At the 3rd meeting of the Committee on Examination Standards held on June 30, 2009, the Committee concluded that a revision of the examination guidelines will not be necessary at this time in light of stable granting of patent rights and the stability of granted patents. It did preface that by concluding the committee will promptly review the standards if needed when the following situation arises; there is a new revision in the system, there are new court decisions, there are new technologies, and there are significant changes in the International situation.
The committee agreed that it will not only revise the examination guidelines based on the above when necessary, it will also create public relations material to make Japanese examination standards more user friendly. To this end, the JPO published a “Case Study on Inventive Step” in February of this year and the English translation was published in June this year.
Inside, you will find examples of:
Court decisions on inventive steps
Summaries on points to note when applying the guidelines to specific cases
Foreign practitioners and others filing in Japan may find this material useful in understanding the standards for examination for patentability and appropriateness of amendments and be better be prepared to devise more appropriate procedures when drafting descriptions and responding to a notification of reasons for refusal.
To read the English translation of the JPO’s “Case Study on Inventive Step”, click on this link to JPO’s website.