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Unity of Invention. JIPA : Patent Committee I. H irofumi O kuhara. Existing Law Regarding Unity of Invention Problem of Existing Law Policy & Schedule New Patent Law & New Regulations of Patent Law Outline of Revised Examination Guideline Request to JPO - Public comment -

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JIPA : Patent Committee I. H irofumi O kuhara

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Jipa patent committee i h irofumi o kuhara

Unity of Invention

JIPA : Patent Committee I.

Hirofumi Okuhara


Jipa patent committee i h irofumi o kuhara

Existing Law Regarding Unity of Invention

Problem of Existing Law

Policy & Schedule

New Patent Law & New Regulations of Patent Law

Outline of Revised Examination Guideline

Request to JPO -Public comment-

Stipulations of Other Countries

New Amendment Limitation

Table of contents


Jipa patent committee i h irofumi o kuhara

The Existing Law (1)

Specified

Invention

Related Invention

The invention of having the relations of §37

(i) the industrial applicability and the

problem to be solved are the same

(ii) the industrial applicability and the substantial

part of the features stated in the claim are the same

Specified

Invention

inventions of process of manufacturing the product,

inventions of process of using the product,

inventions of process used for handling the product,

inventions of machines, instruments, equipment

or other things used for manufacturing the product,

inventions of products solely utilizing the specific properties of

the product, or inventions of things used for handling the product

Inventions

of Product

Inventions

of Process

inventions of machines, instruments,

equipment or other things used directly in the working of

the specified invention


Jipa patent committee i h irofumi o kuhara

The Existing Law (2)

Claim.1

Claim.2

Claim.3

Claim.4

  • Issues with the current

  • In case foreign application carried out, we have to create again the specifications united with unity of invention standards, such as PCT.

  • great burden required in making judgment during examination as judgmental standards of unity of invention are complicated.

Existing JP Law

PCT

a Single General Inventive Concept

Specified Invention

Related Invention

Claim.1

Claim.1

Claim.2

Claim.2

Claim.3

Claim.3

Claim.4

Claim.4


Jipa patent committee i h irofumi o kuhara

Policy & Schedule

  • The Policy of the Examination Guideline Revision (materials from JPO)

  • Since the purpose is especially for harmonization with the PCT, this Draft was made for complying with the requirement for unity of invention defined by the PCT Guidelines.

  • Details to be set forth in a ministerial ordinance.

  • Schedule

  • Invite public comments : 2003.10.1~2003.10.31

  • Applicable to applications filed on or after Jan 1, 2004 .


Jipa patent committee i h irofumi o kuhara

New Patent Law

Corresponds to

PCTRegulation §13.1

Patent Law §37

Where there are two or more inventions, they may be filed in a single patent application provided that these inventions constitute a group of inventions complying with requirement of unity of invention by having a technical relationship stipulated by an ordinance of the Ministry of Economy, Trade and Industry.

JPO Home Page (English)

http://www.jpo.go.jp/cgi/linke.cgi?url=/iken_e/interim_req_unity.htm


Jipa patent committee i h irofumi o kuhara

New Regulations of Patent Law

Corresponds to

PCT Regulation§13.2 & 13.3

Regulations of Patent Law §25 (8)

1. The technical relationship defined by an ordinance of the Ministry of Economy, Trade and Industry stated under Section 37 of Patent Law shall mean a technical relationship in which two or more inventions must be linked so as to form a single general inventive concept by having the same or corresponding special technical features among them.

2. The special technical feature provided in the former paragraph stands for a technical feature defining a contribution made by the invention over prior art.

3. The technical relationship provided in the first paragraph shall be examined,irrespective of whether the two or more inventions are described in separate claims or in a single claim described in an alternative form.


Jipa patent committee i h irofumi o kuhara

Outline of Revised Examination Guideline (1)

  • The Judgment Method of the Unity of Invention

  • Authorize the "special technical feature" of each invention based on the technical common sense at the time of application.

  • This the "special technical feature" determines the same or whether it is the corresponding thing.

  • Type of the Unity of Invention

  • The type of the Markush form is added newly.

  • Other types are fundamentally the same as now.


Jipa patent committee i h irofumi o kuhara

Outline of Revised Examination Guideline (2)

  • Examination about the Unity of Invention

  • Unity of Invention is judged by the relation with invention concerning the first claim. The claim which fills Unity of Invention is examined.

  • It examines, when it is judged that it is rational to examineeven if a doubt is in unity.

  • Although the Unity of Invention (§37) is a reason for refusal (§49), it does not become a reason for nullity (§123).


Jipa patent committee i h irofumi o kuhara

Problems (1) - Request to JPO -

  • Public comment

  • Boundary is unclear as only case examples (16 cases) that satisfies unity exist as typology of unity of invention; no case examples that dissatisfies unity.

  • Explanations on newly added “Markush form” and “intermediary and end-product “ are ambiguous, incomprehensive and lack case examples. Case examples should be listed.

  • Although examined about invention concerning the first claim, and the claim which fills unity, it wants as selection of the group for examination being possible before examination.

  • (ex.US-restriction)


Jipa patent committee i h irofumi o kuhara

Problems (2) - Request to JPO -

  • Public comment

  • How to cope with rejection by §39 (double patent) in such case where rejection by §37 is materialized due to unity and division occurs in consequence.

  • Standards of unity is assumed to become more severe than at present but divisional application is forced to be filed under current law.

  • Relaxation of period of division (fixed period after registration) is desired.

  • →It is under examination by JPO now.


Jipa patent committee i h irofumi o kuhara

Stipulations of Other Countries

  • USPTO

  • Stipulations close to PCT (e.g.CFR1.141(+)) do exist, however, feels like they are extremely difficult to actually employ (e.g. products and production methods)

  • Hope for abolishment of restrictions like those mentioned above as well as stipulation and employment of PCT based unity of invention (e.g. public comments on implementation of USPTO based unity of invention).

  • EPO

  • Basic stipulations are the same as PCT

  • Rule 29 (2): Substantially sets forth 1 independent per 1 category claim.

Hope for international uniformity utilizing stipulations and employments that are PCTstipulation based.

(uniformity of employment : examination manual, sharing of case examples)


Jipa patent committee i h irofumi o kuhara

New Requirements for Amendments

  • Outline

  • Implementation of new requirements for amendments based on the new unity of invention concept is being considered at JPO.

  • The intent is for claims that are due to be amended after first examination to not impose great burden on examination to the claim prior to amendment.

  • Notes

  • As restriction is quite strict, will it not contradict with the examination guideline revision policy for new matter that is being considered ?

  • Transfer to claims not subject to examination is also disapproved at unity violation time.

  • It is expected that division application increase, and does the burden of examination increase as a result?

  • relaxation of period of division is needed at least.


Jipa patent committee i h irofumi o kuhara

- End -

Thank You.


Jipa patent committee i h irofumi o kuhara

reference


Jipa patent committee i h irofumi o kuhara

The Existing Law about Unity of Invention

JP Law§37

Where there are two or more inventions, they may be the subject of a patent application in the same request provided that these inventions are of an invention claimed in one claim (hereinafter referred to as "the specified invention") and of another or other inventions having the relationship as indicated below with respect to such specified invention:

(i) inventions of which the industrial applicability and the problem to be solved are the same as those of the specified invention;

(ii) inventions of which the industrial applicability and the substantial part of the features stated in the claim are the same as those of the specified invention;

(iii) where the specified invention relates to a product, inventions of process of manufacturing the product, inventions of process of using the product, inventions of process used for handling the product, inventions of machines, instruments, equipment or other things used for manufacturing the product, inventions of products solely utilizing the specific properties of the product, or inventions of things used for handling the product;

(iv) where the specified invention relates to a process, inventions of machines, instruments, equipment or other things used directly in the working of the specified invention;

(v) inventions having a relationship as provided for in Cabinet Order.


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