1. Introduction
1.6 CONCLUSIONS
There are two types of examination procedures, one is the accelerated procedures and the other one is computerized procedures, which will be discussed in more detail below.
5.2.4.1. Accelerated Procedures
Revised accelerated examination and revised accelerated appeal examination systems for patent applications were put in place on January 1, 1996. These revised systems are designed
to improve the procedures of the former systems, which had been utilized since February 1986.
The new systems seek to provide:
(1) International stabilization of patent rights;
(2) Stable use of inventions by granting rights promptly; and (3) Favorable procedures and implementation for the users.478
At the same time, the new systems take into consideration the impact of patent procedures on conventional applications and conventional appeals.
If a patent application qualifies for an accelerated examination, the Japanese Patent Office will promptly commence its examination for a patent application prior to conventional applications and will thereafter expedite the examination in order to dispose of it without delay. The Patent Office will register or make the decision to reject such an application within thirty-six months from the date of filing.479
Patent applications which satisfy all of the following requirements may be eligible for the accelerated examination procedure:
(1) The application is a “working-related application" or a foreign-related application. A
“working-related application” is a patent application where the invention is being worked by the applicant or a person licensed to work the invention. A “foreign-related application” is a patent application for which a corresponding application has also been filed in a patent office other than the Japanese Patent Office or an intergovernmental organization.480
(2) A request for examination has been made.
(3) The examination has not yet started.
478 JPO-Outline of Accelerated Examination and Accelerated Appeal Examination. Available at https://www.jpo.go.jp/torikumi_e/t_torikumi_e/outline_accelerated.htm
479 Id.
480 Id.
A request for accelerated examination is made by the filing of an “Explanation of Circumstances Concerning Accelerated Examination” for each patent application for which an accelerated examination is being requested.
The application should include such information as the item's workings related application, an explanation of working conditions, a prior art search, and a comparison with any prior art In the case of a foreign-related application, the applicant should also include an "indication of Application to a Patent Office other than the Japanese Patent Office.” No fees are charged for the filing of an application for an accelerated examination.481
A patent appeal can also be handled on an accelerated basis if:
(1) The application is a working-related application or a foreign-related application.
(2) 'The invention is being worked by the applicant or a person licensed to work the invention.
(3) The establishment of patent rights is urgently required.
The establishment of a patent right is urgent, where:
(1) A third party is apparently working the Invention without authorization or has apparently proceeded with considerable preparations, therefore.
(2) An opposition to the patent was being filed at the examination.
(3) Appeal examination by a collegial body has not yet started. (In cases where reconsideration by the examiner before an appeal is being made, it is eligible only after the result has been reported.)
(4) The case on appeal is against the examiner s decision of rejection.
A request for an accelerated appeal examination is made by the filing of an “Explanation of Circumstances Concerning Accelerated Appeal Examination.” The request should include an
“Explanation of Working Conditions," an “Explanation of Circumstances Requiring Urgency,"
481 Id.
and “Assertions Regarding Completeness of Specification.” No filing fees are required from an individual seeking an accelerated appeal.482
5.2.4.2. Computerized Procedures
For several years, the Japanese Patent Office has been promoting the Paperless Project as a way to deal with the gigantic amount of data stored as information related to patent applications. The Paperless System is designed to computerize operations from filing applications to examination and distribution of patent information to the public. The system consists of three subsystems.483
1. Electronic Application and Administrative Processing System. The computerized Paperless System processes whole transactions ranging from acceptance of applications to examination, registration and publication in the official gazette. This system features the first electronic filing of applications for patents and utility models in the world. The system accepted the first filing on December 1, 1990 and paved the way for applicants to file applications electronically on-line or using the conventional paper form. The Japanese Patent Office also uses an onon-line transmission system which enables applicants to receive online notifications at their own terminals. At the same time, the Patent Office also operates an online system that allows online inspection of the necessary documents.484
2. Comprehensive Document Database System. This system stores comprehensive domestic and foreign information on computer, including official gazettes related to patents, utility models, designs, and trademarks, and supersedes the paper-based manual practice of obtaining such information. The Comprehensive Document Database holds 41 million documents and the Japanese Patent Office makes the database available to the public.
482 Id.
483 David M. Epstein, Eckstrom's Licensing in Foreign and Domestic Operations: Licensing Operations in Japan.
Chapter 31.
484 Id.
3. Document Retrieval System. This system enables a computer search to be conducted for patent documents and the like, replacing the manual method for most prior art searches.
The Paperless System operates on a large scale and uses state-of-the-art computer technology.
Over the years since the system started, the Japanese Patent Office has been updating the system and also resolving numerous technical problems arising from computerization, such as formatting, communications, database construction, etc., and legal issues concerning the introduction of the on-line filing system and the associated application fee payment procedures.485