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Hiroo MAEDA Researcher, IIP

Study on Introducing Continuation-type Application in Japan - Proposal of Concrete Solutions -. Hiroo MAEDA Researcher, IIP. Outline. 1. Background and Purpose of Study 2. Comparison of “Continuation-type” Applicaion among Japan, US, and EPC

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Hiroo MAEDA Researcher, IIP

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  1. Study on Introducing Continuation-type Application in Japan - Proposal of Concrete Solutions - Hiroo MAEDA Researcher, IIP

  2. Outline 1. Background and Purpose of Study 2.Comparison of “Continuation-type” Applicaion among Japan, US, and EPC 3.Concrete Solusions to Protect “Forerunner” ’s Inventions in Application (1) Relaxing Timing-Requirement for Divisional Application (2) Relaxing Scope-Requirement for Divisional Application (3) Introducing “CIP-type” Application and “US-type Grace Period” in Japan 4.Summary

  3. 1. Background and Purpose of Study Strengthen Industrial Competitiveness of Japan Actively Promote R&D of “Forerunner” (Pioneer), and Appropriately Protect the Fruits Enable more Strategic, Various, and Comprehensive Application in Patent System Purpose: Propose Concrete Solutions

  4. 2.Comparison of “Continuation-type” Applicaion among Japan, US, and EPC

  5. 3.Concrete Solusions to Protect “Forerunner” ’s Inventions in Application Objective: Enable more strategic, various, and comprehensive application for “Forerunner”. (1) Relaxing Timing-Requirement for Divisional Application JPN Transmitting of Decision for Patent Grant X(No way for divisional application) US Notice of Allowance 3 months EPC Notification of Text 2 - 4 months

  6. (1) Relaxing Timing-Requirement for Divisional Application (cont.) C: Registration [Solution 1: in Patent Grant] Transmitting of Decision B: 60-days A: 30-days Fee Payment Fee Payment [Solution 2: in Refusal] Transmitting of Decision 30-days No need to demand appeal trial (§121) for divisional application.

  7. (2) Relaxing Scope-Requirement for Divisional Application Handling of Same Invention at Same Filing Date by Same Applicant

  8. (2) Relaxing Scope-Requirement for Divisional Application (cont.) [Solution 1] Narrow the Range of “Substantial Same Invention” in Examination Guideline. e.g. Each of Inventions whose difference is only in well-known / common art, or in category is patented independently. ・Merits - Enable more strategic, various, and comprehensive application for applicant. - No need to revise Patent Law. ・Demerits (Discussion) - More risk for third party to be filed a suit by plural patentee. - Interpretation of novelty in §29-2 is also influenced. 　→ Might be inconsistent with the interpretation in case laws.

  9. (2) Relaxing Scope-Requirement for Divisional Application (cont.) [Solution 2] Admit Patent Grant for “Substantial Same Invention” with “Terminal Disclaimer*”-type system. * By terminal disclaimer (35U.S.C. §253), obviousness-type double patenting is overcome. ・Merit - Enable more strategic, various, and comprehensive application for applicant. ・Demerits (Discussion) - More risk for third party to be filed a suit by plural patentee. - Need to clearly define “same invention” in Patent Law. - Might be inconsistent with the requirements of divisional application (§44).

  10. (3) Introducing “CIP-type” Application and “US-type Grace Period” in Japan CIP Application in US ・ New matters can be added during pendency of prior application. ･ Subsequent application can be entitled to benefit of prior application’s filing date with support of prior application’s disclosures. ･ Patent term of subsequent application is 20yrs from prior application.

  11. (3) Introducing “CIP-type” Application and “US-type Grace Period” in Japan (cont.) Grace Period (Exception of Lack of Novelty)

  12. (3) Introducing “CIP-type” Application and “US-type Grace Period” in Japan (cont.) Comparison of Application System to Add New Matters JPN Publication 2.5 yrs 1 yr 1.5 yrs 1st Application Domestic Priority US-type Grace Period CIP-type Application (or Extended Domestic Priority) CIP-type Application (or Extended Domestic Priority) US Publication 1 yr 2.5 yrs 1.5 yrs 1st Application Grace Period CIP Application (Substantially Effective)

  13. * :Excellent, :Good, :Ordinary, :Bad (3) Introducing “CIP-type” Application and “US-type Grace Period” in Japan (cont.) Solutions and Effects of Introducing New Systems or or or

  14. 4. Summary • For protection of “Forerunner” ’s inventions in application, concrete solutions are provided. - For relaxing timing-requirement for divisional application, providing opportunities after transmitting of decision (patent/refusal) seems to be effective. - For relaxing scope-requirement for divisional application, admitting patent grant for “substantial same invention” seems to be effective. - For introducing “CIP-type” application and “US-type grace period”, balance between applicant’s benefits and third party’s benefits should be considered. Complexity of system and international harmonization are also important factor.

  15. Thank You

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