Revised Examination Guidelines and Revised Examination Handbook for Patent and Utility Model in Japan – applied to examination to be conducted on or after October 1, 2015

Japan Patent Information Committee
IZUMIYA, Reiko (Ms.)  Patent Attorney of Patent Division

(1) Announcement from JPO
On September 18, 2015, the Japan Patent Office published Revised Examination Guidelines for Patent and Utility Model in Japan (“Revised Examination Guidelines”) and Revised Handbook for Patent and Utility model in Japan (“Revised Handbook”).
http://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/1312-002_e.htm (English)
https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/handbook_sinsa_e.htm (English)

Revised Examination Guidelines and Revised Handbook are applied to examination to be conducted on or after October 1, 2015. These revisions are intended to prepare more easy-to-understand Examination Guidelines and Handbook based on the results of the discussions made by the Working Group on the Patent Examination Standards supervised by the Patent System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council.

(2) Revision on Examination Guidelines
Examination Guidelines are summaries of the Japan Patent Office’s basic practices regarding the application of the Patent Law and other relevant laws. The main revisions in Revised Examination Guidelines are as follows:

• “Part IX Procedure of Examination” in the previous examination guidelines has been moved to “Part I Outline of Examination”.
• Given the Supreme Court’s decisions dated June 5, 2015 (Nos. 2012(ju)1204 and 2012(ju)2658), the stipulations relating to the clarity requirement of product-by-process claims have been amended [Part II, Chapter 2, Section 3, 4.3.2]. When a claim concerning an invention of a product recites a process for manufacturing the product, the examiner will issue a notification of reason for rejection stating that the invention of said product is unclear, except in the case where the examiner can be assured of the existence of “impossible or impractical circumstances”. While the applicant can argue and verify the existence of “impossible or impractical circumstances” as a way to deal with the reason for rejection, the Japan Patent Office published reference examples of such argument and verification under date of November 25, 2015.
• Basic practices regarding clarity requirement and novelty for an invention of sub-combination, especially, an invention of sub-combination which includes expressions that are intended to specify the invention of sub-combination by elements of “another sub-combination” have been described explicitly [Part II, Chapter 2, Section 3, 4.2; Part III, Chapter 2, Section 4, 4].
• It is expressly stated that “facts in support of the non-existence of an inventive step, as well as facts in support of the existence of an inventive step will be assessed comprehensively” [Part III, Chapter 2, Section 2]. The “facts in support of the non-existence of an inventive step” include the following cases: where there exists “a motivation for applying a secondary prior art to a primary prior art”; where there exist “suggestions in the primary prior art for design variations and the like”; and where “the invention of interest is a mere aggregation of prior art”. The “facts in support of the existence of an inventive step” include the case where there exist “advantageous effects” or “obstructive factors”.
• “Exceptions to Lack of Novelty of Invention” [Part III, Chapter 2, Section 5] have been newly stipulated. The examiner shall judge the applicability of exceptions to lack of novelty of invention whenever he/she undertakes the first round of examination so that the applicant can be informed whether exceptions to lack of novelty of invention are applicable or not.
• “Category of Unpatentable Invention” (violation of the public order, morality, etc.) [Part III, Chapter 5] has been newly stipulated.
• “Part VII Examination Guidelines for Inventions in Specific Fields” (computer- and software-related inventions, biological inventions, medical inventions) has been shifted from the previous version to “Examination Handbook for Patent and Utility Model in Japan”.

(3) Revision on Examination Handbook
Examination Handbook is summaries of procedural matters and considerations necessary for the Japan Patent Office to perform the examination procedures, which include those case examples, court precedents, and application examples which are useful in understanding the basic practices presented in Examination Guidelines.

Part I Outline of Examination to Part X Utility Model in Revised Examination Handbook are arranged in the same way as in Revised Examination Guidelines; the procedural matters and considerations that are related to each part of Examination Guidelines are described. Part XI relates to “Affairs in General”. Revised Examination Handbook includes Annexes A-D in addition to the main text. Annex A is “case studies” which is a collection of the case examples that were described separately in each section of the previous examination guidelines. Annex B “Inventions in Specific Fields” has been shifted from “Part VII Examination Guidelines for Inventions in Specific Fields” in the previous examination guidelines. Chapter 1 Computer software-related Inventions, Chapter 2 Biological Inventions, and Chapter 3 Medical Inventions each begin with the statement of the definitions of interest and the definitions of specific terms used in each chapter. The number of case examples contained in Annexes A and C is significantly larger than in the previous examination guidelines by more than 100. Annex C is “Handbook for Preparing Reports of the Utility Model Technical Opinion”, and “Annex D is “Trial and Court Decisions”.

The previous examination handbook was largely directed to procedural matters regarding handling procedures to be taken by the Japan Patent Office for conducting examination, so applicants may not have had occasions to refer to the handbook so often as the examination guidelines. However, Revised Examination Handbook contains substantive contents including the annexed documents and, hence, need be fully understood by applicants.

Given the Supreme Court’s decision dated November 17, 2015 (2014 (Gyo-Hi) No. 356), a revision to Examination Guidelines concerning an application for patent term extension is under review and will be published by the spring of 2016.
https://www.yuasa-hara.co.jp/english/lawinfo/1233/ (English)

A revision to Examination Guidelines concerning use inventions of food products is also under review at the Working Group on the Patent Examination Standards supervised by the Patent System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council, and we will keep you informed of any development of the review.