Results of User Consultation on Substantive Patent Law Harmonization in Japan

National consultation method
The patent system harmonization packages by IT3, FICPI, and AIPPI include verycomplex elements, which are further complicated by the interconnectedness of theelements in the overall package. In order to properly understand and evaluate suchharmonization packages, it is necessary to obtain the opinions of those who areknowledgeable not only about the patent system in their own country, but those inother countries as well.

Consequently, the JPO selected several user organizations with sufficient knowledge ofpatent systems, and held individual meetings in order to hear their opinions on thepatent system harmonization packages (IT3 Elements Paper, AIPPI Resolutions andFICPI Proposal).

During these individual meetings, we gave a brief explanation of each patent system
harmonization package, and then asked users for their opinions.

Responses
１． Complexity of the patent system harmonization packages◆ Some of the newly proposed systems, including the Defense forIntervening User (DIU) in the IT3 package, are considered to becomplex and difficult to implement in practice. Consequently, users
hope that discussions will take into account the perspective of userfriendliness.

(GP, IT3) The IT3 Elements Paper's presumption for determining whether or not thirdparty intervention disclosure is derived from an earlier original Applicant/Inventor PFD
is not clear from the definition of "insignificant differences". Rather, the legal
uncertainty is increased. Therefore, this proposal is unacceptable from a practicalstandpoint.

(GP, IT3) When considering whether the content of the third-party intervention
disclosure is the same as or involves insignificant differences with respect to thecontent of an earlier original Applicant/Inventor PFD, it is necessary to compare thecontents of both (i.e., academic papers and related product information). We would
like to ask, then, whether it is possible from a practical standpoint for examiners tocompare both types of content, and then decide whether they are presumed to beeither identical, or involve only insignificant differences. In the end, examiners willconsider differences between the earlier original Applicant/ Inventor PFD and the thirdparty intervening disclosure as not comprising "insignificant differences", and will issuea notice of reasons for refusal while citing the third-party disclosure as prior art in theusual manner. The applicant who receives such notices will then always have to rebut
them, and based on such rebuttals, the examiner will essentially decide for the firsttime whether or not the differences truly are "insignificant". This being the case, would
it not be overly burdensome for users to implement this presumptive rule in practice?
2(GP, IT3) Regarding the IT3 Elements Paper, the proposed systems to encourage timely
submission of the grace period statement (e.g. administrative fees, DIU, etc.) are coexistent, even though the submission of the statement is mandatory. Therefore, webelieve that there is a contradiction within the IT3 Elements Paper.

(Accelerated Publication, IT3) With regard to "Accelerated Publication" as proposed in
the IT3 Elements Paper, which refers to a system wherein patent applications to which
the proposed grace period system applies are published 18 months after the date of
the Pre-Filing Disclosure (PFD), it seems difficult to identify the date of the PFD. Inaddition, uncertainty exists insofar as the publication date of the application is notdetermined until the statement for the grace period is submitted. Furthermore,
identifying the date of the PFD is a factual issue that is disputable, and could bechallenged in court. Therefore, these factors would increase legal uncertainty.

(DIU, IT3) The requirement to inform the IP Offices of the PFD proposed by IT3 isburdensome not only to applicants, but also to IP Offices. For this reason, we thinkthat the patent system harmonization package by IT3 is difficult to realize from apractical standpoint.

(DIU, IT3) We believe that the DIU system is challenging to implement because of thedifficulties that exist with respect to understanding the period during which DIU occurs.

(DIU, IT3) The DIU system is too complex, as it is a further exception to the exceptionrule.

(PUR, IT3) We believe that the newly-proposed Derived PUR system in the IT3
Elements Paper is not as effective as it could be for its complexity.

(General comment, IT3) We believe that the IT3 Elements Paper is not feasible, insofar
as it includes proposals that would require many legal changes to current patent law.
3(General comment, IT3/FICPI/AIPPI) As users, we prefer a system that is simple, andeasy to both understand and operate.

２． Method for conducting discussions on patent system harmonization◆While users understand the significance of discussing the package asa whole, they note that it would be effective to have an in-depth
discussion on individual elements, focusing on those such as the Grace
Period. They further note that we should consider the manner throughwhich to proceed with such discussions.
・ It is realistic to proceed with the discussion of substantive patent law harmonization
through repetition of the following subjects: individual topics → patent system
harmonization packages as a whole → individual topics → packages as a whole → ....

３． Importance of patent system harmonization◆While users understand that discussions on substantive patent law
harmonization are very difficult, they would appreciate it if Group B+
members would continue these discussions.

We understand that it is difficult to reach a consensus within the discussion among IP
Offices regarding substantive patent law harmonization, but we would like for thisdiscussion to be continued since it is very important for users.

4

If patent systems are harmonized internationally, users will be able to adopt a globallyconsistent patent strategy.

In addition, every time a client files a patent application in a foreign country, patent
attorneys explain the differences among countries with respect to patent systems. If
patent systems were to be harmonized, this work would be unnecessary, and patent
systems would become more user-friendly.

We have experiences of obtaining a patent in one country and not in another due todifferences existing among various patent systems. We believe that such risks will be
reduced if substantive patent law harmonization is achieved.

４． Other opinions
・ (PUR, IT3/FICPI/AIPPI) Companies often do business in several foreign countries after
preparing to implement their inventions in their home country. When discussing thegeographical scope of prior user rights, we would like to ask that these realities betaken into account.
・ (GP, IT3/FICPI/AIPPI) Considering the relationship between the applicant and thirdparties, it is reasonable for the applicant to file a statement from the viewpoint ofenabling the third party to know which applications for which a Grace Period has beenrequested. Therefore, the patent system should be designed to ensure that a statement
for the grace period must be submitted by an applicant in a timely manner. In addition,such facts must be disclosed in a manner that third parties are able to be aware of.
・ (GP, IT3) The IT3 Elements Paper requires applicants to pay administrative fees if they
delay their submissions of statements for the grace period. This would therefore
provide applicants with an incentive to a certain extent in terms of submitting theirgrace period statements in a timely manner. However, depending on how the patent
5system is designed, the possibility remains that it could be abused for the purpose ofjustifying inappropriate submissions of the statements, such as intentional delays oromissions.
・ (GP, IT3/FICPI/AIPPI) The Japanese grace period system requires that a statement for
the grace period be submitted at the time of filing. Therefore, this system is wellbalanced, as applicants enjoy the benefits of the grace period while third parties canalso be aware of the fact that applicants filed statements for the grace period in a timely
manner by checking patent applications published by the Japan Patent Office. The
Japanese grace period system is therefore a good example of a well-functioning system.
・ (Conflicting applications, IT3) Regarding the treatment of PCT applications in the IT3
Elements Paper, it is proposed that PCT applications would become Secret Prior Art
regardless of whether or not they enter the national phase. This proposal would givethe effect of secret prior art to PCT applications that do not actually enter the nationalphase, thereby unnecessarily excluding subsequent applications. This proposal istherefore a new one that serves to excessively exclude subsequent applications, andwe have concerns about this.
・ (Conflicting applications, IT3) Regarding the conflicting applications in the IT3 Elements
Paper, the effect as prior art is proposed as "novelty + technical common sense". This
proposal includes not only "novelty", but also " common general knowledge to one ofordinary skill in the technical field" in the prior art effect. Consequently, we have someconcerns that the effect is too broad. We believe that it is appropriate to define theprior art effect as "novelty + substantial identity" .
※GP: Grace Period

PUR : Prior User Rights
PFD : Pre-Filing Disclosure
DIU : Defense for Intervening User proposed in the IT3 Elements Paper6