1. Expansion of Scope of Exceptions to Lack of Novelty of Invention
(Relevant Articles: Patent Law 30(2); Utility Model Law 11(1); Design Law 4(2))
Under the existing framework, exceptions to lack of novelty that can be claimed under Article 30 of the Patent Law are limited to inventions that became publicly-known as a result of conducting experiments, presentation in printed publications, presentation via the Internet, presentation in writing at academic conferences designated by the Commissioner of the Patent Office, or display at specific exhibitions such as exhibitions designated by the Commissioner of Patents.
In contrast, under the revised law the scope of exceptions to lack of novelty that can be claimed will be expanded from a restricted list of exceptions to include inventions that became publicly-known "as a result of the action of a person having a right to receive a patent".
As a result, inventions presented on television or inventions that became publicly-known due to the mode of display, for example, during a presentation to investors when applying for research and development funding, can also be claimed as exceptions to lack of novelty.
However, this does not apply to an invention disclosed as a result of publication in a patent gazette or the like due to an act of filing an application with a patent office in Japan or overseas.
In addition, similar measures are to be implemented in the Utility Model Law and the Design Law.
2. Revision of Basis for Assertion of Rights (Perfection) using Non-exclusive License
(Relevant Articles: Patent Law 34-5, 99; Utility Model Law 4-2, 19(3); Design Law 5-2, 28(3))
Under the existing framework, a non-exclusive license for a patent right that has not been registered at the JPO cannot be asserted against a third-party who has subsequently acquired the patent right (Patent Law Article 99(1)).
The revised law introduces a framework whereby a non-exclusive license or a provisional non-exclusive license can be asserted against the third-party without registration of the license (inherent assertion of rights). In conjunction with this, the system of registration of non-exclusive licenses has been abolished.
In addition, similar frameworks are introduced to the Utility Model Law and Design Law.
3. Introduction of Remedial Measures for Misappropriated Applications
(Relevant Articles: Patent Law 74, 123(1)(ii) and (vi); Utility Model Law 17-2, 37(1)(ii) and (v); Design Law 26-2, 48(1)(i) and (iii))
Under the existing framework, when a misappropriated (usurped) application or the like is filed (such as by a person who is not the true inventor or by only a part of co-inventors), while the legitimate right owner may attempt to invalidate a patent right granted on the usurped application via an invalidation trial, there is no available framework for them to recover the usurped right.
Under the revised law, similarly to a framework that has already been introduced in several countries overseas, when a patent right is granted on a usurped application, the legitimate right owner is able to demand transfer of the patent right from the usurpers to the legitimate right owner based on the legitimate right owner's right to receive a patent for the invention according to the application. In conjunction with this change, once the patent right has been transferred to the legitimate owner, misappropriation or the like is no longer valid as a reason for invalidation in the invalidation trial framework.
In addition, similar frameworks are introduced to the Utility Model Law and Design Law.
Under the existing framework, within a certain period after demanding revocation at the IP High Court of a trial decision to invalidate a patent right, it is possible for the patent holder to request a correction trial to change the scope of rights under dispute in the invalidation trial, whereupon, after the trial decision of patent invalidation has been revoked and the case returned from the IP High Court to the JPO trial examiners, the patent invalidation trial will be recommenced in view of the request for the correction trial.
Under the revised law, in order to prevent cases from being shuttled back and forth between the IP High Court and the JPO without any substantial ruling being delivered, a patentee is prohibited from requesting a correction trial after having demanded revocation at the IP High Court of a trial decision to invalidate a patent right.
However, a procedure has been created to disclose the decision of the board of trial examiners when the time is ripe for a decision to be delivered in an invalidation trial (prior notice of trial decision). It is thus possible to perform corrections in view of the decision of the board of trial examiners by responding to the prior notice of the trial decision.
5. Restriction of Assertions in Action for Retrial
(Relevant Articles: Patent Law 104-3, 104-4; Utility Model Law 30; Design Law 41; Trademark Law 13-2(5), 38-2, 39, 68-3)
Under the existing framework, when, after a court decision of patent right infringement and/or compensatory damages has become final and binding, a trial decision is delivered in an invalidation trial or correction trial presenting content that differs from the content on which the decision of infringement or the like was based, it is possible to file suit to revoke the decision of infringement etc. at the relevant court.
Under the revised law, it has been determined that a party who has been involved in a patent right infringement suit and/or a compensation suit may not assert that a trial decision or the like which invalidated the patent has become final and binding in an action for a retrial (including a suit for compensation of damages and/or return of unjust enrichment against an obligee (patent right holder) with respect to a provisional seizure and/or a provisional deposition related to a patent right infringement suit or the like), after the decision of infringement or the like has become final and binding. Further, retrials are similarly restricted in cases where a trial decision finding an extended registration invalid has become final and binding.
In addition, similar measures are to be implemented in the Utility Model Law, the Design Law, and the Trademark Law (when a trial decision of invalidation or a ruling of cancellation has become conclusive).
Under the revised law, it has been clarified that a request for correction in an invalidation trial or a request for a correction trial can be made not only for a patent right in its entirety but also for each claim individually or for each group of claims (being one independent claim and claims dependent therefrom).
7. Clarification of Effective Range of Trial Decisions
(Relevant Articles: Patent Law 167-2, 180, 181, 182; Utility Model Law 41, 47(2); Trademark Law 43-14, 55-3, 60-2, 63(2))
Under the revised law, in connection with section 5 above, the effective range of a trial decision pursuant to a request for an Invalidation Trial or a Correction Trial has been clarified.
In addition, these provisions of the Patent Law are applied mutatis mutandis to the Utility Model Law and, in the Trademark Law, it has been clarified that decisions in oppositions to registrations and trial decisions in invalidation trials are determined for each of the designated goods or designated services individually.
8. Abolition of Third-party Effect with respect to Conclusive Trial Decisions in Invalidation Trials
(Relevant Articles: Patent Law 167; Utility Model Law 41; Design Law 52; Trademark Law 56(1))
Under the existing framework, once a final trial decision has been rendered and become binding in a patent invalidation trial or an invalidation trial for an extended registration, it is not possible for any party to request trial based on the same facts and evidence.
Under the revised law, the effective range of a trial decision in a patent invalidation trial or the like is limited to the parties to, and participants in, the invalidation trial, and the effect of a patent invalidation trial or the like with respect to other third-parties has been abolished.
Further, similar measures are to be implemented in the Utility Model Law, the Design Law, and the Trademark Law.
(1) Amplification of Exemptions for Small Entities and the like.
(Relevant Articles: Patent Law 109, 195-2; TLO Law 13; Law on Special Measures for Industrial Revitalization 56; Act on Enhancement of Small and Medium Sized Enterprises' Core Manufacturing Technology 9)
Under the revised law, with respect to the period of exemptions from annual fees in the Patent Law, etc., the 1st to 10th annual fees of a patent registration are exempted, in contrast to the 1st to 3rd annual fees (or in some laws, the 1st to 6th annual fees) that are exempted under the existing framework.
Under the revised law, the employee invention requirement and the prior agreement of succession requirement in the case of an assignee are abolished from the requirements for eligible exemptees under the existing framework, and a party who has been assigned an invention from another party is eligible for exemption.
Under the revised law, the means requirement of the existing framework has been relaxed and the scope of those eligible for exemption expanded.
(2) Reduction of Design Registration Fee
(Relevant Articles: Design Law 42)
Under the revised law, the design registration fee from the 11th to 20th years has been reduced from the current fee of 33,800 yen per year to a revised fee of 16,900 yen per year (being the same fee as for the 4th to 10th years).
(3) Reduction of Official Fees for International Applications
(Relevant Articles: International Application Law 8(4), 12(3), 18(2))
Under the revised law, the official fees for international applications have been reduced.
10. Improvement of Procedural Remedies for Applicants and Patentees
(Relevant Articles: Patent Law 36-2, 112-2, 184-4; Utility Model Law 33-2, 48-4; Design Law 44-2; Trademark Law 21, 65-3, Supplementary Provision 3)
Under the revised law, eligibility has been expanded for remedial measures with respect to expiration of procedural period.
Specifically, regarding submission of foreign-language applications and Japanese translations of foreign-language patent applications (Articles 36-2 and 184-4 of the Patent Law), when "legitimate reasons" exist for missing a submission deadline, a procedural remedy allows submission of the translation within two months from the date on which the reason ceased to exist but also no longer than one year from the original deadline. Further, regarding payment of annual patent fees and annual fees with a surcharge for late payment, the existing requirement for procedural remedy of "reasons beyond the patentee's control" has been relaxed to "legitimate reasons" and the annual fee plus surcharge can be paid by procedural remedy within two months from the date on which the reason ceased to exist but also no longer than one year from the deadline for late payment.
Further, similar measures are to be implemented in the Utility Model Law, the Design Law, and the Trademark Law. In particular, in the Trademark Law, petitions for renewal are permitted according to similar procedural remedies when the period for applying for renewal of a registration has expired.
(1) Abolition of Designation of Exhibitions in the Trademark Law
(Relevant Articles: Trademark Law 4(1)(ix), 9(1)
Under the existing framework, marks that are identical with, or similar to, a prize awarded at an individual exhibition designated by the Commissioner of the Patent Office are unregistrable, and special provisions are provided when applying for registration of marks used on products that are exhibited at such an exhibition.
Under the revised law, protection (application) is extended to exhibitions that comply with standards determined by the Commissioner of the Patent Office.
(2) Abolition of Provisions for Preclusion of Registration within One Year of Extinguishment of a Trademark Right
(Relevant Articles: Trademark Law 4(1)(xiii))
Currently, after a trademark right is extinguished, the provisions of Article 4(1)(xiii) of the Trademark Law uniformly preclude the registration of the mark by a third party within a year of the extinguishment of the trademark right on the grounds that use by a third party of a mark that had previously been used by another person or persons as a registered trademark could invite confusion regarding the origin of the designated goods or services.
Under the revised law, the provisions of Article 4(1)(xiii) of the Trademark Law are abolished.
Further, the issue of prevention of confusion among traders and consumers that has hitherto been addressed by these provisions will now be addressed by other reasons for rejection aiming to prevent confusion, such as by application of the provisions of Article 4(1)(xv) of the Trademark Law.
Further, if you have any questions regarding these revisions to the Patent Law and other IP laws in Japan, please contact our International Department (mail@taiyo-nk.co.jp).
