Guide to utilizing the information provision system in patent applications: To strengthen your intellectual property strategy

What is the information provision system?

The information provision system is a system that allows examiners and trial judges to be provided with information regarding the lack of novelty or inventive step of the invention related to a patent application. By utilizing this system, it is possible to prevent invalid patents from being established and maintain a fair competitive environment in the market.

Main benefits of providing information

• Can control patent applications by competitors
• Prevents the establishment of invalid patent rights
• Can provide judgment materials to the examiner
• You can also provide information anonymously

When and to whom information can be provided

After filing a patent application, information can be provided at any time, regardless of whether a request for examination has been filed. Specifically, information can be provided at the following times:

• Before starting the review
• After the first notification of reasons for refusal
• After applicant's amendment
• After request for appeal against decision of refusal

The following are the reasons for refusal for information provision:

• Lack of novelty (Article 29, Paragraph 1 of the Patent Act)
• Lack of inventive step (Article 29(2) of the Patent Act)
• Expanded prior application (Article 29-2 of the Patent Act)
• First application (Article 39 of the Patent Act)
• Violation of description requirements (Patent Law Article 36, Paragraph 4, Item 1)
• Violation of requirements for description of patent claims (Article 36, Paragraph 6 of the Patent Act)
• etc.

How to effectively provide information

1. Preparation of publication submission form

Information will be provided by submitting a "Publication Submission Form". The following information should be included in the publication submission form:

• Application number of the patent application in question
• Bibliographic information of publications etc. to be submitted
• Reasons for submission (reasons why the patent application has reasons for refusal)

2. How to write an effective “reason for submission”

In the "Reason for Submission" column, enter the reason why the patent application has grounds for refusal. For effective information provision, it is important to consider the following points:

• Explain concisely, logically, and to the point
• Explain according to the examination standards/handbook
• Indicate references to publications, etc., and briefly state disclosure contents
• If inventive step is denied based on multiple publications, etc., also explain the positioning and logic of the publications, etc.
• Use a comparison table to compare the claimed invention and the invention of publications etc. by structure

For example, when denying inventive step, explain why the points of agreement, differences, logic, and advantageous effects compared to the cited invention should not be taken into consideration.

3. How to submit

You can provide information in the following ways:

• Online submission using internet application software (recommended: Reach the examiner in at least one day)
• Mail
• Submission to the Japan Patent Office

In the case of online submission, you can provide more effective information by creating the information in the "Reason for Submission" column as a "separate sheet" in PDF file format and explaining it using line breaks, text decorations, tables, etc.

Importance of expert support

Anyone can provide information, but in order to provide information effectively, specialized knowledge of patent law and examination standards is required. By hiring a patent office, you will receive the following benefits:

Advantages of hiring a patent office

1. Professional analysis: Patent experts analyze the subject patent application and find valid grounds for refusal
2. Effective document creation: Create logical and persuasive documents that will be understood by examiners
3. Appropriate publication selection: Select relevant prior art documents and present them in an effective combination
4. Anonymous support: If necessary, we will handle the anonymous information provision process
5. Monitoring the progress of the examination: We will monitor the examination status after the information has been provided and suggest additional measures if necessary

What to do if information is provided in your own application

If information is provided regarding your company's patent application, it is important to check the content and respond appropriately. With the support of a patent office, you can do the following:

1. Analysis and impact assessment of provided information
2. Preparation of amendments as necessary
3. Rebuttal by writing an effective written opinion or report
4. Proposals for additional communication strategies such as examiner interviews

Summary

The information provision system is a very powerful tool in patent strategy. By effectively providing information about competitors' patent applications, you can prevent the establishment of patent rights that could affect your business. On the other hand, if information is provided regarding your company's application, you can protect your chances of acquiring rights by responding appropriately.

In order to carry out these procedures effectively, we recommend that you seek support from a patent firm that is a patent specialist. We will be able to strongly protect your business by providing strategic advice and procedural assistance regarding intellectual property.

Please feel free to contact our office for any inquiries regarding patent applications or information provision. We support your intellectual property strategy.

*This article is for informational purposes only and does not constitute legal consultation or legal advice for individual cases. For specific inquiries, please consult a specialized patent attorney or lawyer.

AUTHOR

Takefumi SUGIURA （杉浦 健文）

EVORIX Intellectual Property Law Firm　Managing Patent Attorney

Supports clients across IT, manufacturing, startups, fashion, and medical industries, covering patent, trademark, design, and copyright filings through trials and infringement litigation. Specialized in IP strategy for AI, IoT, Web3, and FinTech. Member of the Japan Patent Attorneys Association (JPAA), Asian Patent Attorneys Association (APAA), and Japan Trademark Association (JTA).

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