A Guide to Japan’s Patent System 1

OFFICE OF TECHNOLOGY POLICY

Mindy L. Kotler

Japan Information Access Project

and

Gary W. Hamilton, Esq.

Akin, Gump, Strauss, Hauer & Feld

for

U.S. Department of Commerce

Office of Technology Policy

Asia–Pacific Technology Program

Phyllis Genther Yoshida

Project Director

November 1995

A GUIDE TO JAPAN’S PATENT SYSTEM
2 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

This document was funded by grants from the Department of Commerce, Asia-Pacific Technology Program and the University of New

Mexico, Center for the Study of Japanese Industry and Management of

Technology to the Japan Information Access Project (1706 R Street, N.W.,

Washington, D.C. 20009, telephone (202) 332-5224, fax (202) 332-6841, Email access@japanpro.unm.edu).

The practices as represented in this paper as of June 1995 are those that

exist under the present laws of Japan and the United States. Recent

agreements which have not yet been enacted into law may result in

significant changes in the near future.

The United States Government, any person acting on behalf of the United

States Government, the Japan Information Access Project, or the editors

contributing to this publication do not assume any liability resulting from

the use of the information contained in this document. This guide does

not constitute legal advice. Only a lawyer can give such advice.

Department of Commerce Supervising Editor, Phyllis Genther Yoshida

Executive Editor, Mindy L. Kotler

Managing Editor, Susan M. Lusk

Research Editor, Miho Hasuo

Assistant Editor, Claude Cavender

Legal Issues Editor, Gary Hamilton, Esq., Akin, Gump, Strauss, Hauer

& Feld

Contributing authors, Carl Kay (Japanese Language Services), Jeffrey

Forman (IBM), Christopher Chalsen (Morgan & Finnegan), and Steven

Johnston

©No part of this publication can be reproduced in any form without the

permission of the Japan Information Access Project and any of the contributing authors. ISBN 1-881-853-04-7
A Guide to Japan’s Patent System 3

OFFICE OF TECHNOLOGY POLICY

TABLE OF CONTENTS

PAGE

FOREWORD ............................................................................................ 5

PREFACE ................................................................................................. 7

ACKNOWLEDGMENTS ............................................................................. 9

I. PATENTS AND INTELLECTUAL PROPERTY .............................................. 11

Intellectual Property .................................................................................. 11

What Is a Patent? ........................................................................................ 11

The Function of a Patent System ............................................................. 11

Why Patents Are Important to the United States.................................. 13

Why Be Concerned with Japanese Patents? .......................................... 14

International Agreements Affecting Japanese Patents ......................... 14

II. CHARACTERISTICS OF JAPANESE PATENT DOCUMENTS ......................... 19

Types of Japanese Patent Documents ..................................................... 20

Layout of Japanese Patent Documents ................................................... 22

Identification of Key INIDs ...................................................................... 22

Bibliography ............................................................................................... 23

III. DIFFERENCES BETWEEN THE U.S. AND JAPANESE PATENT SYSTEMS ... 25

Patent Systems Compared ........................................................................ 25

Patent Practices and Procedures .............................................................. 31

Patent Enforcement.................................................................................... 33

Recommendations ..................................................................................... 35

Bibliography ............................................................................................... 39

IV. DIFFICULTIES IN WORKING WITH THE JAPANESE PATENT SYSTEM ....... 41

Time .............................................................................................................. 41

Translation ................................................................................................... 42

Patent Flooding .......................................................................................... 42

Opposition .................................................................................................. 43

Cost ............................................................................................................... 43

V. COMMISSIONING AND EVALUATING A PATENT TRANSLATION ............... 49

VI. SEARCHING AND RETRIEVING JAPANESE PATENT INFORMATION ......... 55

Why Searching Japanese Patents Is Important ...................................... 55

Characteristics of a Japanese Patent ........................................................ 55

Print Sources of Information for Japanese Patents ............................... 55

Databases for Japanese Patent Information ........................................... 57

A GUIDE TO JAPAN’S PATENT SYSTEM
4 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

CD-ROM ...................................................................................................... 64

Internet ........................................................................................................ 67

Search Strategies......................................................................................... 71

APPENDIX A. EXAMPLES OF KOKAI...................................................... 73

APPENDIX B. EXAMPLES OF KOKOKU ................................................... 89

APPENDIX C. LOCATING A TRANSLATOR AND TRANSLATIONS........... 103

APPENDIX D. SEARCH EXAMPLES—KEYWORD SEARCH FOR

JAPANESE INVENTIONS IN DERWENT’S WORLD PATENTS INDEX ........ 117

APPENDIX E. DIRECTORY OF JAPANESE PATENT-RELATED

INFORMATION .................................................................................... 151
A Guide to Japan’s Patent System 5

OFFICE OF TECHNOLOGY POLICY

FOREWORD

With the globalization of research and development, the collection

and analysis of foreign scientific and technical (S & T) information

have taken on added importance in the strategies of companies. Corporations must carefully weigh available information to determine the real

costs and benefits of international scientific and technical cooperation.

In recent decades, Japan has emerged as a technological superpower, and

is now the leading generator of patents worldwide. This is important

since patents often figure prominently in U.S.-Japan corporate licensing

agreements and technical alliances. As Japan continues to expand its basic

research capability and open its R&D system to international participation, the importance to the United States of a better and more detailed

understanding of the Japanese patent system is likely to increase.

Since 1987, the Office of Technology Policy’s Asia-Pacific Technology

Program has helped U.S. companies and researchers leverage Japanese

science and technology through the publication of technical assessments

and studies, and its many other activities. This Guide to Japan’s Patent

System continues this tradition and discusses:

■ Characteristics of Japanese Patent Documents

■ Differences Between the U.S. and Japanese Patent Systems

■ Difficulties in Working with the Japanese Patent System

■ Search, Retrieval and Translation Strategies

■ Relevant Organizations and Information Sources

We hope that this Guide to Japan’s Patent System will provide you with the

information needed to make the best possible use of Japan’s expanding

S&T information.

Graham R. Mitchell

Assistant Secretary of Commerce

for Technology Policy
A Guide to Japan’s Patent System 7

OFFICE OF TECHNOLOGY POLICY

Japan Information Access Project

June 1995

PREFACE

This Guide to Japan’s Patent System is meant to be an introduction to

understanding the issues and participants in Japan’s patent process. It

is an overview of the differences between Japanese patent practices and

those in the West and some of the challenges in seeking patent protection

in Japan. The resources outlined in this Guide will help you continue your

research and point you to experts that can answer your specific questions

about Japanese patents. The Guide is not a legal text. Nothing can substitute for a good patent attorney.

Patents are at the heart of the U.S.-Japan technology relationship. These

technical documents provide more than legal protection for innovation.

They give insight into technological developments, predict scientific

breakthroughs, and show the effectiveness of government policies. Leaving aside the issue of Japanese inventiveness, patent information supplies

fascinating competitive data on both technology and industry. As the past

decade of trade disputes shows, serious scientists and corporate managers ignore Japanese invention and patenting at a considerable risk. It is

hoped that this Guide will alert readers to the necessity of tracking Japanese patenting strategies and pursuing an active campaign to protect

their own intellectual property.

Gathering information on Japan is demanding, especially on sensitive

industrial and scientific developments. You must take a Japanese approach in your research on Japan: never be satisfied with one answer or

one source. Patents are an important part of a successful information

gathering program on Japan. The main objective of this Guide is to develop the reader’s critical judgment about information from and about

Japan.
A Guide to Japan’s Patent System 9

OFFICE OF TECHNOLOGY POLICY

ACKNOWLEDGMENTS

This book is the result of papers presented at a panel, Acquiring Intellectual Property Information, organized by Mindy L. Kotler of the Japan

Information Access Project for the Fourth Annual JICST/NTIS conference

on Japanese Scientific & Technical Information held in Boston, Massachusetts, July 14-15, 1994. The panel participants were Gary W. Hamilton of

Akin, Gump, Strauss, Hauer & Feld, Mr. Jeffrey L. Forman of IBM, Mr.

Carl Kay of Japanese Language Services, Mr. Alan Engel of ISTA, Inc., and

translator Mr. Steven W. Johnston. Without their hard work and excellent

papers this document would not have been possible.

The staff of the Japan Information Access Project owe the following

people and organizations a great deal of thanks for their help in preparing

this report on the Japanese patent system. In the U.S. government, we

hold a special debt of gratitude to Dr. Phyllis Genther Yoshida of the

Department of Commerce’s Asia-Pacific Technology Program, who

helped see this project come to fruition. Without her support and guidance this book would not have been possible.

At the United States Patent & Trademark Office, we want to thank Ms.

Kathleen Dell’Orto, Chief of the Foreign Documents Division. At the

Library of Congress, Far Eastern Law Division, Mr. Takeo Nishioka was

especially kind and helpful. Mr. Yoichiro Yamaguchi of Beveridge,

DeGrandi, Weilacher & Young also gave generously of his time and

advice.

Others who have contributed their support and advice include Mr. Christopher Chalsen of Morgan & Finnegan, Ms. Setsuko Iizawa of Armstrong,

Westerman, Hattori, McLeland & Naughton, Mr. Takaharu Nakashima of

MicroPatent, Mr. John Lindgren of Texas Instruments, Mr. Erwin F.

Berrier, Jr., of General Electric, Mr. Herbert Wamsley of IPO, and Mr.

Daniel Scheeler of Sasakawa Peace Foundation Library.

The generous assistance and contributions of patent documents by

Derwent Information, Ltd., were essential in helping make this book

possible. The efforts of Ms. Mary Iida, of Derwent, on our behalf deserve

singular mention.

In Japan, we want to especially thank Mr. Ryosuke Kami of the Japan

Intellectual Property Association and Mr. Masaharu Ozawa of the Federation of the Patent Information Suppliers, who patiently and kindly fielded

our myriad questions.
10 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

In addition, we would like to thank Mr. Wally Lopez, director of the

University of New Mexico Center for the Study of Japanese Industry and

Technology Management for the Center’s additional support for the

research needed to complete this book.

Mindy L. Kotler

Director, Japan Information Access Project

September 15, 1995
A Guide to Japan’s Patent System 11

OFFICE OF TECHNOLOGY POLICY

I. PATENTS AND INTELLECTUAL PROPERTY

Intellectual Property

I

ntellectual property (IP) is the broad definition for intangible assets

 owned or claimed by individuals, corporations, or other entities that

are the product of innovation and knowledge. Intellectual property rights

(IPR) are the legal rights that are provided by the various forms of intellectual property, including patents, copyrights, trademarks, mask works,

industrial designs, and trade secrets. The World Intellectual Property

Organization (WIPO) defines intellectual property as:

the rights relating to literary, artistic and scientific works; performances of

performing artists, phonograms, and broadcasts; inventions in all fields of

human endeavor, scientific discoveries; industrial designs; trademarks,

service marks and commercial names and designations; protection against

unfair competition; and all other rights resulting from intellectual activity

in the industrial, scientific, literary, or artistic fields.

The United States is one of the 153 member countries of WIPO, which is

an agency of the United Nations (UN).

What Is a Patent?

A patent is a legal right granted for a limited period of time by a national

government or an international intergovernmental authority to individual

inventors or applicants so that they may profit from their inventive labor.

Patents can protect industrial and technical innovations.

A U.S. patent grants its owner the right to exclude others from making,

using, or selling the claimed invention in the United States. Inventions

covered by patents typically include products as well as processes for

making or using new or existing products.

The Function of a Patent System

A patent system fulfills two roles. It provides legal protection for inventions while, at the same time, it ensures that knowledge of those inventions is available to the public.

A GUIDE TO JAPAN’S PATENT SYSTEM
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United States

In the United States, patent rights are protected by statutes authorized by

the Constitution, Article I Section 8, that states

The Congress shall have the Power...To promote the Progress of Science and

useful Arts, by securing for limited Times to Authors and Inventors the

exclusive Right to their respective Writings and Discoveries.

The legal framework established by the above quoted section of the

Constitution emphasizes the rights of the individual inventor. The U.S.

patent statute is contained in Title 35 of the United States Code and is

interpreted and applied by the federal courts. The U.S. Patent Act of 1952

is a codification of common law, judicial precedent, and statute going back to

1790. The patent statute has been revised substantially on several occasions

since it was created in 1790, the most recent of which occurred in 1952.

The U.S. Patent and Trademark Office (USPTO) administers the examination and granting of patent rights in the United States. The USPTO is a

largely self-sustaining agency under the jurisdiction of the Department of

Commerce. The Commissioner is nominated by the President and confirmed by the U.S. Senate.

Japan

In Japan, patent rights are protected by the Patent Act of 1959, which has

been frequently amended. Japanese patent law, first codified in 1895, was

patterned after the German [Prussian] Code of Civil Procedure, but

borrowed aspects from the French Civil Procedure. Although judicial

precedent is considered, statutory law prevails. Administrative guidance

and discretion influence decisions.

The Japanese Patent Office (JPO) administers the examination and granting of patent rights in Japan. The JPO is an agency of the Ministry of

International Trade and Industry (MITI) and is under the direct supervision of both MITI’s Machinery and Information Industries and Trade

Policy Bureaus. The Patent Commissioner is a senior, career MITI official

appointed by the MITI Minister. After a two- to three-year term he usually retires to a position as an adviser to private industry.

The U.S. Patent Act of

1952 is a codification

of common law, judicial

precedent, and statute

going back to 1790.
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OFFICE OF TECHNOLOGY POLICY

Why Patents Are Important to the United States

There are economic and political reasons for the importance of patents.

Patent protection encourages domestic innovation, helps determine

corporate strategies, and provides access to international scientific and

technological information. Ownership of patent rights can control markets, regulate the pace of technological progress, and generate income.

In 1993, the United States earned over $20 billion from international

technology licensing. At the same time, the trade deficit in manufactured

goods was over $100 billion, over half of which was from Japan. According to a 1988 U.S. International Trade Commission Report, international

theft of intellectual property reportedly cost American companies nearly

$24 billion annually (USITC Publication 2065, February 1988).

Since the 1980s, the pace of technological change, amendments to U.S.

patent law, and more aggressive methods for enforcement of patent

infringement both in the United States and abroad have helped make

patents an important legal and competitive consideration for American

companies. In 1982, Congress created the U.S. Court of Appeals for the

Federal Circuit (CAFC) in Washington, D.C., to include a focus on patentrelated cases. Decisions of the lower District Courts in cases involving

patents can be appealed directly to the CAFC.

In addition, with the 1988 Omnibus Trade Act, Congress has worked to

strengthen patent infringement enforcement outside of the United States.

This legislation revised Article 337 of the United States Tariff Act of 1930;

expanded the enforcement of process patents in the Patent Act, and

instituted a “Special” Section 301 list that identifies countries not having

adequate and effective protection of intellectual property rights that could

subject them to trade sanctions by the United States. These changes allow

the United States to forbid the import of goods solely on the basis of

patent infringement, extend effective protection of process patents internationally, and generally broaden executive branch powers to enforce

intellectual property rights.

Suits concerning patents filed in U.S. courts have more than doubled

since 1980. Japanese companies have been particularly affected by

stepped up enforcement and aggressive patent protection policies of the

U.S. government and American companies where substantial damages for

patent infringement were awarded against Japanese-owned companies.

Landmark cases include Honeywell Inc. v. Minolta Camera Co. Ltd. and

Sanyo v. Texas Instruments. From 1989 through 1995, Japan has been

According to a 1988 U.S.

International Trade

Commission Report,

international theft of

intellectual property

reportedly cost American

companies nearly $24

billion annually.
14 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

included on the Special 301 “Watch List” as having inadequate intellectual property protection. Japanese companies and the Japanese press have

termed active American interest in patent protection a “patent war.”

Why Be Concerned with Japanese Patents?

American companies should become familiar with the Japanese patent

system both to protect their innovative technologies and processes and

to track and understand their Japanese competitors. Knowledge of the

Japanese patent system can be used as a defensive, offensive, and strategic asset. The differences between the patent enforcement systems of the

United States and Japan can cause difficulties for collaboration and hinder

successful market access.

Japanese patent activities reflect the fact that Japan has become an important economic and technological power and competitor. Japan files five

times as many patent applications as any other country. Over 20 percent

of the patents filed in the U.S. and Europe are from Japan. The majority of

the top 10 corporate patent recipients in the United States have been from

Japan since the mid-1980s. Over the past decade, Japanese inventors have

filed close to 400,000 applications annually in Japan. In the 1970s, this

figure was closer to 100,000 applications per year. Only 20 percent of

Japanese patents applications filed in Japan are also filed in other countries. According to a 1992 survey of Intellectual Property Rights by the

Nomura Research Institute, 90 percent of litigation in the electronics

industry and 100 percent in the precision instruments industry concerned

IPR. Over 50 percent of the Japanese businesses surveyed anticipated that

IPR litigation would increase.

International Agreements Affecting Japanese Patents

Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT), administered by the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, provides the

procedural framework for filing a patent application in Japan (and other

countries) that may relate to a corresponding U.S. patent application.

Using a single international application filed in the United States, inventors can now initiate the process for patent protection in some 78 member

countries, including Canada, Japan, Russia, and most of the European

Union. The application may be filed by residents or nationals of any

country that is a party to the treaty.

Over 20 percent of the

patents filed in the U.S.

and Europe are from

Japan. The majority of

the top 10 corporate

patent recipients in the

United States have been

from Japan since the mid1980s.
A Guide to Japan’s Patent System 15

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The international application is then subjected to an international search,

carried out by one of the major patent offices. The applicant receives an

international search report, which lists the patent documents that might

affect the patentability of the invention. At this point, the applicant may

decide to withdraw the application if the report makes it clear that patents are unlikely to be granted in the countries desired.

Twenty months after the international application is filed (or, if an earlier

application in another country has priority, 20 months after the filing date

of the earlier application), the applicant must furnish a translation of the

application to each designated national office in its official language and

pay the usual fees to that office.

This period is extended by a further 10 months if the applicant asks for an

“international preliminary examination report.” This report, prepared by

one of the major patent offices, gives a preliminary, non-binding opinion

on the patentability of the claimed invention. The applicant is entitled to

amend the international application during the international preliminary

examination.

The development of the PCT system, according to WIPO statistics, is

shown by the fact that in 1979, 2,625 international applications were

received by the PCT’s International Bureau, while the corresponding

numbers were 28,577 in 1993 and 34,104 in 1994. Details concerning the

PCT can be obtained by consulting the PCT Applicant’s Guide, published

by the WIPO in English and French, and the PCT Newsletter, published by

WIPO in English.

Table 1, prepared by the AIPPI of Japan, provides a comparison of the

PCT format with those in Japan, the United States, and Europe.

GATT TRIPs

An agreement to establish minimum international standards to protect

and enforce intellectual property rights is part of the Uruguay Round

GATT (General Agreement on Tariffs and Trade) agreement that was

signed on April 15, 1994.

The GATT is a multilateral trade organization promoting the lowering of

worldwide trade barriers and freer trade among member countries. The

agreement concerning intellectual property is outlined in the Trade Related

Aspects of Intellectual Property Rights (TRIPs) section of the Uruguay
16 A Guide to Japan’s Patent System

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Table 1. Comparison of Patent Specifications for Japan, PCT, USA, and EPC

Items and Order

Japan

(1) Title of the Invention

(2) Claim(s)

(3) Description of the

Invention

(a) Field of Industrial

Application

(b) Prior Art

(c) Problems to Be

Solved by the

Invention

(d) Means to Solve the

Problems

(e) Work or Operation

of the Invention

(f) Working Examples

(g) Effects of the Invention

(4) Brief Explanation of the

Drawings (if any)

(5) Abstract

PCT

(1) Title of the Invention

(2) Technical Field

(3) Background Art

(4) Disclosure of the

Invention

(5) Brief Description of

Drawings

(6) Best Mode for Carrying

Out the Invention

(7) Industrial Applicability

(8) Claim(s)

(9) Abstract

USA

(1) Title of the Invention

(2) Cross-References to

Related Applications

(if any)

(3) Reference to a “Microfiche Appendix” (if any)

(4) Background of the

Invention

(a) Field of the

Invention

(b) Description of the

Prior Art

(5) Brief Summary of the

Invention

(6) Brief Description of

the Drawings

(7) Detailed Description

(8) Claim or Claims

(9) Abstract of the

Disclosure

EPC

(1) Title of the Invention

(2) Technical Field to Which

the Invention Belongs

(3) Related Background Art

(4) Disclosure of the

Invention

(5) Brief Description of the

Drawings

(6) Description of Special

Embodiment

(7) Industrial Applicability

(8) Claim(s)

(9) Abstract

Round of the GATT. The primary focus of the GATT TRIPs accord is to

compel developing countries to strengthen their IPR protection.

Japan has made a number of changes in its patent regime to comply with

the TRIPs agreement. These include allowing for limited discovery

procedures in patent infringement cases and granting patent protection

for 20 years from the filing date. The U.S. also has to comply with the

latter requirement as well as prohibit discrimination in awarding patents

based on where inventions were made.

[N.B.: On January 1, 1995, the GATT became the World Trade Organization (WTO).]

Patent Harmonization

Since 1980, the WIPO has undertaken a lengthy discussion of international patent law harmonization. The purpose of the harmonization effort

is to develop a treaty that will simplify and expedite the process of obtaining patent protection around the world and to strengthen protection

once granted. An important focus of harmonization is to have worldwide
A Guide to Japan’s Patent System 17

OFFICE OF TECHNOLOGY POLICY

acceptance of a first-to-file system where patents are awarded to an

inventor who first files an application, thereby avoiding the need to have

a mechanism to resolve disputes in priority of inventorship.

The proposed treaty calls for patent procedures that generally are closest

to existing procedures used by the European Patent Office. Unlike the

GATT TRIPs negotiations, WIPO’s harmonization discussions are viewed

primarily as a forum to resolve differences among the patent systems of

the developed countries. These negotiations have been postponed indefinitely at the request of the United States.

U.S.-Japan Framework Discussions

Intellectual property issues have been an integral part of the bilateral

economic discussions between the U.S. and Japan embodied in the United

States-Japan Framework for a New Economic Partnership, better known

as the “Framework Negotiations.” The Framework, initiated on July 10,

1993, represents a comprehensive approach to macroeconomic, sectoral,

and structural issues and is aimed at readdressing Japan’s fundamental

economic imbalances as evidenced by its persistent large trade and

current account surpluses. Under the Framework, Japan committed to

achieving “tangible progress” toward market access and the use of objective criteria to assess implementation of the agreement.

During 1994, two bilateral agreements were concluded under the Framework working group on IPR. The first agreement, signed on January 20,

1994, addressed a number of outstanding issues. They included permission to file patent applications in Japan in English, correction of translation errors after patent issuance, and changes in the U.S. patent term to

20 years from the filing date instead of 17 years from grant date.

On August 16, 1994, a second agreement was signed with specific provisions to revise the Japanese patent “opposition” system. Under this

agreement, the Japanese Patent Office agreed to: by April 1, 1995, introduce legislation to end the practice of allowing third parties to oppose a

competitor’s patent before it is granted; by January 1, 1996, put in place

an accelerated patent examination procedure that will enable applicants

to obtain disposition of their patent applications within 36 months, upon

request; and by July 1, 1995, end the practice of awarding dependent

patent compulsory licenses, which can force patent holders to license the

use of their technology to competitors, thus limiting their exclusive rights

in their inventions. The agreement also requires the USPTO to publish

pending patent applications 18 months after filing, beginning with applications filed after January 1, 1996, and expand reexamination
18 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

proceedings to allow greater participation by third parties. Legislation

was introduced in 1995 to publish patent applications and to expand

reexaminations.

Trilateral Cooperation

Since 1983, the USPTO, the EPO, and the JPO have had a program of

cooperation aimed at “solving common problems related to industrial

property administration and the protection of industrial property rights

and promoting the dissemination of advanced technology through the

flow of information.” There is an annual October meeting and a publicly

available report of comparative statistics from the three patent offices

(Trilateral Statistical Report).

The trilateral cooperation program has concentrated on the following

areas:

■ Exchange of data, products, statistics, and staff in an effort to

work more closely together and find common solutions to the

problems posed by an increase in the number of patent

applications.

■ Harmonization of policy on patent information dissemination

with a view to building up joint databases accessible to the public

in the three regions.

■ Study of patent practice at the three Offices aimed at achieving

better understanding and working toward greater compatibility

of procedures.
A Guide to Japan’s Patent System 19

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II. CHARACTERISTICS OF JAPANESE PATENT DOCUMENTS

J

apanese patent documents are registered, dated, and given a new serial

number at every stage of the patent application process. Different years

can have the same serial numbers, albeit the first two digits of the number

represent the year. The year is determined by the Emperor’s reign and

there have been four imperial regimes since the turn of the century. Older

documents have their serial numbers in Chinese numerals. Different

Western database producers and vendors, furthermore, often assign their

own codes. All this can create some confusion for the uninitiated researcher of Japanese patents.

Under the current Japanese patent regime, there are also different designations for each stage of the patent application process, each with its own

filing number. Some of the different numbered stages are as follows:

1. the unexamined, laid-open (published) patent application (kokai

tokkyo koho published, given a kokai number)

2. patent application that is in the examination process

3. the examined, approved patent application published for

opposition, (kokoku, tokkyo koho published, given a kokoku number)

4. unopposed approved patent

5. the official, post-opposition patent grant (given a tokkyo number).

Starting on January 1, 1996, the pre-grant opposition system will be

eliminated; therefore, the kokoku numbers will no longer be issued and the

kokoku designation will be eliminated.

Until recently, with the advent of electronic filing (and foreign pressure),

paper copies were on B5 paper, making them difficult to read and reproduce. The format of Japanese patent filings was changed slightly in 1993

to make electronic filing and CD-ROM production easier. As of January

1993, Japanese patent documents conform to the recommended WIPO

standard paper size (A4). In addition, the text in the new format consists

of large, clearly legible characters in a typeface that lends itself to clear

reproduction. Standardization and clear text now allow even the searcher

with no knowledge of Japanese to identify relevant data elements by

using standard INID (international identification) codes established by

the WIPO for identification of bibliographic data.

Standardization and

clear text now allow even

the searcher with no

knowledge of Japanese to

identify relevant data

elements by using

standard INID

(international

identification) codes

established by the WIPO

for identification of

bibliographic data.
20 A Guide to Japan’s Patent System

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The following is an introduction to the key elements of Japanese patent

documents. Reading Japanese patent documents is a complex art. The

casual researcher can often be confused and misled by the documents’

format as well as the various numbers assigned to the same application as

it goes through the examining process.

Types of Japanese Patent Documents

Patent (Tokkyo)—A granted and registered patent.

Utility Model (Jitsuyo shin-an)—A minor improvement or modification

of prior art. As of January 1, 1994, these documents will only be examined

if disputed. Until the 1980s, there were more applications for utility

models than for patents.

Status

As mentioned above, there are many designations, each with its own

filing number, for Japanese patent applications. The two general categories most discussed by Western searchers are:

Unexamined (Kokai)—A patent application that has been laid open for

public inspection 18 months after it was filed. Applicants have up to

seven years to request examination.

Examined (Kokoku)—An approved patent application.

Script

On a typical Japanese patent document, you will find six different types

of script.

1. Kanji: Chinese characters or ideograms

2. Hiragana: A phonetic syllabary consisting of 46 basic symbols

3. Katakana: A phonetic syllabary that mirrors hiragana that is used

for the transliteration of foreign words and animal sounds

4. Romaji: How the Western alphabet is referred to in Japanese

5. Arabic Numerals: Older documents use Chinese numeric

characters
A Guide to Japan’s Patent System 21

OFFICE OF TECHNOLOGY POLICY

6. Furigana: Hiragana placed above the Chinese characters of

personal names or infrequently used words to allow the correct

pronunciation

Date

Year of the patent

Designated by the traditional Japanese calendar, which is based on the

reign of the Emperor.

Showa = title of the previous Emperor, starting 1926

Heisei = title of the current Emperor, starting 1989

Serial number

■ Today, numbers are Arabic.

■ Older documents use Chinese ideogram numerals.

■ INPADOC has standardized codes.

A minor irregularity in the numbering of patents occurred in 1989:

1. Showa Emperor died in January, 1989.

2. Installment of a new Emperor necessitated a change in the

designation of patent numbers.

3. Patent documents submitted in 1989 were changed from the

designation of Showa 64 (64 denotes the number of years in the

Showa Emperor’s reign) to Heisei 1.

4. New era name of Heisei was not announced for several months.

5. Patent documents continued to be dated Showa 64 through April

10, 1989 (The last Showa kokai document is 91300; the first Heisei

document starts with 91301. The last Showa kokoku document is 1-

12441).

6. Japan Patent Office insists that these documents be cited as

Heisei 1.

7. The year 1990 is Heisei 2, and the numbering sequence is normal

thereafter.
22 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Layout of Japanese Patent Documents

The typical organization of a post-1993 Japanese patent document is as

follows:

Filing numbers

1. Claims (in pre-1993 documents, #1 and #2 are reversed)

2. Title of the Invention

3. Detailed Description of the Invention

■ Field of Industrial Application

■ Prior Art References

■ Problems the Invention Seeks to Overcome

■ Objective of the Invention

■ Means of Solving the Problem

■ Function

■ Preferred Embodiment

■ Effect

4. Brief Explanation of the Drawings (if any)

5. Drawing (if any)

6. Abstract (or summary)

Identification of Key INIDs

NB: Some key information on a Japanese patent document does not have

INID numbers.

11. KOKAI APPLICATION NUMBER

12. KOKAI PATENT REPORT
A Guide to Japan’s Patent System 23

OFFICE OF TECHNOLOGY POLICY

19. JAPANESE PATENT OFFICE

21. APPLICATION OR FILING NUMBER

22. DATE OF FILING

31. PRIORITY FILING NUMBER

32. DATE OF EARLIEST CLAIMED PRIORITY

33. COUNTRY OF EARLIEST PRIORITY

54. TITLE OF THE INVENTION

57. AUTHOR’S ABSTRACT

71. APPLICANT/PATENTEE/ASSIGNEE

72. INVENTOR

See Appendix A for examples of kokai and Appendix B for examples of

kokoku.

Bibliography

The following reports and articles can be helpful for understanding

Japanese patent documentation and search strategies.

Annual Report (Japanese and English language versions). Tokyo: Japanese

Patent Office.

Association Internationale pour la Protection de la Propriete Industrielle

(AIPPI) Japanese Group. Guide to Industrial Property in Japan. Tokyo:

Japanese Patent Office, 1994.

Dell’Orto, Kathleen. “New Access Routes to Japanese Patent Information.” In Japanese Intellectual Property: The Japanese Patent System and Strategies for Competitiveness: Proceedings of the Conference in Washington, D.C.,

July 12 & 13, 1993, by the Japan Information Access Project. Washington,

D.C.: Japan Information Access Project, 1993, 21-31.
24 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Engel, Alan. “Using Online and CD-ROM Patent Databases to Obtain

Japanese Science and Technology Information,” Paper presented at the

Fourth Annual NTIS/JICST Conference: Japanese Scientific & Technical

Information, Boston, Massachusetts, 14 & 15 July 1994, U.S. National

Technical Information Service.

Forman, Jeffrey L. “Making Sense of Japanese Patent Information,” Paper

presented at the Fourth Annual NTIS/JICST Conference: Japanese Scientific & Technical Information, Boston, Massachusetts, 14 & 15 July 1994,

U.S. National Technical Information Service.

Johnston, Steven W. “Using Japanese Online Patent Information,” Paper

presented at the Fourth Annual NTIS/JICST Conference: Japanese Scientific & Technical Information, Boston, Massachusetts, 14 & 15 July 1994,

U.S. National Technical Information Service.

Lindgren, John C. and Craig J. Yudell. “Protecting American Intellectual

Property in Japan.” Santa Clara Computer and High Technology Law Journal,

vol. 10, no. 1 (June 1994).

Newton, David. “Japanese-language Periodicals on Patents Information.”

World Patent Information, vol. 13, no. 4 (1991): 181-183.

Nihon Kagaku Gijutsu Kankei Chikuji Kankobutsu Soran (Directory of Japanese Scientific Periodicals) Tokyo: National Diet Library, 1992.

O’Keeffe, Michael and Ryoko Okada. Derwent Guide to Reading Japanese

Patents. London: Derwent Publications Ltd., 1992. Second edition 1994.

Rasek, Eduard. “A Simple Guide to Searching Japanese Patents.” In

Japanese Information: Where Can You Find It and What Does It Mean? Trade

and Technology, Conference Proceedings, pp. 9-36. Washington, D.C.: Japan

Information Access Project, 1992.

Simmons, Edlyn S. “JAPIO-Japanese Patents Applications Online.” Online

10 (4) 1986: 51-58.

Simmons, Edlyn S. “Retrieving and Making Sense of Japanese Patent

Information.” In Japanese Intellectual Property: The Japanese Patent System

and Strategies for Competitiveness, Conference Proceedings, pp. 33-41. Washington, D.C.: Japan Information Access Project, 1993.
A Guide to Japan’s Patent System 25

OFFICE OF TECHNOLOGY POLICY

III. DIFFERENCES BETWEEN THE U.S. AND JAPANESE

PATENT SYSTEMS

When comparing the Japanese patent system with that in the United

States, you are faced with systems shaped by fundamentally

different purposes. Although Japanese patent laws resemble both those in

Europe and the United States, Japan interprets and uses its patent regime

distinctively. Japan measures its rewards for invention in terms of social

rather than individual benefits.

In the United States, the patent system exists to provide an incentive for

innovation by rewarding an inventor with the right to exclude others

from practicing his or her invention. That reward is made in exchange for

a full, complete, and enabling disclosure of the invention to the public.

In contrast, the Japanese system is more focused on the goal of promoting

Japanese industry and technology development by disseminating patent

information. The current system encourages corporate strategies that

promote extensive filings, cross-licensing, and strategic filings. Public

disclosure and long patent pendency can be used as a tool to dilute or

prevent any reward to the inventor.

Although there are many similarities on the surface between the Japanese

system and those in many European countries, it would be a mistake to

overstate these. Differences can be found in substantive rights, in procedure and enforcement of patent rights, and, most importantly, in interpretation. How Japanese law and practice interprets the requirement of

inventive step is significant—small modifications that create “new function effects” are patentable in Japan, but not the United States.

Japan has recently begun to make efforts to reduce international concerns

over its patent system. GATT agreements and successful U.S.-Japan trade

negotiations on intellectual property have prompted the Japanese government to initiate a series of substantial modifications in their patent law

and procedures. The effects of these changes, however, will not be realized for many years. As Japanese companies have become technology

leaders, the advantages of rigorous protection of patent rights has become

more evident.

Patent Systems Compared

The following outlines the key differences between the U.S. and Japanese

patent systems, with some references to the European system. These

When comparing the

Japanese patent system

with that in the United

States, you are faced

with systems shaped by

fundamentally different

purposes. Japan measures

its rewards for invention

in terms of social rather

than individual benefits.
26 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

differences are also a review of the fundamental difficulties in working

with the Japanese patent system. In many cases, recent changes and

proposed changes to Japanese patent law may eliminate some of the

traditional areas of conflict.

1. First-to-File vs. First-to-Invent

The first and most obvious difference between the Japanese and U.S.

systems is that the Japanese system, like that of most countries in the

world, is a first-to-file system, while the U.S. system is a first-to-invent

system.

A first-to-file system creates a race to the filing office. In Japan, this is the

Japanese Patent Office (JPO). Assuming that an invention meets the

criteria for patentability, the first party to file the invention with the JPO is

entitled to patent rights for the invention irrespective of whether that

party was, in fact, the first to invent the technology.

In contrast with the simplicity of a first-to-file system, the first-to-invent

system, as applied in the United States, has generated a complex body of

law regarding priority of inventorship. A first-to-invent system, therefore,

encourages the inventor to keep meticulous pre-filing records and to

prepare a precise patent application to protect his or her rights. A first-tofile system, in contrast, promotes the rapid filing of a large number of

applications that can be prepared quickly, are narrow in scope, and often

represent mere incremental advances.

Highlighting the difference in implementation between the European and

Japanese first-to-file systems is the disparity in the number of applications filed under both systems. The European Patent Office, with membership of 17 European states, received 56,966 applications in 1993. The

same year, the Japanese Patent Office received 366,486 applications; there

were 419,886 applications, if utility models are included.

2. Patent Term

Until December 8, 1994, the second major difference between the patent

systems of the United States and Japan was the term of the patent right.

Now the patent term in the United States is 17 years from the patent grant

date or 20 years from the application filing date, whichever is greater.

However, for applications filed after June 8, 1995, the patent term is only

20 years although legislation has been introduced to provide for either 17

or 20 years. In Europe, the patent term is 20 years from the date of filing.

In Japan, the period extends 15 years from the date that the application is
A Guide to Japan’s Patent System 27

OFFICE OF TECHNOLOGY POLICY

published for opposition with the limitation that the term may not exceed

20 years from the filing date of the application at the JPO. In 1996, the pregrant opposition system will be eliminated and the Japanese patent term

will be the same as in the United States and Europe.

Although the Japanese process resembles the European system, substantial differences arise in implementation. If the time for deferred examination (see below), administrative delays, and any opposition period is

included, the average pendency in the Japanese Patent Office is more than

six years (more for pioneering technologies). Japanese statistics on patent

pendency indicate an average of a 28-month pendency. These numbers,

however, do not measure the period of time from filing until grant or

withdrawal. In Europe, patent pendency averages 24.8 months and in the

United States, it is 19.6 months. In the United States, in many cases, this

short pendency period will afford patentees a longer period of patent

protection under a 20-year-from-filing system.

■ With approval of the GATT TRIPs agreement in 1994 and

implementing legislation, both Japan and the United States have

adopted the international standard of 20 years from the filing

date of the patent application.

3. Early Publication

Another significant difference between the Japanese and U.S. patent

systems is that Japan requires public disclosure of all patent applications

within 18 months of filing. In the United States, applications are maintained in confidence up through the issue of the patent. A Japanese patent

application is automatically laid open for public inspection (this document is referred to as a kokai) 18 months after filing, or if priority has been

claimed based on a prior foreign filing, 18 months after the earliest priority date.

Laying open is achieved by publication of the full text of the specification,

claims, and drawings with amendments, if any, in the Japanese Patent

Gazette (starting in 1995, the print version will be replaced by CD-ROMs).

This practice allows anyone early access to any new technologies. Although the European system also has early publication, there are a number of important differences. In Japan, unlike in Europe or the United

States, the pre-grant opposition system (see below) and the long patent

pendency combined with narrow claim interpretation (see below) can

lead to abuses.

In Japan, unlike in

Europe or the United

States, the pre-grant

opposition system and

the long patent pendency

combined with narrow

claim interpretation can

lead to abuses.
28 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Some patent experts observe that Japanese competitors sometimes use

kokai publications as a basis to initiate a series or “flood” of patent applications with simple, incremental improvements to the original kokai. This

strategy, known as patent flooding, can enable a competitor to effectively

appropriate the core technology of the original patent by requiring cross

licenses from the original inventor using surrounding rights as leverage.

4. Pendency Period

Many of the problems that U.S. inventors experience with the Japanese

patent system trace directly to the extremely long pendency period for

applications filed at the JPO. In Japan, a patent takes an average of six to

seven years to be issued compared with about 19 months in the United

States. In some active technological areas such as organic chemicals and

electronics, pendency of a patent application filed in Japan may be up to

10 years.

Although the JPO represents the average pendency period to be about 30

months, this figure can be misleading because it does not take into account the long period of delay before examination actually begins. Due to

the backlog of applications, there is an average delay of three to four

years before the JPO will begin an examination, even if a request for

examination is made at the time of application filing.

The Japanese Patent Office attributes much of the long patent pendency

term to their examiners’ workload, not procedural delays. Over the past

few years, the JPO has taken a number of steps to reduce the pendency of

patent applications. These include small increases in the number of

examiners, development of an electronic, “paperless” filing system, and

in 1994, the elimination of substantive examination for utility models.

Since 1988, the JPO has allowed multiple claim applications and JPO

officials have worked to encourage this practice. The effects of these

changes remain to be seen.

In addition to the above improvements, the JPO has agreed, by 1996, to

pursue accelerated processing for inventions in which patent applications

have also been filed in foreign countries.

5. Bars to Patentability: Grace Period

There are substantially different legal bars to patentability between the

United States and Japanese systems. In the United States, a patent is

barred if the invention is placed on sale, described in a printed publication, or publicly used more than one year prior to the application filing
A Guide to Japan’s Patent System 29

OFFICE OF TECHNOLOGY POLICY

date. If an application is filed within the grace period, however, such

public disclosures are not necessarily fatal to obtaining a valid patent.

In Japan, as in Europe, the grace period is shorter, only six months, and

the set of circumstances in which the grace period applies is much more

limited. Unlike Europe, the definition for public disclosures made by

publication are quite specific. Disclosure is accepted if the publications

and written presentations are from organizations sanctioned by the

director general of the JPO. Furthermore, only disclosures made by the

inventor or his assignee are covered under the grace period. Third party

disclosures are an absolute bar. In contrast, in the United States, any

disclosure, i.e., by the inventor himself or by a third party, may be overcome by the inventor in the grace period.

Japanese law respecting public disclosures by use or sale also differs from

that in the United States. In Japan, a disclosure must actually be made to

the public to act as a bar. In contrast, in the United States, even a secret

offer for sale may constitute an on-sale bar. Therefore, the set of events

which may trigger a bar is narrower in Japan than in the United States.

According to Section 30 of Japanese Patent Law, the set of public disclosures that actually qualify for a grace period is also more limited in Japan.

They include: experiments conducted by the person entitled to the invention, disclosures of the invention against the will of the person entitled to

obtain the patent, and displays of the invention made by the person

entitled to obtain the patent at exhibitions held in Japan or in another

Paris Convention Treaty signatory country that have been sanctioned by

the director general of the JPO.

6. Compulsory Licensing

Compulsory licensing is a significant but, thus far, little-used threat in

Japan. In the United States, a patentee may refuse to license other parties

even if he or she chooses not to work the invention and even if another

patented invention cannot be worked without infringing the patentee’s

rights. The government can demand licensing only for limited reasons of

national and energy security.

In contrast, Japanese law allows interested parties to acquire a compulsory

license to the patented invention in several circumstances. First, if three

years after the grant of the patent, neither the patent owner nor a licensee

in the industry is ‘working the patent,’ the director general of the JPO

may order licensing discussions between the patentee and the interested

party. If the parties are unable to agree on a license, the JPO may order a

non-exclusive license to enable others to make or use the invention.

In Japan, a disclosure

must actually be made to

the public to act as a bar.

In contrast, in the United

States, even a secret offer

for sale may constitute an

on-sale bar.
30 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Second, in circumstances where a first patented invention cannot be

worked without infringing a second patent and where the owner of the

second patent refuses to license the first, a compulsory license may be

granted to the second patent owner to enable him to practice his invention. Third, the JPO may require a compulsory license where it determines that such a license is necessary in the public interest. It is also

unclear where administrative guidance directly from MITI can or does

apply.

The threat of compulsory licensing, where the Japanese government will

determine the licensing terms, combined with the practice of patent

flooding, is said to encourage cross-licensing.

■ After July 1, 1995, the Japanese Patent Office has agreed to cease

rendering arbitration decisions ordering the grant of dependent

patent compulsory licenses.

7. Pre-Grant Opposition

The Japanese patent system provides for pre-grant opposition to the

award of patent rights. The JPO allows third parties to “oppose” or object

to a pending patent application by submitting reasons why it should not

be granted. Neither the U.S. nor European system offers this opportunity.

The European Patent Office does have a post-grant opposition system

whereas the U.S. Patent Office has post-grant reissue and reexamination

procedures.

After an application has been examined (called a kokoku) by the JPO, it is

published for opposition in the Patent Gazette. The period allowed for

submission of oppositions is only three months. Firms that do not carefully monitor kokoku, especially foreign firms where translation is crucial,

often find themselves missing the opposition deadline.

Although provisional patent rights granted after the patents are laid open

continue to be recognized after this post-examination publication, kokoku

publication allows competitors to oppose the final grant of the patent.

Each opposition is considered separately, sometimes adding years to the

proceedings. Such oppositions can contribute significantly to the magnitude of delays in pursuing Japanese patent rights and afford competitors

an opportunity to block or at least forestall the award of patent rights in a

pioneering invention long enough to develop the surrounding or competing technology. It should be noted that the average annual opposition rate

is 7 percent of all examined patents published. Applications for pioneering
A Guide to Japan’s Patent System 31

OFFICE OF TECHNOLOGY POLICY

inventions are commonly the targets of oppositions. A long pendency

period is often a precursor of future opposition problems.

■ Starting on January 1, 1996, the pre-grant opposition will be

eliminated and multiple oppositions will be consolidated and

addressed in a single proceeding to minimize the time spent on

opposition to the patent grant.

Patent Practices and Procedures

In addition to the structural differences between the two patent systems,

several aspects of patent practice and procedure differ between the

United States and Japan.

1. Form and Content—Language

Japanese patent applications must be filed in Japanese. In contrast, U.S.

applications may be filed in a foreign (non-English) language as long as

the initial foreign-language filing is followed within two months with a

verified English-language translation. The European Patent Office (EPO)

permits filings in any of its member country languages or in German,

English, and French, the official languages of the EPO.

The requirement that Japanese patent applications be filed in Japanese

creates particular problems for foreign inventors since Japan does not, in

general, permit correction of translation errors. Although correction of

minor errors that do not substantially change the subject matter is permitted in theory, two examples of translation errors that were not permitted

to be corrected highlight the problem.

In a 1983 Tokyo High Court case, the Court refused to allow an applicant

to correct the mistranslation of a chemical term. The translator misunderstood the element “boron” and translated it as “bromine.” In that case,

the applicant’s appeal was denied because under Japanese law, a patent

examiner must recognize from the invention’s description that the language is clearly used in error in light of the specification. In an earlier

case, the court also refused to permit the correction of the term “°C,”

which was mistranslated as “°F.” These examples highlight the importance of allocating the time and resources necessary to achieve an accurate translation of the original English text.

■ Starting July 1, 1995, the JPO will permit foreign nationals to file

patent applications in the English language, with translation into

The requirement that

Japanese patent

applications be filed in

Japanese creates

particular problems

for foreign inventors

since Japan does not,

in general, permit

correction of translation

errors.
32 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Japanese to follow within two months. There is debate in the legal

community whether this is really a significant change. Besides

wondering if pre-grant corrections will delay the final grant of the

patent, some attorneys question which submission, the English or

the Japanese, will be used in patent disputes.

2. Form and Content—Other Considerations

Aside from the Japanese language filing requirement, most other formal

Japanese and U.S. requirements are similar; however, several differences

do exist. For example, unlike the United States, Japan does not require

that the applicant disclose the best mode contemplated by the inventor

for practicing the invention. A Japanese patent application should, however, adopt a problem/solution approach to presenting the meritorious or

advantageous effects of the invention when compared with the prior art.

In addition, there should be a close coupling between features of the

claimed invention and working examples presented in the application.

Other common problems cited by JPO officials and benrishi (roughly

equivalent to U.S. patent agents) with applications originally drafted for

filing in the United States include:

1. description of the advantageous effect, or how the disclosed

invention is superior to the prior art, is missing or unclear;

2. a problem/solution approach is not used to describe the

advantageous effect over the prior art;

3. features of the invention defined in the claims do not

demonstrate a clear one-to-one correspondence with the working

examples provided in the specification; and

4. the number of working examples provided is insufficient given

the number of claims.

■ The JPO is in the process of changing some of the above

requirements.

3. Deferred Examination

Each U.S. patent application is examined unless abandoned. In Europe,

examination must be requested up to 6 months after the 18-month publication. In Japan, however, an applicant must specifically request examination. Such a request must be made within seven years of filing at the JPO.
A Guide to Japan’s Patent System 33

OFFICE OF TECHNOLOGY POLICY

It is not unusual to find applicants who file without intending to ever

request an examination.

Deferred examination allows a patent applicant to more completely

consider the potential market for his or her invention before committing

to the costs involved with an examination. In the United States, no deferred examination exists and fees must be paid on filing or shortly

thereafter.

■ The JPO has stated that it is considering plans to shorten the

deferral time from seven to three years by 1999.

4. Duty of Disclosure

Stringent U.S. Patent Office rules govern the duty to disclose information

of which one is aware that is material to patentability. In Japan, there is no

similar duty. U.S. patent applicants and their attorneys must disclose

known, material prior art, and failure to do so may result in loss of the

patent right. Disclosure of prior art is encouraged in Japan, but is not

required.

Patent Enforcement

Unlike in the United States, a challenge to a patent’s validity is not

brought before the courts, but instead directly to the Japanese Patent

Office. Patent infringement cases themselves, without consideration of

validity, are brought before the courts. The United States does provide for

a reexamination in the USPTO over prior art not previously considered.

Among the overviews of Japanese patent litigation practices, you may

want to start with “Patent Enforcement in Japan: An American Perspective For Success” by Mark F. Wachter, Esq., in the AIPLA (American Intellectual Property Law Association) Quarterly Journal (Vol. 19, 1991, No. 1).

1. Scope of the Patent Right

The scope of the patent right is much narrower in Japan than in the

United States. Although patent rights in both countries are defined by the

patent claims, the role of the specification in defining the breadth of those

claims is much different. In the United States, the specification aids the

examiner, or in the case of litigation, aids the court in interpreting the

claim language. It is a fundamental precept of U.S. patent law that while
34 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

the specification may aid in interpretation of the claims, it may not be

read into the claims as a limitation. Instead, the scope of the patent right

is defined by looking to the claims. In contrast, in Japan, the practice is to

restrict the scope of patent claims as much as possible including limiting

the scope of protection to those specific embodiments described in the

written technical description.

Because of this narrow interpretation of claims, a Japanese patent application typically focuses on a small number of embodiments. Typically, a

series of narrowly tailored patent applications will be filed, each with a

small number of claims and a specific description of an embodiment

corresponding to those claims. Each resulting patent may represent an

incremental variation or improvement when compared with the others. In

contrast, an inventor filing an application in the United States may typically rely on a single application capturing the breadth of his patentable

conception, identifying a specific preferred embodiment, and setting forth

a schedule of claims that vary in scope from the narrowest to the broadest

definitions of the invention being claimed.

2. Doctrine of Equivalents

In addition to the differences between U.S. and Japanese interpretations

of claims, there are significant differences in judicial doctrine. In the

United States, application of the doctrine of equivalents enables a patent

owner to exclude others from practicing an invention with a method or

apparatus that achieves substantially the same function, in substantially

the same way, to achieve substantially the same result. Strictly speaking,

the judicially developed doctrine does not broaden the scope of claims,

but rather expands the rights of a U.S. patentee to exclude others from

practicing minor variations on the invention. Japanese legal doctrine on

this issue is less inclusive. As a result, the amount of protection afforded

by Japanese patent rights is significantly less than in a U.S. patent.

3. Discovery

Compared with the United States, there is no meaningful discovery in

Japanese courts. This lack of discovery affects both the patent owner’s

ability to prove infringement in Japan and a defendant’s ability to establish facts that would invalidate an adversary’s patent. Evidentiary problems are perhaps greatest in litigation that seeks to enforce process patents. Here it is essential to obtain access to a defendant’s documents or

facilities in order to prove that the defendant practices or practiced a

patented process. Particularly in the semiconductor, pharmaceutical, and

The amount of

protection afforded by

Japanese patent rights is

significantly less than

in a U.S. patent.
A Guide to Japan’s Patent System 35

OFFICE OF TECHNOLOGY POLICY

chemical arts, it can be extremely difficult to establish the processes used

in their manufacture solely from an examination of a final product.

■ Approval of the GATT TRIPs compels some limited discovery in

Japanese patent infringement cases.

4. Length of Proceedings

Patent infringement proceedings in Japan typically last much longer than

similar proceedings in the United States. In fact, infringement suits

usually take three to nine years to conclude in Japan as compared with

two to three years in the United States.

Lengthy court proceedings are particularly problematic given the difficulty in obtaining preliminary injunctions in Japan. Although theoretically possible, a preliminary injunction requires a separate action that

can typically take as long as 18 to 24 months. Such a lengthy delay can

make it extremely difficult to prevent an alleged infringer from exploiting

a patented invention. In rapidly developing areas of technology, this can

be particularly troubling since by the time a preliminary injunction is

granted or the dispute is adjudicated, the market for an invention may

have come and gone.

5. Adequacy of Damages

A final problem is the inadequacy of damages awarded by Japanese

courts. In theory, both lost profits and reasonable royalty measures are

provided by Japanese law as in United States law; however, given the

difficulties of obtaining discovery, lost profits are often difficult, if not

impossible, to prove. In addition, enhanced damages are unavailable in

Japan, and provisions do not exist for the award of attorneys fees. In

contrast, U.S. courts will grant up to treble damages in cases of willful

infringement, and attorneys fees may be recoverable in certain circumstances. Many patent attorneys, therefore, believe that damages awarded

in Japan are often so low as to persuade petitioners that litigation is not

worth its associated costs.

Recommendations

Substance, procedure, and even objective distinguish the Japanese and

U.S. patent systems. Neither system is inherently better than the other;

however, the nature of the differences requires that applicants and patentees establish different expectations and develop different approaches for

The nature of the

differences between the

Japanese and U.S. patent

systems requires that

applicants and patentees

establish different

expectations and develop

different approaches for

exploiting the two patent

systems.
36 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

exploiting the two patent systems. (See Table 2 and Figure 1.) Several general

recommendations are relevant with respect to the Japanese system.

■ Exploit Patents Japanese-Style: Be prepared to exploit patents

Japanese-style, i.e., defensively, rather than offensively. Successful

exploitation of the Japanese system requires large numbers of

patents or patent applications, which are used more as leverage to

cross-license technologies than as a means for excluding others

from practicing a critical technology. Although the expense of

prosecuting large numbers of incremental patent applications to

issue can be great, costs can be reduced by following the Japanese

example: file many applications and request examination for only a few.

■ Develop a Strategy to Ensure Correct Translation: It is extremely

important to allow adequate time and resources for a correct

translation of applications into Japanese. Check the translation

by commissioning another translator to translate the translation

back to English and by comparing the original with the second

translation. If the 12-month window for claiming foreign priority

under the Paris Convention Treaty represents insufficient time to

prepare a translation, consider filing via the PCT, designating

Japan. This will allow more time (8 months under Article 22 or

18 months if an international preliminary examination has been

requested under Article 39(1)) for an adequate translation to be

completed.

■ Monitor Japanese Kokai and Kokoku Filings: By scanning the Japanese

patent filings you can judge the strength of potential competitors’

technologies and plan defensive or offensive strategies.

■ Work Closely with Your Japanese Attorneys: Do not assume an

aggressive pursuit of your interests. Japanese attorneys wait for

instructions and guidance. Your knowledge of the Japanese

patent system is crucial in your being able to best respond to

your Japanese representative’s needs and concerns.

NOTE: In Japan there are patent attorneys (although not members of the

Bar), called benrishi, who are much like U.S. patent agents and who represent

clients in front of the Japanese Patent Office and there are attorneys,

called bengoshi, who are members of the Bar and who represent clients in

court for patent infringement and related litigation. The latter belong to

the Bar Association in Japan and the former to the Japan Patent Attorneys

Association of Japan. Both associations set fees for their members’ work.
A Guide to Japan’s Patent System 37

OFFICE OF TECHNOLOGY POLICY

Table 2. Major Differences Between the U.S., Japanese, and European Patent Systems

Patent systems’ features

Patents granted on the basis

of first-to-file?

Filing permitted in any

language?

Are patent applications

published?

Can patent examination be

deferred?

Patent term

Grace period (amount of

time inventors have to

file patent applications

after their inventions

have been made public)

Pre-grant opposition?

Compulsory licensing

Legal systems

Patent commissioners

Patent documents

Formality

Pendency after examination

requested

Backlog

Number of Applications

(1993)

Exam rate (1993)

% of foreign application

filings (1993)

Patents granted (1993)

United States (US PTO)

No

Yes

No, kept secret until patent

is granted

No

20 years from filing for

applications filed after

June 8, 1995

1 year with no restrictions

on disclosure by inventor

No

Only for national security

Common law

Political appointee

Public good

• Less stringent

• Reviewed by clerks

and examiners

19.6 months

About 1 year

174,743

100%

45%

98,344

Japan (JPO)

Yes

No†

Yes, 18 months after filing/

priority date

Yes, for 7 years after filing†

15 years from date of publication for purposes of opposition, but not more than 20

years from filing†

6 months with restricted

disclosure permitted

Yes†

Yes†

Civil

Professional bureaucrat

Copyrighted

• Extremely stringent

• Reviewed by clerks (not

examiners)

28 months

About 5-6 years

366,486

54%

10%

88,400

Europe (EPO)

Yes

No, but accepts English,

French, German, or any

official language of member

state of European Patent

Convention

Yes, 18 months after

filing,priority date

Yes, for 6 months after 18-

month publication

20 years from filing

6 months with restricted

disclosure permitted

No

Laws of member states

control

Civil/UK common law

Professional bureaucrat

Varies

Reviewed by clerks and

examiners

24.8 months

Less than 9 months

56,966

91%

50%

36,667

 †will change in/after 1995
38 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Filing

Search Publication

Withdrawal

Request for examination

Substantive

examination

Withdrawal

Refusal*

Announcement of grant

Refusal*

Publication of patent

Opposition

Maintenance*

Revocation*

▲

Examination

Report

Filing

Publication

Request for

examination

Withdrawal

Examination

Decision to publish

Publication of examined

application

Opposition†

Decision to grant

Registration

Decision to refuse*

Decision to refuse*

Amendment

Notification of

reason for refusal

▲

Filing

Examination

Notice of allowance

Patent issuance

Maintenance*

Abandonment

Patent withdrawn

from issuance

Re-examination

Cancellation*

Office action

of rejection

Interference

Final rejection*

▲

Reissue

▲

Major phases in the trilateral procedures are outlined in the flow chart below.

Figure 1. Trilateral Patent Granting Procedures

 *decision may be appealed

 †Starting in 1996 the opposition system will resemble the EPO procedure.
A Guide to Japan’s Patent System 39

OFFICE OF TECHNOLOGY POLICY

Bibliography

The following brief bibliography can provide some background on the

Japanese patent system and pending changes:

Borrus, Michael. “Macroeconomic Perspectives on the Use of Intellectual

Property Rights in Japan’s Economic Performance.” Intellectual Property

Rights in Science Technology and Economic Performance, ed. Francis W. Rusky

and Carol Gona-Brown. Boulder, Colorado: Westview, 1990.

Chalsen, Christopher. “Sugoi! It’s Been Quite a Year in Japanese Patent

Law.” Managing Intellectual Property 1995 Annual Handbook London:

Euromoney Publishers, 1995.

Doi, Teruo. Intellectual Property Protection and Management: Law and Practice

in Japan Tokyo: Institute of Comparative Law, Waseda University, 1992.

Dwyer, Paula, Laura Jereski, Zachary Schiller, and Dinah Lee. “The Battle

Raging Over ‘Intellectual Property’.” Business Week, 22 May, 1989: 78-89.

European Patent Office, Japanese Patent Office, and the U.S. Patent and

Trademark Office. Annual Trilateral Statistical Report, 1993.

Japanese Patent Practice, Proceedings of the American Intellectual Property

Law Association Japan-U.S. Study Committee Seminar, June 1994.

Jenks, Andrew. “Clinton Stumbles With Intellectual Property Guidelines.”

Washington Technology, vol. 9, no. 17, 8 December, 1994: 1.

Kaltenheuser, Skip. “Proposed Change in Filing Patents May Have Chilling

Effect on Ideas for New Inventions.” Public Citizen, May/June 1993: 24-27.

Kurt, Richard. “Japanese Patent Trends.” World Patent Information, vol. 13,

no. 4 (1991): 209-216.

Linck, Nancy J. and John E. McGarry. “Patent Procurement and Enforcement in Japan-A Trade Barrier,” The George Washington Journal of International Law and Economics, vol. 27. nos. 2 & 3, 1993-1994.

Moore, W. John. “Reinventing Patents,” National Journal, 20 March, 1993:

694-697.
40 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

National Institute of Science and Technology Policy, Science and Technology Agency. Science and Technology Indicators: 1994 (Kagaku Gijyutsu

Shihyo: Heisei Rokunen Ban) Tokyo: Science and Technology Agency,

1995.

O’Keeffe, Michael and Ryoko Okada. Derwent Guide to Reading Japanese

Patents. London: Derwent Publications Ltd., 1992. Second edition 1994.

Ravitt, K. “Patent Statistics as Indicators of Innovative Activities: Possibilities and Problems.” Scientometrics, 7 1985: 77-99.

Rosen, Dan and Chikako Usui. “The Social Structure of Japanese Intellectual Property Law.” UCLA Pacific Basin Law Journal, vol. 13, no. 1 (Fall

1994): 32-69.

Schine, Eric and Magnusson, Paul. “Clay Jacobson Calls it Patently

Unfair,” Business Week, 19 August, 1991: 48.

Slind-Flor, Victoria. “Japanese Are Stung On Patents,” The National Law

Journal, vol. 14, no. 49 (10 August, 1992): 1.

Spero, Donald M. “Patent Protection or Piracy—A CEO Views Japan,”

Harvard Business Review, vol. 68 (September/October 1990): 58-67.

Takenaka, Toshiko. “The Role of the Japanese Patent System in Japanese

Industry.” UCLA Pacific Basin Law Journal, vol. 13, no. 1 (Fall 1994): 25-31.

Tsuchiya, Naotoshi. “New Developments in Patent Information in Japan.”

In EPO Patent Information User-Meeting, Proceedings, 30 Sept-2 Oct, 1992,

pp. 1-16.

UCLA Pacific Basin Law Journal, Special Issue on Japanese Intellectual

Property, vol. 9, nos. 1 & 2 (Spring 1991).

United States General Accounting Office. Intellectual Property Rights U.S.

Companies’ Patent Experiences in Japan, Report to the United States Trade

Representative Investigation No. 332-245, Under Section 332 (g) of the

Tariff Act of 1930, Washington, D.C.: GAO, July 1993.

United States International Trade Commission. Foreign Protection of Intellectual Property Rights and the Effect on U.S. Industry and Trade, Report to the

United States Trade Representative, Investigation No. 332-245, Under

Section 332(g) of the Tariff Act of 1930, Washington, D.C.: February 1988.
A Guide to Japan’s Patent System 41

OFFICE OF TECHNOLOGY POLICY

IV. DIFFICULTIES IN WORKING WITH THE JAPANESE

PATENT SYSTEM

As alluded to in the previous chapter, the differences between the

 patent regimes can create a number of difficulties for American

firms who want to pursue patent rights in Japan. The U.S. General Accounting Office issued a report on July 12, 1993, for Senators John D.

Rockefeller IV and Dennis DeConcini, entitled Intellectual Property Rights:

U.S. Companies Patent Experiences in Japan, which reviews the range of

difficulties encountered by American firms seeking patent protection in

Japan. A copy of this 96-page report can be obtained from the GAO by

requesting document #GGD-93-126.

Many of the problems outlined below may be alleviated over time as the

GATT TRIPs and U.S.-Japan Framework agreements begin to be implemented. The essential philosophical difference between the systems will,

however, remain. Japan’s patent system is focused on maximizing national economic welfare, whereas the U.S. system emphasizes individual

achievement and benefit. In a September 18, 1994, article in the Nihon

Keizai Shimbun entitled, “A Gap Exists Between Japan and the United

States in the Number of Patent Applications,” an official of MITI’s Institute for Intellectual Property noted that “the number of U.S. applications

in Japan will not drastically increase as long as there is a difference between Japanese and U.S. companies in patent strategies.”

Time

Patent pendency, the time it takes to obtain a patent grant, is significantly

greater in Japan than it is in the United States. This difference is further

compounded if the technology to be patented is significant or pioneering

in nature. In Japan, the typical patent takes an average of six to seven

years to be issued, compared with about 19 months in the United States.

The longer pendency period in Japan is due to several factors, including

the pre-grant opposition system, which allows rival companies to raise

objections to a proposed patent before it is granted. Another problem

leading to delays is the fact that the JPO receives twice as many patent

applications per year as its U.S. counterpart while employing far fewer

patent examiners. The ratio of patent applications filed to patent examiners is about four times higher in Japan than in the United States.

In Japan, the typical

patent takes an average

of six to seven years to be

issued, compared with

about 19 months in the

United States.
42 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Determining patent pendency in Japan can be difficult. The statistics

produced by the JPO, although detailed, can be confusing. The potentially

long and drawn-out process for patent approval, furthermore, makes it

difficult to determine how many patent applications actually become

patents. JPO statistics indicate that approximately 40 percent of the patent

applications filed are never examined. From 1983 to 1993, the JPO granted

an average of 60,000 patents each year while the average number of

patent applications filed is approximately 300,000 annually. Both numbers

have been increasing. Japanese file internationally approximately 60,000

patent applications annually.

Translation

Patent applications must be filed in Japanese, and there is little room for

correction. Translations are costly and must be performed according to a

set fee schedule established by Japan’s patent attorneys. Translation can

also be time consuming. If U.S. patent applicants do not factor in the time

for translation in their understanding of Japan’s filing schedule, the need

for a translation may cause the applicant to miss deadlines and leave

open opportunities to challenges to their grant. Although new agreements

will allow filings in English, deadlines remain for a Japanese translation

and corrections can only be offered at prescribed times.

Patent Flooding

Patent flooding, the practice of filing many patent applications claiming

minor, incremental changes surrounding another patentee’s core technology,

has been publicized as a widespread problem in Japan. The GAO has found

this practice to be most pronounced with technologies that include pioneering inventions and/or technologies that promise high commercial return.

A combination of narrow claim interpretation and the laying open of

applications encourages competitors of a patent applicant to flood the

surrounding art with incremental improvement patents. This tactic can be

used to intimidate (along with compulsory licensing) an applicant who

might be compelled to cross-license to avoid expensive delays and litigation. Many patent analysts point to the large number of patent applications in Japan as one proof of this tactic.

On the other hand, extensive patenting can be less a strategic weapon

than a measure of success in Japan. This practice, to some extent, can be
A Guide to Japan’s Patent System 43

OFFICE OF TECHNOLOGY POLICY

traced to Japanese corporate personnel and budgetary policies. Successful

R&D departments are rated by their output of patents. A large number of

applications is regarded as a symbol of both a company’s and department’s efforts toward research and development. With this “measure” of

productivity, Japanese corporate managers find it easier to allocate resources and promotions.

Opposition

The time-consuming pre-grant opposition system and consecutive oppositions can significantly reduce patent coverage in Japan. By accepting

oppositions before the final grant of a patent and then accepting oppositions one at a time (instead of by opposition category), the Japanese

system can delay the final granting and thus patent protection until the

end of the patent term which begins at the date of filing. This practice is

to end after 1996.

Cost

Cost is often cited as a major barrier to pursuing patent applications in

Japan. Patent filing costs in Japan are among the highest in the world, due

to translation costs and fees charged by Japanese patent attorneys. For

example, in comparing the total costs of filing in Japan to those in the

United States, Samson Helfgott of the patent firm of Helfgott & Karas

found that the average cost of filing a 25-page patent application in Japan

was $4,772, while in the United States the same case was $1,390. Patent

attorney fees in Japan are prescribed by the Japan Patent Attorneys’

Association (JPAA). The schedule of fees has fixed charges based upon

“transactions” as opposed to actual costs or hours worked for a case.

These fees are also determined on a per-claim basis, making multiple

claim applications more expensive. This practice tends to contradict new

JPO policies to encourage multiple claims.

In 1994, General Electric’s Chief Patent Counsel, Erwin F. Berrier, Jr.,

prepared an analysis for the December 1994 annual meeting of the Intellectual Property Owners, Inc. (IPO) of worldwide costs to obtain and

maintain patents. He found that the average costs in Japan to obtain a

patent were $30,000 or twice those in the United States. The following

tables and figures detail graphically his findings.
44 A Guide to Japan’s Patent System

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Pat. Off. Fees 1992

1994 Maintenance Total Patent Population Patent Cost/ GDP Patent Cost/

Country (Entire term)* Costs (in millions) Million Population (in billions) Billion GDP

EP (as of 1983) 12,012

AT (Austria) 11,237 14,785 7.5 164

BE (Belgium) 3,793 5,967 10.02 171

FR (France) 5,115 5,744 57.3 1,000

DE (Germany) 13,873 14,361 80.4 1,331

IT (Italy) 11,885 14,515 57.9 965

LU (Luxembourg) 2,546 2,658 0.392 78

NL (Netherlands) 11,552 13,323 15.1 249

SE (Sweden) 4,169 7,629 8.6 147

CH/LI (Switzerland/

Liechtenstein) 4,523 4,890 7.8 147

GB (United Kingdom) 5,960 6,160 57.8 915

Total 74,653 102,044 302.81 5,167

EP (as of 1994)

DK (Denmark) 6,143 10,283 5.16 91

GR (Greece) 3,395 5,185 10.14 77

IE (Ireland) 5,276 5,605 3.52 392

MC (Monaco) 2,954 2,954 0.029

PT (Portugal) 180 2,410 10.4 87

ES (Spain) 3,168 5,920 39.1 487

Total 21,116 32,357 68.36 1,134

EP Grand Total 95,769 134,401 371.17 362.10 6,301 21.33

JP (Japan) 19,591 30,498 125.0 243.98 2,300 13.26

US (United States) 5,790 14,370 256.5 56.02 5,600 2.57

Table 3. International Patent Costs

*All costs are in U.S. dollars.
A Guide to Japan’s Patent System 45

OFFICE OF TECHNOLOGY POLICY

Pat. Off. Fees: Filing, EP Pat. Off. Fees

1994 Designation, Search Translation: EP Agent Fees: National Phase Maintenance Total Patent

Country Examination, Grant* National Phase Filing Examination Pat. Off.Agent (Entire term) Costs

EP (as of 1983) 6,728 3,284 2,000 12,012

AT (Austria) 1,800 700 1,048 11,237 14,785

BE (Belgium) 1,600 574 3,793 5,967

FR (France) 1,600** 44 585 5,115 5,744

DE (Germany) 1,800** 165 323 13,873 14,361

IT (Italy) 2,125 135 370 11,885 14,515

LU (Luxembourg) 1,600** 4 108 2,546 2,658

NL (Netherlands) 1,518 40 213 11,552 13,323

SE (Sweden) 2,150 609 701 4,169 7,629

CH/LI (Switzerland/

Liechtenstein) 1,800** 42 325 4,523 4,890

GB (Great Britain) 200 5,960 6,160

Total 6,728 9,193 3,284 2,000 1,739 4,447 74,653 102,044

EP (as of 1994)

DK (Denmark) 2,200 914 1,026 6,143 10,283

GR (Greece) 780 644 366 3,395 5,185

IE (Ireland) - 50 279 5,276 5,605

MC (Monaco) 1,600** 2,954 2,954

PT (Portugal) 1,560 335 335 180 2,410

ES (Spain) 1,810 421 521 3,168 5,920

Total 6,350** - - 2,364 2,527 21,116 32,357

EP Grand Total 6,728 15,543** 3,284 2,000 4,103 6,974 95,769 134,401

JP (Japan) 2,007 3,000 2,500 3,400 19,591 30,498

US (United States) 1,980 4,600 2,000 5,790 14,370

*All costs are in U.S. dollars.

**Translation costs have been omitted.

Table 3. International Patent Costs (continued)
46 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Notes and Assumptions

1. Patent application of 20 pages (6,000 words) in English, including 10 claims

(2 independent), abstract, and 2 sheets of drawings.

2. All patent office fees assume large entity, if applicable.

3. All amounts expressed in US$ with early September 1994 exchange rates.

4. Total maintenance fees assume patent is maintained for full term. Patent term

in the EP contracting states is 20 years from filing date. In U.S., applications filed

prior to June 8, 1995, which are in force on or after June 8, 1995, will have a term

of 20 years from the date of filing or 17 years from grant date, whichever is

longer. In Japan effective July 1, fees in Japan are shown for 15 years for a post1987 filed application, which is published (kokoku) five years after filing. No

patent agent fees for payment of maintenance fees are included.

5. Examination requested in Japan upon filing; kokoku within five years of filing.

6. Population figures are 1993 estimates (The World Almanac 1994).

7. Translation costs have been omitted.

8. Patent agent fees for examination assume two official actions and two amendments.

9. U.S. patent attorney fee for filing includes preparation of application and is an

average of typical charges from the 1993 AIPLA Economic Survey.

10. Patent office fees include where applicable—filing, search, designation, examination, grant, printing fee, assignment, and the like.

11. Patent agent fee for EP filing assumes designating all Contracting States and is

an average of fees from GB, FR, and DE associates’ fee schedules.

12. Insufficient data for GDP and EP national phase (official and agency) for

Monaco.

Table 2. Patent Cost
A Guide to Japan’s Patent System 47

OFFICE OF TECHNOLOGY POLICY

Number of Claims Published for Opposition (Kokoku)

Years Left

at Kokoku 1 2 4 6 8 10 14 17 20

15 $10,618 $11,615 $13,609 $15,603 $17,597 $19,591 $23,579 $26,570 $29,661

14 $8,807 $9,635 $11,290 $12,944 $14,599 $16,253 $19,562 $22,044 $24,526

13 $6,998 $7,656 $8,970 $10,285 $11,601 $12,916 $15,546 $17,519 $19,492

12 $5,188 $5,675 $6,651 $7,627 $8,603 $9,578 $11,530 $12,994 $14,457

11 $4,283 $4,685 $5,492 $6,298 $7,104 $7,910 $9,522 $10,731 $11,941

10 $3,377 $3,695 $4,332 $4,969 $5,685 $6,241 $7,514 $8,468 $9,423

9 $2,472 $2,706 $3,173 $3,639 $4,106 $4,573 $5,506 $6,206 $6,906

8 $2,020 $2,211 $2,593 $2,975 $3,356 $3,738 $4,502 $5,074 $5,647

7 $1,568 $1,716 $2,013 $2,310 $2,607 $2,904 $3,498 $3,944 $4,389

6 $1,115 $1,221 $1,433 $1,645 $1,858 $2,069 $2,494 $2,812 $3,130

5 $889 $973 $1,143 $1,313 $1,482 $1,652 $1,992 $2,247 $2,501

4 $662 $726 $853 $980 $1,108 $1,235 $1,489 $1,680 $1,871

3 $436 $479 $563 $649 $733 $818 $988 $1,115 $1,242

2 $291 $319 $376 $432 $489 $546 $658 $744 $828

1 $145 $160 $188 $216 $244 $272 $330 $371 $414

The ¥ conversion rate is ¥99/$1. The table does not include attorney’s fees charged for paying annuity payments. These fees

are published by the Patent Attorneys Association of Japan. As an example, for the first five claims through 15 years, the total

attorney’s fees charged is $1,575 at the same conversion rate. For 10 claims through 15 years, the amount is $2,282.

To use this chart, estimate how many years of enforcement will be left when the kokoku publishes for opposition, then apply

how many claims are in the application. The resulting number is the cumulative annuity expense from kokoku publication to

expiration of the patent.

If you request exam in the seventh year, your Years Left can be no more than 13. If it takes two years to publish the application

for opposition (kokoku), then your Years Left are no more than 11. (You pay annuities from kokoku even if you are opposed and

do not have an issued patent for several more years.) Thus, if you have between 4 and 6 claims at kokoku, the cost is between

$5,492 and $6,298 for annuities to expiration. That amount is smaller than most European countries charge but for fewer claims

than usually filed in the EPO. At 10 claims, the annuities of $7,910 are close to U.S. maintenance fees but for fewer years of

enforcement. If you request examination earlier and publish for opposition with 15 years left, then 5 claims cost about the same

as an expensive European country and twice the cost of a U.S. patent to maintain.

Japan permits multiple dependent claims. That can help you save future annuity expense by reducing the number of claims

when requesting examination.

Table 4. Cumulative Cost to Expiration of Official Fees of a

Japanese Patent Filed after 1987
48 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

Note: Each figure in parentheses indicates the number of applications/registrations by foreigners out of the total shown above.

†These numbers represent the number of requests for examination received by the JPO by 1993 of patents filed in each of the

designated years. For example, by 1993, 54.1 percent of the patents filed in 1985 have had a request for examination.

Source: Japanese Patent Office Annual Report 1987, 1992, and 1993.

Table 5. Statistics from the Japanese Patent Office (JPO)

1983 1984 1985 1986 1987 1988 1989 1990 1991 1992 1993

Patent 254,956 284,767 302,995 320,089 341,095 339,399 351,207 367,590 369,396 371,894 366,486

applications filed (27,213) (28,562) (28,562) (29,887) (30,089) (30,491) (33,641) (34,360) (33,463) (33,875) (34,141)

US 13,087 US 12,843 US 12,903 US 14,847 US 15,830 US 15,720 US 15,930 US 16,783

Utility model 205,243 202,181 204,815 204,210 201,614 171,674 153,302 138,294 114,687 94,601 77,101

applications filed (1,259) (1,278) (1,275) (1,275) (1,201) (1,107) (1,169) (1,255) (1,347) (1,284) (1,182)

US 300 US 253 US 200 US 228 US 278 US 314 US 298 US 199

Patent 5,664 4,455 5,276 4,564 4,854 4,683 5,404 3,919 5,317 5,565 6,620

oppositions filed

Utility model 2,807 2,625 2,005 1,967 1,954 1,595 1,887 1,714 2,182 2,085 1,996

oppositions filed

Patents granted 54,701 61,800 50,100 59,900 62,400 55,300 63,301 59,401 36,100 92,100 88,400

(9,123) (10,110) (7,777) (8,624) (8,313) (7,388) (8,558) (9,031) (5,647) (13,107) (11,089)

US 3,976 US 3,824 US 3,229 US 3,799 US 4,112 US 2,589 US 6,080 US 5,324

Utility models 55,000 57,800 41,100 42,700 47,800 42,300 47,100 43,300 36,500 65,200 53,400

granted (534) (578) (357) (436) (405) (323) (361) (367) (357) (556) (371)

US 182 US 184 US 120 US 144 US 128 US 133 US 154 US 119

# of examiners 873 870 865 860 856 853 883 913 955 993 1,030

Patents— 54.1% 51.3% 35% 23% 20.3% 15.4% 9% 6.8% 6%

Requests for

examination† 163,876 164,082 119,368 78,045 71,354 56,744 33,276 25,226 22,093

Utility models— 54.1% 53.1% 50.7% 45.8% 48.7% 31.6% 17.4% 12.6% 11.3%

Requests for

examination† 110,883 108,396 102,134 78,690 74,619 43,738 19,990 11,967 8,749
A Guide to Japan’s Patent System 49

OFFICE OF TECHNOLOGY POLICY

V. COMMISSIONING AND EVALUATING

A PATENT TRANSLATION

Carl Kay, Japanese Language Services

How should you choose a patent translator? Understand what your

 objectives are and articulate them clearly. Find a translator who has

a wealth of experience to call on but is oriented to solving your problem

in the most effective manner. A translator should have credentials and

references. In short, choosing the appropriate translator is not unlike

choosing an appropriate attorney.

It is very important that you find translators whose work you can trust.

Would your translator ask a question when he or she is unsure of something? Would the translator do everything possible to ensure that you

have an accurate, understandable document on the day promised? You

should feel that all questions have been resolved or that all possible

readings of ambiguous passages have been presented to you. A professional translator adds nothing and leaves nothing out, unless instructed

to do so. The more you know about the process of translation of Japanese

patents, the more you can judge the work being done on your behalf.

Here I will examine some of the key issues involved in producing quality

translations of Japanese patents.

The typical Japanese patent begins with “front matter” that includes

patent number, date, classification numbers, names and addresses of

inventors and applicants, patent agent, etc. Next comes the meisaisho

(“specifications”), which includes the hatsumei no meisho (“title of the

invention”), tokkyo seikyu no hani (“scope of patent claim”), and the

hatsumei no shosai na setsumei (“detailed explanation of invention”). The

latter might include various embodiments and figures, etc. Each section of

the Japanese patent presents its own challenge to the translator.

In the front matter section, correct rendering of Japanese proper names is

a big problem. When we translate a Japanese patent into English, there

are many cases where we cannot be sure of the correct names of the

inventors, even though they are printed on the page, because we cannot

be sure what sounds the characters in the name are intended to represent.

The Japanese written language consists both of phonetic characters, called

kana, that represent one syllable of sound each, and of Chinese-derived

characters, called kanji, that do not always include visual information on

how to pronounce them. You have to memorize them one by one, and in

fact most characters can be pronounced in more than one way, so you
50 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

have to memorize several “readings” for each character. Certain categories of words such as proper names are especially difficult. When a Japanese person speaks his or her own name out loud, there are many cases

where a listener, even a well-educated Japanese person, does not know

what kanji characters to use to spell the name. But to use the wrong kanji

is very insulting, so it can be quite awkward. The reverse is also true: we

cannot always be sure of how to pronounce a name, and hence how to

render it in phoneticized English, just by looking at it. Hence the problem

in the front matter of patents. Even our special Japanese proper name

dictionaries can’t resolve all such questions.

As a result, we often print a disclaimer on our translations stating that

such ambiguity exists and can only be resolved with certainty by asking

someone who knows the inventors, or asking the inventors directly, what

their names are. We make this disclaimer, even in cases where there is

only a small amount of doubt, to help our clients avoid problems in

conducting patent searches, etc., based on inventors’ names or to help

avoid the risk of any delays, etc., for our client because a name is incorrect. This applies to place names also, such as the address of the inventor

or applicant.

Some Japanese patent documents add tiny phonetic characters, called

furigana, next to the kanji characters so that there will be no doubt as to

how to read the proper names. Unfortunately, this is not done all the time,

so the problem persists. Sometimes these points don’t affect our client at

all. They just want to know about the technology, and the names of the

inventors are not relevant. If we know this in advance we can skip some

of the steps we would take when doing our most thorough investigation.

Another problem area is in the translation of names of Japanese companies, agencies, or other entities. The question that arises is, is there an

official name in English for the entity that is authorized by that entity, or

should the translator just render the Japanese name in phonetic English

characters, or should we create our own “translation” of the name (ISDN

Kenkyujo or ISDN Laboratory? Laboratories?). Similarly, there are set

terms that appear in the front matter of Japanese patents, and some of

these correspond in function to terms in English. But if there is any

possibility that the reader will make false assumptions about the meaning

of the Japanese if we use that English term, perhaps it is better to translate

the Japanese more literally and let the reader judge to what degree the

term is similar in function to a familiar English term.

There is another more trivial issue in the front matter section. The Japanese number patents based on the year of application or issue using the
A Guide to Japan’s Patent System 51

OFFICE OF TECHNOLOGY POLICY

traditional Japanese way of counting years. 1993 is Heisei 5—5th year of

the Heisei Emperor. We usually add a note to our translation to indicate

this. The previous Emperor, the Showa Emperor, lived a long time and

reigned from 1926-1988. Thus Showa 1 is 1926, and Showa 50 is 1975. The

Showa Emperor died in early 1989, or Showa 64. 1989 was renamed Heisei 1

early in 1989, and a lot of calendars, standardized forms, computer programs, etc., had to be recreated to accommodate the new designation for

the year.

The claims section of a patent is the most difficult to translate. I’ve never

written a patent, but I imagine the claims would also be the most difficult

part to write. It is the wording of the claims section that is the basis for the

granting and challenging of intellectual property rights. Many people,

with technical and legal expertise, probably collaborated in the writing of

the claim. In some cases they tried to make very fine distinctions in

relation to other patents known to them but not to the translator. In other

cases they were intentionally trying to be vague to cover a broad scope.

Claims are difficult to translate because they are not a full sentence, but

rather a phrase with many modifiers. In English word order, the phrase

comes first—a method for manufacturing a flash memory semiconductor

device, whereby...—but in the Japanese, the word order is completely

reversed. The LAST word of the Japanese claim for the above is

“method.” The translator of a Japanese patent claim must therefore

untangle what is usually a fairly complex long phrase and completely

rework it so that the order comes out naturally in English while preserving all the relationships of the various parts to each other. There are also

certain words used in some claims that indicate the boundary of what is

the prior art and what is claimed as novel.

The translator must know very well the precise meaning of various

Japanese connecting words that indicate “and,” “or,” and other grammatical structures that express hierarchy, connection, and other relationships. There are many cases where the meaning of the claims remains

ambiguous despite rigorous linguistic analysis, and it is sometimes

unclear if that ambiguity is intentional or just the result of careless writing

by the Japanese applicant. Sometimes the information given in the specifications section sheds light on the correct interpretation of the claims

section. As translators, however, we need to know whether we should try

to give the most reasonable interpretation of an ambiguous phrase, or

render it equally ambiguous in English, possibly with footnotes explaining the various possibilities and which one is best supported by other

information in the document. Again, good communication with our client

helps us determine what to do and helps us avoid unnecessary work.

The translator must

know very well the

precise meaning of

various Japanese

connecting words that

indicate “and,” “or,”

and other grammatical

structures that express

hierarchy, connection,

and other relationships.
52 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

In the Detailed Explanation of Invention section, which describes the

invention in full prose sentences, some of the basic differences between

English and Japanese can be seen. In Japanese, the subject of sentences is

sometimes omitted, leaving the reader to understand the subject from the

context. This sometimes has the benefit of allowing a more inclusive,

holistic way of describing a situation, but sometimes the result is just

plain confusion about what is doing what to what. Such ambiguity is

rarely welcome to our clients when they are trying to determine if the

Japanese patent infringes on their company’s core technology.

One key problem is that in Japanese it is rarely specified explicitly

whether a noun is singular or plural. In the patent, we cannot tell just

from the phrase alone whether one vacuum chamber or multiple vacuum

chambers are present. Is the Japanese pharmaceutical company claiming

one compound or many compounds? Translators can use knowledge of

the technology itself, plus reference to other parts of the patent such as

the figures, to determine what is meant, but the words themselves are

ambiguous. This issue is of course critical in the claims section, where the

distinction between singular and plural can be rather significant.

The layman’s view of translation as looking up words one at a time in the

dictionary notwithstanding, the task of translation of Japanese into

English actually involves about 80 percent dealing with grammar and

sentence structure, and 20 percent dealing with terminology. Still, the

terminology issues are important, especially in rapidly evolving technical

fields. Professional translators have large libraries full of such books as

Japanese-English Glossary of Molecular Biology. Translators use current

technical periodicals from both countries as a guide to the latest terminology. Translation editors help maintain terminology accuracy and consistency. Translators develop specialties over years of work and become

deeply familiar with the terminology and concepts in certain fields.

A fairly large number of Japanese words, especially words relating to

advanced technology, are imported from other languages, mainly English.

Japanese has an entire phonetic alphabet, called katakana, devoted to

transcribing foreign-derived words. An example is Te-Re-Ko-Myu-Ni-KeShon, which means, of course, telecommunications. Sometimes these

words cause trouble for translators because they are modified when

adapted in Japan. For example, the Japanese word rimokon means “remote

control.” The term is an abbreviation of the borrowed English words.

Another example is enpura, which is the Japanese for “engineering plastic,” from the words En-Ji-Ni-A-Rin-Gu Pu-Ra-Su-Te-Ik-Ku.

There is a growing interest in the use of computers to perform translations. The vast differences in structure between the Japanese and English
A Guide to Japan’s Patent System 53

OFFICE OF TECHNOLOGY POLICY

languages, as well as the great complexity of patent documents and

variety of writing styles in general, all make machine translation virtually

useless for close translation of a Japanese patent into intelligible English

sentences. However, companies that wish to scan large volumes of Japanese patents and other documents to monitor technical developments in

Japan can combine optical character input of Japanese printed texts,

online access to Japanese language databases and a machine translation

system to create an automated Japan intelligence-gathering system.

Several large U.S. corporations and government agencies are currently

testing such systems. The English sentences output by the system are

mostly gibberish, but if a terminology bank is carefully constructed, the

system will locate key words faster than by human review. Human

translators can then be called on to translate in full documents that contain terms of particular interest.

A patent translator thus must be able to unravel complex Japanese sentences, which are sometimes intentionally confusing, and express a

complex hierarchy of relationships in clear English, while handling the

newest terminology of cutting edge technologies as well as the special

terminology of the patent document itself. Despite the requirement for

this high level of expertise, in America, unlike certain other countries,

there is little regulation of the translation field. Anyone can put out a

shingle and call themselves a translator. Therefore the buyer of translation

services must be diligent in seeking out true professionals—dedicated to

the highest standards of the craft and to using their talents to be of service

to others. True professional translators look forward enthusiastically to

the next encounter with the language barrier. The professional translator

is a key ally in any effort to compete in the cross-border high technology

markets of the 1990s.

You can contact Mr. Kay at:

Japanese Language Services

One Kendall Square, Building 200

Cambridge, Massachusetts 02139

Telephone: (617) 577-8000

Fax: (617) 577-8011

E-mail: info@japanese.com

World Wide Web: http://www.japanese.com

Appendix C provides information on locating translators and translations.

The vast differences in

structure between the

Japanese and English

languages make machine

translation virtually

useless for close

translation of a Japanese

patent into intelligible

English sentences.
A Guide to Japan’s Patent System 55

OFFICE OF TECHNOLOGY POLICY

VI. SEARCHING AND RETRIEVING JAPANESE PATENT

INFORMATION

Why Searching Japanese Patents Is Important

Japan has become a world leader in technology development and engineering. Nearly 40 percent of patents granted in the world are now issued

in Japan.

Japanese patents and utility models are prime sources of information for

tracking Japanese S&T development. Early publication (18 months after

application is filed) of unexamined patents provides early disclosure of

technology trends and prospects.

Characteristics of a Japanese Patent

A complete Japanese patent number includes the following information:

1. Sequential patent number: patent applications are published at

different stages and renumbered at each stage.

2. Identification of the type of document, which includes

■ patent = tokkyo; or

■ utility model = jitsuyo shin-an.

3. Status of the document, which includes

■ examined = kokoku; or

■ unexamined = kokai.

Print Sources of Information for Japanese Patents

1. The official Japanese-language Patent Gazettes published by the

Japan Patent Information Organization (JAPIO) for the Japan Patent

Office (JPO) have most complete coverage of Japanese patent information.
56 A Guide to Japan’s Patent System

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Starting in 1994, JAPIO began to distribute CD-ROMs instead of paper

gazettes for patent information. CD-ROMs are issued on average of three

per week. The paper gazettes are no longer published by the JPO. At the

Data Room of the JPO, computers are available free for up to two hours

to screen patent information. Hard copies can be purchased from the

Hatsumei Kyokai (Institute of Invention and Innovation, see Chapter VII,

Resources).

pros:

■ full-text with graphics, good copies

■ available through the USPTO and selected depository libraries

cons:

■ requires a reading knowledge of Japanese and understanding

of Japanese patent documents and indexing

■ CD-ROM software and hardware requirements are expensive

and cumbersome (see below)

2. Patent Abstracts of Japan (Kokai documents only)

Switched to CD-ROM version in early 1995.

pros: abstracts are provided in English, and are of unexamined patent

applications

cons: difficult to use, need an experienced researcher, not all fields

covered, four-month or more time lag

3. Japanese Technical and Patent-Related Journals and Periodicals

Important to scan the literature for early warning of upcoming patent

filings and background for pending patents.

pros: provides in-depth patent information and background

cons: translations are not always available, difficult to locate in the

United States

NOTE: The Japan Information Center of Science and Technology (JICST)

produces a database in both Japanese and English of most published
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OFFICE OF TECHNOLOGY POLICY

Japanese technical literature. For more information, contact the JICST

office in Washington, D.C. (1550 M Street, N.W., Washington, D.C. 20005,

telephone (202) 872-6371, FAX (202) 872-6372) or the U.S. National

Technical Information Service (NTIS) that distributes U.S. passwords

(NTIS, 5285 Port Royal Road, Springfield, Virginia 22161, telephone

(703) 487-4650, FAX (703) 321-8547). The JICST English-language database

is available through STN.

Databases for Japanese Patent Information

World Patents Index (WPI)

Produced by Derwent Information, Ltd.

Available on ORBIT/QUESTEL, DIALOG, and STN systems

English-language patent abstracts from 36 patent offices around the

world

pros:

■ only database with international coverage that is useful for

subject matter searching

■ counterpart patent publications in different countries collected

in the same record (patent families)

■ company searches using standard patentee codes

■ simple and inexpensive family and English equivalent

searching

■ drawings available after 1988

■ starting in 1995 all kokai documents for all technologies will be

covered

cons:

■ incomplete Japanese coverage (includes chemicals and limited

electronics, but NOT data processing and computers);

coverage expands in 1995

■ some searchers find inventor and company name searching

unreliable
58 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

■ data not available until 6 to 14 weeks after publication of

patent document

■ limited coverage before 1982

International Patent Documentation Center (INPADOC)

Produced by the European Patent Office, Vienna, Austria

Japanese records are from PATOLIS (see below)

Available on ORBIT/QUESTEL, DIALOG, and STN systems

pros:

■ most complete source of international patent family

information

■ covers all stages of publication from unexamined application

through grant for most (over 58) countries

■ updated quickly—within two weeks of publication for most

European countries and four weeks for other major patent

offices

■ comparatively easy inventor and company searching

cons:

■ records are in the language of the country of origin

■ cannot be used for keyword searches

■ no abstracts

■ family and English equivalent searching is expensive

Patent Abstracts of Japan (JAPIO, English-language)

Produced by the Japan Patent Information Organization

Available on ORBIT/QUESTEL and DIALOG

pros:

■ only easily accessible English-language database that can be

used for subject matter searches of Japanese kokai in

electronics and mechanical technologies
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OFFICE OF TECHNOLOGY POLICY

■ Japanese company and inventor searching

cons:

■ before 1990 coverage incomplete

■ slow updating—six to eight months after publication

■ many titles are brief and non-descriptive, which necessitates

using abstracts to determine relevance

■ abstracts not written in the clearest language

■ no drawings, nor is record updated

Patolis

Available through JAPIO, INDAPOC, and PATOLIS

pros:

■ most complete coverage of Japanese patents, includes legal

status

■ updated every two weeks

cons:

■ Japanese-language only

■ abstracts only, no graphics available outside Japan

■ need special hardware and software to access (only eight

known accounts in the United States)

■ restricted online hours: 8 AM to 11 PM, Japan time (6 PM to 9

AM EST)

■ slow 1200-baud modem rates

One of the eight U.S. password holders to the PATOLIS system suggests the

following for setting up in-house PATOLIS searching.

1. Japanese-Literate Worker. An engineer or scientist familiar with

the technical field, who can use a PC equipped with Japanese
60 A Guide to Japan’s Patent System

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software. If Japanese-to-English translation is expected, a native

speaker of English is greatly preferred. If you do not have

Japanese-literate staff yet, there are many headhunters in the USA

that specialize in locating Japanese-literate technical personnel as

well as a number of universities that teach technical Japanese,

such as MIT, University of Michigan, University of Washington,

and the University of New Mexico.

2. PC and Modem. An IBM-compatible PC is generally preferred

because Japanese software is more easily available. Presently the

PATOLIS link is just 1200-baud, so almost any Hayes-compatible

modem will work.

3. Japanese OS Software. For the IBM-PC this would be DOS/V,

which is widely available in Japan, and from specialty computer

stores in the United States.

4. Japanese Word Processing Software. This is used for business

correspondence with the JAPIO, as well as reading, reformatting,

and printing PATOLIS search results. This should come with a

Kana/Kanji conversion program that also works with the other

Japanese software.

5. Communications Software. Japanese communications software

capable of handling Kyuu-JIS text. Such Japanese communications

software is widely available in Japan, and can also be purchased

mail order from Japan or from specialized companies within the

United States.

6. Data Network Connection to Tokyo. From the United States this

would be the BT Global Data Network, TYMNET. There are local

gateways throughout the United States. It takes about one month

to set up a new account. Most American Fortune 500 corporations

already have such an account. Minimum monthly charge is about

$30 for one user. For information, contact:

MCI Telecommunications Corporation

2560 North First Street

San Jose, California 95131

FAX: (408) 922-6051

7. User’s Manual and PATOLIS Account. This takes about two

months to set up. Payment by yen bank transfer. Minimum

monthly charge is ¥5,000. Cost per patent application to detect
A Guide to Japan’s Patent System 61

OFFICE OF TECHNOLOGY POLICY

and display an abstract is roughly $3. I recommend that all

correspondence be in Japanese to avoid any miscommunications,

although letters in very simple English may also be adequate. For

information, contact:

Japan Patent Information Organization

Sato Dai Building -7

Toyo 4-chome, Koto-ku

Tokyo 135, JAPAN

FAX: 81-33-580-3501

URL: http://www.jef.or.jp/news/rdb.html

Note: PATOLIS does not have a U.S. agent.

8. Source of Hard Copy of Patent Documents. Can be ordered from

a number of U.S.-based patent document delivery services.

Other Databases

The following list was prepared by Jeffrey Forman of IBM of other databases that can be useful to the patent researcher looking for Japan-related

information. Armed with his observation that Japan bundles and files its

most significant inventions internationally and the fact that the European

patent system also requires pre-grant publication 18 months after filing,

the savvy searcher can use many of the following databases to research

Japanese patents and inventiveness.

1. EPAT

EPAT is produced by the European Patent Office (EPO) and

covers published unexamined patent applications and granted

patents published by the EPO. It includes an English title for each

application and an abstract in the language in which the

application was filed (English, French, or German). For Japanese

origin applications, this will almost always be English. In recent

years, about 20 percent of the almost 60,000 applications

published annually by the EPO have been filed by Japanese

applicants. The database is updated weekly on the same day that

the documents are published. It is an ideal database to use for

current awareness searches. Japanese companies can be easily

searched as the applicant’s name and subject searches can be

done using keywords and/or International Patent Classifications

(IPC). Subject searches can be limited to Japanese origin

inventions by simply including JP/PR as a search term in the

search strategy. EPAT is available on the QUESTEL search system

(..FI EPAT).
62 A Guide to Japan’s Patent System

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2. EDOC

EDOC is produced by the European Patent Office and includes

selected bibliographic information (but no titles and abstracts) for

patent documents published by 21 patent offices. It includes

coverage of Japanese patent documents from 1973 on and is the

only readily accessible database to include Japanese patent

registrations, the third stage of publication in Japan. Its primary

use is for patent family searches. EDOC is available on the

QUESTEL search system (..FI EDOC).

3. CHEMICAL ABSTRACTS (CA)

The CA databases are produced by Chemical Abstracts Service of

the American Chemical Society. They include worldwide patent

coverage of the chemical technologies from 1967. About 50,000

records based on Japanese patent documents are added each year.

Records include a title, controlled vocabulary terms, registry

numbers, and other indexing. There is a considerable delay

between the time a document is published and the entry of a

record for it in the database. CA is available on DIALOG (FILE

399), on ORBIT (FILE CASM), on QUESTEL (FILE CAS), and on

STN (FILE CA).

4. CLAIMS

CLAIMS is produced by IFI/Plenum Data Company and covers

U.S. patents only. It includes titles, abstracts, and at least one

claim in most records. Coverage dates from 1950 for chemical

inventions and 1963 for all technologies. It is a good database to

use when searching for U.S. patenting by the Japanese. Since the

mid-1980s, Japanese applicants have received about 20 percent

of the patents issued each year in the United States. Company

names are standardized, which makes searching for Japanese

patentees easier. Subject searching can be done using keywords,

U.S. Patent Classifications, and/or International Patent

Classifications. Subject searches can be limited to Japanese origin

inventions by including JP/PR (on ORBIT) or AC = JP/PR (on

DIALOG) as a term in the search strategy. CLAIMS is available on

DIALOG (FILES 340 and 125), on ORBIT (FILE CLMS), on

QUESTEL (FILE IFIPAT), and on STN (FILE IFIPAT).
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5. U.S. PATENTS FULLTEXT

U.S. PATENTS FULLTEXT is produced by Dialog Information

Services and covers U.S. patents only. It includes the full text of

all patents issued from 1974. Selected technologies, largely in the

electrical and mechanical arts, are also covered for 1971 through

1973. Its uses are similar to those stated above for CLAIMS and

Japanese origin inventions can be retrieved in the same way

(i.e., AC=JP/PR). However, more information is available on

each invention since the full text of the patent specification is

included. The file is updated weekly and records for the current

week’s issue are usually available two days after the issue date.

It is available on DIALOG (PATFULL or FILES 654, 653, and 652).

6. EUROPEAN PATENTS FULLTEXT

EUROPEAN PATENTS FULLTEXT is produced by Dialog

Information Services and it is available online. The initial release

of the database was similar to the EPAT database, described

above, in record content and time period covered. Later in 1994,

Dialog added the full text of the specification and claims to each

record. The text of the specification will be in the language in

which it was filed (i.e., English, French, or German). Since almost

all European patent applications filed by Japanese applicants are

filed in English, this will in effect create an online database of full

English translations of the Japanese priority applications. Since it

is planned that updates will appear online within about a week of

publication of the European application, it should frequently be

available before the publication date of the corresponding

Japanese Kokai. EUROPEAN PATENTS FULLTEXT will be

available on DIALOG as FILE 348.

Database Producers and Vendors

Derwent Information Ltd.

North America

1420 Spring Hill Road, Suite 525

McLean, Virginia 22102

Telephone: (703) 790-0400, (800) 451-3451

Fax: (703) 790-1426, (800) 457-0850

World Wide Web: http://www.derwent.co.uk
64 A Guide to Japan’s Patent System

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Dialog Information Service

3460 Hillview Avenue

Palo Alto, California 94394

Telephone: (800) 334-2564 or (415) 858-3785

Fax: (415) 858-7069

IFI/Plenum Data Corporation

3202 Kirkwood Highway, Suite 203

Wilmington, Delaware 19808

Telephone: (302) 998-0478 or (800) 331-4955

Fax: (302) 998-0733

Represents INPADOC and JAPIO in the United States

Contact: Mr. Harry Allcock, telephone (910) 392-0068 or (800) 368-3093,

Fax (910) 392-0240

INPADOC (EPIDOS)

Schottenfeldgasse 29

Postfack 82

A-1072 Vienna, Austria

Telephone: 43-1-52126-0

Fax: 43-1-52126-5491

Japan Patent Information Organization (JAPIO)

4-1-7 Toyo

Koto-ku, Tokyo 135, Japan

Telephone: 81-35-690-5555

Fax: 81-35-690-5566

Orbit/Questel Search Service

8000 Westpark Drive

McLean, Virginia 22102

Telephone: (800) 45-ORBIT or (703) 442-0900

Fax: (703) 893-4632

STN/Chemical Abstracts Service

P.O. Box 3012

Columbus, Ohio 43210

Telephone: (614) 447-3600 or (800) 848-6538

Fax: (614) 447-3713

CD-ROM

CD-ROMs are quickly becoming a cost-effective means for searching and

obtaining full-text patent documents.
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Two vendors produce CD-ROMs of U.S. patents and distribute the EPO’s

CD-ROM. The table below compares these two products with the JPO’s

CD-ROM.

JPO CD-ROM (Windows)

Available only through JAPIO

Costs $20,000 to $60,000 annually for approximately 100 disks, fees

determined by usage and number of users

pros:

■ full text with graphics

■ good copies

■ comparatively cost effective

■ available at selected USPTO Depository Libraries

cons:

■ need knowledge of Japanese and search techniques

■ tedious to use and slow printing

■ automatic search will miss graphics

■ each disk only contains a few days worth of data

■ software and hardware expensive (adds an average of $10,000)

■ disks arrive late in the United States, potential subscribers

must apply and fill out a very detailed form, and approvals

are only given four times each year

NOTE: The Federation of Japan Patent Information Suppliers suggests

that U.S. users be sure to use laser jet printers and IBM compatible search

software called CD-CUT distributed by Chuo Kogaku Shuppan Co.,

Takashima Bldg., 17-6, Nishi-Shimbashi 1-chome, Minato-ku, Tokyo 105,

81-33-580-9681, fax 81-33-580-5648 (approximately $6,000).

The following table outlines some of the search software and hardware

available for the JPO’s CD-ROM. As you can see, all are expensive.
66 A Guide to Japan’s Patent System

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Tables 7 and 8 can help give you a quick review of the benefits and drawbacks of the available patent databases and CD-ROMs available for

searching patent information with special reference to Japanese patent

information. All efforts have been made to accommodate the views and

evaluations of both vendors and searchers.

Table 6. Computers and Software for Searching JPO CD–ROM

Company Hardware Operating System Cost

Hitachi/JAPIO 68030 UNIX ¥4,200,000—hardware

¥20,000/mo—software

Hitachi/JAPIO 386/486 AX-DOS/V ¥2,500,000—hardware

Windows 3.0J ¥20,000/mo—software

Toshiba SPARC UNIX ¥3,000,000

Toshiba J-3100 MS-DOS/V ¥390,000~500,000

 Windows 3.01J

NEC NEC 9801 series MS-DOS 3.3

Windows 3.0J

Odisu NEC 9801 series MS-DOS 3.3

PC/AT MS-DOS/V

Windows 3.1J

Fujitsu FM G-1500 SX/G Not available in the U.S.

FM G-1600

Japan Patent NEC 9801 MS-DOS 3.1 ¥400,000—Kokai software

Data Service or 386/486 MS-DOS/V ¥400,000—Kokoku software

 other versions

Chuo Kogaku NEC 9801 MS-DOS 5.0 ¥550,000

Shuppan DOS/V MS-DOS/V 5.0 ¥600,000

IBM/RICOH PS/55 series OS/2J ø$10,000—software

ISTA 386/486 Windows NT3.5J (In development)

Japan Patent 386/486 MS-DOS/V (Only available to

Office foreign PTOs)

Source: Table, in part, prepared from data compiled by Alan Engel, ISTA, Inc.,

950 Conestoga Road, Rosemont, Pennsylvania 19010-1347, Telephone: 610-527-4538,

Fax: 610-527-2041, E-mail: aengel@netaxs.com, WWW: http://www.netaxs.com/

~aengel/ista.htm.
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Internet

As Internet services become easier to access and more available in Japan,

access to Japanese patent and S&T information will also become easier.

Expect to see increasing sites devoted to intellectual property organizations and issues.

■ The following Web sites are good places to start for hypertext

links to current and future sites:

STO’s Intellectual Patent Search System

URL: http://sunsite.unc.edu:80/patents/intropat.html

Table 7. Availability and Timeliness of Japanese Patent Information in

Online and CD–ROM Databases

Full Legal Oldest

Database Text Abstract Drawings Special Coding* Status Time Lag Records Comments

WPI No Yes Selective Subscribers Only Some 2-3 months 1963 Japan: chemical & electrical fields

English only. Complete coverage in 1995

CAS No No No Yes No 3 months 1967 Paper version back before

1900

U.S. Patents Yes Yes By FAX No U.S. only 2 weeks 1971 U.S.-filed patents only

Full text English English Not updated 14 months Complete since 1974, with back

after Kokai** files being added

JAPIO No Yes No No No 7 months 1976 No updating of records

English

PATOLIS No Yes In Japan No Japan only Bibliographic Kokai - 1971 Abstracts since 1977

Japanese only Updated - 2 weeks Updating continuous,

depends on field

 JPO CD–ROM Yes Yes All No No Can be Kokai - 1993 Expensive and cumbersome

Japanese Japanese several days Kokoku - 1994 to use

to 2 weeks

INPADOC No No No No Some Immediately 1973 Extensive patent family fields.

Depends on to 8 weeks Covers most countries.

 country Depends PATOLIS available through

on country INPADOC

Source: Table, in part, prepared from data compiled by Alan Engel, ISTA, Inc., 950 Conestoga Road, Rosemont, Pennsylvania

19010-1347, Telephone: 610-527-4538, Fax: 610-527-2041, E-mail: aengel@ netaxs.com, World Wide Web: http://www.netaxs.com/

~aengel/ista.htm.

*Special Coding—refers to detailed chemical structure codes, registry numbers, and the like that can provide valuable detail on

the contents of the document even if the document is not available.

**Japan-originated U.S. patents tend to be issued 14 months after the same kokai (unexamined, published patent application) are

first published in Japan. Thus, tracking only Japanese foreign patent filings may not be time-sensitive enough.
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All Japanese patents

Kokai–1993

Kokoku–1994

Kokai–2x/week

Kokoku–weekly

None

Abstract, Title

Kokai–15

Kokoku–18

application #; application date; Kokai

#, Kokai date; Kokoku #, Kokoku date;

IPC classification; FI classification;

assignee; inventor; patent agent; title

keyword; abstract keyword

Single index for each disk.

386/486; Japanese DOS or Japanese

Windows

$200/disc for ø 100 Kokai discs/year

$135/disc for ø 50 Kokoku discs/year

n.a.

All U.S. patents

January 1992. (20-year backfile

forecast for end of this year)

Weekly

2 weeks

Abstract, Exemplary Claim, Title

22

patent #; patent type; original #;

title; date of issue; name, state, and

country of inventor; assignee

name, state, and country, date

filed; serial # assigned; related

filing date, serial #, patent #; priority country, date, application #;

classifications: IPC, primary U.S.,

U.S. class cross reference; abstract;

exemplary claim

Yes. 22 fields, cumulative year to

date

PC compatible, DOS 3.1, HP, or

Canon compatible printer

$4,995. $1,995 for subset (chemical,

elecrtrical, general, and mechanical)

Distributor of European Patent

Office’s ESPACE-EP, European

Patent applications

Criteria for Inclusion

Current Backfile

Update Frequency

Patent Filing Lag

Time

Keyword Searchable

No. of Searchable

Fields

Names of Searchable

Fields

Index/Locator Files

Hardware Necessary

Price

Non-U.S. Patent

CD-ROMs

All U.S. patents except for

live plant-related patents

1975

Weekly

7-10 days

Abstract, Title

11

patent #; application #;

filing date; priority #; priority date; abstract; title; issue

date; international classification; U.S. classification;

inventor; assignee

Yes. Pilot index on each

cumulative for the year/

complete master index by

using Patent/Power

286+ PC w IMB RAM, VGA

Graphics. HP printers or

compatible.

$6,100. $2,750 for chemical

subset with biweekly updates.

Distributor of European

Patent Office’s ESPACE-EP,

European patent applications

Table 8. Patent CD–ROMs: Features and Price Comparison

Contacts:

Patent View: RapidPatent, 1921 Jefferson Davis Highway, Suite 1821-D, Arlington, Virginia 22202, Telephone: (800) 336-5010,

Fax: (703) 413-0127. (RapidPatent is the marketing arm of Research Publications Inc. that sells to commercial accounts.)

Patent Images: MicroPatent, 250 Dodge Avenue, East Haven, Connecticut 06512-3358, Telephone: (800) 648-6787 or (203) 466-5055,

Fax: (203) 466-5054.

JPO CD-ROM: Japanese Patent Office, 3-4-3 Kasumigaseki, Chiyoda-ku, Tokyo 100, Japan, Telephone: 011-81-33-581-1101,

Fax: 011-81-581-0762. For further information contact: ISTA, Inc., 950 Conestoga Road, Rosemont, Pennsylvania 19010-1347,

Telephone: (610) 527-4538, Fax: (610) 527-2041.

Patent View Patent Images JPO CD-ROM
A Guide to Japan’s Patent System 69

OFFICE OF TECHNOLOGY POLICY

This news service tracks patent information worldwide. It is a

way to perform patent searches and access information on the

patenting process anywhere in the world.

United States Patent and Trademark Office

URL: http://www.uspto.gov

Includes online publications, including two PTO pamphlets

containing general information about Patents and Trademarks.

The Copyright Office, which is under the Library of Congress,

provides similar information on copyrights. You may also wish

to browse through speeches and press releases at the Patent

Office. Contains links and information on collaborative

projects, current news, announcements, public hearings, and

information on important patent law changes.

U.S. Patent Databases

URL: http://town.hall.org/patent/patent.html

This public service is not affiliated in any way with the U.S.

Patent and Trademark Office. The database is maintained by

the Internet Multicasting Service. The cost is free. Includes

Patent Full-Text/APS File for 1994 and 1995. Field name abbreviations in the original feed have been expanded into humanreadable form. Also, contains links to other related sources.

World Intellectual Property Organization (WIPO)

URL: http://ananse.irv.uit.no/trade_law/i_p/wipo/art/

wipo.html

The World Intellectual Property Organization (WIPO) is an

intergovernmental organization with headquarters in Geneva,

Switzerland. It is one of the 16 “specialized agencies” of the

United Nations system of organizations. WIPO is responsible

for the promotion of the protection of intellectual property

throughout the world through cooperation among States, and

for the administration of dealing with the legal and administrative aspects on intellectual property. Includes Member States,

Member Missions, and original text of the Agreement between

WIPO and the United Nations.
70 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

World Intellectual Property Organization (WIPO)

URL: http://www.uspto.gov/wipo.html

WIPO information located on the USPTO WWW server. Includes Introduction, Handbook on Industrial Property Information and Documentation, International Patent Classification

Information, Patent Cooperation Treaty (PCT) information,

laws, treaties, and agreements concerning international intellectual property rights.

EINet Galaxy

URL: http://galaxy.einet.net/galaxy/Law/IntellectualProperty.html

Provides a guide and many links on intellectual property

organizations and issues around the world. Includes search

capabilities.

Intellectual Property Rights and Dissemination (IPRD)

URL: http://www.sfc.keio.ac.jp/~t92049yi/iprdhome.html

IPRD is a project of Keio University SFC (Shonan Fujisawa

Campus) Naemura Laboratory to make their research and

other information about IPR public on the WWW. Most of

material is in Japanese.

Japanese Patent Office Release of Data Base of the Patent

Abstracts of Japan in English.

URL: http://www.jef.or.jp/news/rdb.html

The JPO describes how to obtain the Patent Abstracts of Japan

in English (PAJ) CD-ROM.

New and notable U.S.-based, private Japanese patent retrieval

and translations services with Internet access are:

ISTA, INC.

950 Conestoga Road

Rosemont, Pennsylvania 19010-1347

Telephone: (610) 527-4538

Fax: (610) 527-2041

Contact Person: Dr. Alan Engel

E-mail: aengel@netaxs.com

World Wide Web: http://www.netaxs.com/~aengel/ista.htm
A Guide to Japan’s Patent System 71

OFFICE OF TECHNOLOGY POLICY

MICROPATENT

250 Dodge Avenue

East Haven, Connecticut 06512-3358

Telephone: (800) 648-6787, (203) 648-6787

Fax: (203) 466-5054

E-mail: infor@micropat.com

World Wide Web: http://www.micropat.com

On the Internet, this firm offers U.S. patent information and

starting July 1995 it began to offer translated titles, document

numbers, number of pages, and assignees of Japanese kokai

documents, key word searchable. Full translations are available.

Search Strategies

For a bibliography of books and articles that can help search, retrieve, and

work with Japanese patent documents see section II.

Starting in 1995, a new generation of software tools will be introduced by

the leading database providers that will make the process of accessing

online patent data and related S&T information easier. It is worthwhile to

discuss search strategies with your database and software providers.

Dialog has BusinessBase. This software enables users to access over 50

business databases, including patent information. STN has SciFinder, a

Windows-based software tool that offers direct Internet access to information on the Chemical Abstracts Service. ScienceBase, also by Dialog and to

be introduced in 1996, will enable the user to access over the Internet

patent data from over 90 Dialog databases. There are also a number of

products, such as SmartCharts by TRW Business Intelligence, that can

search and arrange data to create a technology analysis without a detailed

knowledge of complex search commands.

One of the unique and easier-to-use database patent search strategies has

been suggested by Jeffrey Forman, patent counsel at IBM. He has observed

that Japanese firms tend to file outside of Japan only on their more important inventions. NEC, for example, has reported that only 2.8 percent of

the Japanese patent applications that they filed in 1988 were also filed in

other countries. In addition, it is common for the Japanese to combine a

number of applications filed in Japan on separate embodiments into a

single application when they file outside of Japan. Thus, by looking at

these foreign filings by the Japanese, you are not only getting the benefit
72 A Guide to Japan’s Patent System

OFFICE OF TECHNOLOGY POLICY

of Japan’s selectivity, but you are also avoiding redundant analysis of

essentially identical individual Japanese publications.

Japan’s patent applications at the European Patent Office, as in Japan, are

published 18 months after their filing date. It is not unusual, however, to

find the EPO publishing these applications (kokai) slightly earlier than the

JPO. Because of the huge number of filings in Japan that cause printing

backlogs, the EPO publication date can be two months or more before the

JPO publication date.

Appendix D offers a number of English-language search examples for

keywords, analyzing areas of inventive activity, and analyzing examined

patent applications, using JAPIO. These searches were performed by Mr.

Forman in mid-1994. Appendix E contains a resource list for Japanese

patent-related information.