Revisions to Examination Guidelines for PTE Applications In Response to Supreme Court Decisions on Genentech v. JPO Cases

The grand panel decisions rendered by the Grand Panel of the Intellectual Property High Court (IPHC) on May 30, 2014, for Genentech v. Japan Patent Office (JPO) cases (IPHC Decisions Nos. 2013 (Gyo-Ke) 10195, etc.) were upheld by the Supreme Court of Japan (SCJ) on November 17, 2015 (SCJ Decisions Nos. 2014 (Gyo-Hi) 356, etc.). These SCJ decisions conclusively denied the JPO’s examination practice for applications of patent term extension (PTE) for the second time in these several years, since another series of IPHC/SCJ decisions denied the JPO’s pre-2011 examination practice and forced the JPO to revise its examination guidelines on December 28, 2011. In response to these new IPHC/SCJ decisions, the JPO revised its examination guidelines again, and started examination of PTE applications based on the revised guidelines from April 1, 2016. This article outlines the history of changes in the JPO’s examination practice of PTE applications, and its revised guidelines in response to the new IPHC/SCJ decisions.