July 30, 2021 [ IP News-Others ]
Is it possible for a foreign applicant and its local representative to participate in an examiner interview held at the JPO?

* Foreign Applicant: An applicant whose nationality is other than Japanese

* Local Representative: A representative whose nationality is other than Japanese, and who has filed an application that serves as a basis for claiming a right of priority for an application filed in Japan

* Interview with Examiner: An interview conducted between an applicant with or without accompanying its representative and an examiner of the JPO during the patent prosecution process. Please be noted that the interview described herein refers to a face-to-face interview (including online interview) but not a one via telephone, facsimile or the like.

✔ In a case where a foreign applicant files an application in Japan, is it possible for the foreign applicant to participate (be present) in an interview conducted between the Japanese representative and an examiner of the JPO?

✔ Is it possible for the local representative to participate (be present) in an interview with Examiner?

✔ Is a foreign applicant and/or the local representative allowed to directly communicate with the examiner of the JPO during the interview with Examiner?

Going straight to the point, the answer is yes to the question of whether it is possible for a foreign applicant to participate (be present) in the interview with Examiner.

According to the Interview Guideline of the JPO, a responder on the applicant’s side must be a person who can respond in a responsible manner. To be specific, a “person who can respond in a responsible manner” is required to satisfy the following requirements 1 to 3:

1. The person shall possess knowledge concerning procedure for filing a patent application, etc.;

2. The person shall possess technological knowledge concerning the invention of the application; and

3. The person shall be capable of clearly expressing the intention of the applicant in proceeding with the application.

There is no mention of denial of participation of a foreign applicant. These lead to a conclusion that a foreign applicant can participate (be present) in an interview with Examiner as long as he/she satisfies the above-described requirements.

Described below is information of how an interview with Examiner is managed. The “Interview Guideline” of the JPO does not provide specific provisions of such information so we acquired it by voluntarily inquiring of the responsible department of the JPO. This information will be useful to you when you have a chance to have an Interview with Examiner.

Firstly, the language used during the interview must be Japanese in principle.

However, if the examiner understands a language other than Japanese and allows the applicant to use the language for communications in the interview, communicating with the examiner in the language is possible. Thus, it is also possible for a foreign applicant, for example, to directly communicate with the examiner in a language other than Japanese, if the examiner allows.

It is also possible for the local representative to participate in the interview with Examiner, if the foreign applicant wishes and authorizes and the examiner allows the local representative to do so.

However, it is impossible for the local representative to directly communicate with Examiner. This is because the local representative neither falls under the “applicant” nor possesses a Japanese qualification of representative.

During an interview, the foreign applicant, the local representative, the Japanese representative and another person (an interpreter), for example, are allowed to have some moments to communicate with one another in a language that the examiner does not understand while their speaking voices are heard by the examiner. There must be sometimes a situation where such a communication is necessary and they should not be prohibited or blamed for such a behavior.

If the examiner allows, an interpreter can be accompanied.

As we mentioned that “provided that the examiner allows”, the flexibility of who is allowed to participate in the interview and the flexibility of what language can be used in the interview widely vary depending on the examiner. That is to say, they all depend on the examiner.

✔ Is it possible for a foreign applicant who has filed an application in Japan to participate (be present) in an interview conducted between the Japanese representative and an examiner of the JPO?
Answer: It is possible.

✔ Is it possible for a local representative to participate (be present) in an interview with Examiner?
Answer: It is possible, provided that a foreign applicant wishes and authorizes and the examiner allows the local representative to do so.

✔ Is a foreign applicant and/or the local representative allowed to directly communicate with the examiner of the JPO during an interview with Examiner?
Answer: It is possible, provided that the examiner allows them to do so.

The JPO has improved the web conference system for online interview, through which a foreign applicant (and the local representative) became able to easily participate in an interview with Examiner even while they are in outside of Japan.

Here a brief description will be given for the web conference system of the JPO.

Through the web conference system, electronic data can be displayed on the system. The participants are able to provide markings or memos onto the data (image) displayed on the system while they are giving explanations. This makes it possible for the participants to communicate with one another as closely as they do in the JPO building.

* Quoted from the JPO Homepage

Having an interview with Examiner will raise the predictability on whether your application is likely to be granted. Having an interview with Examiner is advantageous because it will also help figuring out what feature in the invention is highly likely to be granted.

Our firm always welcome requests for setting up interviews with Examiners. We can also arrange an online interview with Examiner for you accompanying a foreign applicant and/or a local representative.

In a case where the examiner does not allow the foreign applicant, the local representative, and/or another person such as an interpreter to be present in the interview, it is not a good idea to compel the examiner to allow those people to do so because it could offend the examiner. On the other hand, in a case where the examiner allows the foreign applicant, the local representative and/or another person to be present in the interview, their direct opinions can be delivered to the examiner, thereby making the interview more advantageous. It will be fruitful for the foreign applicant, the local representative and another person to participate (be present) in an interview with Examiner.

If you want further information on arrangement for an interview with Examiner of the JPO, please do not hesitate to contact our firm any time.