5Multiple Protection of Inventions

From the perspective of helping front runners’ efforts to obtain multiple protection rights and achieving
international harmonization of systems, research studies were carried out on the relaxation of content
requirements for divisional applications (allowance of division of an invention into substantially identicalinventions), a scheme of exceptions to the lack of novelty of an invention (a grace period), and thecontinuation-in-part application system of the U.S.
Regarding the relaxation of content requirements for divisional applications, as a result of a review fromthe legal perspective and discussion on the possibility of handling the issue under the current divisional
application system or otherwise, it was found that multiple protection of an identical invention was possible to aconsiderable extent under the current system and that there seemed to be no major problems.
Regarding exceptions to the lack of novelty of an invention, only a few survey participants were in favor ofmodifying the framework for characterizing them as exceptions to the current system. Paying attention to thedevelopments in revision of US Patent Law and the reaction of Europe and from a perspective of system
harmonization, further discussion is necessary so that Japan can handle this issue at an appropriate time andwith an appropriate system.
Regarding the continuation-in-part application system of the U.S., there is a strong trend of opinion
against the introduction of such a system due to reasons including concern that the monitoring burden for third
parties will increase and the view that the current priority system is sufficient. As such, careful consideration isrequired.

Ⅰ Purpose of Research Study
The Working Group for Issues Related to the
Patent Strategic Plan of the Patent System
Subcommittee of the Intellectual Property Policy
Committee of the Industrial Structure Council(hereinafter referred to as the “Patent Strategy
WG”) discussed a review of the amendment
system and the divisional application system, andin October 2004, compiled a report entitled"Direction of the Review of the Amendment
System and the Divisional Application System."
Based on this report, in FY2004, the Institute ofIntellectual Property also analyzed and examined
the relaxation of restrictions regarding the time
limit and the contents under the divisional
application system and additionally discussed theintroduction in Japan of the continuation-in-partapplication system that was unique to the U.S.
and the US-style one-year grace period. It further
conducted a more concrete analysis and review,
from various perspectives, with regard to theperiod of response to the notification of reasons
for refusal and the relationship between thedivisional application system and the system ofappeal against the examiner's decision of refusal.
As a result, it has become evident that therelaxation of content restrictions for divisional
applications and the introduction to Japan of the

IIP Bulletin 2006

US-style grace period and continuation-in-partapplication system require further discussion.
Therefore, this study aims to deepen
discussion on these issues from a legal andpractical perspective and to examine the result ofsurveys conducted through questionnaires andinterviews of small- and medium-sized enterprises,
venture companies and universities.

Ⅱ DirectionofRevisionof
Divisional Application System
1

Relaxation of the time limit restrictions
for division under the divisional
application system

Under the current divisional application
system, the division of an application is allowed
only within the time limit during which thespecification, etc. may be amended (Article 44(1)of the Patent Law). However, an applicant needs
to have the opportunity to acquire rights
multilaterally by broadening or restricting claims
after taking into consideration the final decisionof the examiner (a decision to grant a patent or adecision of refusal) based on prior art search. In
the case of innovative inventions of front runners,
in particular, since it is not easy to obtain strong
rights that cannot be circumvented, it is highly● 38 ●

significant to give an opportunity to review claims
after a decision to grant a patent is issued. In
addition, in the case where an originallypatentable invention is rejected because of
improper claim wording due to the fact of it being
an innovative invention, it is highly significant togive an opportunity to modify the claim wording.
Therefore, in addition to the current period
during which dividing an application is allowed,
the filing of a new application (a divisional
application) should be permitted for a specified
period following an examiner’s final decision (adecision to grant a patent or a decision of refusal).
With respect to such a “specified period,”balancing the burden of monitoring by third
parties due to the relaxation of the restriction ontime limits for divisional applications and the timethat is needed for an applicant to examine resultsof the prior art search and an opinion or a decisionof an examiner, one suggestion is “within 30 daysof the date of transmittal of the examiner's
decision to grant a patent or reject it.”2

Handling of division of an identicalinvention(1) Handling of an identical invention under
the current divisional application system
Under the current divisional application
system, any divisional application that includes aninventionthatisidentical(including“substantially identical”) to the one claimed in aparent application is rejected under Article 39(2)of the Patent Law. Based on this provision, thePatent Strategy WG and a study report by theInstitute of Intellectual Property in FY2004
discussed the possibility to review the current
divisional system in which an application isrejected because the invention claimed thedivisional application is identical (including“substantially identical”) to the one claimed in
the parent (original) application and allow thedescription of claims with varied wording within
the scope that the inventions are substantially
identical. In that instance, considering consistency
with the so-called one right for one object rule andconcerns that harmful effects might be brought
about as a result of the assignment to different
persons of multiple rights deriving from adivisional application and its parent application thatclaim identical inventions, discussion was carriedout on the possibility of a system that allows
double patents for a divisional application and its
parent application. Consequently, it was proposedthat the coexistence of a divisional application

claiming an invention that is substantially
identical to the one claimed in the parent
application could be permitted on condition of“bundling” them under a system like a “terminal
disclaimer.”(2) Discussion from legal perspective
In order to be able to grant rights for both adivisional application and its parent applicationeven if they claim “identical” inventions, it isnecessary to sort out the consistency with the“one right for one object” rule and with theprohibition of double patenting. As a result,problems that might be caused by permitting
division of an invention into identical inventions
were reviewed from the legal perspective.
As a result of the study, it was generally
agreed that it was not necessarily legallyimpermissible to grant multiple rights bypermitting division of an invention into identicalinventions to the extent that certain conditions
such as not damaging the exclusivity of rights
were satisfied, and that for that purpose at least theassignment of rights relating to identical inventions
to different persons should be prohibited.
Furthermore, regarding the administrative
proceedings to grant multiple registrations forcompletely identical objects, it was generally
agreed that they could not be considered to beillegal administrative proceedings.
On the whole, they shared the view that in
the context of modifying the major principle of no
double patenting, considerable concrete necessity
to do so was indispensable in order to review thesystem.
(3) Possibilityofhandling
withinframework of the current divisional
application system
There is a need to describe claims
comprehensively using various kinds of claim
wording for a divisional application that falls
within the scope of an invention that is“substantially identical” to the one claimed in theparent application, which will result in obtaining
rights without missing parts by using the parent
application and the divisional application together,and to describe claims in the divisional application
using such expressions as those consistent withthe concrete expressions of specifications
defining technical standards after an examiner’s
decision on the parent application becomes final.
However, in the case where a divisional
application is filed by claiming an invention that is
identical (including “substantially identical”) to● 39 ●IIP Bulletin 2006

the one claimed in its parent application, if theapplicant withdraws the parent application ordeletes the claims that are pointed out by theexaminer, a reason for refusal based on Article 39of the Patent Law can be avoided. Therefore,
there seems to be considerable room under thecurrent patent system to obtain multiple andcomprehensive rights or to produce claims
corresponding to technical standards.
(4) Conclusion
Regarding a divisional application claiming an
invention that is identical to the one claimed in
the parent application, while there werearguments both for and against double patenting
for the divisional application and the parent
application, the study did not discover any caseshowing that the current Patent Law contained
major flaws with regard to the need for applicants
to divide an invention into identical inventions, orin other words, any actual case in which multiple
and comprehensive protection could be realized
only by permitting a divisional application for an
invention that is identical to the one claimed in
the parent application.
Therefore, there are less concrete andurgent needs at this stage to revise the system topermit double patenting for a divisional applicationand its parent application in the case where theseapplications claim identical inventions. Further, theissue of double patenting for a divisional
application and its parent application in the casewhere these applications claim identical inventions
and the definition of the term “identical” under
Article 39 of the Patent Law should be further
discussed, taking into account opinions submitted in
the Committee or in past discussion proceedings.
3

Reduction of procedural burden fordivisional applications(1) Method to reduce procedural burden fordivisional applications
In the Patent Strategy WG and a study reportof the Institute of Intellectual Property of FY2004,
it was pointed out that, since an increase in thenumber of divisional applications was anticipated
due to relaxation of the time limit restriction
under the divisional application system, it wasappropriate to take some measures for the
purpose of reducing the burden associated withdivisional applications and preventing abuse of
the system.
Consequently, in relaxing the time limit
restriction for filing a divisional application, any

IIP Bulletin 2006

concrete measures to reduce the procedural
burden should be also taken, such as (i) referring
to specifications and others of an original
application based on which a divisional application
is to be filed, and (ii) obligating an applicant to
explain that the divisional application is lawful.
(2) Handling of a divisional application
containing a new matter
Under the current system, a divisional
application that contains a new matter cannot
benefit from an earlier filing date. However, it has
been pointed out that legal stability or
predictability is prejudiced under this systembecause the filing date changes depending on theadequacy of the amendment or the consequenceof the invalidation proceedings.
Therefore, in light of international
harmonization of the system, a divisional
application containing a new matter should begiven an earlier filing date so that it can begrounds for refusal and for invalidation for later
applications.

Ⅲ

Scheme of Exceptions to Lackof Novelty of Invention (Grace
Period) under Japanese Patent
Law and the US ContinuationIn-Part Application System

1

Scheme of provisions on exceptions tolack of novelty (grace period) underJapanese Patent Law(1) Exceptions to lack of novelty of invention
under current Japanese Patent Law andthe grace period in the U.S.
In Japan, Article 30 of the Patent Law
restrictively lists specific disclosures that are nottaken into consideration when determining
novelty and other patentability requirements,
regarding such disclosures as “exceptions” tolack of novelty. On the other hand, the US Patent
Act does not list specific disclosures as“exceptions” to lack of novelty but instead
excludes any public disclosures made within a
one-year grace period from novelty determinationin principle.
However, in the U.S., the reform of the
Patent Law, including the shift from thefirst-to-invent principle to the first-inventor-to-fileprinciple, is being considered (H.R.2795) and abill may be introduced that establishes that thegrace period starts from the priority date, notfrom the filing date, on condition that Japan and● 40 ●

Europe adopt the US-style grace period.
(2) Scheme of provisions on exceptions tolack of novelty (grace period) desirable
to Japan(i) Members’ opinion
Regarding the activities that qualify for
exceptions to lack of novelty, the view was
expressed that they should reflect the fact thatmany internal presentations were made inuniversities and that improvement should bemade in order to make it easier to determine
whether or not relevant academic conferenceswere designated by the Commissioner of the
Patent Office. With respect to a grace period, it
was pointed out that a period of six months fromthe presentation to the filing would be sufficient,and that if longer, this would run counter to the
purpose of a patent system that granted rights incompensation for disclosure of inventions.
In addition, there were demands for
simplification of timing and procedures for
applying for exceptions to lack of novelty under
Article 30 of the current Patent Law.
(ii) Result of questionnaire survey
Opinions
weregatheredthroughaquestionnaire targeting members of the JapanIntellectual Property Association (including
members of Nippon Keidanren, the Japan
Electronics
andInformation
Technology
Industries Association, Japan Pharmaceutical
Manufacturers Association, and Japan Bioindustry
Association), intellectual property professionals
at universities, and members of the Japan Patent
Attorneys Association.
Most agreed to maintain the purpose of“exceptions to lack of novelty” under the current
Japanese system rather than to introduce the
US-style grace period. Regarding the activities
that qualify for such exceptions, while many said
that the requirement for the designation of ascientific body or an exhibition by the JPO
Commissioner should be abolished, few argued
that official gazettes and other references
describing applicants’ own inventions should bealso included in the exceptions.
With respect to the transitional measures
under the Patent Law Reform Bill, the opinion
was greatly expressed that international
harmonization of the system, rather than theadvantage of adopting the US-style grace period,
should be emphasized.
(iii) Result of interview survey of small- andmedium-sized enterprises and venturecompanies

A commonly-expressed comment was thatthese firms did not basically use Article 30 of the
Patent Law. They did not have such needs
because of the small size of the company or
because they were prepared to file applications
immediately.
Regarding the inclusion of official gazettes
disclosing applicants’ own inventions in the list of
exceptions to lack of novelty, many wereconcerned that it was advantageous to big
corporations and might be abused by people withknowledge of the Patent Law.
(3) Simplification of procedures for
submitting proof to apply for exceptions
to lack of novelty
Following the request by members of theCommittee to simplify the procedures for
submitting proof to apply for exceptions to lack ofnovelty (Article 30(4) of the Patent Law), thePatent System Subcommittee of the Industrial
Structure Council (from the 19th session to the23rd session) discussed the simplification ofsubmission procedures and reported that it wasappropriate to simplify the contents of therequired proof, which imposed heavy burdens on
applicants, to the extent that the probative valueof the proof could be maintained as required.
Based on this report, the Committee discussed
basic ideas about the proof submission procedureand prepared a basic policy regarding
simplification.
(4) Conclusion
Regarding the stance of Japan relating to thetransitional measures under the US Patent Law
Reform Bill, paying attention to developments in
the revision of the US Patent Law and thereaction of Europe and from the perspective ofsystem harmonization, the scheme of provisions
on exceptions to lack of novelty (a grace period)
should be further discussed so that Japan can deal
with this matter at the right time and with theright system.
2

Continuation-in-part application systemof the U.S.

(1) Continuation-in-part application systemof the U.S. and domestic priority system
in Japan
The continuation-in-part application systemof the U.S. (CIP system) is a system that allows
an applicant to file a new application adding a newmatter to the parent application. Matters● 41 ●IIP Bulletin 2006

disclosed in the parent application are treated ashaving been filed on the filing date of the parent
application and the new matter is treated ashaving been filed on the filing date of the new
application. In contrast, under the domestic
priority system in Japan, a new application adding
a new matter can be filed only within one year of
the filing date of the original application (Article
41 of the Patent Law), which differs in the filingtime limit from the CIP system that allows the
addition of a new matter while the parent
application is pending.
The starting date of the term of a patentright also differs: under the domestic priority
system in Japan, the term of a patent right is 20
years without exception from the filing date of a
new application, whereas under the CIP system,
it is 20 years without exception from the filingdate of the parent application.
(2) Evaluation
andconclusiononcontinuation-in-part application system
Both the questionnaire survey of company
users,
especiallybigcorporations,anduniversities, and the interview survey of small
and medium-sized enterprises show a strong
trend of opinion against the CIP application
system due to reasons including concern that themonitoring burden for third parties will increase
and the view that the current domestic priority
system is sufficient. The introduction of a CIP
application system should therefore be carefully
discussed, taking these factors into consideration.
(Senior Researcher: Masayuki ODE)IIP Bulletin 2006

● 42 ●