２ System of Publication of Application (*)
While more than 40 years have passed since the introduction of the system for laying open of application
into Japan in 1970, the circumstances surrounding Japan over intellectual property system have been changing
such as the significantly shortened period after the request for examination of an application until the firstaction (FA) and the rise of developing countries in the field of intellectual property along with the globalization ofmarkets. Whereas some Japanese companies select their competitiveness maintaining strategy with keeping
secret their developed technologies, such concerns are also pointed out that technical information is diffused via
patent publications, resulting into imitations or the like. Given such circumstances, it becomes necessary toreconsider the significance of the system of publication of application from the perspective of what role thissystem should play in the context of the Patent Act, the purpose of which is to contribute to the development ofindustry, so that Japan will be able to maintain its industrial competitiveness even though Japanese companiesor the like are facing with severe competition. Therefore, this research was conducted aiming to preparematerials for reconsidering the significance of the existing system of publication of application in Japan throughsurvey of the systems of publication of application and related systems in Japan and other counties as well as
discussions with experts.

Ⅰ Introduction
1

Background and purpose of this research
System of publication of application is asystem wherein the content of a patentapplication is published after the expiration of acertain period of time from the date of filing of theapplication. This system was introduced in Japan
in 1970 concurrently with the request for
examination system, with a view to eliminating
the problem of the details of inventions describedin patent applications being kept unpublished foran extended period of time due to the delay in
examination, resulting in the duplicate researchand development carried out by other inventors.
More than 40 years have passed since theintroduction of the system of publication of
application. During this period, the time
consumed after the filing of a request for
examination of an application until the issuance ofthe first action (first action pendency) has been
reduced significantly, currently to 11 months, andit seems possible to further reduce the time after
the filing of an application until the establishmentof rights (total pendency) to 14 months.
Meanwhile, with the intellectual property systems
around the world becoming more multilateral dueto the rise of developing countries in the field ofintellectual property along with the globalization ofmarkets, the circumstances surrounding Japan andits application publication system have beenchanging dramatically.
Now it is time to reconsider the significanceof the system of publication of application fromthe perspective of what role this system shouldplay in the context of the Patent Act, the purposeof which is to contribute to the development ofindustry, so that Japanese companies will be able
to maintain their industrial competitiveness inthe face of severe competition on globalized
markets.
Looking at the recent situation from apractical viewpoint, some Japanese companies, as
their intellectual property strategy, have been
trying to maintain their competitiveness bytreating the technologies that they havedeveloped as trade secrets, rather than making
such technologies available to the public. It is also
pointed out that technical information held byJapanese companies is diffused via publications
issued under the system of publication of
application, due to which inventions devised bythese companies — the fruits of their investment
in research and development — are imitatedoutside Japan. If that should be the case, it would
be a problem that could lead to a huge loss ofnational interest. The first step we should take to
avoid this is to investigate and ascertain the actual
state of imitation by means of such technicalinformation diffused from Japan, and thereby
gather materials for discussing the significance ofthe system of publication of application.
On the other hand, the system of publicationof application is said to be effective in preventing
duplicate research and investment, securing theopportunity for third parties to submit(*) This is an English summary by Institute of Intellectual Property based on the FY2014 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
IIP Bulletin 2015 Vol.24● 8 ●observations, preventing submarine patents andso forth. Furthermore, seeing that othercountries publish patent applications 18 months
after the filing date, the existing system of
publication of application in Japan is held to beappropriate from the aspect of international
harmonization of systems.
Given such circumstances, this researchaims to prepare materials for reconsidering thesignificance of the existing system of publicationof application in Japan. To achieve this, weinvestigated the systems of publication of
application and related systems operated in othercounties and under international treaties as well as
the effects of publication of applications, whilegathering information on what Japanese companies
are actually concerned about in connection withthe diffusion of technical information via
publications of patent applications under thesystem of publication of application and how thissystem is utilized by users for strategic purposes.
2

Method of this research
In this research, we focused on the systemsof publication of application and related systems
operated in Japan, the United States, the United
Kingdom, Germany, France, China, and Korea,
and such systems operated under the European
Patent Convention (EPC) and the Patent
Cooperation Treaty (PCT), and looked into theinformation published through such systems inorder to classify these systems. In addition, wesent questionnaire sheets to the law firms in theselected countries to obtain information on the
background to the introduction and other detailsof the systems of their countries, and also
conducted a questionnaire survey targeting
Japanese users to ascertain their actual use andneeds of the systems. We compiled theinformation thus obtained and provided it to acommittee established with nine experts todiscuss the significance and other issues of thesystem of publication of application.

Ⅱ Outlinesofsystemsofpublication of application andvarious systems related thereto
in Japan and major countries
1

Japan
In Japan, the system of publication of
application was adopted through the partial
amendment to the Patent Act in 1970 (Article 64of the Patent Act1). This system was designed tomake the content of a patent application known tothe public when one year and six months (18months) have passed since the date of the filing of
the application or the priority date, irrespective ofwhether the application has entered theexamination process. It was introduced for the
purpose of eliminating the problem of the details
of inventions described in patent application being
kept unpublished for an extended period of time
due to the delay in examination, causing
companies to carry out activities in an uncertain
situation and forcing them to engage in duplicate
research and investment. Upon the introductionof the system of publication of application, therequest for examination system was also
introduced with the aim of promoting examination.
The period until the publication of an application
was set as 18 months from the date of the filing in
the first country, out of consideration to equal
treatment for patent applications claiming priority
and those without such priority claim. The
matters to be published are as listed in Article 64,
paragraph (2) of the Patent Act. As in othercountries selected for the research, request forearly publication system is available in Japan.
This system allows an application to be publishedat an earlier stage if the applicant so requests,
thereby enabling the application to be cited as
publicly known art and serve as the ground forrejecting the later application in the examination
process. It also enables applicants to obtain theright to claim compensation when their inventions
are used by others. As in other countries selected
for the research, in order to prevent an applicationfrom being published, the applicant needs towithdraw the application before the preparations
for the publication begin. The effects of publicationof application include providing applicants with
provisional protection for their right to claim
compensation, rejecting the later application
through the prior art effect, and securing theopportunity to submit a third party observation.
The publication is made available via the Internet.
These effects and method of the publication are
also in other countries selected for the research.
The earlier application based on which anotherapplication claims domestic priority is deemed tohave been withdrawn when one year and threemonths have passed since the date of the filing of
the earlier application and therefore it is not
published but is available for public inspection
upon request. There is no pre-examination search
report system.
2

● 9 ●

United States
The system of publication of application was

IIP Bulletin 2015 Vol.24

introduced through an amendment to the Patent
Act on November 29, 1999 (S.1948 Intellectual
Property and Communications Omnibus ReformAct of 1999), and has been applied to applications
filed on or after November 29, 2000. Under the
U.S. patent system before this legislation,
applications pending in the examination process
were not laid open to the public. This caused the
problem of duplicate research. Moreover, since
the term of a patent was 17 years from the date of
the issue of the patent, there was the prevalenceof submarine patents that were “concealed”
without being published or registered for an
extended period of time by delaying examination.
After the implementation of the TRIPS
Agreement in 1996, the U.S. patent law wasamended to designate the filing date as thestarting day for computation of the term of apatent. This amendment, in combination with therevision to the patent term, stopped theemergence of submarine patents that would havebeen valid for more than twenty years from thefiling date. The subsequent amendment to thepatent law in 1999, including the introduction of
the system of publication of application, further
reduced the possibility of submarine patents toemerge. However, the United States still has asystem which allows an application to be kept
unpublished at the request of the applicant if theapplication is filed only in the United States. The
earlier application based on which anotherapplication claims domestic priority is not
published but is available in the form of a copy ofthe file of the later application claiming priority, if
it is contained in such file.
The United States does not have a search
report system. It takes about one year and a half
after an application is filed until the examiner
begins the examination of the application.
Therefore, if the applicant abandons his
application before the examination starts, andsubmits a written declaration of abandonment anda request for refund of the search fee to theUnited States Patent and Trademark Office(USPTO), the applicant may obtain a refund. The
United States does not adopt the request for
examination system, and all applications filed go
through the examination.
3

United Kingdom
The system of publication of application was
introduced through revision of the Patent Act by
Art 16 of Act to establish a new law of patents
applicable to future patents and applications forpatents; to amend the law of patents applicable to

IIP Bulletin 2015 Vol.24

existing patents and applications for patents; togive effect to certain international conventions on
patents; and for connected purposes 1977 c37 29
July 1977, coming into force 1 June 1978, bringing
it in line with the EPC. Inventor may apply towaive his right to have his name mentioned as theinventor. It is possible to withdraw a request forearly publication, provided that the preparation
for publication of the application has not begun.
Approximately one month before publication, theUKIPO will issue a communication advising as toanestimatedpublication
date.
The
communication will also include the date on
which preparations for publication will becomplete (PPC date), which is usually a matter ofdays after the date of the communication. The UK
priority application from which anotherapplication claims the priority will be publishedby being made available in the UKIPO file of thepriority claiming application as soon as the latter
application is published. It can be accessed via the
web page mentioned above.
A search under section 17 Patents Act 1977
may be requested by the later of: the end of 12months beginning immediately after the earlier
one of the priority date and the filing date; or twomonths beginning immediately after the filing of
the application. If a search is not requested within
the prescribed period, the application will betreated as having been withdrawn. The purpose of
the search system is to attempt to locate all priorpublications that will be relevant to theassessment of novelty and inventive step of theapplication during substantive examination. The
search does not concern matters of prior use, andis restricted to descriptions of prior art inpublished documents. The search may be used by
the applicant to gauge the likelihood of success of
the application before proceeding with publicationand substantive examination. Request for
substantive examination system has been
introduced.
4

Germany
According to the 1967 Patent Amendment
Act (Gesetz zur Änderung des Patentgesetzes,
des Warenzeichengesetzes und weiterer Gesetze
v. 4. 9. 1967), which came into force on 1 October
1968, the possibility of public file inspection
safeguards the rights of third parties (i.e.
competitors) to be timely informed about
applications pending before the German Patent
and Trademark Office (GPTO). However, under
this system, an interested party had to conduct
file inspection so as to become aware of the● 10 ●

content of the application, and it was believed thatthe number of requests for file inspection would
increase significantly, so the GPTO started
publishing the application as originally filed in theform of “Offenlegungsschriften” for theapplications since 1 January 1980. Publication
after 18 months was seen as a good compromise
between applicant’s interests to be able towithdraw his application due to a lack of prospect
for obtaining appropriate protection, and the rightof third parties to be timely informed aboutpending applications. For applications claiming
priority the term had to be calculated based on
the priority date so as not to provide foreign
applicants with an advantage. For applications
claiming priority the term had to be calculated
based on the priority year so as not to provide
foreign applicants with an advantage. At the timeof introduction, there were strong efforts toharmonize patent law across Europe. Moreover,there were ongoing negotiations resulting in the
PCT which provided for mandatory publication
after 18 months. On a national level, there was ahuge backlog of applications at the GPTO becauseof an increase in the number of filings and anincrease in the prior art documents which had tobe assessed during examination of each individual
application. There was a problem of duplicate
developments by competitors due to delays in
examination. Priority application based on whichdomestic priority will not be published, thepriority application may, however, be accessed byfile inspection of the priority claiming application.
The request for search was introduced as apreliminary, cheaper and more economic way toassess the patentability and possibly also theeconomic impact of an application. However,separate search is not mandatory and examination
may be requested without previous search inwhich case the fee for examination will be higher.
5

FranceThe system of publication of application was
introduced through a revision of the Patent Act by
Art.17 Loi no. 68-1 du 2 janvier 1968 tendant àvaloriser l'activité inventive et à modifier lerégime des brevets d'invention coming into force
1 January 1969, harmonizing with introduction inother European countries. The publication of
application aims at (1) informing third parties ofthe emergence of a new patent right to eliminate
negative effects to industries by keeping
application unpublished, (2) enabling third parties
to raise observations as regards the novelty or
the inventive step of the application, which, if

relevant, will be taken into account by theexaminer when drawing up the definitive search
report, (3) making the patent application
enforceable vis-à-vis third parties. The question
has been debated as to whether an eighteenmonth period should be regarded as too long or
too short a time period. Withdrawal of a request
for early publication under L.612-21(1) is not
stipulated and not possible.
Applications which serve as the basis forclaiming domestic priority are systematicallypublished, even if said applications are rejected orwithdrawn before the term of technicalpreparation for publication. The only way to avoid
publishing in such a case is to withdraw the priorapplication, and to waive the priority right.
The publication of application takes place
along with the publication of a preliminary search
report, and therefore is of interest for theapplicant who can therefore have a better idea ofthe economic value of his invention, and for third
parties who observe actually invalid patent.
Search Report is drawn up for every
application which has received a filing date. If thesearch report fee is not paid within one month of
the filing date, the application will be rejected.
The search report procedure, which does notconsist of an actual examination of the application,
relates to drawing up of a document setting forth
information of the prior art susceptible tojeopardize the novelty and/or the inventive stepof the invention. The search report is of aparticular interest, for the applicant, as theresults of the search report, together with theobservations possibly raised by third parties, will
enable the applicant to assess the scope of theprotection he may benefit from and to makechanges if necessary to the claims initially filed
for the purpose of securing the validity of thepatent that will be granted, and for third parties,
who will be provided with information regarding
the patentability of the invention and who will
benefit from the possibility to raise observations
aiming at disputing the validity of the claims of
the application.
6

China
The system of publication of application was
introduced after the initial enactment of the
Patent Law 1984 (adopted at the Fourth Meetingof the Standing Committee of the Sixth National
People’s Congress on March 12, 1984; put into
effect by Order of the President of the People’s
Republic No. 11 on April 1, 1985). According to
Article 34 of the Patent Law 1984, the State● 11 ●IIP Bulletin 2015 Vol.24

Intellectual Property Office (SIPO) was
authorizedtopublishinventionpatentapplications at any time within the 18-month
period from the date of application. However,under this system, applicants were unable topredict when their applications would be
published, which could undermine their interestby preventing them from withdrawing theirapplications before publication. To solve thisproblem, the Patent Law 1992 reformed thissystem, and now applications are to be “publishedwithin 18 full months from the date of application.”
Some applicants may seek earlier publication of
their applications, and therefore the Patent Law
provides for the system of earlier publication at
the applicant’s request. A request for earlier
publication may be withdrawn, and if the request
is withdrawn, the application documents are
published according to the ordinary schedule. An
inventor may request SIPO not to publish her
name but may not withdraw such request anddemand that her name be published. The earlier
application based on which another application
claims domestic priority is deemed to have been
withdrawn as of the date of filing of the latter
application. Accordingly, if the earlier application
has not been published when the later application
is filed, the earlier application will be kept
unpublished and there is no way to inspect thecontent of such unpublished application.
There is no search report system. The
request for examination system is adopted.
7

Korea
The system of publication of application was
introduced under the Amended Patent Act ofDecember 31, 1980 (Act No. 3325; effective as of
September 1, 1981) as a reform measure for the
traditional examination principle. A request forearlier publication may be withdrawn. The earlier
application based on which another application
claims domestic priority is deemed to have been
withdrawn when one year and three months havepassed since the filing date of the earlier
application, and therefore it is not published. In
this case, only the applicant or her representative
may confirm the content of the earlier application
by obtaining its file, whereas no third party has
the chance to inspect such content.
There is no search report system. The
request for examination system is adopted.
8

EPC
System of publication of application was
introduced at the beginning of Convention on the

IIP Bulletin 2015 Vol.24

Grant of European Patents of 5 October 1973 andcoming into force on 7 October 1977. System forlaying open of application was referred to theexisting similar provisions in various countries
and in the PCT and is aiming at: prompt
information of the public about pending
applications; provisional protection for claimed
subject matter; appropriate term for existence ofolder rights which are unknown to the applicant;and possibility to obtain results on novelty forfirst fillings before publication. It might bepossible to withdraw a request for earlier
publication
providedthatthetechnical
preparations for publication have not beenconcluded. The applications based on whichpriority has been claimed are published provided
they are not actively withdrawn by the applicant
before publication.
The necessary search, in combination withdeferred examination, is a compromise between aregistration system and system which involves
automatic substantive examination. Based on the
search report, the applicant of a priority
application can assess the patentability before
expiry of the 12 month term for filing in foreigncountries. Firstly, it was considered to provide an
opinion on novelty which was to be issued by IIB(Institut International des Brevets) in The Hague.
The opinion was subject to a positive result of apreliminary examination concerning obvious
deficiencies and the payment of a fee. The term
“opinion on novelty” was later replaced by“search report”, it was decided to incorporate the
IIB into the EPO as the search division. Request
for substantive examination system has been
introduced.
9

PCT
The system of publication of application was
adopted when the PCT was first established onJune 19, 1970, and came into force on January 24,
1978. It is designed to fulfill the publication of
applications as required under the national law ofthe designated country by way of international
publication, and to achieve centralization ofpatent information. The PCT does not provide forthe prior art effect of published applications. It isconsidered to be possible to withdraw a request
for earlier publication provided that the technicalpreparation for international publication has notbeen completed. Since the PCT does not provide
for the withdrawal of an application based on
which another application claims priority, suchapplication which serves as the basis for claiming
priority is also published. Search reports are● 12 ●

established for all applications, and there is no
system for requesting search reports. Search
reports are prepared for the purpose of
discovering the prior art relevant to eachapplication, thereby reducing the duplicate
workload in prior art search at patent offices ofthe member countries.
As for a request for examination system
under the PCT, applicants may demand, but not
mandatorily,international
preliminary
examination
toobtainpreliminary
andnon-binding opinions on their applications.
10 Other countries
Focusing on when an application is published,
we investigated the countries which publish
applications at unique points in time. From amongthe 187 countries/treaties listed in the “Table ofOutlines of Industrial Property Laws in the World”(prepared by the JPO), we selected 91
countries/treaties which have the system of
publication of application as a population, andextracted and closely investigated eight countries
which publish applications at points in time otherthan upon the expiration of a period of 18 months
from the filing date or priority date. Among theeight selected countries, the period of time until
the publication of an application is clearlyprescribed in four countries: 12 months in
Azerbaijan; 19 months in Laos; 19 months in
Vietnam; and 18 months in New Zealand (under
an amended law effective as of September 13,2014). Such period is not stipulated in patent laws
in the remaining four countries, namely, Thailand,
Honduras, El Salvador, and Tonga.
11 Investigation on the discussion process
toward the introduction of the system of
publication of application
The system of publication of application was
introduced in 1970 in Japan. Before introduction,
the Industrial Property System Investigation
Team of the subcommittee of the Industrial
Property Council investigated and discussed thesystems operated in the Netherlands and othercountries.
During the period since before the 1950s
until the time of the introduction of the
publication system, most European countries had
published the content of the registered patents
upon the grant of the patents. It was assumed thatin the 1950s, a record-breaking number ofapplications would be filed, and as a result, thebacklog of unexamined applications would
increase and the time to wait for examination

would be extended. Given such assumption, it
was a concern that: applicants would have nomeans of protection until patents were granted;
third parties would face legal uncertainty due topending applications being kept secret for an
extended period of time; and from a policy
perspective, the resources used and investment
made by third parties in their research anddevelopment regarding the same subject mattersas those of the pending applications would end up
as losses. The necessity to cope with these
possible problems was discussed.
On January 1, 1964, the Netherlands put into
effect the amended Patent Act that aimed toreduce the backlog of patent applications. This
amendment introduced the deferred examination
system for the first time in the world, underwhich applications would be examined provided
that examination was requested within sevenyears from the filing date, and applications forwhich no such request was made would be
deemed to have been abandoned. On this occasion,
the country also introduced the publication
system in order to prevent the situation where
examination was not requested for many years
from the filing date and the content of applications
would be kept unpublished during such period.
The publication under the system of that time
was made by disclosing the name of the applicant,the title of the invention and other matters in a
publication when 18 months passed since thefiling date, and the patent specifications wereavailable for inspection at the patent office. In
addition, third parties were given the opportunity
to submit observations regarding publishedapplications.
In the legal amendment process, thesubcommittee of the Industrial Property Council
discussed various issues including the benefits
and harm of the system of publication of
application, requests from industry, details of thesystem, and appropriate time of publication, whilereferring to the situations in other countries
based on the results of the overseas investigation,
as well as a new system that would be proposed
for introduction, and compiled the outcome of the
discussion in a report.

Ⅲ Status of use of the system of
publication of application inJapan
We conducted a questionnaire survey
targeting Japanese companies, the main users of
the publication system, and investigated the● 13 ●IIP Bulletin 2015 Vol.24

status of their use of the publication system andpossible changes in their manner of using thesystem along with the speeding up of theexamination process. We targeted a total of 1,124
companies, consisting of 924 companies whichwere regular members of the Japan Intellectual
Property Association and 200 small andmedium-sized enterprises. We obtained valid
responses from 493 companies.
We asked the respondents about what
benefits they find in using the system of
publication of application from the standpoint ofapplicants. The tendency regarding the benefits
they cited was the same for both publications inJapan and publications abroad. Prevention of
acquisition of patents by competitors was themost frequently cited benefit, by 463 companies(93.9%) for publications in Japan and 424
companies (86.0%) for publications abroad. In thesecond place was the publicity effect of theirtechnologies.
We also asked the respondents about the
purpose of using the system of publication of
application from the standpoint of third parties.
The tendency regarding the purposes they cited
was also the same for both publications in Japanand abroad. “To identify applications that may
conflict with the company’s business if patents
are granted” was the most frequently cited
purpose, by 433 companies (87.7%) for
publications in Japan and 389 companies (78.9%)
for publications abroad.
In response to the question concerning themeasuresorarrangements
adoptedforapplications in fear of diffusion of their technicalinformation via publications of patent applications,the largest proportion of the respondents, 339
companies (68.8%), answered that they “fully
consider whether to disclose inventions in patentapplications or keep them as trade secrets,”
which suggests that they attach importance toconsideration prior to the filing of applications.
As for the registration of a patent prior to the
publication of the application, which is a possible
effect of the speeding up of the examination
process, 260 companies (52.7%) cited the“concern about the loss of the opportunity tosubmit observations before registration.”

Ⅳ Consideration on the system of
publication of application
1

Consideration on the significance of thesystem of publication of application
According to the questionnaire survey, it is

IIP Bulletin 2015 Vol.24

found that users recognize the system of
publication of application as playing a role inpreventing duplicate research and investment,
diffusing technical information, and providing
information concerning competitors’ rights.
It was also confirmed that the system of
publication of application is beneficial to users
due to the prior art effect, that is, an application
they file with the objective of carrying out
business more freely will function to prevent alater application from generating rights.
2

Consideration on the period from thefiling to the publicationThe
committee
members
exchanged
opinions regarding the 18-month period from thefiling date or priority date until the publication.
There was an opinion that if the publication ismade earlier, it would be favorable to those who
use the published information because they would
be able to access the information earlier, whereas
it would be unfavorable to applicants because
they would have less time for keeping theirinformation secret, and therefore balance should
be taken into consideration when designing thesystem.
Meanwhile, the Economic Partnership
Agreement between Japan and Malaysia that tookeffect in 2006 clearly stipulates that applications
will be published after the expiration of a periodof 18 months from the filing date, and thus it isJapan’s obligation under the EPA to maintain thisperiod. Furthermore, under the Japan-U.S.
Framework for a New Economic Partnership,
Japan requested the United States to publish
patent applications 18 months from the filing date,on which both countries reached an agreement. In
the process of reforming the patent system ofJapan, not only multilateral treaties but also suchbilateral agreements should be complied with, andhence, the current 18-month period until the
publication cannot be changed unless amendment
is made to such treaties and agreements.
Another opinion was that even if the period
until the publication of patent applications filed inJapan is changed, international applications under
the PCT will continue to be published 18 months
from the filing date unless the PCT is amended,
which gives rise to doubts about the merit ofmaking the time of publication of Japaneseapplications inconsistent with the time of
publication of international applications under the
PCT.

● 14 ●

3

Consideration from the perspective ofdiffusion of technology
The system of publication of application
makes the contents of applications filed in majorcountries, including the bibliographic information,
abstract and full text of the specification, available
in electronic form and accessible via the Internet.
Furthermore, the progress in machine translation
technology is increasing the accessibility of
publications written in foreign languages. The
concern about publications of applications being
used to file similar applications or imitate
inventions was pointed out in the past, but noneof the committee members expressed that suchconcern has an influence on Japanese industry.
According to the questionnaire survey, 64 (13.0%)of 493 companies expressed that they suffereddisadvantages due to intense competition
resulting from their own inventions, whichbecame available to others via publications, being
put into practice in competitors’ business orutilized in competitors’ research and development.
At the same time, there was an opinion to thecontrary: that promotion of competition throughdiffusion of technical information is beneficial tosociety as a whole.
There was also an opinion that the decision
to file a patent application is made at thediscretion of the applicant who seeks to obtainrights, and in this respect, the issue of diffusion oftechnology via the publication of an application
depends on the applicant’s choice on his own
responsibility between disclosing the invention ina patent application or keeping it secret, and it
can hardly be regarded as an institutional issue.
4Consideration from the perspective ofstrategic use of the system publicationof application
Users decide the timing for requestingexamination or adopt various strategies forprotecting their inventions in line with theexisting publication system. According to thequestionnaire survey, 339 (68.8%) of 493
companies responded that they “fully consider
whether to disclose inventions in patentapplications or keep them as trade secrets.” One
respondent expressed an opinion that it chooses
to keep inventions secret if they are by nature
unsuitable for patenting.
Furthermore, 38 companies (7.7%) responded
that they “file a request for examination
simultaneously with filing an application or at anyother early stage and obtain the examination result
before the application is published, so that an

application with less likelihood of patenting will
be kept unpublished,” in fear of the imitation of
their technologies through diffusion of technicalinformation via publication. Since the averagetime from the filing of a request for examination
to the issuance of the first action by the JPO has
been reduced to less than 11 months, it is now
possible to obtain the first action before thepublication and decide to withdraw the application
based on the examination result, which may offer
an additional choice to applicants.
As other strategic uses of the system of
publication of application, one respondent statedthat it withdraws an application before publicationand then files an application again in cases where
it cannot see the development trends after filingthe first application or where it finds the article
under development falling outside the scope ofclaims of the original Japanese application andtherefore attempts to obtain a broader scope ofrights covering such article under development.
Another respondent stated that if it becomes
necessary, before the publication of an application,
to obtain rights for inventions in the related
technical fields in view of the research anddevelopment trends, the respondent withdraws
such earlier application so that it would not becited as prior art, and files multiple patentapplications as necessary for protection of the
product as a whole.

Ⅴ Conclusion
As a result of the research, we found that theexisting system of publication of application isappropriate for the following reasons: (i) the
existing system plays an important role under thepatent system in publicizing technical informationand facilitating examination; (ii) maintaining theexisting system is Japan’s obligation underinternational treaties; (iii) the existing system isin harmony with application publication systems
operated for international applications under the
PCT and those operated in other countries; and(iv) the existing system ensures balance between
applicants and third parties. Seeing thatapplicants make strategic use of this system, weconsider that the system is accepted in industry.
In conclusion, the existing system should bemaintained.
(Senior Researcher: Takenobu URAZONO)
1● 15 ●

http://www.japaneselawtranslation.go.jp/law/detail/?ft=
1&re=01&dn=1&x=35&y=9&co=01&ia=03&ky=%
E7%89%B9%E8%A8%B1%E6%B3%95&page=24

IIP Bulletin 2015 Vol.24