4 Desirable Amendment and Other Procedures andSystems under the Patent Registration Order (*)
Patent rights are an exclusive right of control, and their change, etc. is publicly notified through adoption ofa registration system in order to prevent the change, etc. from causing unanticipated damages to a third party.
The Patent Registration Order that provides for registration has not been drastically revised since its enactment,
and includes no provisions on amendment of procedures. In this regard, some users request introduction of anamendment system. In addition, an amendment system is available for some procedures under the Real Property
Registration Act that was used as a reference when enacting said Order.
Furthermore, in Japan, discussions have been carried forward with a view to accession to the Patent Law
Treaty (PLT). The Regulations under the Patent Law Treaty requires that the Office of a Contracting Party
accept correction of a mistake in some of the application procedures for a certain period of time.
Therefore, this research study was conducted to prepare basic material to be used in considering
introduction of an amendment system in the Patent Registration Order by figuring out problems with theimpossibility of making an amendment under the current Japanese industrial property right registration system,
the actual conditions thereof, and related user needs, as well as by studying and analyzing amendment and otherprocedures under the Real Property Registration Act and under other countries’ industrial property rightregistration systems.

I

Introduction

1

Background andResearch Study

PurposeofThis

Patent rights are an exclusive right of control,and it is thus necessary to prevent them from
causing unanticipated damages to a third party by
publicly notifying the existence, content,
attribution and change of a patent right. Therefore,
the registration system is adopted in Japan as amethod of giving a public notice, and the Patent
Registration Order provides for the system.
On the other hand, the Patent Registration
Act was enacted in 1909 by using the Real
Property Registration Act as a reference, and it
has not been drastically revised since then. The
Act does not include any provisions onamendment of procedures permitted at the timeof examination of an application. Therefore, if anapplication includes a defect, the date of receipt is
not secured and the registration loses its effecteven if the defect is minor. Consequently, users
have requested the introduction of an amendment
system. In this regard, an amendment procedure
was introduced in relation to some of theprocedures under the Real Property Registration
Act that was used as a reference.
Moreover, in Japan, discussions have been
carried forward with a view to accession to the
Patent Law Treaty (PLT). The Regulations under

the Patent Law Treaty requires, in Rules 15 to 18,
that the Office of a Contracting Party accept
correction, etc. of a mistake in application
procedures, such as one for the recordation of achange of the name of the right holder or a change
of indication of the name or address of the rightholder, for a certain period of time.
From the above, it is also necessary toconsider the necessity of introducing provisions
that accept amendment, etc. into the Patent
Registration Order, etc. Therefore, this researchstudy is intended to prepare basic material to be
used in considering introduction of an amendment
system in the Patent Registration Order byorganizing problems with the impossibility ofmaking an amendment under the current
Japanese industrial property right registration
system, by studying and analyzing the actual
conditions of amendment and other procedures
under the Real Property Registration Act, etc.
and under other countries’ industrial property
right registration systems, and by surveying theexistence of user needs for amendment, etc.
2

Method of This Research StudyIn this research study, a domestic interview
survey was conducted to collect cases where
Japanese users, including right holders, feelinconvenience in relation to the current
registration application procedure, to understand(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
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the actual conditions of practice and needs, and to
consider the hypothetical cases of introduction. In
addition, an overseas questionnaire survey was
conducted targeting intellectual property officesin the United States, the United Kingdom,
Germany, France, Canada, China and South Korea
in order to understand the operations, etc. ofregistration application procedures in othercountries. Moreover, texts of law, documents andother materials in Japan and other countries werestudied and examined through domestic andinternational
publicinformation
searches.
Furthermore, intellectuals were called for advice.

Ⅱ OutlineoftheRegistration System

Japanese

An application for registration is filed by awritten application, and the matters to be statedin a written application and the method of statingthem are provided for by laws and regulations, etc.
Whether a written application should be accepted
is examined through a formality check. In thisformality check, an application is examined only
on whether it fulfills certain formal requirements.
An application for registration is dismissed if it
falls under the provisions of any of the items of
Article 38, paragraph (1) (Dismissal) of the Patent
Registration Order. If the Commissioner of the
JPO intends to make such a dismissal, he/she
notifies the applicant of reasons for the dismissal
and gives to the applicant an opportunity tosubmit a written explanation with a reasonable
time limit designated. However, this opportunity
to submit a written explanation is an opportunity
for the applicant to assert the injustice of thereasons for the dismissal where the reasons forthe dismissal are unjust, and it is not to permit
making an amendment, etc.
There are no express provisions on thewithdrawal of an application for registration.
However, it is permitted to withdraw a written
application for registration in practice. It is
possible to withdraw an application forregistration only before the administrative
processing of the registration and before adismissal of the application.

Ⅲ Outline of Amendment and Other
Systems in Major Countries’
Registration Procedures (Including
Outline of the Patent Law Treaty)1Outline of the Patent Law Treaty

The Patent Law Treaty is an international
treaty that was adopted in June 2000 and cameinto effect in April 2005 with the aim of reducing
applicants’ burden through unification of domestic
application procedures that differ depending on
the country and other measures and promoting
relief for applicants by restoring patent rights thathave lost their effects due to expiration of a time
limit for a procedure under certain requirements.
As of February 1, 2014, the number of theContracting Parties is 36. In addition, although
the European Patent Office (EPO) has yet toaccede to the Patent Law Treaty, it has taken
action concerning the major items of the Patent
Law Treaty, such as “relief after expiration of thedesignated time limit” and “restoration of rights.”
In Japan, measures have been carried forwardwith a view to accession to the Patent Law
Treaty.
The Regulations under the Patent Law
Treaty provides, in Rules 15 to 18, that the Officeof a Contracting Party shall accept correction, etc.
of a mistake in a recordation of a change in theregistered (recorded) content, recordation of alicense or a security interest, or registration for acertain period of time. Japan has to adjust to thisrequirement to accede to the Patent Law Treaty.
2

Amendment System in the Registration
Procedure in the United States

In relation to an application for registration in
the United States (37CFR (Code of Federal
Regulations) §3.24), an opportunity to make acorrection is given if the content stated in thewritten application (37CFR §3.31) contains acertain defect. If a written application cannot
define the patent covered by the application,statements in the cover sheet are insufficient, or
the requirements, such as payment of fees, arenot satisfied, the application is not registered(37CFR§3.21). If these requirements are satisfied,the date on which the written application was
submitted to the United States Patent andTrademark Office (USPTO) becomes the date ofregistration (37CFR§3.51).
If an application does not satisfy therequirements, it is returned to the applicant witha prescribed time limit for resubmission of acorrected application (37CFR§3.51). If theapplicant resubmits a corrected application within
the prescribed time limit, the original date offiling the application is deemed to be the date ofsubmission (37CFR§3.51). The prescribed time
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The United States acceded to the Patent Law
Treaty on December 18, 2013.
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Amendment System in the Registration
Procedure in the United Kingdom

Rule 47 of the Patents Rules 2007 of theUnited Kingdom provides for correction of a
submitted document. Where the United Kingdom
Intellectual Property Office (UKIPO) accepts anapplication for recordation of an assignment andconsiders the submitted information as
insufficient to renew the patent register in
relation to a change of the right holder, it willcommunicate with the applicant of the recordationof the change of the right holder to request thatthe applicant submit more information andadditional evidence or give an explanation on a
specific matter. If the UKIPO receives no reply
from the applicant within two to three months
from the UKIPO’s request for more information
or explanation, it sends a notice requesting
additional information (follow-up letter) again. If
the UKIPO receives no reply from the applicant
despite the second request for provision of
information, it dismisses the application and does
not register the change.
The United Kingdom acceded to the Patent
Law Treaty on March 22, 2006.

Treaty, but signed it on May 29, 2001.
5

In France, if a request for registration does
not satisfy the requirements therefor, a reasoned
notification is made to the requester. In this case,the requester must regularize the request or
submit observations within a given time limit(Article R613-58 of the Intellectual PropertyCode).
The time limit for amendment is ordinarily
two months and does not exceed four months. In
addition, this time limit may be extended.
France acceded to the Patent Law Treaty on
January 5, 2010.
6

Amendment System in the Registration
Procedure in Germany

In Germany, there is the right to be heard asa general principle of law. The provisions similar
thereto are the second sentence of Section 42,
subsection (3) and the second sentence of Section
48 of the Patent Act (Patentgesetz) concerning
examination. An application for registration of achange is refused if there is a reasonable doubt in
the proof of the change based on submitted
documents or circumstances or if such a doubt
cannot be eradicated even through submission of
additional documents. A person who has filed
such an application is given the right to be heard
and an opportunity to express an opinion before
the rendering of a decision of refusal. An applicant
is given an opportunity to express his/her opinion
if the application contains a defect that
constitutes noncompliance with the requirements
provided for in Sections 27, 28 and 29 of the
DPMAV (Verordnung über das Deutsche Patentund Markenamt).
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Amendment System in the Registration
Procedure in Canada

In Canada, there are no provisions to theeffect that an application for registration can beamended.
Canada has yet to accede to the Patent Law
Treaty, but signed it on May 21, 2001. In addition,
discussions are ongoing on the necessary
revisions to the procedures under its domestic
law in order to accede to the Patent Law Treaty.
7

4

Amendment System in the Registration
Procedure in France

Amendment System in the Registration
Procedure in China

China has not introduced an amendment
system concerning the registration procedure.
China has neither acceded to the Patent Law
Treaty nor signed it.
8

Amendment System in the Registration
Procedure in South Korea

In South Korea, Article 29 of the Registration
Order for Patents, etc. provides for anamendment
concerningtheregistration
procedure. The time limit for amendment is one
month for domestic cases and two months forforeign cases.
Incidentally, drafting of a bill to partiallyrevise the Registration Order for Patents, etc. is
ongoing with the aim of expanding theamendment system and revising the procedure ofregistering the rights of right holders into a more
prompt and convenient one. The revision thatcame into force on July 22, 2013, includes thecontent intended to “revise the procedure into

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one whereby rights can be more promptly
registered, by changing some of the existing
items whose defect causes the remanding of an
application for registration to the items that canbe amended to expand an opportunity for
applicants to make an amendment (Article 29(2)of the revised Registration Order for Patents,etc.)” under the title of “expansion of opportunity
for registered right holders to make anamendment.” Furthermore, as a matter that waspreannounced to be provided for by law on
January 20, 2014, a system will be introduced
whereby an examiner makes a correction ex
officio only in the case of an obvious clerical error,
in order to realize prompt formality check andimprove user satisfaction.
South Korea has neither acceded to the
Patent Law Treaty nor signed it.

Ⅳ Necessity of Amendment, etc. in
the Registration Procedure forPatents, etc. in Japan
1

Current Situation of the Registration
Procedure through Application(1) Dismissal Cases(i) Clerical Error in the Matters Stated in an
Application and Procedural Mistake
Examples are as follows.
• In transferring a design right, it is necessary
to submit an application for registration oftransfer of a design right. However, theprocedure was dismissed because the title ofan application was erroneously written as“application for registration of transfer of apatent right.”• It is necessary that the name of the applicant
stated in an application for registration oftransfer (a person who has obligation toregister) is completely identical with thename stated in the registry. However, in thecase of a foreign juridical person, subtle
differences sometimes occur when indicating
the sound of the name in katakana characters.
The procedure was dismissed for the reason
that the name of a company in katakana
characters stated in an application is not
identical with the name stated in the registry.
(ii) Defect in Relation to an Attached
Document
That
Is
NecessaryforRegistration
Examples of defects are as follows.
• When filing an application for registration of•transfer due to a merger of foreign companies,
a notarized “certificate of merger” wasattached as a document proving the cause ofregistration. However, the certificate ofmerger was not accepted because it was not
stamped by the notary. Consequently, theprocedure was dismissed.
When filing an application for registration oftransfer, it is necessary to submit a certificate
of assignment as a document proving thecause of registration. It is necessary that thename and address of the assignor stated in a
certificate of assignment be completely
identical with those in the information on theright holder stated in the registry in order toconfirm the identity between the assignor andthe right holder. The procedure was dismissed
because the address stated in a certificate ofassignment was not identical with that statedin the registry.

(2) Processing after Dismissal
In the case of dismissal, a set of documents
for an application are returned to the applicant.
Consequently, the applicant files an application forregistration again after correcting defects in the
returned documents.
In the case of a clerical error in the mattersstated in an application or a procedural mistake ascited in (1)(i) above, it is considered
comparatively easy to correctly rewrite theapplication.
However, in the case of a defect in relation to
an attached document that is necessary forregistration as cited in (ii) above, labor to obtainnecessary documents and physical problems thatcannot be solved without receiving an attacheddocument that the applicant has alreadysubmitted from the JPO are expected to occur.
Consequently, in the case of (ii), it is often moredifficult to file an application for registration again
in a short time compared to the case of (i).
It takes a certain amount of processing time
for the process from finding some sort of defect tosending a notice of reasons for dismissal and toreturning a set of application documents to theapplicant after the dismissal becomes final andbinding after the lapse of the time limit for
explanation. Therefore, in some cases, anapplicant who wishes to carry forward the processof filing an application again at an early dateactively withdraws the first application forregistration. Although withdrawal of an
application has been implemented in practice,almost all representatives subject to the

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interview are aware of the fact of said practiceand many of them utilize it.
2

Necessity of Amendment, etc.

With regard to dismissal cases extracted
through the interview, there were many requests
for permission to amend defects that areconsidered minor. In particular, many requests
were in relation to cases where a defect can beeliminated by amending statements in an
application. Many said that it is considered fine topermit making an amendment where a clericalerror, etc. in statements in an application isclearly revealed based on attached documents. In
addition, there was also a request for permission
to amend a defect in relation to an attacheddocument that is necessary for registration as
cited in (ii) above if the defect is certainly amistake. However, it is impossible to holddiscussions on the cases where an attacheddocument itself contains a defect and the cases offailure to submit a necessary attached document
on an equal basis with the cases of a mere clericalerror in an application. Therefore, it is necessary
to carefully examine the content, etc. of requests
for permission to make an amendment on acase-by-case basis.

Ⅴ Consideration of Forms ofIntroducing Amendment, Etc. in
the Registration Procedure forPatents, etc. in Japan
1

Consideration of Planned Systems for
Introducing Amendment, etc.

(1) Hypothetical
Case
1:
Duplicate
Assignment
Hypothetical case 1: Patentee A concluded acontract on transfer of a patent right to B and,almost at the same time, concluded a contract ontransfer of the patent right to C. Although anapplication for the registration of the transferfrom A to B (Application 1) was filed prior to an
application for the registration of the transferfrom A to C (Application 2), there was a defect inApplication 1.
Incidentally, Application 1 was filed
independently by B while Application 2 was filed
independently by C.

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Vol.23(i)Planned System for Introduction 1 (FormGiving Priority to the Date on Which an
Application Becomes Defect-Free)
Planned System for Introduction 1 is asystem whereby the order of priority is decided
on the basis of the time when an application
becomes defect-free. Although Application 1 wasfiled prior to Application 2, there is a defect inApplication 1 while there is no defect inApplication 2. For Application 1, a notice giving an
opportunity to make an amendment of proceduresis made, and at least a two-month time limit foramendment is set. B makes an amendment tocorrect the defect within the time limit foramendment. On the basis of the time when theapplications have become defect-free, Application
2 is given priority over Application 1, which leads
to the same result as that under the current
system. Thereby, Application 2 is registered. A
problem with this Planned System for
Introduction 1 is the point that “where the defectin Application 1 is minor (for example, a mere
clerical error in the application), this system issevere for B who filed Application 1.”(ii) Planned System for Introduction 2 (FormGiving Priority to the Date of Receipt of an
Application)
Planned System for Introduction 2 is asystem whereby even if there is a defect in an
application received earlier, the application isregistered with priority over a subsequent
application, irrespective of the seriousness andcontent of the defect, as long as the defect isamended within the time limit for amendment.
Although Application 1 was filed prior to
Application 2, there is a defect in Application 1
while there is no defect in Application 2. For
Application 1, a notice giving an opportunity tomake an amendment of procedures is made, andat least a two-month time limit for amendment isset. B makes an amendment to correct the defectwithin the time limit for amendment. On the basisof the time when the applications were received,
Application 1 is given priority over Application 2,
which leads to a result different from that under
the current system. Thereby, Application 1 isregistered. Problems with this Planned System
for Introduction 2 are the point that “where thedefect in Application 1 is serious (for example,
failure to attach a certificate of assignment), thissystem is not fair towards C who filed Application
2 that is a defect-free application” and the pointthat “where Application 2 is forced to wait until
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be a problem that Application 2 is also affected by
the result of the delay in the processing ofApplication 1.”(iii) Planned System for Introduction 3 (Hybrid
Form)
Planned System for Introduction 3 is asystem whereby Planned System for Introduction
1 and Planned System for Introduction 2 areappropriately used on a case-by-case basis. Under
this system, Planned System for Introduction 1(Application 2 is registered) applies to cases
where the content of a defect is serious while
Planned System for Introduction 2 (Application 1
is registered) applies to cases where the content
of a defect is minor. Although Application 1 wasfiled prior to Application 2, there is a defect inApplication 1 while there is no defect inApplication 2. For Application 1, a notice giving an
opportunity to make an amendment of proceduresis made, and at least a two-month time limit foramendment is set. B makes an amendment tocorrect the defect within the time limit foramendment. Which of the applications isregistered differs based on the seriousness of thedefect. A problem with this Planned System for
Introduction 3 is “what determination standard
should be used to divide defects in relation totheir content and nature.”(2) Hypothetical Case 2: Establishment of a
Right of Pledge
A, who has a patent right (with ahypothetical value of 100,000,000 yen), received
a loan of 100,000,000 yen from Bank X and Bank
Y, respectively, using the patent right as a pledge(right of pledge). Although an application for theregistration of the establishment of a right ofpledge for Bank X (Application 1) was filed prior
to an application for the registration of theestablishment of a right of pledge for Bank Y(Application 2), there was a defect in Application
1 (interest is not taken into consideration forsimplification of the problem).
In Hypothetical Case 1, Application 1 andApplication 2 are in an incompatible relationship.
However, in Hypothetical Case 2, both rights ofpledge are registered as the primary right ofpledge and the secondary right of pledge,
respectively, as it is possible to register multiple
rights of pledge.
However, if A does not pay back the loans andthe rights of pledge are exercised (the patentright is brought to auction, and the pledgees are

preferentially reimbursed by money paid by the
successful bidder), the pledgee of the primaryright of pledge can be preferentially reimbursed
up to 100,000,000 yen by money paid by the
successful bidder, and thus can collect the entire
amount of the loan. However, the pledgee of thesecondary right of pledge can be preferentiallyreimbursed only by the remaining money after
the pledgee of the primary right of pledge ispreferentially reimbursed. In that sense, whichright of pledge is registered as the primary rightof pledge is a significantly important matter forboth Bank X and Bank Y.
With regard to this Hypothetical Case 2,
Planned Systems for Introduction 1 to 3 wereconsidered in the same manner as for
Hypothetical Case 1. The mainstream opinion
was that there is no need of making a special
difference in terms of the design of institutionalarrangements
betweenassignment
andestablishment of a right of pledge. However, there
was also an opinion that some sort ofarrangement should be made in consideration of
the difference in the nature between assignment
and establishment of a right of pledge.
(3) Determination Standard for Defects in
Considering
Planned
Systemfor
Introduction 3 (Hybrid Form)In
considering
Planned
Systemfor
Introduction 3 (hybrid form) in relation to the two
hypothetical cases, a certain standard for
determining the content and nature of defects is
considered to become necessary. An interview
survey was also conducted regarding whether
each example defect is considered minor or
serious, showing assumed example defects as abasis for discussion. With regard to thisdetermination standard, it is considered that the“determination result differs depending on thesubjective view and situation of the applicant.”

2

Results of Interview Survey about
Planned Systems for Introducing
Amendment, etc.

(1) Regarding Hypothetical Case 1
From a comprehensive perspective, mostusers desired Planned System for Introduction 2(form giving priority to the date of receipt of an
application) or Planned System for Introduction 3(hybrid form). However, some users upheld
Planned System for Introduction 1 (form giving
priority to the date on which an application
becomes defect-free), which is considered as easy

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to introduce without significantly changing thecurrent system. With regard to Planned System
for Introduction 2 (form giving priority to the dateof receipt of an application), there is concern
about an increase in the number of applications
that are filed only to secure the date of filing anapplication (so-called fictitious applications),
though the anteroposterior relationship becomesvery clear because the date of filing an application
serves as a basis. On the other hand, there was an
opinion that it is difficult for the JPO to operate
Planned System for Introduction 3 (hybrid form)
because of the difficulty of dividing defects basedon their seriousness, though it is ideal. There wasalso a view that a system that follows therequirements for finding the filing date of aninternational application is good whereby clear
availability of the minimum required documents isa requirement for finding the date of filing anapplication and it is permitted to amend a defectafter finding of the date of filing an application.
(2) Regarding Hypothetical Case 2
With regard to Hypothetical Case 1 (double
assignment) and Hypothetical Case 2 (right ofpledge), the mainstream opinion was that there isno need of making a special difference in terms ofthe design of institutional arrangements between
these cases. However, there was also an opinion
that some sort of arrangement should be made inconsideration of the difference in the nature
between assignment and establishment of a rightof pledge.
(3) Determination Standard for Defects in
Considering
Planned
Systemfor
Introduction 3 (Hybrid Form)
With regard to the determination standard for
defects in considering Planned System for
Introduction 3 (hybrid form), opinions from users
concerning Defects 1 to 5 cited as examples arestated below. For each item, there are competing
opinions concerning the propriety of amendment,
which highlights the difficulty of organizing the
problem.
(4) Time limit for Amendment
Many said as follows: A longer time limit foramendment is convenient from the standpoint ofapplicants because applicants can have a marginof time for processing; however, attribution ofrights remains unstable during the period when
an amendment can be made; therefore, a
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conducts trend surveys concerning applications
for registration (due diligence). There was also an
opinion that two months is not required for
applications concerning right holders in Japanbecause necessary documents, etc. can be easily
prepared in many cases. On the other hand, there
was a request for considering extension of thetime limit for amendment in relation toapplications concerning right holders outside
Japan because at least two months is required formaking an amendment due to the necessity oftime for communication between representatives
and preparation of necessary documents, etc.
3

Amendment System under the Real
Property Registration Act

The Patent Registration Order was enacted
by using the Real Property Registration Act as areference. In addition, although said Order has
been revised several times so far, it has not been
drastically revised. No provisions on amendment
have been introduced in relation to the procedureof filing an application for registration. On theother hand, the Real Property Registration Act
was drastically revised in 2004, and theamendment procedure was introduced in relation
to some procedures (proviso to Article 25 of said
Act). Therefore, in this research study, thebackground to the revision of the Real Property
Registration Act that was revised in advance andthe outline and problems, etc. of the amendment
system are explained in considering introductionof provisions on amendment, etc. in the Patent
Registration
Order.
The
advantageof
introduction of the amendment system iselimination of the burden of filing an application
again due to a careless mistake while theproblems include the existence of difference inthe determination of whether a defect is within
the scope that can be amended between the Legal
Affairs Bureau and applicants.

4

Problems with Planned Systems for
Introducing Amendment, etc.

(1) Problems Concerning Planned Systems
for Introducing Amendment, etc.
(i) Problems Concerning Each Planned
System for Introduction
Legal problems concerning the plannedsystems for introducing amendment, etc. were
examined in consideration of the results of thedomestic interview survey and the actual
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standard for determining the “time when an
application has become defect-free” is necessary
in considering Planned System for Introduction 1.
For Planned System for Introduction 2, it isnecessary to give consideration to a feeling of
injustice of applicants of subsequent defect-free
applications who are forced to wait during thetime limit for amendment. Moreover, regarding
Planned System for Introduction 3, it isconsidered desirable to design a system whereby
law enumerates amendable defects in a limited
way whenever possible in order to realize asystem that is clear to users and brings a sense offairness to them by eliminating arbitrary
operations in relation to the determination
standard for the seriousness of defects to theextent possible.
(ii) Key Points of Introduction of Amendment
It is considered that problems in introducing
amendment, etc. are consolidated into thefollowing two key points.
• Formulation of a clear standard for defects
that are subject to amendment• Clarification of the base date for theoccurrence of the effect of an amendment
There were many comments requesting asimple procedure, a clear determination standard,
and no unfair results arising from permission for
an amendment from interviewees. It was possible
to confirm the background of introduction of theamendment system and clear statements of thesubject-matter of amendment in related
provisions of law, from the practice of real
property registration. It is required to design a
new system in consideration of these key points
in light of the requirements under the Patent Law
Treaty.
(2) Measures That Are Considered Necessary
in Introducing Amendment, etc.
In introducing an amendment system, there
is concern about prolongation of the period during
which the relationship of rights remains unstable.
According to the provisions of the Patent Law
Treaty, two months is required as this unstable
period. It will be necessary to take some sort ofmeasures in order to cope with new problems that
may arise during this period. There were, forexample, the following requests from theinterviewees.
• It is anticipated that introduction of anamendment procedure will lead to requiring
more time than in the past before the final
result becomes clear in terms of whether an•application for registration is accepted or
dismissed. Therefore, it is desired that the
JPO immediately start processing if a written
amendment of procedures is submitted.
It is natural that the period during which therelationship of rights remains unstable isprolonged. However, it is possible to feel safe
if there is a system whereby applicants canknow the status of processing of applications
for registration on a timely basis (for example,
online inspection).

(3) Hypothetical
CaseofDuplicate
Assignment in Other Major Countries
Hypothetical case 1: Patentee A concluded acontract on transfer of a patent right to B and,almost at the same time, concluded a contract ontransfer of the patent right to C. Although anapplication for the registration of the transferfrom A to B (Application 1) was filed prior to an
application for the registration of the transferfrom A to C (Application 2), there was a defect inApplication 1.
Incidentally, Application 1 was filed
independently by B while Application 2 was filed
independently by C.
In the United States, Application 1 is sent
back to the applicant for correction. Regarding
Application 2, the United States Patent andTrademark
Office(USPTO)showsnodetermination concerning the effect of therelevant document. Therefore, both Application 1
and Application 2 are registered.
In the United Kingdom, the United Kingdom
Intellectual Property Office communicates withthe original patentee, A, to clarify the situation,and requests that A provide information
concerning which contract is effective and on
which contract the rights for the patent aretransferred and confirm which is the new rightholder (B or C).
In Germany, handling differs on acase-by-case basis. However, both Applications
are not approved because no disputed matter isrecorded.
In France, Application 2 which satisfied therequirements first is registered.
In Canada, Application 2 which satisfied therequirements first is registered.
In China, if Application 1 has already been
disposed of (Application 1 is deemed to have “notbeen submitted” as it does not satisfy therequirements) as of the time when Application 2
is submitted, Application 2 is registered. If

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Bulletin
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2014Vol.23
Vol.23

Application 2 is submitted before the processingof Application 1, a written notice is sent to theapplicant of Application 1 and that of Application 2
to ask which contract is effective, and aconclusion is drawn after waiting for confirmationby the applicants.
In South Korea, the applicant of Application 1
is given an opportunity to comply with therequirements. If Application 1 comes to comply
with the requirements as a result of theopportunity, only Application 1 is registered.
(4) Opinions about Online Procedure
It is expected that procedures will becomputerized in the future. There was a majority
opinion basically approving online procedures in
the hope for a more prompt and simplified
procedure. However, there was also a negative
remark about the introduction of a system thatleaves paper-based procedures, such as
submission of original documents, in relation to
attached documents.
In addition, there was also an opinion that
introduction of online procedures is good as it
would enable online payment, including
prepayment, and would simplify the procedures
more, though, in the current filing of an
application for registration in writing, applicants
pay registration and license taxes by attaching
revenue stamps to written applications.

Ⅵ Conclusion
This research study revealed that many users
request the introduction of an amendment systemin the registration application procedure. On theother hand, in actually introducing an amendment
system, there arises the necessity of formulating
new standards, including clarification of defects
subject to amendment and clarification of the basedate for the occurrence of the effect of anamendment. Moreover, while processing is
expected to be more prolonged than ever with theintroduction of an amendment system, it is also
necessary to take various actions against
emerging problems by utilizing legislation,
operations and systems.
(Senior Researcher : Takenobu URAZONO)IIP Bulletin 2014 Vol.23● 38 ●