AIPLA Annual Meeting 2015 IP Practice in Japan

AIPLA Annual Meeting 2015 IP Practice in Japan Pre-Meeting Seminar Patent Law Revision in 2014 -2015 under PLT enforced in April 2016 Fujiko Shibata Japan Patent Attorneys Association International Activities Center October 20, 2015

Contents l. Outline of PLT l. Relationship between PCT & PLT l. Summary of the Patent Law Revision in Japan 2015 -2016 l. Practical tips 2

Outline of PLT-1 l. PLT has been adopted on June 1, 2000. l. Its purpose is unification of procedure. l. Member country number: 36(Sept. 1, 2014) l. Main contracting parties: US, UK, RU, ES, SW, AU, DK, FR, NL, FI, HU 3

Outline of PLT-2 l. Merits for becoming contracting party of PLT l Promotion of the international harmonization for the unification of procedure. l Several articles of PLT give merits to medium to small size entities l Promotion of patent applications from foreign companies (http: //www. jpo. go. jp/shiryou/toushin/shingikai/pdf/newtokkyo_shiryou 009/01. pdf 4

Outline of PLT-3 l(1) Providing filing date by prescribed elements l(2) Simple & convenient procedure for filing l(3) Reliefs for time limits, etc. 5

Relationship between Paris Convention & PLT l. Rights & obligations on the basis of Paris Convention l (a)Nothing in this treaty derogate from obligations that Contacting party have to each other under the Paris Convention l (b) Nothing in this treaty derogate from rights that Contacting party have to each other under the Paris Convention 6

Relationship between PCT & PLT-1 l. Procedures of them are harmonized l. Several articles of PCT are applied mutatis mutandis l Requirements for the application under PLT = those of the article 27(1) under PCT l Formal requirements of the request under PLT = those under PCT l Requirements for the electronical application = those under PCT 7

Relationship between PCT & PLT-2 l. PLT has Compliance obligation of PCT l Any revision, amendments or modification of PCT made after June 2, 2000, which is consistent with the articles of PLT, shall apply the purposes of this Treaty and Regulations, if the Assembly so decides l Each contracting party shall comply with the provisions of the Paris convention concern patents 8

Patent Law Revision in Japan-1 l. Providing filing date (38 bis(1)) l. Simple & convenient procedure for filing (43 bis) l. Reliefs for time limits (36 bis(6), 48 ter(5), etc. ) l. Representation for filing, etc. 9

Patent Law Revision in Japan-2 l. Element for Providing filing date (Article 38 bis) l(i) an express or implicit indication to be an application l(ii) indications for identifying the applicant; l(iii) a part which on the face of it appears to be a description. 10

Patent Law Revision in Japan-3 l. Claims shall be included in the application! l. After the filing date is provided, JPO sends an office action to file claims, abstract and necessary drawings under the article 17(3) 11

Patent Law Revision in Japan-4 l. After the filing date was provided, the applicant shall file Japanese translations of the whole elements which are required by JPO l. Specification l. Claims l. Abstract l. Necessary Drawings 12

Patent Law Revision in Japan-6 l. JPO sends following notifications to the applicant l. Lacking of the elements for providing the filing date (Art. 38 bis (2)) l. Partial defect of the elements filed to JPO for providing the filing date shall be amended (Art. 38 quarter (1)) 13

Patent Law Revision in Japan-5 l. JPO sends notifications to the applicant: 14 l. Not filing Japanese translations by the due date (Art. 36 bis (6)) l. Incomplete filing documents(Art. 38 bis(2)) l. Missing parts of the elements(Art. 38 bis(4)) l. Certificate of priority not filed by the due date(Art. 43 (6)) l. Not filing election of representative (184 undecies (3))

Practical Tips l Anybody can file the application under PLT to JPO by using any language l Finally, a specification, claims, abstract and necessary drawings shall be filed l Japanese translations of them shall be filed l All correspondence to JPO should be written in Japanese by using the prescribed format l Relief articles for the due date are added, but still hurdle is very high! 15

Thank you for your attention! Any Questions? Fujiko Shibata dania@ayafune. com 16