Center for Advanced Study & Research on Intellectual Property

 

CASRIP Newsletter - Summer 2007, Volume 14, Issue 3

Japanese Intellectual Property Legislative Review

By Takahiko Toyama[*]

I. INTRODUCTION

Since the Japanese government established the Strategic Council on Intellectual Property in 2002, it has continuously strengthened intellectual property protection with various changes to patent, utility model, and trademark laws. Although the revisions of IP-related laws has taken place almost every year, proper protection of IP rights has not been achieved due to rapid technological development, the growth of global distribution networks, and the rapid progress of industrial competitiveness in foreign countries.

The Japanese government has had to take appropriate measures to maintain its competitiveness in the world. More specifically, it has become necessary for the Government to provide proper tools to protect IP-related activities that will contribute to stimulating the economy. In 2006, the Diet approved the IP reform bills for the purposes of both further protecting IP-related activities and preventing the sale of counterfeit goods and services.[1] In particular, the design, patent, and trademark laws were amended in the last session of the Diet. This article will overview the changes to these laws in Japan.[2]

II. PATENT LAW

A. Restriction of Amendment to Substantively New Invention After Office Action

The revised patent law forbids an applicant to amend claims from the claimed invention to substantially another invention after an office action of rejection.[3] The revised patent law allows the applicant to amend the claims if the relationship between the claimed invention before and after the amendments satisfies the requirement of unity of the invention. Since the previous patent law did not prohibit such an amendment, some applicants would amend the claim from the invention “X” to a substantially different invention “Y,” which would not be claimed, but would be included in an original specification, after receipt of the office action of rejection from a patent examiner showing prior art for the invention “X.” The restriction of the amendment after the office action under the revised patent law is in accordance with a concept of “unity of invention” and the practices by foreign patent offices such as the United States Patent and Trademark Office (“USPTO”) and the European Patent Office (“EPO”).[4]

Violation of the new provision becomes one of the grounds for rejection in the course of a prosecution. However, it is not a basis to invalidate a patent when the patent, in which the claims have been changed drastically in ways that are considered to be against the new provision would not be harmful to the public.[5] (Effective April 1, 2007.)

B. Suppression of Abuse of Divisional Applications[6]

The claims of a divisional application may be finally rejected in the situations when: (1) some claims of the divisional application are identical[7] with those of the earlier parent application; and (2) they have been properly rejected in the parent application.[8] In the case when a divisional application is finally rejected, the applicant is limited to amend the divisional application subject to Art 17bis (4) (i)-(iv)[9] . (Effective April 1, 2007.)

C. Introduction of Additional Period when Divisional Applications are Applied

Applicants can file a divisional application within a prescribed[T1] period[10] after either a patent is granted or rejected under the amended patent law, in addition to the term when the divisional application could be filed before the revision of the law.[11] Because it is said to be difficult to [T2]foresee what applicants should properly claim from their invention disclosed in their specification before their products using the patented invention are sold in the market place, some applicants need to amend their claims, and/or others need to file divisional applications to include their products. Before the revision, once the application was granted or rejected, the applicants were not allowed to file a divisional application even if they would like to. As a result, they had to file a request for a trial against an examiner’s decision of refusal, not to be against the decision, but for permission to file a divisional application. Furthermore, some applicants included claims that were apparently rejected by an examiner to get an office action so they could expand the scope of the claim based on the contents of the office action because they could neither amend their claims nor file a divisional application after the grant of the patent. This revision was intended to eliminate unnecessary procedures which were prevalent among applicants.[12]

However, the divisional application cannot be filed after the grant or rejection of the patent application at the trial level of the JPO, even when the revised patent law goes into effect. Therefore, once an applicant requests a trial against an examiner’s decision of refusal, a divisional application at the trial level of the JPO can be filed during the term when the amendment is accepted.[13] (Effective April 1, 2007.)

D. Extension of Duration of Submittal of Translations of Document and Abstract in Foreign Language under Art 36bis (2) of Japanese Patent Law

When an applicant files a patent application subject to art 36bis (2), “written application in foreign language,” as a filing without any priority, the Japanese translation of the application should be submitted within one year and two months from the filing date.[14] Before this revision, the applicant who filed a “written application in foreign language” was required to submit a Japanese translation within two months from the filing date of the “written application in foreign language,” even if such application was filed without any foreign priority.[15]

However, where the “written application in foreign language” is filed to the JPO with priority, the applicant shall now submit the Japanese translation within one year and two months from the priority date, which is the same day as the day before this amendment of the patent law. (Effective April 1, 2007.)

III. TRADEMARK

A. New Protection of Services Provided by Retail Stores

Services such as those provided by retailers or wholesale shops through mail order catalogs or by means of electronic media are newly protected by the Japanese trademark law.[16] Before the revision of the trademark law, because such retail services were apart from goods or services directly attached to the registered trademark, they were not subject matter protected by the trademark law. For example, even if retailers would strive to display goods, conspicuously and effectively, to which the trademark is attached, their services would not be directly protected by trademark law because they would not be relevant to the products protected by trademark. However, retailers’ services have been increasing their value because retailers can accumulate brand image through their services associated with their products.[17] Therefore, the Japanese trademark law expands its scope to protect services, such as those provided by retailers or wholesale shops, through mail order catalogs or by means of electronic media. (Effective April 1, 2007.)

IV. ENHANCEMENT OF IP RIGHT PROTECTIONS

A. Expansion of Definition of Infringement and “Act Deemed to be Infringement”[18] under IP Laws

The export of products infringing patents, utility models, designs, or trademarks is newly added to the definition of an infringement.[19] Although infringing products theoretically could be captured and the producers sued for an injunction and/or damages before the products were exported, it would sometimes happen that the infringing devices would not be captured until they were just exported. At this stage, it would be almost impossible to seek an injunction of the exports. The new definition is intended to protect IP rights when products infringing patents, utility models, designs, or trademarks would be exported even if they would not be seized in the course of manufacture or transaction in the domestic market.[20] (Effective January 1, 2007.)

B. Addition of New Definition of “Acts Deemed to Constitute Infringement”[21]

Possession of products infringing IP rights such as design, patent, and utility model, for the purpose of either an assignment or export becomes, “Acts Deemed to Constitute Infringement” of IP laws after the revision of each respective law.[22] Before the amendment, the possession of infringing products was not regarded as an infringement; a patentee carried the burden of producing evidence of the fact or threat of assignments where she would find anyone possessing infringing products, and seek an injunction. Furthermore, even though counterfeits might be stocked in a warehouse, it would be difficult to crack down on them because possession of counterfeiting goods was not considered a violation of IP laws prior to the amendments. [23] Therefore, to prevent infringing goods from being distributed, a patentee can now seek an injunction more effectively if she finds someone possessing infringing products. (Effective January 1, 2007.)

C. Strengthening of Criminal Punishment

An infringer of a patent, design or trademark will be subject to either imprisonment with work for a term not exceeding 10 years or a fine not exceeding 10 million yen, or both, after the revised laws go into effect. In the case of infringement of a utility model or an “Act Deemed to Constitute Infringement” of IP rights such as patent, utility model, design, or trademark, punishment is either imprisonment with work for a term not exceeding five years or a fine not exceeding 5,000,000 yen, or both.[24]

When an artificial person such as a company infringes any IP right including patent, utility model, design or trademark, it shall be subject to the maximum fine of 300 million yen.[25] (Effective January 1, 2007.)

V. DESIGN LAW

A. Extension of the Term of Design Rights

The revision of the design law includes the extension of the term of design rights. The term is changed from 15 years to 20 years as of a registration of a design right.[26] Since Japanese consumers have matured with respect to their choice of goods recently, they would prefer well-designed products to others if both would have the same functions. So, designs of products have played an important role in attracting consumers. Because some products having fascinating designs are able to keep their popularity longer than others, and because other designs that once disappear from markets revive several years later, the amended design law gives registered design right owners a choice whether to maintain their design rights for up to 20 years.[27] Consequently, the expansion of the term is necessary for the proper protection of design patents. (Effective April 1, 2007)

B. Additional Definition of Design

Images that represent essential functions on a screen to operate electronic devices like personal computers, PDAs, or mobile phones are newly protected as design under the design law.[28] For example, icons that are often seen on a computer screen are included in the new definition. Images, instead of physical buttons, have been used on the screens of household appliances or IT devices to show certain functions for users to understand their functions and operate them simply and easily. Although the importance of the images on the screens has increased for both users and manufacturers, the design law could not protect them as design rights because the definition of “design” did not include images on the screen.[29] Therefore, the images indicating essential functions of devices have become an eligible subject matter for a design right. (Effective April 1, 2007.)

C. Amendment of Substantial Requirement for Partial Design (hereinafter “Bubun -Ishou”[30] in Japanese)

According to the amendment of the design law, a “Bubun-Ishou” application, which is identical with or similar to a part of a design stated in another application ( the “Zentai-Ishou”[31] application), which was filed prior to the “Bubun-Ishou” application can be registered as a design right provided: (1) applicants of both the “Bubun-Ishou” application and the “Zentai-Ishou” application are identical; and (2) the “Zentai-Ishou” application is not published yet when the “Bubun-Ishou” application is filed.[32]

As to a “Bubun-Ishou” application filed before the amendment of the design law, it is allowed to apply as a “Bubun-Ishou” application only where the “Bubun-Ishou” application is filed before the “Zentai-Ishou” application is filed. However, from a practical point of view, the whole design of a product, which is possibly applied for as a “Zentai-Ishou” application, is usually set up first, and then partial designs of the product, which are, on the other hand, applied for as “Bubun-Ishou” applications, are developed. It was not efficient to file a “Bubun-Ishou” application first and then to file a “Zentai-Ishou” application later.[33] Therefore, the design law was amended to reflect the practice of development of design in a design industry. (Effective April 1, 2007.)

D. Clarification of Scope of Similar Design

Non-Similarity is one of the substantial requirements[34] for the registration of a design right. According to the amendment of the design law, whether a design in an application is similar to one in a prior art depends on an aesthetic impression from demanders such as retailers, dealers, or consumers.[35]

When it comes to a decision on the similarity of designs, there have been two standards used, which would cause confusion. One standard was the “aesthetic impression” from demanders such as retailers, dealers, or consumers, whereas the other is the aesthetic impression from a person having a skill in the art such as a designer. Although the standard of similarity based on the demanders’ view is a decision by the Japanese Supreme Court, the other was sometimes used by some lower courts. To eliminate the confusion, the revised design law stipulates that the similarity of designs shall be decided based on the aesthetic impression through the demanders’ eyes.[36] (Effective April 1, 2007.)

E. Extension of period when Related Design (“Kanren-Ishou”)[37] Applications are Filed

The revised design law allows applicants to file “Kanren-Ishou” applications prior to the publication of the “Hon-Ishou.”[38] Before the revision, all applications of “Kanren-Ihou” should be filed on the same date as the filing date for the “Hon-Ishou.” Although the “Kanren-Ishou” design system originally aimed at the protection of variations of design, the conventional “Kanren-Ishou” could not protect variations of design that were improved after filing the “Hon-Ishou” design application, even though variations would reflect the customers’ preference.Because it is important for applicants to meet vogue for design, they need to alter designs which have already been applied to the JPO.[39] Accordingly, the new “Kanren-Ishou” design system allows applicants to protect various designs developed after the application of the “Hon-Ishou,” which is not published yet.[40] (Effective April 1, 2007.)

F. Other Revisions

1. Revision of Procedure of Request forExceptions for Lack of Novelty of Design[41]

Designs publicly known are not registered as design rights due to the lack of novelty. However, even though designs are disclosed to the public, they do not lose novelty as long as: (1) an application for design registration is filed within six months from the disclosure with a written intention of an exemption for lack of novelty; and (2) a document that proves that the design has been disclosed is submitted to the JPO within a proscribed date. While under the previous design law the prescribed date was within 14 days from the filing date, it was amended to be within 30 days from the filing date. (Effective September 1, 2006.)

2. Revision of Secret Design[42]

The design law stipulated that an applicant could keep a registered design secret within three years from the registration date, if the applicant had filed a request to have a design secret at the same time as the application for the design registration, before the revision of the design law. The revised design law enunciates that an applicant can keep a registered design secret within three years from the registration date, if the applicant filed a request to have a design secret either at the same time as the application for design registration, or at the same time as the first payment of a registration fee.[43] (Effective April 1, 2007.)

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Footnotes

  • [*] Takahiko Toyama was a visiting scholar at the University of Washington School of Law in Winter and Spring of 2007. He graduated from the Intellectual Property Law and Policy LL.M. Program in Fall 2007 and attended the CASRIP Summer Institute in 2005.
  • [1] Heisei 18-nen Kaisei Ishou Ho no Ichibu wo Kaisei suru Houritsu ni tsuite [Brief explanation of the purpose and the outline of the revision of IP laws including design law, patent law, trademark law.], 1, available at http://www.jpo.go.jp/torikumi/kaisei/kaisei2/pdf/ishou_houkaisei/01.pdf.
  • [2] Disclaimer: This article is an unauthorized translation of the outline of the revised IP laws. The contents of the article are based on the author’s comprehension of the revised laws concerning design, patent, utility model and trademark laws. Even though the article is based on the official interpretation of the revised laws in Japanese, the author has arranged the order of explanations of each law and omitted the interpretation of minor changes from the originals to focus more on the essential parts of the revised laws.
  • [3] Heisei 18-nen Kaisei Tokkyo Ho [2006 Revised Patent Law], Law No. 121 of 1959, art 17bis (4), [hereinafter, 2006 Tokkyo Ho].
  • [4] Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 43-44, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/2-1.pdf.
  • [5] 2006 Tokkyo ho, art 49(1), 53 and 123.
  • [6] Tokkyo Ho, Law No. 121 of 1959, art 44, available at. http://www.cas.go.jp/jp/seisaku/hourei/data/PA.pdf. (A divisional application under the JPL is different from a divisional application under 35 U.S.C. ยง121. That is, an applicant can file a divisional application to the JPO without receiving any requirement for restriction by an examiner).
  • [7] ‘Dai 50 Zyou no 2 no Tsuchi’ no Shinsa Kijun [Examination Standard on first office action final rejection], 2, 4, available at http://www.jpo.go.jp/tetuzuki/t_tokkyo/shinsa/pdf/bunkatu_kizyun/02.pdf, (explaining the definition of identical claims between a parent application and a divisional application. Identical includes that claims in the divisional application are substantially the same as those in the parental application, as well as both are literally the same. Furthermore, if the claims in the divisional application include new claims in addition to the identical claims with those in the parent application, then the grounds of rejection to the identical claims are still effective, resulting in the first office action final rejection.)
  • [8]  2006 Tokkyo Ho, art 17bis (5) and 50bis.
  • [9]  Tokkyo Ho, art 17bis (4)(i)-(iv), available at http://www.cas.go.jp/jp/seisaku/hourei/data/PA.pdf. (allowing applicants to amend claims on grounds of either elimination of claims, restriction of scope of claim, correction of errors or clarification of ambiguous statement).
  • [10] 2006 Tokkyo Ho, art 44(1)(ii), (iii), (allowing applicants to file a divisional application within 30 days from either granting patent or rejection of a patent application).
  • [11]  2006 Tokkyo Ho, art 44.
  • [12]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 57-58, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/2-3.pdf.
  • [13]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 60-61, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/2-3.pdf.
  • [14]  2006 Tokkyo Ho, art 36bis.
  • [15]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 63, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/2-4.pdf.
  • [16]  Heisei 18-nen Kaisei Shohyo Ho [2006 Revised trademark law], Law No. 127 of 1959, art 2, [hereinafter, 2006 Shohyo Ho].
  • [17]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 76-77, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/3-1.pdf.
  • [18]  2006 Tokkyo Ho, art 101, Heisei 18-nen Kaisei Ishou Ho [2006 Revised design law], Law No. 125 of 1959, art 38, [hereinafter, 2006 Ishou Ho] and Heisei 18-nen Kaisei Jitsuyou Shinnan Ho [2006 Revised utility model law], Law No. 123 of 1959, art. 28, [hereinafter, 2006 Jitsuyou Shinnan Ho] (stipulating that contributory infringing conduct depending on patents, design or utility model, respectively.)
  • [19]  2006 Tokkyo Ho, art 2(3), 2006 Jitsuyou Shinnan Ho, art 2(3), 2006 Ishou Ho, art 2(3), and 2006 Shohyo Ho, art 2(3).
  • [20]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 107-108, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/4-1.pdf.
  • [21]  2006 Tokkyo Ho, art 2(3), 2006 Jitsuyou Shinnan Ho, art 2(3), 2006 Ishou Ho, art 2(3), and 2006 Shohyo Ho, art 2(3).
  • [22]  2006 Tokkyo Ho, art 101, 2006 Jitsuyou Shinnan Ho, art 28, and 2006 Ishou Ho, art 38.
  • [23]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 117, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/4-2.pdf.
  • [24]  2006 Tokkyo Ho, art 69, 2006 Jitsuyou Shinnan Ho, art 56, 2006 Ishou Ho, art 69, and 2006 Shohyo Ho, art 78.
  • [25]  2006 Tokkyo Ho, art 201(1)(i), 2006 Jitsuyou Shinnan Ho, art 61(1)(ii), 2006 Ishou Ho, art 74(1)(ii), and 2006 Shohyo Ho, art 82(1)(i).
  • [26]  2006 Ishou Ho, art 21.
  • [27]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 9, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-1.pdf.
  • [28]  2006 Ishou Ho, art 2(2).
  • [29] Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 13-14, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-2.pdf
  • [30]  Ishou Shinsa Kijun [Examination standard on Design] at 69, 70, available at http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/07_01.pdf, (“Bubun-Ishou” is a part of a design, which is created for the specific part of a certain product, whereas “Zentai-Ishou” is an entire design created for all parts, as well as the contour, of the product. For example, suppose that designs are created for a camera, a whole design of the camera is regarded as “Zentai-Ishou,” while a design of a grip for the camera is considered a “Bubun-Ishou.”)
  • [31]  Id.
  • [32]  2006 Ishou Ho, art 3bis.
  • [33]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 18-19, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-3.pdf.
  • [34]  2006 Ishou Ho, art 3(1), (2), 3bis, 5 and 9. (Substantial requirements for a design registration are novelty, not easy to create, not a design against public interest, and prohibition of double design registrations).
  • [35]  2006 Ishou Ho, art 24(2).
  • [36]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 21-22, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-4.pdf.
  • [37]  Ishou Shinsa Kijun [Examination standard on Design] at 106, 107, available at http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/07_03.pdf, (“Kanren-Ishou” is a group of designs which are created based on derivations from a common design concept. “Hon-Ishou” is one of the designs that an applicant chooses from variations of designs known as “Kanren-Ishou.”)
  • [38]  Id.
  • [39] Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 25-26, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-5.pdf.
  • [40]  2006 Ishou Ho, art 10.
  • [41]  2006 Ishou Ho, art 4.
  • [42]  Ishou Ho, art 14.
  • [43]  Heisei 18-nen Houritsu Kaisei Kaisetsu Syo [2006 Interpretation of revised IP laws], 33-34, available at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/h18_kaisei/1-7.pdf.

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Last updated 4/27/2012