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Articles 48, 71, 108, 122, and 129 of the Patent Act empower the Intellectual Property Office (IPO), when examining a patent application or patent cancellation case, at the request of a party or ex officio, to instruct the applicant or patentee to conduct experiments or submit additional models or samples within a specified time period, and, if necessary, to visit a site or designated place to conduct an inspection. To regulate the procedural handling of such inspections, on 19 July 2004, the Ministry of Economic Affairs announced the Guidelines for Conducting In-spections for Patent Cases by the Intellectual Property Office, which took effect immediately. The main points of the Guidelines are as follows:
When an examiner examining a patent appli-cation or patent opposition action believes that conducting an inspection will facilitate un-derstanding the facts of the case and speeding a decision, the examiner may ex officio or at request visit a concerned site or designated place to conduct an inspection. The inspection should be conducted by the IPO examiner in charge of the case concerned. If necessary, the examiner may be accompanied by other IPO staff connected with patent examination.
The following persons may attend an inspec-tion: the patent applicant, the cancellation pe-titioner, the patentee, or their agents, or other persons connected with the case as permitted by the IPO.
If the examiner considers it necessary to con-duct an inspection ex officio, he should first inform the concerned parties in writing of the reasons for and subject under inspection, and specify a time period for the relevant party to reply stating whether it is willing to make available the subject under inspection. If the party concerned does not reply within the specified time period or does not agree to make the relevant subject available, the ex-aminer should proceed directly with the ex-amination based on the information already available. If a party has legitimate grounds for requesting a different time for the inspection, the IPO will set a new inspection date. Only one change of inspection date may be re-quested, and the party concerned should in-form the IPO staff handling the case in writing, by fax or by telephone, at least five days prior to the originally appointed inspection date.
A party requesting an inspection must pay an inspection fee before the inspection. If the fee has not been paid, the IPO may not conduct the inspection.
When conducting an inspection for a patent application case, the examiner should first confirm that the subject under inspection is same as the content of the claims of the patent application; in an cancellation case, the ex-aminer should first confirm that the subject under inspection is same as the one cited in the evidence.
To facilitate conducting of an inspection, when necessary, the examiner may request that a party or its agent to explain relevant facts or provide evidentiary documents. If the party or its agent is unable to reply clearly to the questions asked, this should be recorded in the minutes of the inspection. If they are un-able to produce evidentiary documents during inspection, the examiner should specify a time period for providing such information; if the information is not provided within the speci-fied time period, the examiner should proceed directly with the examination on the basis of the inspection minutes and the information already available.
If a party to the concerned case, or another person connected with the case fails to attend an inspection after having been notified to do so, the examiner may cancel the inspection and record the circumstances in the inspection minutes.
The examiner may docket the inspection as evidence by photography, audio recording, video recording or other necessary means. In addition to gathering evidence himself, if necessary, the attending examiner may request the attending parties to assist in docketing and collecting evidence regading the subject un-der inspection and related evidence.
When conducting an inspection, the examiner should not comment on the content of the case, the evidence, or the outcome of the case.
The examiner should make minutes of in-spection on the spot, recording the date, time, and place of the inspection, attending persons, addressed matters, and the main points of questions asked and answers received. The attending parties or their agents should con-firm the content by signing the minutes.
