Kenta Kitamoto is a Visiting Research Scholar at the Asian Law Centre, Melbourne Law School. He recently gave a seminar at the Centre, where he discussed Japanese patent law and practice. In this interview, Mr Kitamoto spoke to A/Professor Stacey Steele about his work at the Japan Patent Office and recent developments.
Please tell us a little bit about yourself.
I joined the Japan Patent Office (JPO) in 2006. I am a computer science graduate, so my specialisation is IT patents. During my career, I’ve also assisted in drafting guidelines and administrative regulations for the Japanese Government. I came to MLS in 2016-7 to complete my LLM and became a Visiting Research Scholar at the Asian Law Centre in 2017-8.
What is the main purpose of the JPO?
JPO is part of the Ministry of Economy, Trade and Industry. Its mission is the development of the economy and industry through administration of inventions, utility models, designs and trademarks. To this end, the JPO has approximately 2,900 employees and nearly 60% of them are patent examiners. In 2017, the JPO received 318,479 patent applications. By way of comparison, IP Australia received 28,905 applications in 2017.
I understand that patent litigation may be commenced in the Tokyo and Osaka District Courts and any appeals to decisions from those Courts will be made to the specialist IP High Court in Tokyo. Why is the litigation system set up this way?
To answer this question, I need to explain the Tribunal within the JPO which deals with oppositions to the grant of a patent, invalidation of a patent and appeals from an examiner’s decision. Appeals of decisions from the Tribunal used to be made to the Tokyo High Court because the JPO was, and still is, in Tokyo, so divisions specialised in IP matters were established in the Tokyo High Court to deal with appeals from the Tribunal. Later, such specialised divisions were also established in the Tokyo and Osaka District Courts, where many cases involving IP matters are dealt with. To facilitate handling of IP-related cases, the IP High Court was established in 2005, taking over the specialised divisions previously established within the Tokyo High Court.
The JPO has successfully reduced its patent pendency statistics dramatically over the last decade. How did the JPO improve these turnaround times?
Yes, examinations now commence within 9.4 months of examination requests (on average). In 2000s, the JPO hired more patent examiners and increased the “throughput” of the existing patent examiners. One of measures to achieve the increased output was outsourcing of prior art searches. Thorough searches of related prior art are essential to the assessment of patentability, but these searches are time-consuming. By outsourcing these processes to private search organisations, examiners can save time in relation to prior art searches and focus on the actual assessment of inventions.
Can you think of any invention which may be patentable subject matter in Japan, but not Australia? Why is there such a difference?
Yes. In 2015, the High Court of Australia held that an isolated, naturally occurring nucleic acid was not patentable subject matter (D’Arcy v Myriad Genetics Inc  HCA 35). In Japan, such a nucleic acid could be considered patentable subject matter. This difference is caused by differences in statutory approaches to address patentable subject matter. While Australian patent law deals with patentable subject matter by reference to UK’s Statute of Monopolies 1623, Japanese patent law provides a relatively detailed definition of “invention” which sets the boundary of patentable subject matter. The definition of “invention” requires patentable subject matter to be the “creation of technical ideas utilizing the laws of nature”. Isolated nucleic acid could fall within the definition because the artificial process of isolation from nature could be considered the creation of technical ideas.
You said that Japan filed 1607 patent applications in Australia in 2016, making Japan the second largest non-resident patent application jurisdiction after the United States of America. Will Japanese patent filings in Australia decrease with companies like Toyota leaving?
In my opinion, the answer is ”no”. Patents cover not only domestic manufacturing but also the import of patented products. Companies will continue to seek patent protection as long as they continue to sell their products in Australia, even if they close their Australian plants. Besides, Japanese applicants have focused on obtaining foreign patents since around 2012 as part of a global strategy. I don’t think this trend will change soon or exclude Australia.