The key rationale underpinning patent prosecution in Japan is, according to the JPO, “early establishment of strong and stable patent rights.” In order to accomplish this, the JPO has accelerated the speed of examination, while providing multiple measures for revocation for third parties. After grant, any party can file an opposition within six months, and an interested party can file nullity proceedings at any time. The JPO seems to expect that these revocation challenges, especially oppositions – which must be initiated at a very early stage after grant – will help to improve the quality of patents as a whole, as bad-quality patents would be revoked shortly after their grant. However, we tend to think that the current situation somewhat differs from the JPO’s expectation. Specifically, the grant rate at the JPO is currently around 75%, which is relatively high when compared to the numbers in other major jurisdictions, such as the USPTO, EPO, etc. We do not know whether this is an unwanted by-product of the examination acceleration that the JPO has achieved in this decade. At the very least, the JPO appears to expect that the opposition system newly introduced in 2015 would help improve the quality of patents. However, in reality, the opposition rate has been extremely low; only seven patents out of 1,000 granted patents were opposed in 2021. Therefore, we believe that the current patent scene in Japan is quite patenteefriendly; namely, a patent can be easily obtained, and with high speed. How long can the patent prosecution process be expected to take, and are there any reliable methods of expediting it? According to the latest official statistics, patent pendency (namely, the period from the date of examination request until a final deposition, including a grant of a patent) was 15.2 months on average in 2022. This is already the shortest period among major jurisdiction, such as the USPTO, EPO, etc., but the period can be accelerated even further by various official requests. Namely, requests for an accelerated examination, a superaccelerated examination, and entry into the Patent Prosecution Highway (PPH) program are available, as long as certain requirements are met. Under an accelerated examination, the first action pendency (the period from the date of the examination request until the JPO sends the first OA) is around 2.3 months (for a normal examination: 10.1 months), and this can be further accelerated under a super-accelerated examination. Most patent applications filed by applicants based outside Japan are likely to meet the requirements for both types of accelerated examination. When it comes to biotech-related patent filings, how can an applicant best increase their odds of having their application accepted? Even if the grant rate at the JPO is extremely high, there are some caveats. For example, although the JPO takes a relatively generous approach on added matter in the case of amendments, they tend to be relatively strict regarding 56 LAWYER MONTHLY AUGUST 2023 The current patent scene in Japan is quite patenteefriendly; namely, a patent can be easily obtained, and with high speed.
RkJQdWJsaXNoZXIy Mjk3Mzkz