Statistics regarding Recent Trend of Japanese Patent Practice
Japan Patent Office (JPO) issues an annual report which includes statics such as patent grant rate, duration of waiting time for substantial examination, etc. These statics are summarized in a brochure which can be seen by using the following link.
Japan: Product-By-Process Claims
A historical decision was made on Product-By-Process claims by the Supreme Court of Japan on June 5, 2015.
Please see the details at https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/product_process_C150706_e.htm
Request for Examination Delay System for Taiwanese Patent Application
Grace system that can delay the starting time of substantive examination of the Taiwanese patent application was introduced, and the request has been accepted since April 1, 2015. If it is an invention patent application (except for the specific invention patent application),during the 3 years from the filing date of Taiwan, regardless of the presence/absence of the priority claim, the request can be submitted to Taiwan Patent Office on or after the day the request for the substantive examination was submitted. In addition, desired date to start substantive examination must be within three years from the date of filing of the application, and the date must be identified. On the desired date, the application is added to the substantive examination application waiting list for the year.
KIPO: Revision of fees
Revision of application fee, Examination fee, and additional charges for late annual fee payment are effective as of March 1, 2014. Please refer to the website below for the detailed new fees.
Patent Fee Reduction
According to the JPO, new reductions for Patent fees are adapted for venture companies and micro-enterprises. This will be effective as of April 2014 for qualified Patent applications.
Please do not hesitate to contact us if you need more details on this matter.
Changes in Patent Law Treaty (PLT) and Patent Law Treaty Implementation Act (PLTIA)
Followings are the main changes, effective as of December 18th, 2013, based on enforcement of revised PLT and PLTIA;
1. It is not necessary to file claims and specifications/drawings for securing a filing date for a non-provisional application except a design application. Such a non-provisional application can be filed by reference to a previously filed application. An applicant has to complete a filing requirement for a claim(s) and/or a copy of the specification and drawings in a period of time set by USPTO.
2. Revival of abandoned applications and lapsed patent is permitted. Based on this change, USPTO accepts delayed issue fee or delayed maintenance fee payments upon petition and payment of petition fee (currently $1,700.00). However, this petition is accepted only on the basis of "unintentional" delay.
3. Late filing of priority claimed applications is permitted within two months from the expiration of the 12 month priority period (6 month period for design applications). The right of priority may be restored upon petition and payment of the fee (currently US$1,700.00), if the delay in filing was unintentional.
4. A reduction of Patent term adjustment would occur if an application is not in condition for examination within 8 months of its filing date or a date of national phase entry of an international application.
Global PPH (GPPH) pilot program
The PPH enables an@applicant to go through an accelerated examination process at the Office of Second Filing simply by filing a request based on the bilateral office agreement. By doing so, a favorable work product found at the Office of First Filing will be utilized to accelerate examination process.
However, applicants have been asked to go through different procedures to file an application receiving PPH benefit based on the bilateral office agreement.
Global PPH (GPPH) pilot program, commenced from Jan., 2014, makes various PPH programs among the following 13 countries and regions harmonized so that applicants do not have to consider which PPH program should be claimed at or after filing.
The participating countries are listed below;
Japan, the U.S., the ROK., the U.K., Denmark, Finland, Russia, Canada, Spain, the Nordic Patent Institute, Norway, Portugal, Australia.
Kindly reminded that EPO and SIPO would not participate the pilot program
Further information is available at Ministry of Economy Trade and Industry's website at http://www.meti.go.jp/english/press/2013/1101_07.html
After Final Consideration Pilot Program 2.0@Extended Period
On May 19, 2013, the United States Patent and Trademark Office (USPTO) launched gAfter Final Consideration Pilot Program 2.0h (AFCP 2.0) to compact the prosecution and to let examiners and applicants have better communication by providing an additional time for examiners to search and/or consider responses or conducting an interview with an applicant. The original duration of AFCP 2.0 runs from May 19, 2013 until September 30, 2013, but as of November 22, 2013, it is extended till September 30, 2014.
Special Technical Feature (STF) of Invention
Revision of Examination Guidelines, applicable to Examination for Patent and Utility Model applications on or after July 1, 2013, effects on "Requirements of Unity of Invention" and the "Amendment that changes Special Technical Feature of Invention".
More details are available at JPO's website
EPO:Revision on the time limit for filing divisional applications
In accordance with current version of Rules 36, 38, and 135, EPO strictly restricts the time limits for filing divisional applications. On Oct. 16, 2013, the Administrative Council of the EPO; however, decided to remove the restrictions regarding the requirements for the filing of divisional applications from these Rules.
With the new Rule which will be effective from April 1, 2014, it will be possible for an applicant to file a divisional application based on any pending European patent application including those pending European patent applications which passed deadlines for filing divisional applications defined by current version of the Rules.
The official announcement by EPO is available at
Jensen Denmark Aktieselskab and Purex Co., Ltd v. Totofolder Manufacturing Co., Ltd
Jensen Denmark Aktieselskab, a Danish company which manufactures and sells the automatic washing systems for linen washing factories, and Purex Co., ltd, an exclusive licensee of a Japanese patent of fabric expanding apparatus of Jensen, filed Patent infringement lawsuit against Totofolder Manufacturing Co., Ltd at Tokyo District Court.
Mr. Fujitani, the president of our firm, and Mr. Ohba, the council of City-Yuwa Partners, co-represented the plaintiffs and won this lawsuit.
Further details are available at http://www.courts.go.jp/hanrei/pdf/20131001134025.pdf
After Final Consideration Pilot Program 2.0
On May 19, 2013, the United States Patent and Trademark Office (USPTO) launched gAfter Final Consideration Pilot Program 2.0h (AFCP 2.0) to compact the prosecution and to let examiners and applicants have better communication.@In order to reduce the number of Requests for Continued Examination (RCE), USPTO introduced gAfter Final Consideration Pilot Programh which allowed extra 3 hours (extra 1 hour for design applications) in addition to the regular examination time for examiners to search/consider responses after final rejection, and 3 revisions listed below are added in AFCP 2.0.
EAn applicant must request the participation in the program.
EA response under the program is required to include an amendment to at least one independent claim.
EThe examiner will request an interview with the applicant if the examiner cannot determine that all pending claims are in condition for allowance.
AFCP 2.0 is applied for (1) an original utility, plant, or design non provisional application, (2) an international application that has entered the national stage, (3) continuation application, or (4) divisional application. The program is not applicable for a reissue application and a reexamination application.
The duration of AFCP 2.0 runs from May 19, 2013 until September 30, 2013, but there is a possibility of the extension depending on feedback from the participants and the effectiveness of the program.
Unitary Patent in 25 countries across Europe
The European Parliament adopted a unitary patent for Europe on December 11, 2012, and it is scheduled to become effective in January, 2014 at the earliest. A patent issued under the new system of a unitary patent for Europe will have unitary effect in 25 participating EU accession states except Italy and Spain. With current EU patent, after a patent is granted, it is necessary to perform the registration procedure and to pay issue fee in every country which applicants wish to register. Therefore it is expected that the introduction of this new patent system will lead to simplifying the registration process and cost reduction.