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Patent Agent Exam study materials
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Patent Agent Exam practice questions

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Question 1Patent Law and Practice

Under the Japanese Patent Act, within what period after receiving the examiner's final notice of reasons for refusal must a request for appeal against the examiner's decision of refusal (拒絶査定不服審判) be filed?

  1. Two months from the date of the examiner's final notice
  2. Three months from the date the decision is served Correct answer.
  3. Thirty days from the date the decision is served
  4. Six months from the date of the examiner's final notice

Explanation

A request for trial against a decision of refusal must be filed within three months counted from the date on which the certified copy of the decision is served on the applicant. Missing this period makes the decision final, subject only to a narrowly available extension request. The period runs from service of the decision, not from the earlier final notice of reasons for refusal.

Question 2Patent Law and Practice

An applicant files a Japanese patent application on 1 March 2023 claiming priority from a US application filed 1 March 2022. Which statement about the Paris Convention priority claim is correct?

  1. The priority claim is invalid because the twelve-month period expired on the same day the later application was filed
  2. The priority claim is valid because the later application was filed within twelve months of the earlier filing date Correct answer.
  3. The priority claim is invalid because Japanese priority requires the earlier application to be a Japanese national application
  4. The priority claim is valid only if the US application has already been published

Explanation

The Paris Convention allows a priority claim based on the first regular national application in a member state, and the later application may be filed within twelve months of that first filing date. Filing on the anniversary date falls within the period, since the period is computed from the day following the earlier filing. No requirement exists that the earlier application be Japanese or published.

Question 3Patent Law and Practice

Which subject matter is expressly excluded from patent protection under the Japanese Patent Act?

  1. A computer-implemented business method with a technical effect
  2. Inventions liable to contravene public order or morality Correct answer.
  3. A microorganism newly isolated from soil
  4. A method of manufacturing a pharmaceutical compound

Explanation

The definition of invention excludes inventions liable to contravene public order, morality, or public health, so such subject matter cannot be patented regardless of novelty or inventive step. Manufacturing methods, technical business methods, and isolated microorganisms are all eligible categories when the statutory requirements are met.

Question 4Patent Law and Practice

An applicant files a divisional application in Japan. Which statement best describes the scope of the divisional?

  1. It may claim only inventions that were already claimed in the original application
  2. It may claim any invention disclosed in the specification of the original application as of the filing of the divisional Correct answer.
  3. It may claim only inventions that were not searched by the examiner in the original application
  4. It may claim any invention in the applicant's portfolio, provided the divisional is filed while the original is pending

Explanation

A divisional application is entitled to the filing date of the original application and may claim subject matter that is disclosed in the original specification, drawings, or claims as filed. It is not limited to the original claims, and it cannot introduce matter not disclosed in the parent.

Question 5Patent Law and Practice

Which document must be submitted to the Japan Patent Office to claim priority based on an earlier foreign application, and by when?

  1. A translation of the earlier application, within twelve months of the earliest priority date
  2. A certified copy of the earlier application, within sixteen months of the earliest priority date Correct answer.
  3. A declaration signed by the applicant, within thirty days of filing the Japanese application
  4. A certified copy of the earlier application, within three months of filing the Japanese application

Explanation

For a Convention priority claim, the applicant must file a certified copy of the earlier application with the JPO within sixteen months of the earliest priority date. A translation may be required only in specific circumstances, and a mere declaration does not substitute for the certified copy.

Question 6Patent Law and Practice

An examiner issues a notice of reasons for refusal. What is the standard period for the applicant to file a written argument and amendment?

  1. Three months from the date of dispatch of the notice
  2. Sixty days from the date of dispatch of the notice Correct answer.
  3. Ninety days from the date of dispatch of the notice
  4. Thirty days from the date of dispatch of the notice

Explanation

The standard response period to a notice of reasons for refusal is sixty days from the date of dispatch, and it may be extended upon request in specified circumstances. The period is not the same as the three-month appeal period that follows a decision of refusal.

Question 7Patent Law and Practice

A Japanese patent application was filed on 10 April 2022. When does the request for substantive examination have to be filed, at the latest, to avoid the application being deemed withdrawn?

  1. Within seven years of the filing date of the application
  2. Within five years of the filing date of the application
  3. Within three years of the filing date of the application Correct answer.
  4. Within three years of the priority date claimed in the application

Explanation

A request for examination must be filed within three years of the filing date of the Japanese application; failure to do so causes the application to be deemed withdrawn. The period is measured from the actual filing date, not from any priority date.

Question 8Patent Law and Practice

Which statement about the novelty requirement under the Japanese Patent Act is correct?

  1. An invention lacks novelty only if it was publicly worked in Japan before the filing date
  2. An invention lacks novelty only if it was sold commercially anywhere before the filing date
  3. An invention lacks novelty only if it was described in a Japanese patent publication before the filing date
  4. An invention lacks novelty if it was publicly known or publicly worked in Japan or abroad before the filing date Correct answer.

Explanation

Novelty is defeated by public knowledge, public working, or publication anywhere in the world before the filing date, so the prior art base is global and not confined to Japan. Commercial sale is one form of public working but is not the sole test.

Question 9Patent Law and Practice

An inventor discloses the invention at a scientific conference in Japan on 1 June 2023 and files a Japanese application on 1 December 2023. Which statement about the novelty grace period is correct?

  1. The disclosure is automatically disregarded because the application was filed within one year
  2. The disclosure may be disregarded if the applicant files the required procedure within thirty days of filing the application Correct answer.
  3. The disclosure destroys novelty because conference presentations are never covered by the grace period
  4. The disclosure may be disregarded only if the conference was organized by a government body

Explanation

The one-year grace period applies to disclosures made by the person entitled to obtain the patent, but it is not automatic: the applicant must submit the prescribed statement and supporting documents within thirty days of filing. If the procedure is completed, the earlier disclosure is excluded from prior art.

Question 10Patent Law and Practice

Which statement correctly describes the inventive step standard applied by the JPO?

  1. The invention must not be obvious to a person skilled in the art in light of the prior art Correct answer.
  2. The invention must be novel and industrially applicable, with no separate obviousness test
  3. The invention must be the product of a flash of genius beyond routine experimentation
  4. The invention must not be identical to any single prior art reference

Explanation

Inventive step asks whether a person skilled in the art would have easily arrived at the claimed invention from the prior art, considering motivation to combine and secondary indicia. Novelty and inventive step are distinct requirements, and identity with a single reference concerns novelty.

Question 11Patent Law and Practice

A claim recites 'a fastening means for securing the panel'. How should this limitation be examined under Japanese practice?

  1. The limitation is ignored because functional language is not permitted in Japanese claims
  2. The limitation covers any structure capable of fastening, regardless of the description
  3. The limitation is indefinite per se and the claim must be rejected without further analysis
  4. The scope is construed in light of the description and drawings, and the means may be limited to the embodiments disclosed Correct answer.

Explanation

Means-plus-function limitations are construed by reference to the description and drawings, and where the specification discloses only specific structures, the scope may be narrowed to those structures and their equivalents. Functional claiming is permitted, so automatic rejection is not appropriate.

Question 12Patent Law and Practice

Which requirement concerns whether the description enables a person skilled in the art to carry out the claimed invention?

  1. Unity of invention requirement
  2. Support requirement
  3. Enablement requirement Correct answer.
  4. Clarity requirement

Explanation

The enablement requirement asks whether the specification describes the invention clearly and sufficiently for a person skilled in the art to carry it out. Support concerns whether claim terms are backed by the description, clarity concerns the meaning of the claims, and unity concerns whether the claims share a single inventive concept.

Question 13Patent Law and Practice

An applicant wishes to add an experimental data table to the specification after the filing date. Which statement is correct?

  1. The addition is permitted only if it does not introduce new matter beyond the original disclosure Correct answer.
  2. The addition is freely permitted because data merely confirms the disclosed invention
  3. The addition is never permitted once the application has been filed
  4. The addition is permitted if the examiner consents, regardless of new matter

Explanation

Amendments may not add new matter beyond what was disclosed in the specification, claims, and drawings as originally filed. Data that merely confirms an effect already disclosed may be acceptable, but data supporting a previously undisclosed effect generally constitutes new matter.

Question 14Patent Law and Practice

Which statement about the prior art effect of a published Japanese patent application (kokai) is correct?

  1. It becomes prior art as of its publication date, but a later-filed application may benefit from the earlier application's filing date under the secret prior art rule Correct answer.
  2. It is prior art only as of the filing date of the published application
  3. It has no prior art effect until the patent is granted
  4. It is prior art only if the published application and the later application share an inventor

Explanation

A published application is citable as of its publication date, and the secret prior art rule allows an earlier-filed application that is later published to be used against a later application as of its filing date. The effect does not wait for grant, and it is not confined to applications with common inventors.

Question 15Patent Law and Practice

What is the effect of filing a statement of opposition to a granted Japanese patent?

  1. It automatically suspends enforcement of the patent pending a court decision
  2. It is a prerequisite before any invalidation trial may be requested
  3. It must be filed within one year of grant and can only be based on novelty
  4. It initiates an opposition proceeding before the JPO in which the patentability of the granted claims can be reconsidered Correct answer.

Explanation

An opposition is an administrative proceeding before the JPO that allows third parties to challenge a granted patent, and the outcome may include maintenance, amendment, or cancellation of the claims. It is not a prerequisite for an invalidation trial, and it does not automatically suspend enforcement.

Question 16Patent Law and Practice

Which statement about a trial for invalidation of a patent (無効審判) is correct?

  1. Only an exclusive licensee may request it
  2. It may be based only on grounds that existed at the time of grant
  3. It may be requested only after an opposition has been decided
  4. Any person may request it, and it may be based on grounds such as lack of novelty or added matter Correct answer.

Explanation

An invalidation trial is available to any person and may rest on statutory invalidity grounds, including novelty, inventive step, added matter, and insufficiency. There is no requirement of a prior opposition, and interested-party status is not limited to licensees.

Question 17Patent Law and Practice

An employee invents a device in the course of employment. Under the Japanese Patent Act's employee invention provisions, which statement is correct?

  1. The employer owns the invention only if the employee is a manager or executive
  2. The employee can never transfer the invention to the employer
  3. The employer automatically owns all employee inventions without any agreement
  4. The employer may acquire the right to the invention only through a valid contractual or workplace rule providing reasonable remuneration Correct answer.

Explanation

Where an employee invention belongs to the employer by contract or workplace rule, the employee is entitled to reasonable remuneration, and the arrangement must be fair. Ownership does not pass automatically, and the employee's position in the company is irrelevant to the transfer mechanism.

Question 18Patent Law and Practice

Which statement about the term of a Japanese patent right is correct?

  1. It ends fifteen years from the filing date of the application
  2. It ends twenty-five years from the filing date of the application
  3. It ends twenty years from the date the patent is granted
  4. It ends twenty years from the filing date of the application, subject to possible extension for certain regulated products Correct answer.

Explanation

The patent term is twenty years from the filing date, and for certain products subject to regulatory approval, such as pharmaceuticals, a registration extension of up to five years may be available. The term does not run from the grant date.

Question 19Patent Law and Practice

Which statement about the working of a patented invention by a third party is correct?

  1. Any working of the invention requires a license, including private non-commercial experimentation
  2. A prior user must always obtain a license to continue working the invention
  3. Working the invention for experimental or research purposes is excepted from infringement Correct answer.
  4. Working the invention outside Japan infringes a Japanese patent

Explanation

The Act provides an experimental or research exception, so acts done for testing or research do not constitute infringement. A prior user who was working the invention in good faith before the filing may also continue under the prior user right, and territorial limits mean acts abroad do not infringe a Japanese patent.

Question 20Patent Law and Practice

Which statement about the doctrine of equivalents in Japanese patent infringement analysis is correct?

  1. Equivalence may be found where the differing element is not essential, the purpose is substantially the same, and no art-based or prosecution-history bar applies Correct answer.
  2. Equivalence applies whenever the accused product achieves the same result as the claimed invention
  3. Equivalence applies only where the accused product is identical in every element to the claim
  4. Equivalence is unavailable in Japan because claim scope is strictly literal

Explanation

Japanese courts apply a multi-factor equivalence test, including whether the differing part is essential, whether the objective is substantially the same, whether substitution would have been obvious, and whether estoppel or prior art bars apply. It is not a simple same-result test, and it is not limited to literal identity.

Question 21Patent Law and Practice

Which statement about unity of invention in a Japanese patent application is correct?

  1. Unity applies only to independent claims and never to dependent claims
  2. Each claim must belong to a different technical field to satisfy unity
  3. Unity is satisfied whenever all claims share the same applicant
  4. Claims must share a single general inventive concept expressed by a special technical feature Correct answer.

Explanation

Unity requires that the claimed inventions share a single general inventive concept reflected in a special technical feature. Common applicant identity does not satisfy unity, and dependent claims are considered along with the claims to which they refer.

Question 22Patent Law and Practice

A PCT application designates Japan and enters the national phase. Which statement is correct?

  1. The applicant must file a Japanese translation and pay the prescribed fees within the national phase entry period Correct answer.
  2. The applicant may enter the national phase only within twelve months of the international filing date
  3. The applicant loses the international filing date upon entering the national phase
  4. The applicant must refile the application as a new Japanese application with no priority claim

Explanation

National phase entry requires submitting the necessary translation and paying fees within the prescribed period, and the international filing date is preserved. Re-filing is unnecessary, and the entry period is longer than twelve months from the international filing date.

Question 23Patent Law and Practice

Which statement about a patent application filed by two co-owners is correct?

  1. Each co-owner may freely assign its share to a third party without any notice to the others
  2. Each co-owner may grant an exclusive license unilaterally
  3. Each co-owner may work the patented invention without the consent of the others, but licensing to third parties requires the consent of all Correct answer.
  4. The co-owners must act jointly for every act of working the invention

Explanation

Under the co-ownership rules, each co-owner may work the invention without the others' consent, but granting a license or assigning a share requires the consent of all co-owners. Unilateral licensing or assignment is therefore not permitted.

Question 24Patent Law and Practice

Which statement about the patentability of a method of surgery performed on a human body is correct in Japanese practice?

  1. Methods of surgery, therapy, and diagnosis practiced on the human body are excluded from patentable subject matter Correct answer.
  2. Surgical methods are patentable only if performed by a physician
  3. All medical methods are patentable if they are novel and industrially applicable
  4. Surgical methods are patentable if they are implemented with a computer

Explanation

Methods of surgery, therapy, and diagnosis practiced on the human body are treated as not industrially applicable and are excluded from patent protection. Medical devices and pharmaceutical products remain patentable, so the exclusion is directed at treatment methods as such.

Question 25Patent Law and Practice

Which statement about a demand for a trial for patent invalidation and a subsequent court action is correct?

  1. The JPO's decision is final and cannot be challenged in court
  2. The dissatisfied party must file a new patent application instead of litigating
  3. A party dissatisfied with the JPO's decision may seek rescission of the decision in the Intellectual Property High Court Correct answer.
  4. The dissatisfied party must appeal directly to the Supreme Court

Explanation

Decisions in invalidation trials may be challenged by an action for rescission before the Intellectual Property High Court, which reviews the legality of the decision. The JPO's decision is therefore not final in the sense of being immune from judicial review.

Question 26Patent Law and Practice

Under the Japanese Patent Act, which document must be submitted to the JPO when an applicant wishes to claim priority based on an earlier foreign application?

  1. A written statement signed by the inventor confirming the filing date of the earlier application
  2. A priority document certificate issued by the foreign patent office, together with a Japanese translation where required Correct answer.
  3. A declaration by a Japanese patent attorney that the earlier application exists
  4. A copy of the earlier application's claims only, without the description

Explanation

Claiming priority under the Paris Convention requires the applicant to submit a priority document (certificate of the earlier application) issued by the authority of the first filing country, and a Japanese translation must be supplied where the document is not in Japanese. A mere inventor statement or attorney declaration does not satisfy the documentary requirement, and the claims alone are insufficient because the whole application is the basis of priority.

Question 27Patent Law and Practice

An applicant files a Japanese patent application and later wants to correct a clear clerical error in the description before the first office action. Which procedure is available?

  1. A request for correction of the description, claims or drawings under the procedure for amendment before a notice of reasons for refusal Correct answer.
  2. An invalidation trial limited to clerical errors
  3. A petition to the Commissioner to rewrite the specification at any time
  4. A trial for correction that can only be requested after grant

Explanation

Before a notice of reasons for refusal, an applicant may amend the description, claims or drawings within the scope of the original disclosure through the prescribed amendment procedure. Correction of the granted patent is a separate post-grant route, and there is no general Commissioner petition allowing free rewriting.

Question 28Patent Law and Practice

Which statement about the description requirement for a Japanese patent application is correct?

  1. The description need only list the claims and drawings, since enablement is judged from the claims alone
  2. The description may omit the technical problem if the claims are sufficiently narrow
  3. The description must state the problem to be solved and the effect of the invention, and must be clear enough for a person skilled in the art to carry out the invention Correct answer.
  4. The description must include the commercial value of the invention and its expected market size

Explanation

The Patent Act requires the description to be clear and sufficient, stating the technical problem and the advantageous effect so that a skilled person can carry out the invention. Enablement is judged from the specification as a whole, not from the claims alone, and commercial information is irrelevant to sufficiency.

Question 29Patent Law and Practice

A Japanese patent is granted with claims 1 and 2. The patentee later discovers that claim 2 lacks novelty. Which route is appropriate to remove claim 2?

  1. A request for a trial for correction to delete claim 2, subject to the requirement that no new matter is added and the claims are not substantially broadened Correct answer.
  2. A simple notification to the JPO that claim 2 is withdrawn, effective on receipt
  3. A request for an invalidation trial filed by the patentee against its own patent, which automatically deletes the claim without examination
  4. A request for reexamination that converts the patent into a utility model

Explanation

Deletion of a claim from a granted patent is achieved through a trial for correction, which examines whether the correction stays within the original disclosure and does not substantially broaden the claims. A patentee cannot obtain automatic deletion by mere notification, and conversion into a utility model is not a remedy for an invalid claim.

Question 30Patent Law and Practice

Which statement about the right to obtain a patent (特許を受ける権利) is correct?

  1. It belongs automatically to the employer whenever the inventor is an employee
  2. It arises only when the patent is granted and registered
  3. It arises upon the creation of the invention and can be assigned before any application is filed Correct answer.
  4. It arises only when the application is filed with the JPO

Explanation

The right to obtain a patent is a property right that arises when the invention is created, before filing, and it may be transferred. Filing and grant are procedural steps that build on this pre-existing right, and employee inventions do not automatically vest in the employer without the statutory framework being applied.

Question 31Patent Law and Practice

An applicant files a Japanese application containing claims to a product and to a process of making that product. Which statement about the requirement for a single application is correct?

  1. The claims must always be split because product and process claims are categorically different
  2. The claims may remain together only if the applicant pays an additional claim fee
  3. The claims may remain in one application if they satisfy unity of invention, since a product and a process specially adapted for making it can share a single general inventive concept Correct answer.
  4. The claims must be merged into a single claim covering both product and process

Explanation

Unity of invention under Japanese practice is satisfied where the claims share a special technical feature, and a product together with a process specially adapted for making it can meet that standard. Categorical difference alone does not require division, and extra fees do not cure a lack of unity.

Question 32Patent Law and Practice

A third party believes a granted Japanese patent is invalid because the claimed invention was publicly known before filing. Which proceeding is available?

  1. A criminal complaint alleging fraudulent patent procurement
  2. A direct lawsuit in the district court seeking a declaration of invalidity
  3. An invalidation trial before the JPO, which may be requested even after the patent has expired Correct answer.
  4. An appeal to the Intellectual Property High Court without any JPO proceeding

Explanation

Invalidity is determined through an invalidation trial before the JPO, and the proceeding can be requested even after the patent term has expired. Courts decide infringement and damages but do not grant a standalone declaration of patent invalidity in the first instance, and there is no criminal route for ordinary prior-art invalidity.

Question 33Patent Law and Practice

An examiner finds that claim 1 is novel but the description fails to explain how to make the claimed compound. Which ground of refusal applies?

  1. Lack of novelty, because the compound was not fully described
  2. Lack of enablement, because the specification does not sufficiently disclose how to carry out the invention Correct answer.
  3. Lack of unity, because the compound is not linked to a single inventive concept
  4. Violation of the prior art effect of a kokai, because no publication has issued

Explanation

Failure to disclose how to make and use a claimed compound is a sufficiency (enablement) problem, not a novelty or unity problem. Novelty compares the claim to the prior art, unity concerns the relationship between claims, and the kokai prior art effect is a separate issue.

Question 34Patent Law and Practice

Which statement about the JPO's examination of a claim reciting a numerical range is correct?

  1. A numerical range is always treated as a mere design choice and rejected for lack of inventive step
  2. Any overlap with a prior art range automatically destroys novelty in all cases
  3. Numerical ranges are examined only for clarity and never for novelty
  4. The range is compared with the prior art as a whole, and a range overlapping the prior art may still be novel if the specific endpoint or sub-range is not disclosed and produces an unexpected effect Correct answer.

Explanation

Japanese practice examines a claimed numerical range against the prior art as a whole, and an overlapping range is not automatically anticipated; a specific undisclosed endpoint or sub-range with an unexpected effect can support patentability. Automatic rejection for overlap or as a design choice oversimplifies the analysis.

Question 35Patent Law and Practice

A patentee wants to license a Japanese patent to a manufacturer. Which statement about the license is correct?

  1. An exclusive license takes effect against third parties without registration
  2. An exclusive license (専用実施権) must be registered to take effect against third parties, while a non-exclusive license (通常実施権) may arise by contract Correct answer.
  3. A non-exclusive license can never be registered
  4. Only the JPO can create a license, by administrative decision

Explanation

An exclusive license requires registration to be effective against third parties, whereas a non-exclusive license can be created by agreement and, in certain cases, may also be registered. Licenses arise from party agreements, not from JPO administrative creation.

Question 36Patent Law and Practice

Which statement about the JPO's handling of a patent application filed in a language other than Japanese?

  1. A foreign-language application may be filed with a Japanese translation to be submitted within the prescribed period, and the translation becomes the basis for examination Correct answer.
  2. A foreign-language application is automatically rejected and must be refiled in Japanese
  3. The translation may be submitted at any time before grant without a deadline
  4. A foreign-language application is accepted only if filed by a foreign national

Explanation

Japanese law permits foreign-language filings with a translation submitted within the prescribed period, and the Japanese translation then serves as the basis for examination. There is no nationality restriction, and the translation deadline is fixed rather than open-ended.

Question 37Patent Law and Practice

An applicant receives a notice of reasons for refusal and files an amendment that adds a new feature not disclosed in the original specification. What is the consequence?

  1. The amendment is allowed because amendments are always permitted before grant
  2. The examiner must grant the patent but note the new matter in the file
  3. The new feature is automatically treated as a new application with the original filing date
  4. The amendment is rejected as adding new matter, and the application may be refused on that basis Correct answer.

Explanation

Amendments must stay within the scope of the matters disclosed in the original specification, drawings and abstract; adding an undisclosed feature is new matter and is a ground for refusal. Amendments are not freely allowed, and new matter does not receive the original filing date.

Question 38Patent Law and Practice

Which statement about the JPO's treatment of a claim covering a genus of compounds while the specification exemplifies only one species?

  1. The genus claim is automatically limited to the exemplified species by the examiner
  2. The genus claim is always allowed because one working example proves the concept
  3. The genus claim may be refused for insufficient support or enablement if the specification does not enable the skilled person to carry out the whole claimed scope Correct answer.
  4. The genus claim is examined only for novelty and never for support

Explanation

A broad genus claim must be commensurate with the disclosure; if only one species is exemplified and the rest cannot be carried out, the claim may be refused for support or enablement. Exemplifying one species does not automatically validate the whole genus, and the examiner does not silently narrow the claim.

Question 39Patent Law and Practice

A person who has been working a patented invention in Japan before the patent application was filed may continue under certain conditions. Which statement describes this prior user right?

  1. The prior user must have been working the invention or making preparations in good faith in Japan before the filing, and the right extends only to the business being carried out Correct answer.
  2. The prior user right applies only if the user had filed a competing application
  3. The prior user right arises automatically for anyone who later learns of the invention
  4. The prior user right allows the user to license the invention to others freely

Explanation

The prior user right protects a person who, in good faith, was working the invention or preparing to do so in Japan at the time of filing, and it is limited to the existing business. It does not arise from later knowledge, is not a free licensing tool, and does not require a competing application.

Question 40Patent Law and Practice

Which statement about the patent term extension for a pharmaceutical patent in Japan is correct?

  1. The extension is granted by the Ministry of Health without JPO involvement
  2. The term may be extended for a period not exceeding five years where working the invention requires regulatory approval, and the extension is limited to the approved use Correct answer.
  3. The term is extended automatically for ten years for all pharmaceutical patents
  4. The term extension applies to any patent, regardless of regulatory approval

Explanation

Japanese law allows a patent term extension of up to five years where regulatory approval delays working the invention, and the extended term is limited to the approved scope. It is not automatic, is not available for every patent, and the JPO administers the extension procedure.

Question 41Patent Law and Practice

An applicant files a divisional application. Which statement about its filing date and disclosure is correct?

  1. The divisional application receives the date it is actually filed and cannot claim the original date
  2. The divisional application may add new matter as long as it is filed before grant
  3. The divisional application retains the filing date of the original application, but it may not contain matter beyond what was disclosed in the original Correct answer.
  4. The divisional application automatically replaces the original application

Explanation

A divisional application is treated as filed on the date of the original application, provided its content stays within the original disclosure. It cannot add new matter, and it does not replace the parent but coexists with it.

Question 42Patent Law and Practice

Which statement about the JPO's examination of a claim that recites a result to be achieved rather than technical features?

  1. A result-defined claim is examined only for novelty and not for clarity
  2. A result-defined claim is always acceptable because the result is measurable
  3. A result-defined claim is automatically converted into a product claim
  4. A claim defined only by a result may be refused as unclear or unsupported where the technical features needed to achieve the result are not specified Correct answer.

Explanation

Claims must define the invention by technical features, so a claim stated purely as a result can be unclear or unsupported where the means to achieve it are absent. Measurability of the result does not cure the clarity defect, and the examiner does not rewrite the claim category.

Question 43Patent Law and Practice

Which statement about the JPO's treatment of a patent application filed by an unauthorized person who obtained the invention from the true inventor?

  1. The true owner's only remedy is a damages claim in court
  2. The true owner may demand transfer of the right to obtain the patent, and the application may be refused or invalidated on that basis Correct answer.
  3. The unauthorized filer keeps the patent because the JPO does not examine entitlement
  4. The unauthorized filer must be prosecuted criminally before the patent is affected

Explanation

Where an application is filed by someone not entitled to the invention, the true owner may demand transfer of the right to obtain the patent, and entitlement defects can support refusal or invalidation. The JPO does examine entitlement in defined circumstances, damages are not the only remedy, and criminal prosecution is not a prerequisite.

Question 44Patent Law and Practice

Which statement about the JPO's requirement that a specification disclose the best mode of carrying out the invention?

  1. The best mode need only be disclosed after grant upon request
  2. The specification must disclose the best mode known to the applicant at filing, and failure to do so can be a ground of invalidity Correct answer.
  3. The best mode may be omitted if the claims are broad enough
  4. The best mode requirement applies only to mechanical inventions

Explanation

Japanese law requires the specification to state the best mode of carrying out the invention known to the applicant at the time of filing, and non-compliance can invalidate the patent. It is not a post-grant disclosure duty, does not depend on the technology field, and broad claims do not excuse omission.

Question 45Patent Law and Practice

An applicant wants to appeal a final decision of refusal. Which statement about the appeal is correct?

  1. The applicant must first request reexamination by the same examiner
  2. The applicant must appeal directly to the Supreme Court
  3. The applicant may file a request for an appeal against the examiner's decision of refusal with the JPO, and the appeal is examined by a panel of appeal examiners Correct answer.
  4. The applicant loses all rights unless the appeal is filed within three days

Explanation

A refusal decision is appealed to the JPO through a request for an appeal against the examiner's decision of refusal, heard by a panel of appeal examiners. The Supreme Court is not the first appellate body, reexamination by the same examiner is not the prescribed route, and the appeal period is measured in months, not days.

Question 46Patent Law and Practice

Which statement about a patentee's ability to file a request for a trial for correction during a pending invalidation trial is correct?

  1. Correction is prohibited entirely while an invalidation trial is pending
  2. A request for correction may be filed within the invalidation trial, but the correction is examined for whether it stays within the original disclosure and does not broaden the claims Correct answer.
  3. Correction during invalidation may add new matter to overcome the invalidity attack
  4. Correction during invalidation automatically terminates the invalidation trial

Explanation

Japanese practice allows a patentee to seek correction within a pending invalidation trial, but the correction must remain within the original disclosure and must not substantially broaden the claims. It is not prohibited, does not automatically end the trial, and cannot introduce new matter.

Question 47Patent Law and Practice

Which statement about the JPO's treatment of a claim reciting a known compound for a new medical use?

  1. A new medical use is patentable only if the compound itself is also new
  2. A new medical use can never support patentability because the compound is known
  3. A new use of a known compound may be claimed as a pharmaceutical composition or method of treatment in a form acceptable under Japanese practice, subject to novelty and inventive step of the use Correct answer.
  4. A new medical use is automatically rejected as a method of surgery

Explanation

Japanese practice permits claims directed to a pharmaceutical composition for a new use, and the use can supply novelty and inventive step where it is not obvious from the prior art. The compound being known does not bar all patentability, and a new use is not the same as a method of surgery.

Question 48Patent Law and Practice

Which statement about the JPO's handling of a patent application that claims a computer program per se?

  1. A program claim is examined only for novelty of the source code
  2. A program claim is automatically converted into a business method claim
  3. A program-related invention may be patented where the claimed program causes a computer to implement technical processing, and the claim is assessed for technical character Correct answer.
  4. A program per se is always unpatentable in Japan

Explanation

Japanese practice recognizes program-related inventions where the program cooperates with hardware to achieve a technical effect, so a program per se is not categorically excluded. Examination focuses on technical character rather than source code novelty, and claims are not automatically reclassified.

Question 49Patent Law and Practice

Which statement about the JPO's treatment of a claim that includes a trademark in its text?

  1. A trademark in a claim is required for pharmaceutical inventions
  2. A trademark in a claim is encouraged because it identifies the product
  3. A trademark in a claim is acceptable if the mark is registered in Japan
  4. Including a trademark in a claim can make the claim unclear and is generally discouraged, because the scope should be defined by technical features Correct answer.

Explanation

Claims should be defined by technical features, and using a trademark can introduce ambiguity about the claimed subject matter, so it is generally discouraged. Registration of the mark does not cure the clarity concern, and trademarks are not required in any field.

Question 50Patent Law and Practice

A patentee discovers that a competitor is importing a product made by a process patented in Japan. Which statement about proving infringement is correct?

  1. Where the product is new, the burden of proof may shift to the alleged infringer to show the process used differs from the patented process Correct answer.
  2. The patentee must obtain a criminal conviction before civil relief
  3. The patentee must always prove the process used abroad in every case
  4. The importation cannot infringe because the process was performed outside Japan

Explanation

Japanese law provides a rebuttable presumption that a new product made by a patented process was made by that process, shifting the burden to the alleged infringer. The patentee need not always prove the foreign process, importation of a product made by the patented process can infringe, and criminal conviction is not a prerequisite to civil relief.