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Report of Patents Committee Meeting

October 19, 2010

Kenji Asai

Co-chair of the Patents Committee

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Agenda of the Meeting

Introduction of Members Reports of Recognized Groups WIPO Watching Reports

PCT Working Group Report (Mr. Nagaoka) SCP (Standing Committee of the Law of Patents)

Report The 14th session (Jan. 25-29, 2010) (Mr. Fujioka) The 15th session (Oct. 11-15, 2010) (Mr. Bartlett)

• It was reported that the CAP issue will be further discussed at the next session.

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Special Topic Procedural Harmonization: Reinstatement of

Rights (in the context of Articles 11 to 13 of PLT) Closing of the Committee Meeting

Group Photo

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Special Topic Background

Patent Law Treaty (PLT) was adopted in 2000 and entered into force in 2005. The aim is to harmonize and streamline formal procedures of national applications and patents.

The content is user-friendly and provides maximum sets of formal requirements.

AU is already the contracting party of the PLT. Korea plans to join the PLT soon. Japan is also planning to join the PLT within a few years.

The other APAA member countries are expected to join the PLT in the near future.

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Related PLT Articles

Relief in Respect of Time Limits (Art.11) A contracting party may provide for the extension

for the time limit fixed by the Office for an action in a procedure before the Office in respect of an application or a patent.

Even if the contracting party does not provide for the extension of the time limit, the contracting party should provide for continued processing with respect to the application or patent under the prescribed condition.

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Related PLT Articles Reinstatement of Rights After a Finding of Due Care

or Unintentionality by the Office (PLT Article 12) A contracting party shall provide that, where an applicant

or owner has failed to comply with a time limit for an action in a procedure before the Office and that failure has the direct consequence of causing a loss of rights with respect to an application or patent, the Office shall reinstate the rights of the applicant or owner.

The Office finds that the failure to comply with the time limit occurred in spite of due care required by the circumstances having been taken or, at the option of the contracting party, that any delay was unintentional.

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Related PLT Articles

Correction or Addition of Priority claim; Restoration of Priority Right (PLT Article 13) A contracting party shall provide for correction or

addition of a priority claim under the prescribed condition.

A contracting party shall provide that, where a subsequent application which claims or could have claimed the priority of an earlier application has a filing date which is later than the date on which the priority period expired, but within the prescribed period (2 months), the Office shall restore the right of priority under the prescribed conditions.

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Special Topics

Issues when joining the PLT When the member country joins the PLT, the rule and law should be

reflected in the user-friendly manner as stipulated in the above articles. In particular, the reinstatement of lost rights and the restoration of the

priority right are determined based on either of the following two options (PLT Article 12(1)(iv) and 13(2)(iv)) selected by the country.

Due care standard, or Unintentionality standard

When the member country joins the PLT, the standard would be that which has already been employed in the country, if any.

Therefore, the Co-chairs have selected the special topic as the reinstatement of rights, so that the members should be well ware of the current law situation of their own countries and prepare for the future legislation when the member countries join the PLT.

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Discussion on Special Topics Introduction of “Reinstatement of Rights” in the PLT and general

landscape of the situations of EPC, US and Japan (Ms. Konishi) EPC has already employed a further processing system, as well as the

re-establishment of rights system based on all due care standard. US has already employed two kinds of reliefs: “unavoidable” and “unintentional” standards as a PLT-like system.

In Japan, however, no delay is allowed for the certain practices (Request examination and national entry term).

In Japan, the failure of the time limit for certain procedures (Appeal against the Final Rejection by an Examiner; Annuity payment, and Request for Retrial) may be remedied, but only for the un-imputable reason as very strict reason (circumstance which cannot be controlled by a person such as natural disaster).

Overview of Australian situation (Mr. Connor) AU is the contracting party of the PLT and accordingly, the procedures

are user-friendly. The failure to the time limit may be easily remedied or lapsed application and patent may be easily reinstated.

Overview of Korean situation (Ms. Lee) The current situation is almost the same as that of Japan, but the

standard for the due care (un-attributable reason) which is less strict than the “un-imputable reason” in Japan.

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Questionnaire Content of Questionnaire

The co-chairs have prepared the Questionnaire in order to know the current situations about the member countries or regions concerning reinstatement of rights.

Subjects to be questioned: Whether or not there is any general rule or law stipulating reinstatement

of rights? How is the procedure concerning time limit for responding to an Office

action on merits? How is the procedure concerning time limit for request for examination? How is the procedure concerning time limit for national entry? How is the procedure concerning time limit for filing an appeal against

the Final rejection by an Examiner? How is the procedure concerning time limit for paying a maintenance fee

(annual fee) for maintaining a patent right? How is the procedure for correction or addition of a priority claim as well

as for restoration of a priority right? How is the treatment for an intermediate right? Explanation of Court or Appeal cases relating to the above points.

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Questionnaire Consolidation of the answers to

Questionnaire Based on the answers, the Co-chairs have prepared

the tables wherein the answers from the groups for each item were consolidated as the document for the discussion in the Patents Committee meeting.

The tables are tentative ones, because some answers do not suitably respond to the questions or sometimes it seems that the answers for one question are not consistent with the answers to another question.

The Co-chairs believe that the correct or appropriate answers in the consolidated tables should be useful for our further discussion in the next year.

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Future Work The volume of the Consolidated Tables is large (90 pages). We had no much time for discussing all the items during the

meeting. Therefore, the Co-chairs requested the members to carefully

review the tables and send back any necessary modified answers or comments to the Co-chairs by the end of this October. The Co-chairs will finalize the tables for the purpose of further discussion.

Next year, the members will further discuss this issue based on the consolidated tables. Based on the tables, the members can overview the landscape of the rules and laws of the APAA member countries or regions.

Please note that almost of the answers from the groups are now uploaded on the APAA website. The remaining answers will be soon uploaded on the website. We believe that you could easily access to the answers.

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Kamusa Hamunida!

Kenji AsaiPatents Committee