Following the previous article, the author will continue to explain differences between Chinese and Japanese patent application procedures.
A second major difference between the patent systems of the two countries is Japan’s procedure for correcting patent applications.
In China's patent system, there is no formal procedure for correcting patent applications after a patent has already been issued. For instance, if a patentee discovers a typographical error in patent files after the patent has already been issued, or if he finds that the scope of protection offered by patent claims is unclear, there is no easy way for a patentee to address these problems. Although the patentee might be able to remedy the problem by initiating patent invalidation proceedings, permitted amendments in patent invalidation proceedings are limited to the combination and deletion of patent claims or the deletion of technical solutions. This means that problems such as errors, incorrect translations or unclear descriptions cannot be addressed by these proceedings. The only action that a patentee can take under these circumstances is to file a statement clarifying the issue. For these reasons, the use of invalidation proceedings as a method for correcting already-issued patents is of limited utility.
In contrast, Japan offers a special procedure for correcting patent applications that can be utilized by patentees seeking to correct patent information (including patent claims) even after the patent has been issued.
Article 126 of the Patent Act of Japan stipulates that a patentee may file a request for a patent correction procedure in order to amend the patent description or patent claims or drawings included in the patent application.
Nevertheless, Japan’s patent correction procedure is limited in scope to (i) restrictions on the scope of patent claims; (ii) correction of errors or incorrect translations; (iii) clarification of an ambiguous statement; and (iv) the elimination of references relationships between claims.
Moreover, the scope of correction described above is limited to a description and/or claims that existed before correction procedure commenced. In other words, a patentee may not add content to descriptions and/or claims that was not already recorded therein before the application for the correction procedure was submitted; nor may the patentee substantially broaden or modify the scope of protection defined by the patent claims.
In addition, if an invalidation petition is filed against the patent in question, a correction procedure may be filed only after the Patent Office issues an invalidation decision. In the meantime the patentee may submit a request for correction.
In summary, the patent correction procedure offered under Japan’s patent system enables a patentee to conveniently amend patent documents after the patent is issued, which is favorable for the maintenance of issued patents.