Revision of Japanese IP Law

Published on: 06 June 2014
by Kazuya SEKIGUCHI, Patent Attorney at Dennemeyer & Associates, Germany

Revised Japanese Patent, Utility Model, Design and Trademark laws have been promulgated in May, 2014. Although the exact date has not yet been determined, it is expected that the new laws (except for provisions relating to new Design Law and provisions for regional collective trademarks) will be enforced from early 2015.

1. Revision of Patent Law

1.1 Remedy for non-observance of a time limit
In the Japanese practice, currently there is little possibility for the applicant to remedy the non-observance of a time limit. In order to reconcile this aspect internationally, the provisions which allow remedy for the non-observance are introduced. Under the new provisions, the application can be recovered when the applicant does not observe the time limit because of unavoidable reasons (such as disaster, etc.). For example, the non-observance of the time limit such as filing a divisional application/a converted application/a request for extension of the patent term and paying the grant fee (1st to 3rd annuities) can be remedied under the new law, provided all due care has been taken. The non-observance of the time limit such as requesting for priority and requesting for the substantial examination can also be remedied if there is a reasonable ground for the non-observance.

Said provisions are also applied mutatis mutandis to Utility Model Law, Design Law and Trademark Law.

1.2 Post-grant opposition
Japanese Patent law had a post-grant opposition system until 2003. However, in order to solve the dispute between two parties at an early date and to reduce the burden of the patent owner, the opposition system was abolished in 2004.

In the present revision of the Patent Law, it has been decided that the post-grant opposition system is re-introduced, so that the applicant can obtain more stable patent rights at an early stage. Under the new opposition system, anyone can oppose the granted patent within six months from the date of the publication of granted patent.

In connection to the introduction of the opposition system, the appellant of invalidation appeal has been restricted only to “interested party”, in order not to increase the undue burden for the patentee.

2. Revision of Design Law

Japan is now considering acceding the “Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs”. In order to complete the accession to the Geneva Act, related provisions are introduced into the Japanese Design Law.

3. Revision of Trademark Law

3.1 New types of marks to be protected
It is decided that colors and sounds are protected as trademarks, in view of the fact that some countries protect them under trademark law. Regarding colors, they can be protected in combination with letters, figures or three-dimensional shapes under the current trademark law. The new law stipulates that colors can be protected independently.

3.2 Expansion of the standing of applicant for regional collective trademarks
“Regional collective trademarks” are trademarks used by the members of certain associations and consist solely of the name of the region and the common name or the customarily used name of the goods or services. To encourage further the promotion of regional brands, the standing of applicants is expanded to “Chamber of Commerce”, “Commerce and Industry Association” and “Non-Profitable Organization” under the new law.