Text of Two Patent Agreements between the U.S. and Japan

Text of Agreements between Commissioner Lehman and Secretary of Commerce Ron Brown made with Japan

Agreement between Commissioner Lehman and Wataru Asou, Commissioner Japanese Patent Office

Agreement Between Ronald Brown and Takakazu Kuriyama of the Japanese Embassy ---------------------------------------------------------------------------

January 20, 1994

Mutual Understanding

between

the Japanese Patent office

and

the United States Patent sand Trademark Office

Actions to be taken by Japan:

By July 1, 1995, the Japanese Patent Office (JPO) will permit foreign nationals to file patent applications in the English language, with a translation into Japanese to follow within two months.

Prior to the grant of a patent, the JPO will permit the correction of translation errors up to the time allowed for the reply to the first substantive communication from the JPO.

After grant of a patent, the JPO will permit the correction of translation errors to the extent that the correction does not substantial extend the scope of protection.

Appropriate fees may be charged by the JPO for the above procedures.

Actions to be taken by the U.S.:

1. By June 1, 1994, the United States Patent and Trademark Office (USPTO) will introduce legislation to amend U.S. patent law to change the term of patents from 17 years from the date of grant of a patent for an invention to 20 years from the date of filing of the first complete application.

The Legislation that the USPTO will introduce shall take effect six months from the date of enactment and shall apply to all applications filed in the United States thereafter.

Paragraph 2 requires that the term of all continuing applications (continuations, continuations-in-part and divisionals), filed six months after enactment of the above legislation, be counted from the filing date of the earliest -filed of any applications invoked under 35 U.S.C. 120.

(Signed)

Wataru Asou

Commissioner

Japanese Patent Office

(signed)

Bruce A. Lehman

Assistant Secretary of Commerce and Commissioner of Patents and Trademarks

United States Patent and Trademark Office ---------------------------------------------------------------------------

Embassy of Japan
Washington, D.C.

August 16, 1994

Dear Secretary Brown:

I have the honor to refer to the recent discussions between the representatives of the Government of Japan and the Government of the Unites States of American concerning the patent systems of the two countries. I am pleased to inform you that the Government of Japan confirms that, on the basis of these discussions, the Japanese Patent Office and the Unites States Patent and Trademark Office are to take the actions described in the Attachment hereto. In some instances the implementation of these measures will require approval of the Japanese Diet or the U.S. Congress.

We look forward to working with you on a regular basis on these and other matters of mutual interest in the field of intellectual property. These ongoing talks will allow the Working Group on Intellectual Property or its successor to meet annually, or upon the request of either government, to discuss the implementation of the above actions.

I believe the above-referenced actions and continued efforts will further promote the good relationship in the field of intellectual property between Japan and the United States of America.

Sincerely ,

(signed)

Takakazu Kuriyama

The Honorable Ronald H. Brown

Secretary of Commerce

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Actions to be taken by the JPO

• 1 (a) By April 1, 1995, in order to institute a revised opposition system by January 1, 1996, the JPO is to introduce legislation to revise the opposition system.

  b) Under the revised system, oppositions are to take place only after the grant of a patent.

  c) Multiple oppositions in the revised system are to be consolidated and addressed in a single proceeding to minimize the time spent during opposition.

• 2. (a) By January 1, 1996, the JPO is to institute a revised system of accelerated examination.

  b) In the revised accelerated examination system:

  • (i) The JPO is to allow an applicant who has filed a patent application before a foreign national or regional industrial property office to request accelerated examination for corresponding patent application field in the JPA;
  • (ii) applications are to be processed to grant or abandonment within 36 months from the date of the request for accelarated examinations;
  • (iii) The JPO may require the applicant to submit a copy of a search report, issued by the above mentioned national or regional industrial property office separately from or associated with the first substantive action on the merits'; and
  • (iv) a fee, not to exceed the fee for filing an application, may be charged in addition to the normal fee for requesting examination but no working requirement is to be imposed.
• 3. Other than to remedy a practice determined after judicial or administrative process to be anti-competitive or to permit public non-commercial use, after July 1995, the JPO is not to render an arbitration decision ordering a dependent patent compulsory license to be granted.

Actions to be take by the USPTO

• 1. (a) by September 30, 1994, in order to institute an "early publication" system by January 1, 1996, the USPTO is to introduce legislation to make applications publicly available 18 months after the filing date of the earliest filed application, a reference to which is made under 35 USC 119, 120, 121 or 365.

  b) The USPTO is to make publicly available all applications, filed after January 1, 1996, as soon as possible after the expiration of 18 months from the filing date or, where priority is claimed under 35 USC 119, 120, 1211 or 365, from the earliest priority date. The drawing, specification, including claims, and bibliographic information of the application are to be make available to the public. Applications that are not longer pending and applications subject to secrecy orders are not to be made publicly available.

• 2. (a) By August 1, 1994, in order to institute revised reexamination procedures by January 1, 1996, the USPTO is to introduce legislation to revise current reexamination procedures.

  b)The new reexamination procedures are to expand the grounds for requesting reexamination to include compliance with all aspects of 35 USC 112 except for the best mode requirement.

  c) The new reexamination procedures are also to expand the opportunity of third parties to participate in any examiner interview and to submit written comments on the patent owners's response to any action on the patent under reexamination.

• 3. Other than to remedy a practice determined after judicial or administrative process to be anti-competitive, or to permit public non-commercial use, after July 1, 1995, the USPTO is not to grant a dependent patent compulsory license.