The Law Revising Portions of the Unfair Competition Prevention Act and Other Acts was promulgated on June 14, 2023, and put into force sequentially. The Law pertains to revisions to the Unfair Competition Prevention Act, as well as the Patent Act, the Utility Model Act, the Design Act, the Trademark Act, and the Act on Special Provisions for Procedures related to Industrial Property Rights, some of which we have already reported on our website. The following is a summary of the revisions.
 

• P: Patent Act
• U: Utility Model Act
• D: Design Act
• T: Trademark Act
• UC: Unfair Competition Prevention Act
• I: Act on Special Provisions for Procedures related to Industrial Property Rights

[Summary of the Revisions]
Effective since July 3, 2023
(1) Restriction of access to documentation containing trade secrets submitted in arbitration procedures [P, U, D]
The IP laws provide for an arbitration system whereby the Minister of Economy, Trade and Industry or the Commissioner of the Patent Office can grant a non-exclusive license to a third party upon request for arbitration by the third party. Before the revision, documentation submitted in arbitration procedures was open to anyone, which could cause the parties concerned to refrain from submitting important evidential documents. The revision made it possible to request restriction of public viewing of documents containing trade secrets submitted during arbitration procedure.
 
(2) Introduction of "service by publication" in response to international mail service suspension [P]
Official documents sent from the Japan Patent Office (JPO) to overseas residents who do not have an agent in Japan are usually dispatched by international postal services. However, in response to the suspension of international postal services during the Covid-19 pandemic, the Patent Act was revised such that service by publication could be utilized, whereby the pertinent information of any such documents would be published in the Official Gazette and on the JPO website and the documents would be regarded to have been duly conveyed to the intended recipient after a certain period.
 
Effective since January 1, 2024
(3) Simplification of procedures for requesting exception to loss of novelty in design applications [D]
The Design Act provides for an exception to loss of novelty (grace period) for applications for designs made public before the filing of a design application as the result of an action by a person having a right to obtain a registration for the design. Before the revision, when such disclosure occurred multiple times before the filing of an application, a certificate accompanied by evidential documents needed to be submitted for each of the pre-filing disclosures within 30 days of the filing. However, the Act was amended such that only a certificate for the earliest disclosure is required, thereby simplifying the procedure for attaining an exception to loss of novelty.
 
(4) Digitalization of paper-based application procedures [I]
As a result of the revision to the Act on Special Provisions for Procedures related to Industrial Property Rights, many paper-based application procedures before the Japan Patent Office can now be implemented by online submission.
 
(5) Integration of fee payment for international registration applications of trademarks by e-filing [T]
Payment of fees for international registration applications for trademarks to the Japan Patent Office and to WIPO have been integrated and thereby simplified.
 
(6) Online submission of priority certificates [P, U, D, T]
Priority certificates for applications claiming priority under the Paris Convention, which previously needed to be submitted by paper, can now be filed by online submission.
Effective since April 1, 2024
 
(7) Introduction of consent system [T]
Prior to the revision, trademarks that are identical or similar to another person's registered trademark could not be registered for identical or similar designated goods or services. As a result of the revision, a consent system has been introduced to allow registration of such trademarks subject to consent by the owner of the prior registered trademark and on the condition that there is no likelihood of confusion to consumers.
 
(8) Exception to application of Unfair Competition Prevention Act in association with the introduction of the consent system [UC]
In connection with the introduction of the consent system under the Trademark Act, an exception to injunction or the like under the Unfair Competition Prevention Act has been introduced in order to avoid a situation in which one of the owners of the registered trademarks that are identical or similar is sued regardless of prior consent.
 
(9) Relaxation of registration requirements for trademarks that include another person's name [T]
Before the revision, trademarks that included another person's name could not be registered unless consent from the other person was obtained. However, in response to demands from the fashion industry and other industries that customarily use people's names for brand names, trademarks that include another person's name have become eligible for registration, provided that the name does not have a certain degree of public recognition, the trademark has a reasonable relationship with the applicant, and there are no wrongful purposes involved in obtaining the trademark registration.
 
(10) Enhancement of protection against imitation of the shape of goods [UC]
Conventionally, the Unfair Competition Prevention Act regulated imitation of the shape of goods based on the assumption that the goods are tangible objects. However, in view of prevailing circumstances in which economic transactions in digital spaces such as in the metaverse are becoming more common, imitation of the shape of goods in digital spaces is now also covered by these regulations.
 
(11) Enhancement of protection of big data etc. [UC]
Under the Unfair Competition Prevention Act, a gap previously existed in the protection of data provided to a specified person in the course of trade ("limited provision data"), such as big data. As a result of the revision, the protection of such limited provision data has been expanded so as to cover big data that is handled confidentially, which was not previously protected by the Act.
 
(12) Expansion in presumption of amount of damage [UC]
The Unfair Competition Prevention Act includes a provision setting forth a presumption of the amount of damage in order to reduce the burden of proof on plaintiffs, which, prior to the revision, only covered "technical information" from among trade secrets, and only covered cases in which "a product is transferred", limiting the instances in which the provision could be applied. The Act has been revised so as to cover "trade secrets" in general and cases in which "data or services are provided" as the infringing action for which the presumption of the amount of damage is applied. In addition, provisions similar to the Patent Act and other Acts that would potentially increase the presumed amount of damage have been implemented.
 
(13) Expansion of Presumption of Unfair Use of Trade Secrets and the like [UC]
Although the Unfair Competition Act includes a provision related to presumption of wrongful use of trade secrets in order to reduce the burden of proof on plaintiffs, the circumstances in which this provision could be applied were limited. The revision has expanded the scope of application of this provision.
 
(14) Restriction on the number of applications requesting fee reduction [P]
As a result of cases in which the fee reduction system has been misused in contravention of the system's purpose of promoting inventions by those having limited resources, a partial limitation on the number of applications requesting fee reduction has been introduced.
 
(15) Clarification of procedures related to international infringement of trade secrets [UC]
In civil lawsuits, there have been cases in which it was unclear whether or not a lawsuit could be filed based on the Unfair Competition Prevention Act of Japan, when trade secrets of a corporation engaged in domestic business were infringed. The revision has clarified that civil lawsuits related to trade secrets of a corporation engaged in domestic business can be filed with the Courts of Japan under the Unfair Competition Prevention Act of Japan even if the infringement takes place overseas, provided that the trade secrets are properly managed in Japan.
 
(16) Strengthening of penalty for bribery to foreign civil servants [UC]
The Unfair Competition Prevention Act prohibits bribery to foreign civil servants and the like to obtain a wrongful benefit in business in connection with international business transactions, in compliance with the requirements under the OECD Anti-Bribery Convention. The penal provisions have been amended so as to expand the statutory penalty (monetary penalty and penal servitude) as well as to cover employees having a foreign nationality who commit bribery overseas.
 
Effective within three years from promulgation
(17) Changes in online service of documents
Some adjustments have been made to the Act on Special Provisions for Procedures related to Industrial Property Rights in relation to online service of documents from the Japan Patent Office, such as Decisions of Refusal.

 
Summary prepared by the International Information Group
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