January 5, 2021
Use of Interview Examinations for Acquiring Better Patent Rights

MIYOSHI & MIYOSHI(Miyoshi International Patent Office)Vice Chairman: Shunichi Takahashi
In Japan, patent rights, design rights, and trademark rights can only be acquired by filingan application with the Japan Patent Office in the prescribed form and the application being
examined and approved by the examiner. Thus, a good or bad response at the examination stage
is a crossroads as to whether or not a right can be acquired, which is extremely important.
In order to facilitate communication with applicants and to conduct examinations
efficiently, the Japan Patent Office has been communicating with applicants by telephone andfacsimile etc., but currently a further step is being taken to employ interview examinations inwhich applicants meet directly with examiners.

There are three types of interview examinations:(1) an interview examination at the Japan Patent Office, (2) a business trip interview conductedby visiting the local area of the applicant, and (3) a teleconference meeting.

In the past, there

was only method (1), but method (2) has been established for the convenience of applicants inother regions, and method (3) has been established with the development of ICT (information andcommunications technology) in recent years. With regard to method (2) in particular, every year
for the past few years, under the banner of "Chizaino-Mikata (Traveling Japan Patent Office),"on-site interviews have been intensively conducted in multiple cities throughout the country,including metropolitan areas such as the Osaka and Nagoya areas, together with seminars on
intellectual property.

When such seminars are held in metropolitan areas, more than 100

interview examinations are often held.
We believe that interview examinations have the following advantages over theexaminations conducted only by exchanging documents with examiners.
(A) The examiner's argument can be accurately grasped, and accurate counterpoints canbe found. Thus, patent rights that are as broad as possible can be acquired at an early stage
without unnecessary restrictions.
(B) If you find it difficult to formulate counterarguments, you may be suggested a
direction for acquiring a right through exchanging views with the examiner, whereby there is ahigh possibility that a right will be acquired.
In the examination, the examiner often gives a notice of reasons for refusal to the effectthat a right is not to be granted for the content of the application, and in reality, it is unlikely thata right will be granted without incident. When a notice of reasons for refusal is given, it isnecessary to present a counterargument in a skillful manner to convince the examiner, and if thiscounterargument is not made properly, a right cannot be acquired, or only a narrow right can beacquired due to unnecessary restrictions. In order to prevent this, the above advantage (A) iseffective.

There are also frequent cases in which it is difficult to present a counterargument fora variety of reasons, and it is particularly difficult to present a counterargument when dealing with
important cases or when the acquisition of a right is not guaranteed.

In such cases, the above

advantage (B) is effective from the viewpoint of seeking clues to a counterargument for theacquisition of a right while taking into consideration the examiner's views.
However, examiners have a large number of cases at all times, and in order to ensure
fairness, in principle, they seem to conduct one interview for each case.

Accordingly, it isdesirable to effectively utilize the interview opportunity at an appropriate timing.
This article is based on my column which appeared in the July 15, 2020 issue of Keizai
Sangyo Shinpo, and has been revised and edited.
End.