Patent Act Article 67: Duration
1. Explanation of the Article
The duration of a patent right is 20 years from the filing date (Article 67(1)). However, there are cases where a patented invention cannot be worked during the period required to obtain permits or approvals based on legal regulations. To address this issue of erosion of the patent term, the law allows for an extension of the patent term under specified conditions.
(Preparation for Essay Exams)
If you have time, try to memorize the phrase, "the patent term is the point of harmony between the protection and utilization of inventions."
・Reason for the creation of the patent term extension system (Full)
The patent system aims to promote industrial development by granting exclusive rights for a certain period in exchange for the disclosure of technology related to an invention, thereby protecting the invention while making it available for general use. However, in some fields, a considerable amount of time is required to collect necessary experimental data and undergo review to obtain permits or approvals based on government legal regulations for ensuring safety, etc. During this time, even if the patent right exists, the benefits of exclusive rights cannot be enjoyed, leading to the problem of erosion of the patent term. While these legal regulations themselves are necessary for their intended purposes, it is inevitable that the entire regulated field cannot enjoy the patent term that should have originally been available for the duration of the regulation. Moreover, there are limits to shortening these regulatory review periods from the perspective of ensuring safety, etc. Therefore, since this situation is a fundamental issue of the patent system, a system for extending the duration of patent rights was created.
・Purpose of ensuring safety, etc.
The phrase "purpose of ensuring safety, etc." is merely an example to provide a concrete image of "laws," and the content of "etc." is not limited to "ensuring safety." Therefore, whether or not something is designated by Cabinet Order does not change depending on the content of the purpose of the law.
・Cases requiring a considerable period to perform accurately
The provision "as requiring a considerable period to perform the disposition accurately in view of the purpose, procedures, etc. of the disposition" was included to clarify the intent that the system is limited to cases where, in order to properly achieve the purpose of the disposition, a considerable period is unavoidably required no matter how quickly the procedures are carried out.
・When there was a period during which the patented invention could not be worked
The patent term is intended to find a point of harmony between the protection and utilization of inventions by placing a time limit on the patent right, which is an exclusive working right. At the time of the system's introduction, considering that an extreme increase in applications for registration of extension would lead to delays in the examination of important patented inventions, and that it usually takes about two years to clear government regulations, extensions were limited to cases where the period during which the invention could not be worked was two years or more. However, compared to Western countries that adopt a patent term extension system, the fact that extensions of less than two years are not permitted is unique to Japan. It is difficult to say that patent holders are sufficiently protected compared to Western countries that do not have such restrictions. Furthermore, more than 10 years have passed since the introduction of this system, and during that time, the number of applications for registration of extension has remained constant, eliminating the risk of an extreme increase. Therefore, in the partial revision of 1999, it was decided that the duration of a patent right can be extended when there is a period during which the patented invention could not be worked.
・Scope of effect of a patented invention when an extension of the patent term is granted
The purpose of the patent term extension system is to grant an extension of the patent term when a patent holder could have worked the patented invention if there were no legal regulations, but is prevented from doing so because it is necessary to receive a disposition specified by Cabinet Order under Article 67(2). Therefore, it is necessary to ensure that the effect of the patent right, when extended, applies only to the overlapping portion between the scope where the prohibition was lifted by receiving the disposition and the scope of the patented invention (patent right) (in other words, the effect does not extend beyond the overlapping portion). Therefore, it was decided to stipulate that the effect of the patent right after the extension of the duration applies only (to all) when working the product that was the subject of the disposition for the specific use specified in the disposition. As a result, for example, in the case of pharmaceuticals, if the active ingredient and the indications/effects are the same, the effect of the extended patent right will also apply to embodiments with different dosage forms, usage, dosage, manufacturing methods, etc..
2. Extension of Patent Term and Request for Examination Period
When a patent application (subsequent application) with a priority claim is filed, the starting point for the patent term and the period for requesting examination is not the date of the application that served as the basis for the priority claim (basic application), but the filing date of the subsequent application.
Therefore, if the content of the basic application and the content of the subsequent application are made completely identical, it is possible to substantially extend the patent term and the period for requesting examination.
The period for requesting examination is three years from the filing date. By making this priority claim, it is possible to extend the period for requesting examination to four years instead of three years from the basic application date.
The patent term is 20 years from the patent filing date. By making this priority claim, it is possible to extend the patent term to 21 years instead of 20 years from the basic application date.
I do not think that using the domestic priority system in this way was intended at the time of legislation. However, it is currently not prohibited.
Currently, I have heard that it is being utilized in fields with high-selling products (where extension of the patent term is of great significance).
・Patent Act Article 67
(Duration)
Article 67: The duration of a patent right shall expire 20 years from the filing date of the patent application.
2. The duration prescribed in the preceding paragraph may be extended by an application for registration of extension if the registration of the establishment of the patent right is made on or after the day on which five years have elapsed from the filing date of the patent application or the day on which three years have elapsed from the date of the request for examination of the application, whichever is later (hereinafter referred to as the "reference date").
3. The period that may be extended pursuant to the provisions of the preceding paragraph shall not exceed the period equivalent to the period from the reference date to the date of registration of the establishment of the patent right, minus the period equivalent to the sum of the periods listed in the following items (if there is any overlapping period among these periods, the period excluding the overlapping period shall be added):
(i) The period from the date of the notice or order to the date on which the necessary procedures were taken, in cases where a notice or order (limited to those issued by the Commissioner of the Japan Patent Office or an examiner) was issued pursuant to the provisions of this Act (excluding Article 39(6) and Article 50), the Utility Model Act, or the Act on Special Provisions for Procedures, etc. Concerning Industrial Property Rights (Act No. 30 of 1990), or orders based on these Acts, regarding the patent application, and the procedures to be taken upon receiving such notice or order were taken.
(ii) The period from the date on which the period for taking procedures expired to the date on which the procedures were taken, in cases where the period for taking procedures pursuant to the provisions of this Act or orders based on this Act (referred to as "Patent Laws and Regulations" in the following item, item (v), item (x)) regarding the patent application was extended.
(iii) The period from the date on which the period for taking procedures expired to the date on which the procedures were taken, in cases where the applicant took the procedures after the expiration of the period for taking such procedures pursuant to the provisions of Patent Laws and Regulations, for procedures regarding the patent application for which a period for taking such procedures is specified by the provisions of Patent Laws and Regulations.
(iv) The period from the date on which the request or other act was made to the date on which the reason for suspending the disposition or notice ceased to exist, in cases where the disposition or notice pursuant to the provisions of this Act or the Act on Special Provisions for Procedures, etc. Concerning Industrial Property Rights, or orders based on these Acts (referred to as "Patent-Related Laws and Regulations" in item (viii) and item (ix)) regarding the patent application was suspended due to a request or other act by the applicant.
(v) The period from the date on which the application for reduction, exemption, or deferment of payment of patent fees or fees was filed to the date on which the decision was made, in cases where a decision was made to reduce, exempt, or defer the payment of patent fees or fees pursuant to the provisions of Patent Laws and Regulations regarding the patent application.
(vi) The period from the date on which the written supplement to the specification, etc. was submitted pursuant to the provisions of Article 38-4(3) to the date on which the written supplement to the specification, etc. was withdrawn pursuant to the provisions of Article 38-4(7), in cases where the written supplement to the specification, etc. was withdrawn pursuant to the provisions of Article 38-4(7) regarding the patent application.
(vii) The period specified in (a) through (c) below according to the classification listed in (a) through (c) in cases where a request for a trial against an examiner's decision of refusal was filed regarding the patent application:
(a) In cases where a trial decision to the effect that a patent is to be granted was made pursuant to the provisions of Article 51 as applied mutatis mutandis in Article 159(3) (including cases where applied mutatis mutandis in Article 174(2)): The period from the date on which a certified copy of the examiner's decision of refusal was served to the date on which a certified copy of the trial decision was served.
(b) In cases where a trial decision to the effect that the case is to be further examined was made pursuant to the provisions of Article 160(1) (including cases where applied mutatis mutandis in Article 174(2)): The period from the date on which a certified copy of the examiner's decision of refusal was served to the date on which a certified copy of the trial decision was served.
(c) In cases where an examiner's decision to the effect that a patent is to be granted was made pursuant to the provisions of Article 51 as applied mutatis mutandis in Article 163(3): The period from the date on which a certified copy of the examiner's decision of refusal was served to the date on which a certified copy of the examiner's decision to the effect that a patent is to be granted was served.
(viii) The period from the date of the request for administrative review to the date on which a certified copy of the determination was served, in cases where a determination on a request for administrative review pursuant to the provisions of the Administrative Complaint Review Act (Act No. 68 of 2014) regarding a disposition pursuant to the provisions of Patent-Related Laws and Regulations regarding the patent application has become final and binding.
(ix) The period from the date of filing the action to the date on which the judgment on the action became final and binding, in cases where a judgment on an action pursuant to the provisions of the Administrative Case Litigation Act (Act No. 139 of 1962) regarding a disposition pursuant to the provisions of Patent-Related Laws and Regulations regarding the patent application has become final and binding.
(x) The period during which the procedures regarding the patent application were interrupted or suspended, in cases where such procedures were interrupted or suspended pursuant to the provisions of Patent Laws and Regulations.
4. The duration prescribed in paragraph (1) (if extended pursuant to the provisions of paragraph (2), the duration including the period of such extension; the same shall apply in the proviso to Article 67-5(3), Article 68-2, and Article 107(1)) may be extended by an application for registration of extension, up to a limit of five years, if there was a period during which the patented invention could not be worked because it was necessary to receive a permission or other disposition specified by Cabinet Order as requiring a considerable period to perform the disposition accurately in view of the purpose, procedures, etc. of the disposition, pursuant to the provisions of laws aimed at ensuring safety, etc. for the working of the patented invention.