This package prepares candidates for the oral stage of the Japanese patent attorney (Benrishi) examination, covering patent and utility model law, design and trademark law, treaties, copyright, unfair competition, and structured professional reasoning. Practice is oral-style: state a conclusion, explain the rule, apply it to facts, and handle follow-up questions. The 20 multiple-choice questions check supporting knowledge and are not a simulation of the oral examination; confirm current eligibility, schedule, format, and official criteria with the Japan Patent Office (JPO). Use a repeatable oral answer: state your conclusion, identify the governing rule, apply it to the key facts, acknowledge missing facts, and finish with the practical consequence. The multiple-choice questions check supporting knowledge only; they do not simulate the oral examination.
What the oral stage rewards
The oral stage is a distinct component in the examination path, and preparation should focus on integrated legal reasoning under questioning.
The Japan Patent Office publishes an oral stage as part of the Benrishi examination path; confirm the current detailed format, language, conduct rules, and schedule with the JPO. This guide uses an oral-style practice model: select the issue, state the rule accurately, apply it to unfamiliar facts, and revise your answer when a follow-up changes an assumption. The supporting multiple-choice questions test knowledge and application, but they are not a simulation of the oral examination.
Examiners can probe whether you distinguish novelty from inventive step, design similarity from trademark confusion, copyright from trade secrecy, and procedural options from substantive merits. Strong candidates also say plainly when a fact is missing. Practice aloud: prepare a two-minute answer and a 45-second answer for each major topic, record yourself, remove unnecessary history, and force yourself to state the conclusion first. Then answer one hostile follow-up, such as 'What if the disclosure occurred only to one person under confidentiality?' or 'What if the later feature was not in the first filing?'
A preparation priority that prevents wasted effort
Prioritize transferable reasoning skills and core doctrines before exotic exceptions.
A useful personal allocation is half your time on core doctrines, a third on oral drills with follow-ups, and the remainder on procedure and professional duties. This is study advice, not an official weighting. Build one-page maps for patent and utility model law, design and trademark law, and treaties, copyright, and unfair competition. Each map should have four boxes: trigger facts, legal test, application checkpoints, and common traps. Add a fifth box for points that must be confirmed against current law or JPO guidance.
Do not spend equal time on rare exceptions before you can explain the core tests cleanly. The oral stage rewards controlled reasoning under pressure. A concise, correct answer with an acknowledged gap is stronger than a long answer that hides uncertainty.
Patent and utility model law: a compact reasoning model
Separate novelty, inventive step, utility model registration effects, amendment limits, and equivalents.
For novelty, ask whether a single prior art item makes the claimed subject matter available before the filing date. A public demonstration, brochure, or sale can matter if it enables the claimed solution. Worked scenario: an engineer presents a prototype at a public exhibition on 2 February and distributes a brochure showing features A and B. The inventor files on 1 June claiming A+B. Unless an exception applies, the February disclosure is a serious novelty problem for A+B; the absence of a sale does not cure it.
For inventive step, do not stop at 'two references were combined.' Ask whether the combination was predictable and whether it produced an unexpected technical effect. Worked scenario: prior art discloses sensor A for temperature and controller B for speed. The claim combines A and B to perform their known functions with no surprising interaction. That looks like a predictable aggregation. If testing shows the combination reduces vibration by 30% where each element alone gives no reduction, the unexpected effect becomes central. State the comparison honestly and identify what data would prove it.
For utility models, remember the no-substantive-examination system: registration may occur without prior-art examination, so validity and enforcement risk must be assessed separately. For amendments, narrowing is not enough if the new feature was not in the original disclosure. Worked scenario: the application discloses A+B; during prosecution the applicant adds C from a later prototype. That is a new-matter problem. The better route may be a separate filing, subject to current law and priority analysis. For equivalents, treat the doctrine as a reasoned exception, not an automatic fallback: compare the difference, function and way and result, fairness, and prosecution history.
Design and trademark law: compare at the right level
Design similarity uses overall aesthetic impression; trademark law asks whether the sign identifies source.
Design similarity is not a checklist of identical features. Ask how the article would appear to the ordinary consumer and whether the overall aesthetic impression is the same or similar. Worked scenario: two chairs have nearly identical proportions, back curve, and leg structure, but one is red and the other blue. Color may affect the impression, but it is not automatically decisive. Compare the whole design, not an isolated feature. Exclude functional constraints from the comparison where they dictate the shape.
Trademark distinctiveness asks whether the sign identifies the source. A descriptive or laudatory term is weak or unregistrable unless acquired distinctiveness is shown. Worked scenario: 'SPARKLING' for bottled water describes a quality. A stylized presentation may help, but stylization alone does not guarantee registrability. Evidence of long use, market share, advertising, and consumer recognition may support acquired distinctiveness; assess the evidence, not just the slogan.
Licensee use can be attributed to the registered owner when the use is authorized. Worked scenario: the owner licenses 'NOVA' to a distributor, and the distributor uses it on authorized goods. For use and non-use analysis, the authorized use may count as the owner's use. If the mark is not genuinely used in commerce for the registered goods or services, non-use cancellation becomes a risk. Internal drafts, mere website mentions without goods, or use only for unrelated services are weaker than real commercial use.
Treaties, copyright, and unfair competition: three disciplined distinctions
Priority preserves dates for supported claims; copyright protects expression; trade secrets depend on secrecy and reasonable measures.
Paris Convention priority is a date-preservation tool, not a worldwide validity certificate. Priority is assessed claim by claim, not feature by feature. Worked scenario: an applicant files in member country A on 3 March disclosing A+B. On 10 May, within a valid priority claim, the applicant files in member country B with claim 1 to A+B and claim 2 to A+B+C. Claim 1 may receive the 3 March date if supported by the first filing. Claim 2 as a whole does not, because C was not disclosed in the first filing. It is inaccurate to say A+B gets March and C gets May inside the same A+B+C claim; the applicant should use separate claims if it wants to preserve the earlier date for A+B.
Copyright protects expression, not ideas, methods, or facts. Worked scenario: a manual explains a sorting method in a distinctive diagram and wording. A competitor independently rewrites the explanation but uses the same sorting method. The method alone is not protected by copyright; the rewritten expression may not infringe unless it copies protected expression. Look for copying of structure, wording, selection, and arrangement, not the underlying idea.
Trade secret protection typically requires secrecy, usefulness, and reasonable secrecy measures. Worked scenario: a formula is kept in a locked database, access is limited to two employees, and both sign confidentiality agreements. Those facts support secrecy and reasonable measures. If the formula is published in a brochure without restriction, the secrecy element is undermined. Well-known marks receive unfair-competition protection against confusing use even where registration is absent; the key is likelihood of confusion and unfair advantage or harm, not merely similarity of signs.
Procedure and professional reasoning: answer the question asked
Identify the procedural route first, then give a conclusion-first substantive answer and respect professional duties.
After an examiner's refusal, the central procedural question is which review route is available. In Japan, the JPO trial panel structure is designed for collegial reconsideration of refusals; exact deadlines, fees, and filing mechanics must be checked in current JPO guidance. Do not answer a procedural question with a substantive validity argument. First identify the decision, the available review, the person entitled to request it, and the effect on the application.
Use a conclusion-first oral structure: 'My conclusion is X. The rule is Y. Applying Y to facts F1 and F2 gives X. One caveat is Z, which I would confirm.' This lets the examiner follow your reasoning and gives you a place to correct yourself. If a follow-up changes a fact, say how the conclusion changes. Do not simply repeat the rule.
Professional duties are part of the test. Japanese practice does not impose a US-style general duty to search for and submit every known prior art reference. It does require honest, non-misleading conduct. Discuss relevant known art and its risks with the client, avoid false statements, and make a strategic decision about submission and distinguishing. Conflicts of interest require a conflict check and avoidance of adverse representation; where consent is permitted, obtain informed consent after full disclosure. Worked scenario: you discover that a new client's patent matter is adverse to an existing client's product line. Do not use one client's confidential information for the other. Pause, assess, and decline or transition as the applicable rules require.
Common errors and corrections
Most lost marks come from poor issue selection, unsupported certainty, and mixing legal categories.
Issue dumping: answering every topic you know instead of the one asked. Correction: one-sentence conclusion, then three supporting points. Rule recitation without application: 'Novelty requires prior art' is not enough. Correction: name the disclosure, date, and feature. Overclaiming certainty: saying 'invalid' or 'infringing' without facts. Correction: state the conditional conclusion and the missing fact.
Mixing design and trademark: asking whether a design is 'descriptive' or a mark has 'visual impression.' Correction: separate source identification from overall design impression. Ignoring claim-level priority: saying that some features in a claim receive the earlier date while others do not. Correction: analyze each claim as a whole; use separate supported claims if needed. Treating the multiple-choice sample as the oral exam: it checks supporting knowledge only. Correction: practice spoken answers and follow-ups.
Integrated practice task and self-check rubric
Use one integrated scenario to practice issue selection, calculation, procedure, and oral delivery.
This is representative open-task practice, not a simulated oral examination. Scenario: Kumo files a patent application on 20 April claiming device A+B+C. Prior art published on 10 January discloses A+B. C is a known damper. Kumo's test data show A+B alone produces vibration of 10 units, while A+B+C produces 7 units, a 30% reduction. After filing, Kumo wants to add feature D from a later prototype. Kumo also has a lamp design that differs from a prior design only in color, uses 'QUICKCLEAN' for cleaning services, and authorizes a licensee to use the mark. On 5 June, Kumo files in a Paris Convention member country with claim 1 to A+B+C and claim 2 to A+B+C+D, and wants priority from 20 April.
Task: (1) Assess novelty and inventive step for A+B+C, identifying missing facts. (2) Advise on adding D. (3) Assess the lamp design and the 'QUICKCLEAN' mark, including the licensee's use. (4) State the priority date for each claim. Answer each in 90 seconds, conclusion first. For inventive step, use the 30% calculation and explain whether the effect is unexpected or merely predictable. For the mark, discuss descriptiveness and acquired distinctiveness. For priority, say that claim 1 may receive 20 April if supported; claim 2 as a whole does not, because D was absent from the 20 April filing. If Kumo files only one combined claim, that claim gets no 20 April priority as a whole.
Self-check rubric, scored 1 to 4 on each row: issue selection; rule accuracy and conditional wording; fact application and calculation; oral structure and follow-ups; professional judgment and confirmation of current requirements. A 3 is competent; a 4 is precise and concise. Any row below 3 identifies the next drill. Do not award yourself marks for mentioning an issue without applying it.
A practical study sequence
Use an eight-week cycle that moves from diagnosis to oral performance and ends with current-requirement checks.
Week 1: take the 20-question check, record two-minute answers, and list weaker domains. Weeks 2 and 3: build patent/utility model and design/trademark maps; practise five oral prompts each week with one follow-up. Week 4: drill treaties, copyright, unfair competition, and claim-level priority calculations. Week 5: work through refusal review, conclusion-first structure, professional honesty, and conflicts. Week 6: complete the integrated task and score it with the rubric. Week 7: repeat 45-second answers and hostile follow-ups. Week 8: light review, confirm current JPO guidance on eligibility, schedule, format, and procedure, and rest. The multiple-choice set is a preview, not full syllabus coverage; use it to find gaps, not to predict an oral result.
References and further reading
Use these references to explore the concepts and check the latest information from the relevant organizations.