Japan IP News

PATENT LAW REVISION

Major Points of Revisions

  1. "Shifting Amendment " is no longer entered
    Current Law: An applicant can shift the subject matter of the invention to a different subject matter after a first Office Action.
    Revised Law: Amended claim should meet the "unity of invention" requirement when compared with an original claim. The applicant cannot shift the subject matter of the invention to a different subject matter once that invention is examined.
  2. Time limit for translation of English application is relaxed
    Current Law: An applicant must file a Japanese translation in the JPO within two months from the Japan filing date when the applicant files a foreign-language application. The translation deadline is calculated from the Japan filing date.
    Revised Law: The translation deadline is calculated from the priority date. The applicant can file a translation even after two months from the Japan filing date as long as the applicant files the translation within fourteen months from the priority date.
  3. Time limit for divisional application is relaxed
    Current Law: An applicant can file a divisional application only when the applicant can make an amendment.
    Revised Law: The applicant can also file a divisional application within thirty days from a service date of a "Notice of Allowance" or "Notice of Refusal."
  4. Misuse of divisional application is prohibited
    Current Law: An applicant can file a divisional application for the same invention as the parent application.
    Revised Law: If the examiner rejects the divisional application for the same reason as the parent application, the examiner will issue a final Office Action at the first instance.
  5. Exportation is "working" of the invention
    Current Law: Exportation is not "working" of the invention.
    Revised Law: Exportation will be included in the working of the invention.
    Current Patent Law, Article 2(3)(i) stipulates that manufacturing, using, assigning and importing and offering for assignment is "working of the invention" if the invention is directed to a product.
  6. "Retaining a product for assigning, releasing or exportation" is indirect infringement of the patent right
    Current Law: Retaining a product for the purpose of assigning, releasing or exportation does not infringe the patent right.
    Revised Law: Such retaining of a product will be indirect infringement of the patent right.
  7. Penalty applied to infringers is enhanced
    Current Law: An infringer shall be jailed five years or less, or fined five million yen or less.
    Revised Law: An infringer shall be jailed ten years or less, and/or fined ten million yen or less.
  8. Penalty applied to legal persons is enhanced
    Current Law: A legal person shall be fined one hundred and fifty million yen or less if an employee of that legal person infringes someone’s patent in connection with the business of that legal person.
    Revised Law: The fine will be increased to three hundred million yen or less.