CASRIP Newsletter - Fall 1994, Volume 1, Issue 1
Japan: The Proposal for Patent Law Revision
On September 7, 1994, the Japanese Patent Office published a proposal for revising patent and other intellectual property laws. One goal is to revise the laws to meet the requirements of the GATT TRIP agreement. Further, consulting with an IP committee, the JPO sought opinions from Japanese industry and made a thorough review of the patent system regarding the arguments raised by foreign industry, in particular, the United States. The proposal respons to some of these arguments. A summary of main points in the proposal follows:
Revisions for Meeting GATT TRIP Agreement
- Patent Law
- Extension of Patent Term
Under the current law, a patent expires 15 years from the kokoku publication date when the patent is issued within 5 years from the filing date. The new law will extinguish the 15 year ceiling on the patent term. Accordingly, a patent owner will be entitled to a full 20 year term from the filing date.
- Patentable Subject Matter
Inventions of substances to be manufactured by the transformation of the atom will no longer be excluded from patentable subject matter.
- Direct Infringement Activities
Activities: "offer to assign or lease a patented invention" will be newly added in the provision for defining "exploitation of an invention" which constitutes direct infringment.
- Review of Conditions for Granting Compulsory License
The revision will add several conditions to grant a compulsory license. In particular, granting of compulsory license to semiconductor-related inventions will be, in principle, unavailable.
- Priority Rights
The new law will make possible a claim of priority based on an application filed in a TRIP member country.
- Trademark Law
Geographical Indication Under current practice, trademarks designating wine or spirits can be registered if the marks merely suggest a geographical indication such as "Burgundy style" or "Champagne Flavor." New law will make registering any marks suggesting a geographical indication impossible, unless the marks are used on goods originating from the region.
- Filing a Patent Application in English
The new law allows for filing of a patent application in English with the JPO. An applicant must still prepare an application form in Japanese which must be attached to the English claims, specification and drawing. Within two months of the filing date, an applicant must also file a Japanese translation. Since examinations will be based only on Japanese translations, rather than original English applications, addition of new matter in a Japanese translation with respect to the original claims and specifications will constitute grounds for rejection, opposition and invalidity. An applicant can correct mistranslation up until the expiration date of the period to respond to the first office action. An applicant can also correct obvious mistranslation after a patent is granted, unless the correction expands or alters the scope of the patented invention.
- Disclosure in Patent Specification
Items included in the disclosure of patent specifications will be slightly modified to meet GATT TRIP Art. 29. Current law requires the disclosure to explain the object, structure (elements) and effect of an invention sufficiently enough to enable those skilled in the art to readily exploit the invention. The new law will change the expression to meet the provision in the Agreement, and will require disclosure of an invention sufficiently and fully enough to enable one skilled in the art to exploit the invention. Regarding claims, the current law requires claims to recite only elements to define an invention. The new law will require claims to define an invention in clear and concise terms.
- Doctrine of Equivalents
The narrow scope of protection afforded by Japanese courts are extensively criticized by American and European patent owners. Japanese scholarly literature and case law also reveal hot debates as to whether Japanese courts should affirm infringement under the doctrine of equivalents within the framework of the current provision, patent law art. 70. Although the courts did not explicitly use the term "equivalents," some courts used a test comparable to the German eqivalence test, and affirmed infringement on the defendant's product on a basis not literally covered by the patented claims (e.g., T.H,K. k.k. v. Tsubakimoto Seiko k..k., Tokyo Hi. Ct., Feb. 3, 1994, translation and comments will be published in IIC). Responding to criticisms, the JPO reviewed whether or not to revise current provisions to affirm infringement under the doctrine of equivalents. Contrary to criticisms, the investigation of case law in the United States and European countries revealed that the case law for doctrine is still in the process of devloping in these jurisdictions. In particular, pending en banc decision in the Federal Circuit will affect the future case law development on claim interpretation and doctrine of equivalents in the United States. As a result, the JPO decided to monitor case law developments in Japanese courts, instead of taking the initiative to revise the patent law provision. Regarding claim interpretation, the new law may include a provision affirming a reference to the disclosure in the specifications and drawings to interpret the term of claims.