This is the third article of our series where we introduce important keywords regarding patents and other intellectual property in Japanese, English and, German. This time we talk about keywords that you come upon during patent examination.

当業者 (Tougyousha) – A Person Skilled in the Art – Fachmann

A person skilled in the art is a person with a certain amount of training and knowledge in the respective technical field of the invention. The inventiveness criteria for a patent is judged from the point of view of a person skilled in the art. Whereas in German the common word “Fachman” that you can also find in non-patent context is used the English term is used relatively rarely in other contexts.

請求項 (Seikyuukou) – Patent Claim – Patentanspruch

Claims are the part of the patent application that defines the boundaries of patent protection. The boundaries are defined by the words and phrasing of the claims. In Japan, a patent application can have any number of claims.

進歩性 (Shinposei) – Inventiveness/ Inventive Step – Erfindungshöhe

Inventiveness is one of the criteria for granting a patent. To be granted a patent an invention needs to be an inventive solution to a problem. It cannot be a solution that is obvious for a person skilled in the art.

新規性 (Shinkisei) – Novelty – Neuheit

Novelty is one of the criteria for granting a patent. It means that your patent cannot have been made public prior to filing the patent application. In Japan, there are a few exceptions to this rule, e.g. if the inventions became known against the will of the person having the right to obtain a patent or when it was made public by a presentation in a printed publication or through an exhibition held by the Government or by any local public entity.

特許審査官 (Tokkyo Shinsakan) – Patent Examiner – Patentprüfer

A patent examiner is a person that examines whether a patent application fulfils the criteria for obtaining a patent. Patent examiners are employees of the patent office. They usually have a scientific or engineering background.

拒絶理由通知 (Kyouzetsuriyuutsuchi) – Office Action – Prüfungsbescheid

An office action is a notice issued by the patent office after the patent examination is finished and reasons were found to reject the request for a patent application. The office action lists the reasons why the application was rejected. In Japan, a foreign applicant can file a response within three months from the mailing date of the office action. If after the response no reasons for objection remain the patent will be granted otherwise another office action will be issued.

手続補正書（Tetsuzuki hoseisyo）- Amendment – Änderung/Berichtigung

An amendment can filed in response to an office action to alter the claims that were rejected. If you want to argue against the grounds for rejection a separate document called argument needs to be filed.

It is also possible to file an amendment before an office action was received e.g. to revise an error that was found or reduce the number of claims to save cost on the request for examination.

特許査定 (Tokkyo Satei) – Notice of Patent Grant – Erteilungsbeschluss

If all grounds to reject the patent were eliminated/the application was accepted in the original form the patent office will issue a notice of patent grant. The Japanese patent office charges fees for granting a patent that need to be paid within 30 days of the mailing date of the notice. After fees are paid a letters patent will be issued.

We hope you find this article about intellectual property vocabulary helpful. If we can help you with any kind of translation related to patent documents or other intellectual property documents do not hesitate to contact us. 

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