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Changes in the Japanese Patent Law that take effect on September 1, 2002
1. Deadline of a national entry of PCT application
Currently, the JPO requires a Chapter I PCT application to enter a national phase within twenty months from a priority date, while a Chapter II application must enter a national phase within thirty months. According to a revised law, every PCT application having a deadline on or after September 1, 2002 may enter the national phase within thirty months from the priority date. In other words, every PCT application having a priority date that is on or after January 1, 2001 can enter the Japanese national phase within thirty months from the priority date, regardless of status of Chapter I or II.
2. Translation of PCT application
The JPO has been asking PCT applicants to file the Japanese translation at the time of the entry of the Japanese national phase. According to a revised law, the translation may be filed within two months from the national entry. Please keep it in your mind that a Request for National Entry must be filed within thirty months from the priority date. Filing of the translation may be deferred for two months.
3. Compulsory disclosure of related art
According to the revised law, the applicant for patent application must disclose relevant related art that he/she knows before filing the application. The JPO requires this disclosure in the description of the specification. In the disclosure, the related art must be specified by the publication number or the like, and the relevance with the claimed invention must be stated. It is noted that all patent literatures and the other publications in the name of the applicant are regarded to have been known by the applicant him/herself.
This disclosure requirement is not indispensable for filing the patent application. The applicant may add this disclosure to the specification as a response to the instruction of the examiner. However, the failure in responding to the examiner's instruction finally causes the application to be rejected.
Generally speaking, in Japan, the foreign applicants would like to file either national phase applications derived from PCT application or national applications claiming priority based on Paris Convention. These two applications are treated in the different manner.
The above new provision is applied to all national Japanese patent applications filed on or after September 1, 2002, regardless of the earlier Convention priority date. However, the Japanese national phase application of the PCT application follows the International Filing Date being valid as the Japanese Filing Date. Accordingly, the PCT application which will be filed on or after September 1, 2002 must disclose the related art when it enters the Japanese national phase.
U.S. applicants mostly file the Japanese application claiming priority based on the U.S. application. Furthermore, it is our understanding that Japanese patent applications coming from foreign countries outside U.S.A. mostly have U.S. counterparts. We believe that it is not a heavy burden for these applicants to disclose the related art since all U.S. applications seem to have come through the Information Disclosure Requirement. Likewise, Search Reports are issued on British, European, and German patent applications. These materials are very helpful when we prepare the disclosure in the Japanese version. Accordingly, please provide us with these materials when you will ask us to handle the cases claiming priority based on Paris Convention.
We believe that it is quite rear that our clients must prepare the information material specially for disclosing the related art in the Japanese application. However, if the application is directed to Japan only from a country where search report is not issued and self disclosure is not required, the applicant must unfortunately prepare the information material so as to enable us to prepare its Japanese version. In that case, we would much appreciate your corporation.
The search report issued to every PCT application is delivered to the JPO from the WIPO. The JPO has prior art information in connection with the national phase application derived from the PCT case. Therefore, the JPO will assumingly not strictly ask the applicant to submit the related art. However, the examiner has an authority to instruct it. Again, we would be much obliged for your corporation when we would receive the official instruction.