Overview of the latest revisions of five IP acts in Japan

By Liu Ying, Ph.D. Candidate of Hokkaido University, Special Correspondent of China IP in Japan,[Comprehensive Reports]

In June 2014 the Japanese Cabinet issued the Japan Revitalization Strategy and the Basic Policy Concerning IP Strategies, reiterating the slogan of “realizing a nation built on IP” in the Japan IP Policy Outline in 2002, with the goal of “becoming the world’s leading country regarding intellectual property in the next 10 years.” In order to achieve this goal, a set of legal regimes will be put in place to further promote IP creation, improve IP protection and exploration, which means that many existing laws and regulations will possibly be revised. As a matter of fact, the relevant revisions have already begun in early 2014. On March 11th 2014, the Japanese Cabinet passed the Bill for the Act on the Partial Revision of the Patent Act and Other Acts, ushering in the revision of five acts, namely, the Patent Act, the Design Act, the Trademark Act, the Act on International Applications under the Patent Cooperation Treaty and the Patent Attorney Act.

I. Revision of the Patent Act

The revision of the Patent Act mainly includes the following two aspects:

1. Relief measures adopted to extend application periods in case of special circumstances.

In line with lessons from the 2011 earthquake in Japan and overseas experience, the revision of the Patent Act provides that relief measures Overview of the Latest Revisions of Five IP Acts in Japan may be taken so that applicants or patentees are entitled to certain extended periods required for filing, examination, and other procedures following natural disasters and other force majeure events. The measures are applicable to exceptions to lack of novelty, submission of priority certificates, divisional application, application review and payment of patent fees.

2. New system created in submission of patent oppositions.

The previous patent acts of Japan had established the patent opposition system, but the system was merged into the patent invalidation trial procedure in the 2003 revision of the Patent Act. However, statistics show that the number of patent invalidation trials has not increased substantially after the merger; therefore, the Japanese IP field held that there have been a number of defective patents under the current co-existing system of patent application and invalidation trial. To solve this problem, the newly revised Patent Act has separately put in place the patent opposition system.

Under the new opposition system, any person may file an opposition against a patent within a 6-month period following the publication of the patent (Article 113). In the meantime, “any person” that may file an invalidation action has been revised to “only parties affected by a patent” (the second paragraph of Article 123). The opposition will be conducted in written form only. If the Japan Patent Office (JPO) decides to revoke a patent, the patent owner and other related parties will be entitled to an opportunity to present their views; if patent owners plan to amend the scope of claims, they will also be entitled to the opportunity to present their views (Article 118 and item 5 of Article 120).

II. Revision of the Trademark Act

The revision of the Trademark Act has been the highlight of this revision, which mainly includes the following three aspects:

1. Expanding the scope of objects of trademark protection.

The Act is revised to additionally protect certain trademarks in Japan, for example, colors and sounds (the first paragraph of Article 2). It is worth noting that the “scent trademark” is not covered in this revision as required by the U.S. during negotiations over the Trans-Pacific Partnership Agreement, but the scent trademark is likely to be protected by the Trademark Act under pressure from the U.S. With the expansion of the protection objects, the definition of “trademark use” is also revised, namely, an act of making a sound will also be included in the definition (the third and fourth paragraphs of Article 2). Correspondingly the application procedure and requirements are also set out for those newly added types of trademarks (Article 5).

2. Expanding the scope of eligible entities concerning regional collective trademarks.

The Trademark Act of April 2006 adopts regional collective trademarks, providing that a sign which consists of “the name of the region and the name of the goods or services” may be eligible for registration as a regional collective trademark. Under the current Act, eligible entities are restricted to cooperative associations and other bodies. Nowadays, associations of commerce and industry, chambers of commerce and industry, and specified non-profit corporations also play an important part in popularizing regional collective trademarks; therefore, they are eligible to be applicants of regional collective trademarks in the newly revised Trademark Act.

3. Providing protection for well-known trademarks identical with or similar to abbreviations for international organizations.

According to the newly revised Trademark Act, if a sign which identifies itself as a business-related product has been widely recognized among users, the sign is eligible for trademark application even though the sign is identical with or similar to abbreviations of international organizations (item 3 of the first paragraph of Article 4).

III. Revision of the Design Act

Japan is considering accession to the Hague Agreement. Currently the mainstream opinions agree to accede. The main three reasons are as follows: firstly, under the Hague Agreement, any design patent filed for application through the JPO can be effective in multiple nations, therefore, the applicant will be able to consider a variety of application strategies. Secondly, after acceding to the Hague Agreement, Japan’s examination procedure is likely to be an international standard. Thirdly, if the U.S. and China also want to accede, Japan should also follow suit as soon as possible. The mainstream opinions lead to the corresponding adjustments to the Design Act, the main part of the new revision, in response to the accession. The specific details are as follows: The application procedures are set forth for the international filings through the JPO (the first paragraph of Article 2 of Chapter 6) and the international design patent applications designated for protection in Japan on the basis of international applications (the second paragraph of Article 2 of Chapter 6). In addition, the revision also covers fees payable as to the international filings through the JPO (the first paragraph of Article 67).

IV. Revision of the Act on International Applications under the Patent Cooperation Treaty

Under the current Act on International Applications, if an applicant files an international application under the Patent Cooperation Treaty (PCT), the applicant will be obliged to pay fees to the JPO and patent offices in other countries separately. In order to relieve the burden on payment, the revision simplifies the procedure in the applicant’s payment of fees. In other words, for an international application under the PCT, the applicant may be able to pay fees, previously payable to patent offices of other countries and the International Bureau at the WIPO, with the JPO in the same way as domestic fees (Article 18).

V. Revision of the Patent Attorney Act

The revision adopts the provision setting forth the “patent attorneys’ mission” as IP experts to contribute to the proper protection and utilization of IP rights, and consequently the development of the economy and industry by accurately utilizing the relevant IP systems. In addition, in response to the revision of the Design Act, the revision adds agency services for the international applications of designs, and clarifies that the patent attorneys may engage in consulting services in respect of relevant matters such as protection of inventions (Article 4). Under the current system, a patent attorney shall not conduct business in the new professional corporation with regard to an invalidation case which the patent attorney has handled during the period in which the patent attorney is engaged in the business of the previous patent professional corporation as a member or an employed patent attorney thereof, thus greatly restricting the scope of cases the patent attorney may handle. Such provisions have been revised in the revision (Articles 31 and 48).

In conclusion, the biggest highlights of this revision are the expansion of protection objects in the Trademark Act and provisions in the Design Act in response to accession to the Hague Agreement. The varieties of applicable signs for trademark registration and the one-stop platform for the international applications of designs will have a very strong impact on future practice.

As for the effective date, the newly revised versions will take effect within a year in principle according to Japanese practice. However, the provision of expanding the scope of eligible entities concerning the regional collective trademarks in the new Trademark Act will take effect within three months, and the new Design Act will take effect on the effective date of the Hague Convention in Japan.

(Translated by Wang Hongjun)

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