On 14 May 2014, a proposal for partial revisions of the Patent Act and other Acts was promulgated by the Japanese Cabinet. As of yet, the proposed revisions are not effective; however, the revisions will be effective within a year from the date of promulgation with some exceptions. Japan Patent Office provides the English version of the outline of the proposed revisions at the following URL:
http://www.jpo.go.jp/torikumi_e/hiroba_e/hourei_e/patent260514.htm
The briefing session titled "The Partial Revision of the Patent Act, etc." was held by Japan Patent Office on 30 July 2014. The following is the brief information about the proposed revisions.
(1) Enhance Relief Measures (which will be applied to the Patent Act, the Utility Model Act, the Design Act, and the Trademark Act)
- In line with overseas legal systems, the Patent Act is about to be revised for the relief of certain overdue applications. More specifically, the revisions will be applied to procedures like applications claiming priority (Art. 41, Art. 43, and Art. 43bis), submission of documents to claim priority and/or its written certificates (Art. 17quater and Art. 43), submission of written certificates of exceptions to lack of novelty of invention (Art. 30), divisional applications (Art. 44), conversion of applications (Art. 46 and Art. 46bis), request for examination (Art. 48ter), applications of the registration of the extension of the term (Art. 67bis(2)), payment of patent fees for each year from the first to the third year (Art. 108), and refund of patent fees or official fees (Art. 111 and Art. 195).
- In principle, these measures will be applied only to cases claiming "any reason not attributable to an applicant." This reason is not deemed to be applicable to an applicant's negligence; namely, the measures will be substantially applied to particular cases claiming any reason not attributable to an applicant such as disasters. Meanwhile, overdue applications relevant to priority and request for examination may claim "reasonable grounds," which are not as rigid as the above-described reason. Whether reasonable grounds are determined to be "reasonable" depends on whether an applicant or a patent holder properly carried out the legally required procedures. The guidelines for the reasonable grounds are based on those for Due Care enforced by European Patent Office. In addition, the measures to be applied to cases claiming "unintentional grounds," which are not as rigid as the reasonable grounds, are not revised at this time. Despite the enhancement, the relief measures are still considerably rigid compared to those enforced by European Patent Office or US Patent and Trademark Office. I would, therefore, advise you to see that the Patent Act will be revised to enhance the relief measures for various disasters both in Japan and other countries.
- This revision will be applied to cases whose deadline comes after the effective date--which is not yet announced as of today--and will not be applied to cases whose deadline comes before the effective date.
(2) Create New Oppositions System for Patent Rights
- The oppositions system for patent rights repealed in 2003 (which were unified into the trial system for invalidation) is revived with some modification.
- The modified oppositions system is summarized as follows: (a) any person may file a patent opposition within six months after a patent gazette is published--misappropriated applications and defaulting joint applications must go only through a request for an invalidation trial--whereas only interested parties may request an invalidation trial after six months from publication of a patent gazette; (b) patent oppositions may take place through documentary proceedings only, whereas invalidation trials may take place through oral proceedings in principle; and (c) a patent opponent may deliver his/her opinion when a correction is requested.
- This revision will be applied to patented cases whose patent gazettes are published after the effective date--which is not yet announced as of today. In this case, the filing date of application is not relevant.
(3) Stipulate Provisions for Simultaneously Filing a Design Application in Multiple Countries (which will be applied to the Design Act)
- This proposed revision is under review, which is based on the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (hereinafter called "the Geneva Act"), to which Japan is now considering acceding, in order to enable a design application to be simultaneously filed in multiple countries.
- This revision will be applied to cases after the Geneva Act comes into effect in Japan.
(4) Expand the Scope of Protection (which will be applied to the Trademark Act)
- The definition of the Trademark Act is being reviewed and re-defined in order to add non-traditional trademarks such as color, sound, motion, hologram, and position that are already being protected in some countries. Note that the revised Trademark Act will not include scent.
- The detailed application requirements for the newly added trademarks will be promulgated on completion of the revision.
- This revision will be applied to trademark applications filed after the effective date--which is not yet announced as of today.
(5) Expand the Scope of Eligible Entities to Register the Regional Collective Trademarks (which will be applied to the Trademark Act)
- Associations of commerce and industry, chambers of commerce and industry, and non-profit corporations, who have been supporting regional brands to be popularized recent years, and foreign corporations comparable to these domestic entities are added as entities entitled to register the regional collective trademarks in order to further popularize and develop the regional brands.
- This revision became effective on 1 August 2014.
