Japan IP News

September 2014


Tokyo Japan

"2014 Revisions To Industrial Property Laws in Japan"

  1. Introduction
    The Japanese government amended in this April the Japanese IP (Patent, Utility-model, Design and Trademark) Laws. One purpose of the amendment is to comply with the Articles in the Patent Law Treaty which has been adopted by the WIPO diplomatic conference on June 1, 2000.
    The Patent Law was further amended so as to introduce again a post-grant opposition procedure which had been once abolished in 2003. The Design and Trademark Laws were further amended so as to expand the registration eligibility range.
    The above-mentioned amendments were promulgated on May 14 this year and will be effective within one year from the promulgation date.
  2. Due Care Relief in Respect Of Time Limits
    II-1) The IP laws were amended to provide a due care relief for overlook with respect to a time limit for either of:
    • 1) payment of annuity for restoration of an IP right;
    • 2) submission of a Japanese translation of a foreign language text in case of the foreign language text filing;
    • 3) submission of a Japanese translation of a PCT filed with a foreign language;
    • 4) submission of a patent or UM application with a priority claim;
    • 5) submission of a request for Examination; and
    • 6) submission of a petition of a trademark registration renewal.
    II-2) Conditions for permission of the due care relief are:
    • 1) Existence of a justifiable reason based on due care why a responsible person has overlooked the particular time limit; and
    • 2) Payment of a prescribed official fee within a prescribed time limit.
    • 3) "Unintentionality" cannot be a basis for the relief in respect of any time limit.
    II-3) Warning!
    There still remain many time limits such as the Appeal due time limit failure of either one of which cannot be relieved even when existence of a due care is proved.
  3. Re-introduction of Post-Grant Opposition System
    • 1) The 2014 amendments to the Patent Law include re-introduction of the post-grant opposition system which has been once abolished in 2003.
    • 2) Basic Structure of The Re-introduced Opposition System
      2-1) Any person including an anonymous person can raise an opposition against an issued patent within a 6-month period starting from its patent publication date.
      2-2) No oral proceedings is adopted.
      2-3) No Opposition can be raised only based on a reason relating to ownership of the particular patent.
    • 3) Reason Why The Opposition System Has Been Re-introduced
      3-1) Since any person can request an invalidation trial even without any interests under the current invalidation trial system it could have been said the patent right is rather unstable.
      3-2) According to the JPO’s statistic data, it is apparent that there have been raised about 3,000 ~ 5,000 oppositions per year before the abolishment of the opposition system in 2003. However, the number of invalidation trial requests did not substantially increase even after the abolishment of the Opposition system. It is much interesting that the Opposition system has been used for a different purpose from the invalidation trial system but used as a weapon to generally or widely attack any competitor of the Opponent. Such phenomenon seems to reflect a Japanese typical mentality to tend to avoid serious face-to-face arguments.
  4. Revisions to Design Law
    The 2014 revision to Design Law is to introduce an International Design Application system which is to be filed at the JPO while designating countries for which the international application is to be effective. This is to prepare for Japan’s join to the Geneva Act in the not far distant future.
  5. Revisions to Trademark Law
    The 2014 revisions to Trademark Law include a stipulation to permit to describe in detail the subject trademark per se in the trademark application documents. Namely, a trademark constituted by a single color has become registerable. Furthermore, one or more sounds will be, in combination, evaluated as a unified single trademark under the revised Trademark Law.