Complete Updates of Examination Guidelines for Patent and Utility Model and Examination Handbook for Patent and Utility Model
The Japan Patent Office (JPO) has completed the work of updating its “Examination Guidelines for Patent and Utility Model” (Note 1) and its “Examination Handbook for Patent and Utility Model” (Note 2), releasing both Japanese and English versions on September 16, 2015. Recently, patent-system users both in and outside Japan have been requesting that the basic concepts of the “Examination Guidelines for Patent and Utility Model” be explained in a more easily understood format that uses clear and concise descriptions.
In its most recent update of the “Examination Guidelines for Patent and Utility Model”, the JPO conducted a complete check and review of the “Guidelines”, comparing them with those in other countries.
The “Examination Guidelines for Patent and Utility Model” are guidelines explaining when and how laws such as those stipulated in the Patent Act need to be applied to patent examination so as to ensure fairness and transparency of the examinations being conducted. Since it was first published in 1993, the “Examination Guidelines for Patent and Utility Model” has been extensively used not only by examiners but also by patent-system users such as applicants, in order to enhance their understanding of the examination practices being conducted at the JPO.
“Examination Handbook for Patent and Utility Model” summarizes the practices and the points that examiners need to consider when conducting their examination work. The Handbook also has been widely used ever since it was first published in 2005.
1. Objectives of the Updates
(1) Basic Policy
- To clearly and logically explain examination practices and procedures.
- To provide ample case examples (372 cases) and court precedents (193 cases) in the “Examination Handbook”, ensuring they include a proper balance between patentable (patented) and unpatentable (unpatented) cases.
- To make descriptions more clear and concise through the use of tables, figures, and shorter sentences.
- Amending a description on the clarity requirement for Product by Process Claims based on the judgment by the Supreme Court on June 5, 2015. [Part II, Chapter 2, Section 3, 4.3.2]
- Creating a new section called “Exceptions to Lack of Novelty of Invention”. [Part III, Chapter 2, Section 5]
- Creating a new chapter called “Category of Unpatentable Invention” (Violation of Public Order and Morality, etc.) [Part III, Chapter 5]
- Reorganizing the former “Part IX: Examination Procedures” into the new “Part I: Outline of Examination”; and adding descriptions such as “the examiner should take into account the significance of establishing high-quality patent rights” and “the examiner is to take into consideration any matters reasonably expected to be added to claims based on amendments as the subject of searches”, in order to show the principles of examination. [Part I]
- Clearly stating “the examiner should comprehensively assess various facts which support the existence or non-existence of an inventive step”. [Part III, Chapter 2, Section 2]
- Clearly stating the practices and procedures of the clarity requirement and novelty for the invention of a sub-combination. [Part II, Chapter 2, Section 3, 4.2 and Part III, Chapter 2, Section 4, 4]
- Relocating the former “Part VII: Examination Guidelines for Invention in Specific Fields (computer software inventions, biological inventions and medical inventions)” to the “Examination Handbook”, and adding more case examples. [Examination Handbook for Patent and Utility Model: Annex B]
2. Effective Date of Revisions
The revised “Examination Guidelines” and revised “Examination Handbook” will go into effect for examinations conducted on and after October 1, 2015.
3. Links to English versions
- Examination Guidelines for Patent and Utility Model in Japan (English version)
- Examination Handbook for Patent and Utility Model in Japan (English version)
(Annexes A, B, D will be published in the near future.)
September 16, 2015
Division in Charge
Examination Standards Office, Administrative Affairs Division, Patent and Design Examination Department (Physics, Optics, Social Infrastructure and Design), Japan Patent Office