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HYSTORICAL BACKGROUND

BASIC LAWS

PROCEDURE FLOWS

COMPARISON BETWEE N BRAZILIAN AND JAPANESE PATENT SYSTEMS

INPI (BRAZIL) NOWADAYS

FURTHER INFORMATION

"M OST IMPORTANT" LAWS ARTICLES

BRAZILIAN PATENT SYSTEM

A BRIEF INTRODUCTION

Rafael R. Brando (M.Sc Physics, patent examiner)

INPI (National Institute of Industrial Property) - Brazil

January 2012

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AGENDA

1 Hystorical Background2 Filing a patent application in Brazil (Basic requirements);

3 Workflow of a patent application in Brazil;

4 The Brazilian Patent System and The Japanese Patent System;

5 INPI of 2012

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HOW EVERYTHING STARTED:

1809: D. Joo VI set up the

license for inventions of new

machines that could speed up

the economy;1814: One of the first patents

was granted in Brazil for

mining service machines;

1824: the Empire Constitution

guaranteed the rights to

inventors for their inventions;

1830: Brazilian law of 1830 for

patents of invention.

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WHERE DID IT LEAD TO?

1883: Signing of the Paris Convention;

1945: First Code: 7903/45;

1970: Creation of INPI (Law no5648);

1971: Law no5772 (outdated now);

1996: Law no9279 (current);

2009:INPI began the activities as ISA/IPEA

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NATIONAL LAW ( BRAZIL)

FORMAL RULES

ART. 5 (CONSTITUTION OF BRAZIL)

Article 5: All persons are equal before the law,

without any distinction whatsoever, Brazilians and

foreigners residing in the country being ensured of

inviolability of the right to life, to liberty, to

equality, to security and to property, on the

following terms:XXI - the law shall ensure the

authors of industrial inventions of a temporary

privilege for their use,as well as protection of

industrial creations, property of trademarks, namesof companies and other distinctive signs, viewing

the social interest and the technological and

economic development of the country;

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FORMAL RULES

MAKING A SUCESSFUL APPLICATION (BASIC

KNOWLEDGE)

Patents may be granted in Brazil for the protection ofinventionsand utility models.

1 Basic requirements:

Novelty: Brazilian legislation applies the concept of absolute

novelty in determining the state of the art;Industrial Applicability: An invention is considered of industrial

applicability when it can be manufactured or utilized industrially;

Inventive step: For Inventions/Utility Models, the requirement of an

inventive step is also considered.

2 Publication/DisclosureAfter 18 months, following the earliest priority or the date of filing.

3 Protection

A patent of Invention is protected for 20 years (from the date of filling);

A patent of Utility Model is protected for 15 years (from the date of

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FORMAL RULES


KNOWLEDGE)









3 Protection



filling).6 / 5 8

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FORMAL RULES


KNOWLEDGE)









3 Protection



filling).6 / 5 8

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FORMAL RULES


KNOWLEDGE)








2

Publication/DisclosureAfter 18 months, following the earliest priority or the date of filing.

3 Protection



filling).6 / 5 8

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FURTHER INFORMATION



FORMAL RULES

THE STRUCTURE OF A PATENT APPLICATION

The structure and format of a patent application are determined by rules

defined byArticle 19 IPLand NA 127/97.

Art.19 IPLA patent application, inaccordance with the conditionsestablished by INPI, shall contain:

Request;

Description;

Claims;

Drawings, if any;

Abstract; and

Proof of payment of the filing fee

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FORMAL RULES

FORMAL REQUIREMENTS

Description (NA 127/97 item 15.1.2)

The patent description shall:

1 Begin with the title (item a);

2 Refer to a single invention, or to a group interrelated inventions(item b and IPL Art. 22);

3 Specify the technical field (item c);

4 Describe the state of the art... pointing out the existing technicalproblems (item d);

5 Define the objects and advantages of the invention (item e);

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FURTHER INFORMATION



FORMAL RULES

FORMAL REQUIREMENTS








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FURTHER INFORMATION



FORMAL RULES

FORMAL REQUIREMENTS








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FORMAL RULES

FORMAL REQUIREMENTS








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FORMAL RULES

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HYSTORICAL BACKGROUNDBASIC LAWS
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FORMAL RULES

FORMAL REQUIREMENTS


6 Point out the novelty (IPL Article 11) and technical effectachieved (item f and IPL Art. 13);

7 Describe the invention to enable a person skilled in the art torealize the same (item i and IPL Art. 24);

8 Indicate the industrial use when the same is not obvious (item k

and IPL Art. 15).

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FORMAL RULES

FORMAL REQUIREMENTS





and IPL Art. 15).

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FORMAL RULES

FORMAL REQUIREMENTS





and IPL Art. 15).

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FORMAL RULES

FORMAL REQUIREMENTS

Claims (NA 127/97 item 15.1.3.1)

1 The quantity should be sufficient to correctly define the subjectmatter (item a);

2 The claims should be numbered consecutively, in Arabic

numerals (item b);

3 The claims can be of one or several categories...provided theyare linked by a single inventive concept (item c);

Claims (IPL)

1 The claims must be based on the description...defining clearlyand precisely the subject matter to be protected (IPL Art. 25);

2 The extension of the protection ... will be determined by thecontent of the claims, interpreted in the light of the descriptionand drawings (IPL Art. 41).

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FORMAL RULES

FORMAL REQUIREMENTS

Claims (NA 127/97 item 15.1.3.1)



numerals (item b);3 The claims can be of one or several categories...provided they

are linked by a single inventive concept (item c);

Claims (IPL)



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FORMAL RULES

FORMAL REQUIREMENTS

Claims (NA 127/97 item 15.1.3.1)





Claims (IPL)



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FORMAL RULES

FORMAL REQUIREMENTS

Claims (NA 127/97 item 15.1.3.1)





Claims (IPL)



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PROCEDURE FLOWSNATIONAL LAW ( BRAZIL)


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FORMAL RULES

CLAIMS

Preamb Characterized by Characterizing part

Evidentiate the category ofthe claim: products, pro-cesses, methods, etc.

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FORMAL RULES

CLAIMS

Preamb Characterized by Characterizing part

Evidentiate the category ofthe claim: products, pro-cesses, methods, etc.

Obligatory

expression

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PROCEDURE FLOWS

C


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FURTHER INFORMATION


BRAZILIAN WORKFLOW - THE BEGINNING

Filling of the application

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FURTHER INFORMATION




Priority document

12m (Art. 16)

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Priority document

12m (Art. 16)

Prel. formal examinationArt. 20

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Priority document

12m (Art. 16)


Art. 19 - Ok?

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Priority document

12m (Art. 16)


Art. 19 - Ok?Formal exigences+ RPI 2.5 No (Art. 21)

Numeration +RPI 2.1

Yes

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Priority document

12m (Art. 16)



Numeration +RPI 2.1

Yes

Problems solved

30 days

Yes

Dismissal ofthe application

No

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Priority document

12m (Art. 16)



Numeration +RPI 2.1

Yes

Problems solved

30 days

Yes

Dismissal ofthe application

No

National defence?

Yes

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INPI (B )


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FURTHER INFORMATION


BRAZILIAN WORKFLOW (PUBL/EXAM)

Anticipated on

request by the

applicant

Publication of

the application

(RPI 3.1)

18 months fromthe date of filing

or of the earliest

priority

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FURTHER INFORMATION



Anticipated on

request by the

applicant

Publication of

the application

(RPI 3.1)


or of the earliest

priority

Art. 30 (1)

Art. 30

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Anticipated on

request by the

applicant

Publication of

the application

(RPI 3.1)


or of the earliest

priority

Art. 30 (1)

Art. 30

Request forexamination?

Art. 33

Within 36 monthscounted from the

date of filing

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Anticipated on

request by the

applicant

Publication of

the application

(RPI 3.1)


or of the earliest

priority

Art. 30 (1)

Art. 30


Art. 33


date of filing

Dismissal(RPI 11.1)

No

Examination ofthe application

Yes

Documents for aidingexamination (Art. 31)

Art. 31 - At least 60 days from

the publication

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( )

FURTHER INFORMATION



Anticipated on

request by the

applicant

Publication of

the application

(RPI 3.1)


or of the earliest

priority

Art. 30 (1)

Art. 30


Art. 33


date of filing

Dismissal(RPI 11.1)

No

Examination ofthe application

Yes

Documents for aidingexamination (Art. 31)


the publication

Request for rein-

statement of theapplication (60d)Yes

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FURTHER INFORMATION



Anticipated onrequest by the

applicant

Publication of

the application

(RPI 3.1)


or of the earliest

priority

Art. 30 (1)

Art. 30


Art. 33


date of filing

Dismissal(RPI 11.1)

No

Examination of

the application

Yes

Documents for aiding

examination (Art. 31)


the publication

Request for rein-

statement of theapplication (60d)Yes

Definitive dismissal

(RPI11.1.1)

No

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BRAZILIANS WORKFLOW- EXAMINATION (DETAILS)

Examination of the application

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FURTHER INFORMATION




Requirements regarding formal aspects?

Art. 34

Solved

Yes (60d)

Not solved

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Art. 34

Solved

Yes (60d)

Not solved Dismissal

RPI 11.5

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Art. 34

Solved

Yes (60d)

Not solved

Dismissal

RPI 11.5

Search and Technical reports

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U N O ON





Art. 34

No


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AllowanceRPI 9.1

Request for amendmentRPI 6.1

Opinion for non-patenteability RPI 7.1

Art.36 Art.37

Art.36

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M OST IMPORTANT LAW S ARTICLES

REQUEST FOR AMENDMENT


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(i) division (Art. 35 (III))(ii) technical (Art. 35 (IV))

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Answered -

Art.36 (2) 90d

Not answered - Art.36

(1) 90d

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Answered -

Art.36 (2) 90d


(1) 90d

Definitive dismissalRPI 11.2

Not okOk Remarks

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Answered -

Art.36 (2) 90d


(1) 90d

Definitive dismissalRPI 11.2

Not okOk Remarks

Allowance RPI 9.1

Art. 37

Examination continues

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OPINION FOR NON-PATENTEABILITY

Opinion for non-patenteabilityRPI 7.1

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(i) Patenteability (Art. 35 (I))(ii) Adaptation to the nature of protection claimed (Art. 35 (II))

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Contested -

Art.36 (2) 90d

Not contested - Art.36

(2o) 90d

Patent rejectedRPI 9.2

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Contested -

Art.36 (2) 90d


(2o) 90d


Not acceptedAccepted

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Contested -

Art.36 (2) 90d


(2o) 90d


Not acceptedAccepted Art. 37

Allowance RPI 9.1

Art. 37


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BRAZILIAN AND JAPANESE PATENT SYSTEMS

Situation Brazil Japan

Substantive

examinationYes (even for utility models) Yes

Term of right

Patents for Inventions/Utility

Models are granted for 20/15

years. Art. 40

20 years from the filing dateArt. 67

Subjects of

protection

Specially what is "defined" by

the law articles 8, 9 and 24Art. 8, Art. 9 and Art. 24

Highly advanced creations of atechnical idea using a natural

law Art. 1 and Art. 2

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Substantive

examination

Yes (even for utility models) Yes

Term of right



years. Art. 40


Subjects of

protection





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Substantive

examination


Term of right



years. Art. 40


Subjects of

protection





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Substantive

examination


Term of right



years. Art. 40


Subjects of

protection


the law articles 8, 9 and24 Art. 8, Art. 9 and Art. 24



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Divison of a

patent

application

Can be divided before the end

of examination Art. 26

Restricted to the same period as

permitted for amendment

Art. 44

Replies to

Official

Reports

90days for any applicant

Art. 36

60days for domestic applicants,

90days for foreign applicants

(JPOs practical rule)

Allowed

period for

amendment

Applicants can amendvoluntarily beforerequest for

examination

Art. 32

Applicants can amend voluntarilyeven afterrequest for

examination

Art.17 Art.50

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Divison of a

patent

application





Art. 44

Replies to

Official

Reports


Art. 36




Allowed

period for

amendment


examination

Art. 32


examination

Art.17 Art.50

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Divison of a

patent

application





Art. 44

Replies to

Official

Reports


Art. 36




Allowed

period for

amendment


examination

Art. 32


examination

Art.17 Art.50

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Divison of a

patent

application





Art. 44

Replies to

Official

Reports


Art. 36




Allowed

period for

amendment


examination

Art. 32


examination

Art.17 Art.50

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What cannot

be

protected?

Explicitly described in the IPLArt. 10

Art. 18

Detailed information in theguidelines for examination

Description

of the

invention

Enable somebody skilled in theart to perform the invention

Art. 24

Similar

Art. 36(4)

When an

invention is

considered

new?

If its not part of the state of the

artArt. 11

Pay attention to:Art. 12

Art. 29(1) Art. 29(2)

Attention to:Art. 30

Art. 30 cont

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What cannot

be

protected?


Art. 18


Description

of the

invention


Art. 24

Similar

Art. 36(4)

When an

invention is

considered

new?


artArt. 11


Art. 29(1) Art. 29(2)

Attention to:Art. 30

Art. 30 cont

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What cannot

be

protected?


Art. 18


Description

of the

invention


Art. 24

Similar

Art. 36(4)

When an

invention is

considered

new?


artArt. 11


Art. 29(1) Art. 29(2)

Attention to:Art. 30Art. 30 cont

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What cannot

be

protected?


Art. 18


Description

of the

invention


Art. 24

Similar

Art. 36(4)

When an

invention is

considered

new?


artArt. 11


Art. 29(1) Art. 29(2)

Attention to:Art. 30Art. 30 cont

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Inventive

steps

An invention shall be taken to

involve inventive activity when,

for a person skilled in the art, it

does not derive in an evident or

obvious manner from the state

of the art Art. 13

Those that cannot be invented"easily"

Art. 29(2)

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Inventive

steps

An invention shall be taken to

involve inventive activity when,

for a person skilled in the art, it

does not derive in an evident or

obvious manner from the state

of the art Art. 13

Those that cannot be invented"easily"

Art. 29(2)

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CURRENT SITUATION OF INPI (PATENTS)
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... 2006 2012

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Decisions 2006 2007 2008 2009 2010*

Archives 9232 14611 9460 9363 12401

Denials 1066 824 2729 2499 3394

Granted Patents 2785 1855 2824 3153 3620

Waivers Approved 77 43 52 62 56

Total 13160 17333 15065 15077 19471

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( )

Solutions1 Increasing the number of examiners:

2006 ... 2010105 ~270

2 Other possibilities (under study):

First Action;

(i) Only for applications filled in Brazil, (ii) written opinion about

patenteability

Green Patents;Applications related to some IPC Symbols (defined by WIPO)will/could have a prioritary processing

PPH

Avoiding redundance of work

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Solutions1 Increasing the number of examiners:

2006 ... 2010105 ~270

2 Other possibilities (under study):

First Action;

(i) Only for applications filled in Brazil, (ii) written opinion about

patenteability

Green Patents;Applications related to some IPC Symbols (defined by WIPO)will/could have a prioritary processing

PPH

Avoiding redundance of work

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Major problems:Transition to PAPERLESS

Steps:

Tackle the problem

domestically (applicationselectronically available tothe examiners);

Make the system availableto the end users (technical

reports and letter patents);OnLine Filling? (Soon...)

Solutions:

2 6 / 5 8 HYSTORICAL BACKGROUND

BASIC LAWS



FURTHER INFORMATION


THE END
http://ecarta.inpi.gov.br/ecartahttp://eparecer.inpi.gov.br/eparecerhttp://evista.inpi.gov.br/http://find/


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Obrigado - Thank You

Rafael Ribeiro Brando ([email protected])


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FURTHER INFORMATION


FINAL REMARKS - FUTURE PERSPECTIVES


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Strategic planning of INPI:

Consolidation of the results achieved in recent years and

advancement of structural reforms;efficiency and operational quality;

strategic use of intellectual property by Brazilian and residents;

regional integration;

enhacement of the global intellectual property and repositioning of

INPI


BASIC LAWS



FURTHER INFORMATION


MOST EXAMINED APPLICATIONS - IPC SYMBOLS


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FURTHER INFORMATION


USEFUL LINKS
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Main Brazilian IP Laws: enacted by the Legislature:

http://www.wipo.int/wipolex/en/profile.jsp?code=BR

Law No. 9.279 of 14 May 1996 (Industrial Property)http://www.wipo.int/wipolex/en/details.jsp?id=515

Law No. 10.196 of 14 February 2001 (Amends Law on IndustrialProperty) http://www.wipo.int/wipolex/en/details.jsp?id=547

INPI Normative Act No. 127/97 of 5 March 1997 (Implementing Industrial

Property Law) http://www.wipo.int/wipolex/en/details.jsp?id=520

Provisional Act No. 2.186-16, Dated 23 August 2001 (Genetic Heritage

& Traditional Knowledge)

http://www.wipo.int/wipolex/en/details.jsp?id=5897

INPI Resolution No. 191/08 (Priority Right for Patent Application)http://www.wipo.int/wipolex/en/details.jsp?id=8390


BASIC LAWS



FURTHER INFORMATION


USEFUL LINKS
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IP Legal Literature (portuguese only)

Guidelines for Examination of a Patenthttp://www.wipo.int/wipolex/en/details.jsp?id=8341

Guidelines for the Examination of Patent Applications in theBiotechnology and Pharmaceutical Filed After 31/12/1994http://www.wipo.int/wipolex/en/details.jsp?id=8342

Patent Forms Folderhttp://www.inpi.gov.br/images/stories/downloads/patentes/zip/Formularios_patentes.zip

Download of Biological Sequences Softwarehttp://www.inpi.gov.br/images/stories/downloads/patentes/zip/SisBioList-instala.exe

Brazilian IP Office Feeshttp://www.inpi.gov.br/images/stories/Tabela_Retribuicao_2012_DIRPA.pdf

Search Brazilian Patent Databasehttp://pesquisa.inpi.gov.br/MarcaPatente/jsp/servimg/servimg.jsp?BasePesquisa=Patentes

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BASIC LAWS



FURTHER INFORMATION


USEFUL LINKS


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Interesting websites

INPI - Balance and Perspectives

http://www.inpi.gov.br/images/stories/downloads/pdf/INPI_Relatorio_Comunicacao_ingles.pdf

National Health Surveillance Agency website (english version)http://www.anvisa.gov.br/eng/index.htm

Board of Management of Genetic Resources (CGEN)http://www.mma.gov.br/sitio/en/


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JAPANESE PATENTACT

ART. 8, 9 AND 24 (LAW no9279)
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Article 8 - To be patentable an invention must meet the requirementsof novelty, inventive activity and industrial application.Article 9 - An object of practical use, or part thereof, is patentable asa utility model, when it is susceptible of industrial application,presents a new shape or arrangement and involves an inventive actthat results in a functional improvement in its use or manufacture.

Article 24 - The specification must describe the subject matter clearlyand sufficiently so as to enable a person skilled in the art to carry itout and to indicate, when applicable, the best mode of execution.Sole Paragraph - In the case of biological material essential for thepractical execution of the subject matter of the application, which

cannot be described in the form of this article and which has not beenaccessible to the public, the specification will be supplemented by adeposit of the material in an institution authorized by INPI or indicatedin an international agree

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BRAZILIANS I PLJAPANESE PATENTACT

ART. 10 (LAW no9279)
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Article 10 - The following are not considered to be inventions or utilitymodels:I - discoveries, scientific theories and mathematical methods; II -purely abstract concepts; III - schemes, plans, principles or methodsof a commercial, accounting, financial, educational, publishing, lottery

or fiscal nature; IV - literary, architectural, artistic and scientific worksor any aesthetic creation; V - computer programs per se; VI - thepresentation of information; VII - rules of games; VIII - operating orsurgical techniques and therapeutic or diagnostic methods, for use onthe human or animal body; and IX - natural living beings, in whole orin part, and biological material, including the genome or germ plasm

of any natural living being, when found in nature or isolatedtherefrom, and natural biological processes.

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Article 11 - Inventions and utility models are considered to be newwhen not included in the state of the art. 1 - The state of the artcomprises everything made accessible to the public before the dateof filing of a patent application, by written or oral description, by useor any other means, in Brazil or abroad, without prejudice to the

provisions of articles 12, 16 and 17. 2 - For the purpose ofdetermining novelty, the whole contents of an application filed inBrazil, but not yet published, will be considered as state of the artfrom the date of filing, or from the priority claimed, provided that it ispublished, even though subsequently. 3 - The provisions of theprevious paragraph will be applied to an international patent

application filed in accordance with a treaty or convention in force inBrazil, provided that there is national processing.

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Article 12 - The disclosure of an invention or utility model whichoccurs during the twelve months preceding the date of filing or priorityof the patent application will not be considered as part of the state ofthe art, provided such disclosure is made: I - by the inventor; II - bythe National Institute of Industrial Property - INPI, by means of the

official publication of a patent application filed without the consent ofthe inventor and based on information obtained from him or as aresult of his acts; or III - by third parties, on the basis of informationreceived directly or indirectly from the inventor or as the result of hisacts. Sole Paragraph - INPI may require the inventor to provide a

declaration relating to the disclosure, accompanied or not by proof,under the conditions established in the rules.

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Article 13 - An invention shall be taken to involve inventive activity

when, for a person skilled in the art, it does not derive in an evident orobvious manner from the state of the art.

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Article 18 - The following are not patentable: I - that which is contrary tomorals, good customs and public security, order and health; II - substances,

matter, mixtures, elements or products of any kind, as well as the

modification of their physical-chemical properties and the respective

processes of obtaining or modifying them, when they result from the

transformation of the atomic nucleus; and III - living beings, in whole or in

part, except transgenic micro-organisms meeting the three patentability

requirements - novelty, inventive activity and industrial application - provided

for in article 8 and which are not mere discoveries; Sole Paragraph - For the

purposes of this law, transgenic micro-organisms are organisms, except the

whole or part of plants or animals, that exhibit, due to direct human

intervention in their genetic composition, a characteristic that can notnormally be attained by the species under natural conditions.

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Article 24 - The specification must describe the subject matter clearlyand sufficiently so as to enable a person skilled in the art to carry itout and to indicate, when applicable, the best mode of execution.

Sole Paragraph - In the case of biological material essential for thepractical execution of the subject matter of the application, whichcannot be described in the form of this article and which has not beenaccessible to the public, the specification will be supplemented by adeposit of the material in an institution authorized by INPI or indicatedin an international agreement.

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Article 32 - In order better to clarify or define a patent application,applicant may effect amendments up to the date a request for

examination is made, provided such amendments be limited to thesubject matter initially disclosed in the application.

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Article 33 - Examination of a patent application must be requested bythe applicant or by any interested party, within 36 (thirty-six) months

counted from the date of filing, under pain of dismissal of theapplication.

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Article 36 - When the Official report is for non-patentiability or for theinadequacy of the application for the nature of protection claimed or

requires technical amendments, the applicant will be notified to replywithin 90 (ninety) days.

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Article 40 - A Patent of invention will have a term of 20 (twenty) yearsand a utility model patent a term of 15 (fifteen) years, counted fromthe filing date.Sole Paragraph - The term will not be less than 10 (ten) years forpatents of invention and 7 (seven) years for utility model patents,counted from grant, except when INPI is prevented from proceedingwith the examination as to the merit of the application, due to aproven pendente lite or for reasons of force majeure.

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ART. 1 AND ART. 2 (JAPANESEPATENT ACT)
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(Purpose)Article 1 - The purpose of this Act is, through promoting the protectionand the utilization of inventions, to encourage inventions, and therebyto contribute to the development of industry.(Definitions)Article 2 (1) - "Invention" in this Act means the highly advancedcreation of technical ideas utilizing the laws of nature...

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ART. 29(1) (JAPANESE PATENT ACT)


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Article 29 (1) - An inventor of an invention that is industriallyapplicable may be entitled to obtain a patent for the said invention,except for the following: (i) inventions that were publicly known inJapan or a foreign country, prior to the filing of the patent application;

(ii) inventions that were publicly worked in Japan or a foreign country,prior to the filing of the patent application; or (iii) inventions that weredescribed in a distributed publication, or inventions that were madepublicly available through an electric telecommunication line in Japanor a foreign country, prior to the filing of the patent application...

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Article 29 (1) - An inventor of an invention that is industriallyapplicable may be entitled to obtain a patent for the said invention,except for the following: (i) inventions that were publicly known inJapan or a foreign country, prior to the filing of the patent application;

(ii) inventions that were publicly worked in Japan or a foreign country,prior to the filing of the patent application; or (iii) inventions that weredescribed in a distributed publication, or inventions that were madepublicly available through an electric telecommunication line in Japanor a foreign country, prior to the filing of the patent application...

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Article 29 (2) - Where, prior to the filing of the patent application, aperson ordinarily skilled in the art of the invention would have beenable to easily make the invention based on an invention prescribed in

any of the items of the preceding paragraph, a patent shall not begranted for such an invention notwithstanding the precedingparagraph...

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Article 29 (2) - Where, prior to the filing of the patent application, aperson ordinarily skilled in the art of the invention would have beenable to easily make the invention based on an invention prescribed in

any of the items of the preceding paragraph, a patent shall not begranted for such an invention notwithstanding the precedingparagraph...

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ART. 30 (JAPANESEPATENT ACT)


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Article 30 (Exception to lack of novelty of invention) (1) In the case of an invention which has fallenunder any of the items of Article 29 (1) by reason of the fact that the person having the right toobtain a patent has conducted a test, has made a presentation in a printed publication, has made apresentation through electric telecommunication lines, or has made a presentation in writing at astudy meeting held by an academic group designated by the Commissioner of the Patent Office,such invention shall be deemed not have fallen under any of the items of Article 29(1) for the

purposes of Article 29(1) and (2) for the invention claimed in a patent application which has beenfiled by the said person within six months from the date on which the invention first fell under any ofthose items. (2) In the case of an invention which has fallen under any of the items of Article 29 (1)against the will of the person having the right to obtain a patent, the preceding paragraph shall alsoapply for the purposes of Article 29(1) and (2) to the invention claimed in the patent applicationwhich has been filed by the said person within six months from the date on which the invention firstfell under any of those paragraphs.

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ART. 30 (CONT)(JAPANESEPATENT ACT)


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(3) In the case of an invention which has fallen under any of the items of Article 29 (1) by reason ofthe fact that the person having the right to obtain a patent has exhibited the invention at anexhibition held by the Government or a local public entity (hereinafter referred to as the"Government, etc."), an exhibition held by those who are not the Government, etc. where suchexhibition has been designated by the Commissioner of the Patent Office, an internationalexhibition held in the territory of a country of the Union of the Paris Convention or a member of theWorld Trade Organization by its Government, etc. or those who are authorized thereby to hold suchan exhibition, or an international exhibition held in the territory of a state which is neither of a

country of the Union of the Paris Convention nor a member of the World Trade Organization by itsGovernment, etc. or those who are authorized thereby where such exhibition has been designatedby the Commissioner of the Patent Office, paragraph (1) shall also apply for the purposes of Article29(1) and (2) to the invention claimed in the patent application which has been filed by the saidperson within six months from the date on which the invention first fell under any of those items. (4)Any person seeking the application of paragraph (1) or (3) shall submit to the Commissioner of thePatent Office, at the time of filing of the patent application, a document stating thereof and, withinthirty days from the date of filing of the patent application, a document proving the fact that the

invention which has otherwise fallen under any of the items of Article 29(1) is an invention to whichparagraph (1) or (3) of this Article may be applicable.

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Article 36 (1) A person requesting the grant of a patent shall submit an application to the

Commissioner of the Patent Office stating the following: (i) the name and domicile or residence of

the applicant(s) for the patent; and (ii) the name and domicile or residence of the inventor(s). (2)

The description, scope of claims, drawings (where required), and abstract shall be attached to the

application. (3) The description as provided in the preceding paragraph shall state the following: (i)

the title of the invention; (ii) a brief explanation of the drawing(s); and (iii) a detailed explanation of

the invention. (4) The statement of the detailed explanation of the invention as provided in item (iii)

of the preceding Paragraph shall comply with each of the following items: (i) in accordance with

Ordinance of the Ministry of Economy, Trade and Industry, the statement shall beclear and sufficient as to enable any person ordinarilyskilled in the art to which the invention pertains to work

the invention...

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Article 44 (1) An applicant for a patent may extract one or more new patentapplications out of a patent application containing two or more inventions only

within the following time limits:(i) within the allowable time limit foramendments of the description, scope of claims or drawings attachedto the application; (ii) within 30 days from the date on which a certifiedcopy of the examiners decision to the effect that a patent is to be

granted (excluding the examiners decision to the effect that a patent is to be grantedunder Article 51 as applied mutatis mutandis under Article 163(3) and the examiners

decision to the effect that a patent is to be granted with regard to a patent application

that has been subject to examination as provided in Article 160(1)) has beenserved; and (iii) within 30 days from the date on which a certified copy

of the examiners initial decision to the effect that the application is tobe refused has been served.

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Article 50 Where the examiner intends to render an examinersdecision to the effect that an application is to be refused, theexaminer shall notify the applicant for the patent of the reasonstherefor and give the said applicant an opportunity to submit a writtenopinion, designating an adequate time limit for such purpose...

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Article 67(1) The duration of a patent right shall expire after a period of 20years from the filing date of the patent application.(2) Where there is a period during which the patented invention isunable to be worked because approvals prescribed by relevant Acts

that are intended to ensure the safely, etc. or any other dispositiondesignated by Cabinet Order as requiring considerable time for theproper execution of the disposition in light of the purpose,procedures, etc., of such a disposition is necessary to obtain for theworking of the patented invention, the duration of the patent right maybe extended, upon the filing of a request for the registration ofextension of the duration, by a period not exceeding 5 years.

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