Revision of the Patent Act and Other Acts (Act No. 3 of May 17, 2019)
June 29, 2020
Further to our previous report on the revision of the Design Act, there have been several revisions to the Patent Act and other IP-related acts. The revised acts have been basically enforced since April 1, 2020. However, please note that the inspection system discussed below has not yet been introduced, and is expected to be enforced from October 1, 2020. Further, some of the revisions to the Design Act have not yet been enforced.
1. Patent Act:
The patent litigation system has been modified with a view to rectifying any imbalance in favor of the infringer.
(1) Introduction of an inspection system: Articles 105-2-1 to 105-2-11
In order to facilitate collection of evidence for the plaintiff, "inspection", i.e., on-site examination by an expert, is newly introduced. The Court appoints a fair and neutral expert to enter the premises of the alleged infringer.
(2) Changes to damage calculation methods: Article 102(1)(ii)
(i) Determination of damages for amount beyond patentee's production/sales capacity
Conventionally, when calculating damages for infringement, among the profit gained by the infringer, any amount exceeding the right holder’s production or sales capacity was not counted as damage to the right holder. Now, however, the right holder can claim compensation for the amount beyond their production or sales capacity, based on the premise that this amount was licensed to the infringer.
(ii) Increase in "sum equivalent to licensing fee": Article 102(4)
Article 102(3) has hitherto guaranteed that a patentee can claim compensation corresponding to a licensing fee, which would hypothetically be negotiated, as a minimum amount of financial compensation for damages due to patent infringement, but the criteria for determining the specific amount of the licensing fee have been somewhat open to interpretation. Subsequent to the revision, when determining this "licensing fee" the Court can presume that the patent was valid and that infringement did actually occur, effectively increasing the amount that will be awarded.
2. Design Act
A significant number of revisions have been introduced. For details thereof, please refer to our previous article, "Revisions to the Design Law (April 1, 2020)", posted on May 1, 2020.
3. Trademark Act
Hitherto, widely recognized trademarks indicating a public interest body (local governments, universities, etc.) could only be used by said body. Subsequent to the revision, a public interest body may now grant non-exclusive licenses for such trademarks to a third party (Article 31).
May 1, 2020 Revisions to the Design Law (April 1, 2020)
Summary prepared by Taro Yoko, International Information Group
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