Japanese patent protection
Likewise, patents granted in Japan have a history of being narrowly defined, so those firms that rely on patents need to be concerned about applying for patents in Japan.
Much has been made of the inability of Japan's patent system to protect the intellectual property of American firms. However, because technological innovation proceeds much faster than the patent system of any nation, patents may not have as much value as they are purported to have.
Nevertheless, patent protection is very important in the vital semiconductor and pharmaceutical industries, so a closer examination of Japan's patent system is called for.
One of the most important differences between the Japanese and American patent systems is that Japan uses the principle of protecting those who are first to file, while America protects those who are first to invent.
In this regard, Japan is much more in line with the rest of the world because with the exception of the US and the Philippines, every other nation follows the principle of first to file. While the Bush administration indicated that it wanted the US to move to a first-to-file system, the Clinton administration seems to favor the old first-to-invent system.
Because of the importance of the filing date, Japan is a signer to various international treaties that guarantee the priority of filing dates, even if the initial filing is done in another nation. That is, if an invention is filed in one nation, the date of that original filing becomes the priority date in Japan. However, there is a caveat and that is the inventor must also file in Japan within one year after the initial filing.
The duration of Japanese patents are 15 years, as opposed to 17 in the United States. The entire process from initial application to final approval of the patent's claims could take five years or more in Japan.
The actual patent application process involves the inventor filing for a patent with the patent office. The applicant may make several claims in a single application, and the application must be in Japanese. After 18 months, or 18 months after the priority date, if priority is claimed, the patent office lays the application open to the public.
The application is then examined by officials only after a request for examination is submitted. This is another difference between the US and Japan, because in the US, most patents are examined automatically.
Usually, an applicant will not want the Japanese authorities to examine the patent immediately. The reason for this is that the patent may be amended by the applicant before examination, but after examination is requested, it may not be amended.
Thus, a better strategy seems to be to wait about 24 to 30 months after the initial patent application in Japan. By this time, the results of the patent application in the US will be known, and this may enable the inventor to strengthen his or her application in Japan.
This strategy also allows the inventor to see the applications for similar inventions that all may have been filed near the same time. Remember, applications are opened to the public 18 months after application.
Finally, this strategy of delaying the examination somewhat will allow the applicant to study the commercial viability of a patent, and allow him or her to determine if it is worthwhile to continue the potentially costly application process.
Thus, because the examination itself will require about two to two and a half years, the entire process from patent application to approval could easily run five years. This is important to remember because although the Japanese have promised to reduce the examination time to an average of 24 months by 1995, they are talking about the examination time only. There is other time built into the total patent process, so again, time from application to grant could easily run five years.
Even when granted, Japanese patents tend to be narrowly defined. Taking advantage of this, there have been reports that Japanese firms will try to nullify the protective rights of a patent by effectively surrounding the original patent with similar patents, and then demanding that the original filer get into a cross-licensing arrangement.