4
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.)
5
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
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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),
7
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-
8
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)
9
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-
10
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
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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
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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)
13
(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.
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(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 one year 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 Article 29(1) by being contained
in a 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 one year 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.
15
(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)
16
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.
17
(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
18
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-
19
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
20
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
21
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
22
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
23
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,
24
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
25
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
26
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
27
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
28
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
29
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
30
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
31
(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
32
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.
33
(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
34
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.
35
(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 Member of the World Trade
country of the Union of the Paris Organization
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)).
Country of the Union of the Paris
Nationals of a Member of the World Convention or Member of the World
Trade Organization (meaning the Trade Organization
nationals of Members provided for in
paragraph (3) of Article 1 of the Annex 1C
to the Marrakesh
(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:
36
(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.
37
(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
38
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
39
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
40
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
41
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.
42
(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)
43
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.
44
(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
45
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
46
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."
47
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.
48
(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
register an extension of the duration of a patent right shall submit to the
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;
49
(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:
50
(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
51
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.
52
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
53
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)
54
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 (1) 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.
(2) The patentee shall have a right to receive reasonable consideration from the
non-exclusive licensee under the preceding paragraph.
(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
55
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
56
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)
57
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
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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
59
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
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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-
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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
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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
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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
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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
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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 the documents
concerning the motion under the main clause of the preceding paragraph fall
within the scope of documents referred to in the main clause of the said paragraph
or 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 whether or not the documents
concerning the motion under the main clause of paragraph (1) fall within the scope
of documents referred to in the main clause of the said paragraph or whether or
not there are reasonable grounds as provided in the proviso to the said paragraph,
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) In the case of paragraph (2), where the court finds it necessary to hear an
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explanation based on expert knowledge by disclosing the documents as provided
in the latter sentence of paragraph (2), the court may disclose the documents to a
technical advisor as provided in Part I, Chapter V, Section 2, Subsection 1 of the
Code of Civil Procedure, with the consent of the parties.
(5) The preceding 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
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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.
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(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
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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
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(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 Article
109-2 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.
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(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
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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):
Article 109-2 (1) The Commissioner of the Patent Office may, pursuant to the
provisions of Cabinet Order, grant a person obtaining the registration establishing
a patent right or a patentee who is a person specified by Cabinet Order, while
comprehensively considering matters including the person's financial resources,
ability to carry out research and development and technology development, and
degree of contribution to the development of industry, such as a small and medium-
sized enterprise operator and an experiment and research institute, etc., a
reduction of, exemption from, or deferment of the payment of the patent fees for
each year from the first to the tenth years under Article 107(1).
(2) The term "small and medium-sized enterprise operator" as used in the preceding
paragraph means a person that falls under any of the following items:
(i) a company having an amount of stated capital or total amount of capital
contributions of not more than 300 million yen or a company or individual hiring
not more than 300 full-time employees, where the principal business thereof is
manufacturing, construction, transportation or any other type of business
(excluding the types of business listed in the following item to item (iv) and the
type of business specified by Cabinet Order under item (v));
(ii) a company having an amount of stated capital or total amount of capital
contributions of not more than 100 million yen or a company or individual hiring
not more than 100 full-time employees, where the principal business thereof is
wholesale business (excluding the type of business specified by Cabinet Order
under item (v));
(iii) a company having an amount of stated capital or total amount of capital
contributions of not more than 50 million yen or a company or individual hiring
not more than 100 full-time employees, where the principal business thereof is
service business (excluding the type of business specified by Cabinet Order under
item (v));
(iv) a company having an amount of stated capital or total amount of capital
contributions of not more than 50 million yen or a company or individual hiring
not more than 50 full-time employees, where the principal business thereof is
retail business (excluding the type of business specified by Cabinet Order under
item (v));
(v) a company having an amount of stated capital or total amount of capital
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contributions which does not exceed the amount specified by Cabinet Order for
each type of business or a company or individual hiring a number of full-time
employees which does not exceed the number specified by Cabinet Order for each
type of business, where the principal business thereof is a business that falls under
the type of business specified by Cabinet Order;
(vi) an enterprise cooperative;
(vii) a cooperative partnership;
(viii) an association incorporated under special laws and a federation of such
associations, such as a business cooperative, small business cooperative,
commercial and industrial partnership, and federation of cooperatives; and
(ix) a corporation engaging in specified non-profit activities (meaning a corporation
engaging in specified non-profit activities provided in Article 2(2) of the Act on
Promotion of Specified Non-profit Activities (Act No. 7 of 1998), which hires not
more than 300 full-time employees (or not more than 50 full-time employees in the
case of a corporation engaging in the retail business as the principal business; or
not more than 100 full-time employees in the case of a corporation engaging in the
wholesale business or service business as the principal business).
(3) The term "experiment and research institute, etc." as used in paragraph (1)
means a person that falls under any of the following items:
(i) an employee of a university provided in Article 1 of the School Education Act (Act
No. 26 of 1947) (hereinafter referred to as a "university" in the following item),
such as the president, a vice president, a dean, a professor, an associate professor,
an assistant professor, a lecturer or an assistant, who exclusively engages in
research, an employee of a college of technology provided in the said Article
(referred to as a "college of technology" in the following item and item (iv)), such
as the principal, a professor, an associate professor, an assistant professor, a
lecturer or an assistant, who exclusively engages in research, or the head or an
employee of an inter-university research institute provided in Article 2(3) of the
National University Corporation Act (Act No. 112 of 2003) (referred to as an "inter-
university research institute" in the following item), who exclusively engages in
research;
(ii) a person that establishes a university or college of technology, or an inter-
university research institute;
(iii) an approved TLO provided in Article 5(2) of the Act to Facilitate Technology
Transfer from Universities to the Private Sector (Act No. 52 of 1998);
(iv) an incorporated administrative agency (meaning an incorporated administrative
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agency provided in Article 2(1) of the Act on General Rules for Incorporated
Administrative Agencies (Act No. 103 of 1999)) that carries out experiment and
research activities (referred to as an "experiment and research incorporated
administrative agency" in the following item), which is specified by Cabinet Order
as not being one that establishes a college of technology;
(v) a person that engages in the business wherein, with regard to research results
related to technology achieved at a an experiment and research incorporated
administrative agency that is specified by Cabinet Order (hereinafter referred to
as a "specified experiment and research incorporated administrative agency" in
this item), the person acquires a patent right or right to obtain a patent through
assignment from the specified experiment and research incorporated
administrative agency relating to the research results, and then transfers the
research results to a private business seeking to make use of them, by carrying out
an act such as assigning, or granting an exclusive license of, the patent right or a
patent right obtained based on the right to obtain a patent;
(vi) a public experiment and research institute (meaning an organization such as a
laboratory and research institute established by a local government (excluding a
public school provided in Article 2(2) of the School Education Act), which carries
out experiment and research activities; and
(vii) an experiment and research local incorporated administrative agency (meaning
a local incorporated administrative agency (meaning a local administrative
incorporated agency provided in Article 2(1) of the Local Incorporated
Administrative Agency Act (Act No. 118 of 2003)), which does not fall within the
category of public university corporation provided in Article 68(1) of the said Act
and which carries out experiment and research activities).
(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)
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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
or Article 109-2, 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
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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 or Article 109-2 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
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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
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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.
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(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.
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(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
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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)
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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)
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(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));
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(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
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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
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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
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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
88
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)
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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.
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(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
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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
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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
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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
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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.
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(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.
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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
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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
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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.
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(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.
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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 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
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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.
(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
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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
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
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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,
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.
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(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
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.
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(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.
(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
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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 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)
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(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)
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.
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(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
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
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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)
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)
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(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 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
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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
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;
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(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
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
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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 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
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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
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
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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
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 (iii) 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
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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 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.
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(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
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
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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 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.
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(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
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.
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(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 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
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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 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
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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
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
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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 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.
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(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 advisory opinion on the technical scope of a patented
invention, with respect to which a party in the case has given notice that a trade
secret owned by the said party in the case has been described;
(iii) documents concerning an appeal against an examiner's decision of refusal
(except where the establishment of the patent right has been registered or where
the laying open of a patent application has been effected);
(iv) 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));
(v) documents which are liable to cause damage to an individual's reputation or
peaceful life; and
(vi) 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 (v) 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
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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 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;
or
(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
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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.
(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
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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)
(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).
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(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);
(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.
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(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 Article 195-2-
2 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 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;
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(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, notwithstanding 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)
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.
Article 195-2-2 The Commissioner of the Patent Office may, pursuant to the
provisions of Cabinet Order, grant a person that files a request for examination of
the person's own patent application and falls within the category of person
specified by Cabinet Order under Article 109-2(1), a reduction of, or exemption
from, the fees for the request for the examination for the application payable under
Article 195(2).
(Exclusion of application of Administrative Procedures Act)
Article 195-3 Chapters II and III of the Administrative Procedures Act (Act No. 88
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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.
(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.
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(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
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.
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(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.
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
A person filing a patent application 16,000 yen per case
(excluding one in the following
item)
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1
2 A person filing a written application 26,000 yen per case
in foreign language
3 A person responsible for the
procedures under Article 38-3(3)
4 A person responsible for the
procedures under Article 184-5(1)
5 A person responsible for the
procedures under Article 184-20(1)
6 A person filing an application for
the registration of extension of the
duration of a patent right;
(1) The registration of extension
under Article 67(2).
(2) The registration of extension
under Article 67(4).
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)
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)
9 A person requesting
examination of an application
an
10 A person amending a description,
scope of claims or drawings through
the submission of a statement of
correction of incorrect translation
11 A person requesting an advisory
opinion under Article 71(1)
12 A person requesting an award
13 A person requesting canceling of an
award
16,000 yen per case
16,000 yen per case
16,000 yen per case
43,600 yen per case
74,000 yen per case
4,200 yen per case
68,000 yen per case
168,600 yen per case plus 4,000 yen
per claim
19,000 yen per case
40,000 yen per case
55,000 yen per case
27,500 yen per case
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14 a patent opponent
15 a person applying intervention in
proceedings on an opposition to a
granted patent
16 A person filing a request for a trial
or retrial (excluding one in the
following item)
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.
18 A person filing a request for a
correction of the description, scope
of claim(s) or drawing(s)
19 A person applying intervention in a
trial or retrial.
16,500 yen per case plus 2,400 yen
per claim
11,000 yen per case
49,500 yen per case plus 5,500 yen
per claim
55,000 yen per case
49,500 yen per case plus 5,500 yen
per claim
55,000 yen per case
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