1. Introduction

The system for submission of information on patent applications by third parties allows anyone to provide examiners with information relevant to the novelty, inventive step, or other aspects of the invention of a patent application. This year, the Japan Patent Office (JPO) released a manual (handbook) of the information submission system and its summary (quick reference guide). In this month’s issue, we introduce an overview of the information submission system and key points to note.

2. Overview of Information Submission System

2-1. Eligible submitters

Anyone can submit information. Submissions may be made anonymously without cost.

2-2. Reasons for rejection for which information may be submitted

Information may be submitted regarding the following reasons for rejection under the Patent Act:

• Addition of new matter (Article 17-2(3))

• Eligibility as an invention or industrial applicability (Article 29(1) main paragraph)

• Novelty (Article 29(1))

• Inventive step (Article 29(2))

• Earlier application deemed as prior art (Article 29-2)

• Earlier application (Article 39)

• Feasibility requirement (Article 36(4)(i))

• Requirement for disclosure of prior art documents (Article 36(4)(ii))

• Support requirement, clarity requirement, and conciseness requirement (Article 36(6)(i)–(iii))

• Addition of new matter in translation (Article 36-2(2))

Some reasons for rejection, such as unity of invention (Article 37) and misappropriated application (Article 49(vii)), are excluded from the scope of information submission.

2-3. Submittable materials (publications, etc.)

Submittable materials include:

• Copies of specifications, claims, and drawings of patent applications

• Copies of book excerpts

• Product catalogs

• Documents related to standards and specifications

• Presentation materials (lectures, presentations, etc.)

• Internet printouts

• Experimental reports

DVD-R discs storing video programs cannot be submitted, but documents describing the video with screenshots may be submitted.

When submitting Internet information, submit both the URL and printed copies showing the content, URL, contact information, and publication date/time.

2-4. Adoption rate

While not all submitted information is adopted by the examiner, in recent years it has been utilized in approximately 70% of cases where a notice of reasons for rejection was issued.

2-5. Notification to the applicant

When information is submitted, the applicant is notified of the submission and the date. In principle, anyone may view the submitted information by filing a request.

3. Points to Note

3-1. Timing of submission

Information may be submitted at any time, but only information submitted before the examiner begins examination is considered. Early submission is recommended.

However:

• Submitting before a request for examination may alert the applicant and prompt early filing of the request for examination.

• Therefore, it is preferable to submit information soon after the request for examination is filed.

• Recommended timing: 2–3 months before examination begins.

Regarding applications with a filed request for examination, it is possible to inquire with the JPO about the expected start date and examination progress, but only for:

• The applicant or representative

• The requester for examination

• A submitter who already submitted information

• A provisional exclusive or non-exclusive licensee

Anonymous submitters cannot inquire.

3-2. Clarity and conciseness of submitted information

The “reason for submission” should be described briefly and logically.

• Use comparison tables

• Highlight relevant portions in attached publications

This helps examiners understand the materials more easily.

3-3. No direct communication with the examiner

Information submitters are not parties to the application, so direct communication or explanations to the examiner are not permitted.

4. Conclusion

The information submission system involves no official fees and allows anonymous submissions, making it more accessible than opposition or invalidation trial systems. With an adoption rate of about 70%, it is an effective tool to prevent undesired patents from being granted.

However:

• The applicant is notified of the submission, making them aware a third party considers the invention important, possibly prompting them to strengthen their patent.

• Submitters cannot provide further explanations or opinions after submission.

Thus, strategic use of the system is important, considering both its advantages and limitations.