On May 14, 2021, a bill for new revisions to IP Laws passed the Diet and was promulgated. The Patent Act, Utility Model Act, Design Act and Trademark Act, as well as several other IP-related acts, are subject to the new revisions as outlined below. The revised Acts will enter into force within a year of the promulgation.
 
(Updated September 28, 2021)
A Cabinet Order setting forth the dates of implementation of certain procedures under the revised acts was approved by the Cabinet and promulgated on September 17, 2021. The dates of implementation stipulated in the Order include the following.
(1) October 1, 2021
- Introduction of online trial procedures
- Exemption from surcharges upon late payment of issue fees in situations such as pandemics or natural disasters
(2) April 1, 2022
- Elimination of requirement of approval from non-exclusive licensees on abandonment/modification of rights
- Court-initiated collection of public opinions
- Overall revisions to issue and registration fees
 
(Updated July 22, 2022)
A Cabinet Order announcing the dates of implementation of the following procedures under the revised acts was approved by the Cabinet on July 15, 2022.
(1) October 1, 2022
- Expansion of the act of "importation" under the Design and Trademark Acts
(2) April 1, 2023
- Relaxation of requirements for procedures after expiry of period
 
(*Below, P: Patent Act U: Utility Model Act D: Design Act T: Trademark Act)

• 1. Relaxation of Requirements for Procedures after Expiry of Period [P, U, D, T]
• The revised laws will relax the criteria for accepting procedures initiated after the expiry of a specified period, which procedures include the following.
  
  - Filing of Japanese translations of PCT applications
  - Filing of Japanese translations of foreign-language applications
  - Filing of applications claiming priority
  - Filing of Requests for Examination
  - Payment of Issue Fees
  - Filing of Notification of Appointment of Patent Administrators
  
  Under the current laws, belated action in regard to the foregoing procedures can only be accepted based on the criterion of a "justifiable reason", which generally corresponds to the standard of due care adopted by the EPO and requires a high level of care. The revision will lower the requirement of a "justifiable reason" to the level of "unintentional" delay, and is expected to broaden the availability of these procedures.
  
  
• 2. Elimination of Requirement of Approval from Non-Exclusive Licensees on Abandonment/Modification of Rights [P, U, D]
• Owing to increased complexity in licensing arrangements in the field of digital technologies and other fields, there have been cases in which an IP proprietor has lost their right as a result of failing to obtain approval from all of their licensees. Addressing this situation, the revision eliminates the need to obtain approval from non-exclusive licensees (i.e., licensees not registered with the JPO) in order to correct or abandon their rights. While this revision is likely to simplify procedures for right holders, it is not inconceivable that the scope of licenses could potentially be limited without notice as a result. To avoid any disputes, right holders and licensees are advised to include clauses regarding specific terms for abandonment/modification of rights in their license agreements. The Trademark Act, however, will not be affected by this revision, and will maintain the requirement of approval from exclusive and non-exclusive licensees.
  
  
• 3. Court-Initiated Collection of Public Opinions [P, U]
• New stipulations will be introduced that allow the courts of first and second instance in infringement litigations to broadly solicit public opinion when the need arises.
  
  
• 4. Introduction of Online Trial Procedures [P, U, D, T]
• In view of the current Covid-19 pandemic, online trial procedures will be introduced.
  
  
• 5. Revisions to the Issue/Registration Fees [P, U, D, T]
• The stipulations on specific amounts of issue fees and registration fees will be removed from the respective Acts with only the upper limits being specified therein. The revisions derive from the JPO's need to balance income and expenditures of accounts for IP matters, and it is expected that the issue fees and registration fees will rise. However, fees for prosecution of IP rights will likely be maintained at the same level.
  
  Further, the revisions will exempt applicants from the payment of surcharges upon late payment of issue fees in certain unavoidable situations such as pandemics and natural disasters.
  
  
• 6. Expansion of the Act of "Importation" [D, T]
• Under the current Design and Trademark Acts, importation of goods that infringe the Design or Trademark Act is regarded as act of infringement. In response to recent increases in imports of counterfeit goods such as brand-name bags and watches, the revision widens the definition of the act of "importation" such that actions by overseas business operators leading to other parties importing infringing goods into Japan will be covered as an act of infringement. Under the revised Acts, goods imported via a third party　carrier will be subject to seizure at customs.

 
Summary prepared by the International Information Group
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