For the benefit of our international readers, could you please outline the process of patent prosecution in Japan and the key regulation that underpins it? The process of patent prosecution in Japan can be initiated by filing a national application directly with the Japan Patent Office (JPO), or by entering the Japanese phase of a PCT application. For either route, a request for examination must be filed in order for an examiner at the JPO to examine the patentability of the application. Since this request can be filed at any time within three years from the date when the patent application was filed, the examination proceedings can be delayed, if necessary, by filing the request as late as possible. Such an approach is useful for biotech start-ups and the like, especially when they want to buy time to make critical decisions during patent prosecution (e.g. how to amend the claims), as it may take some time for them to finalise the details of their product or service. Such a ‘wait-and-see’ approach can also be accomplished by filing a divisional application (a child), as the same scope as that of the earlier application (a parent) can basically be pursued by a divisional application. Issues regarding the case of a double patenting situation between the parent and child can be cleared up later by making amendments to either or both of the claim sets in order to avoid overlap. There is no restriction on the number of generations of a divisional application; for example, based on a child application, a further divisional application (a grandchild) can be filed, and so on. Coming back to the process of patent prosecution after filing a request for examination, if an examiner determines that the patent application is not allowable, an office action (OA) is issued. This provides the applicant an opportunity to file a response – amendments to claims etc., if any, in addition to counter-arguments. If the examiner maintains the previously notified rejection even in view of the applicant’s response, a rejection decision is issued. An applicant can file an appeal against the rejection decision if they would like an appeal board (made up of three appeal examiners, who are more experienced than normal examiners) to review the case. The appeal board’s decision is appealable to the Japan IP High Court. Additionally, when filing an appeal, the applicant should consider whether to file a divisional application as a fall-back measure. Inside Biotech Prosecution in Japan The field of biotechnology is flourishing in Japan, with more than 1,200 biotech start-ups registered in the country as of late 2022. The sector’s growth has also seen complementary activity in the IP space. This month we hear from Masaki Morishima, a veteran patent attorney and partner at Saegusa & Partners, who offers an in-depth analysis of Japan’s patent prosecution landscape, looking in particular at biotech and the sciences. Expert Insight EXPERT INSIGHT 55
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