JPO Updates

JPAA International Activities CenterFujiko Shibata

AIPLA Mid-Winter InstituteIP Practice in Japan Committee Pre-Meeting Seminar

Contents

On-going revisions & their summaries

Schedule

Practical tips

220 April 2023 2

Ongoing revisionPatent Law revision

The return of post grant opposition

Design Law revisionHigh hurdle to become a member of Hague Agree

ment Concerning the International Registration of Industrial Designs

Trademark Law revisionSubject matter will be expanded

Patent Attorneys Act revision320 April 2023 3

The return of post grant opposition

<History of Opposition System in Japan>Japanese patent Law has been revised in 1959

(Enforcement Law of the Patent Act (Act No. 122 of April 13, 1959)Before 1958, Law of the Patent Act (1921)

Before 1959Invalidation trial of Patent Right (introduced in 1888)Opposition system (pre-grant, introduced in 1935)

420 April 2023 4

The return of post grant oppositionRevised in 1994

From Pre-grant review to Post-grant review, because of fast track granting and international harmonization.

Revised in 2003Post grant opposition has gone!

Will be revised in 2015?Post grant opposition will return

520 April 2023 5

Statistics for Former Opposition system

620 April 2023 6

New Opposition system to be Introduced in Japan (1)

Reasons for New post grant opposition Lacking novelty , Inventive step

---(Articles 29(1), 29bis, Article 29(2)) Requirements for specifications and claims

---(Articles 36(4), (6))Addition of New matter--- (Article 17bis(3))Not including claimed invention in an original foreign application---applied only non-Japanese application

720 April 2023 7

New PGR to be Introduced in Japan (2)

Eligible Person for filing an opposition--- No change (Anybody )

Opinion from an opponent---Change!Submitting comments when the patent is correctednon ［ ne ］ bis in idem---No changeNot applied– Same evidences can be used in invalidation trialTerm for filing an opposition---No change6 months from issue date of letters patentFee: 49,500 + 5,500/claim (JP Yen)

820 April 2023 8

New PGR to be Introduced in Japan (4)

January 2014 20 April 2023 9

Practical Tips-1Post-grant review

Term for submitting request is short---6 M

Japanese translations of English evidences are necessary

Please instruct as early as possible!

Official Fee is not expensive

Non [ne] bis in idem is not applied---two chances

Patent holder must be careful

January 2014 20 April 2023 10

Design Law Revision-1Public Comments window has been just closed on

January 25, 2014(Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council)

Main IssuesBecoming a member of Hague Agreement

There are many hurdles

Protection of image design

1120 April 2023 11

Design Law Revision-2

Hurdles in the law to be cleared for the design application under Hague Agreement One application includes multiple designs

Designs included the application is individually rejected

Postpone of publication timing---until 30 month

Exception of lack of novelty---the term for filing of certificate will be change (30 days to longer)

Related designs---filed by the international publication

1220 April 2023 12

Design Law Revision-2

Hurdles in the law to be cleared for the design application under Hague Agreement

(continued) Partial designs---a guide line is reviewing by WG Design for a set of articles--- reviewing by WG Secret design---not applied for the application under Ha

gue Agreement Self designation---applied Fee payment, receiving an international application

---still considering

1320 April 2023 13

Design Law Revision-3

Protection of image design

---still considering

Pre-examination is assumed Right is given to a function Right is given to an article

Post-examination is assumed !! Granted without examination???

1420 April 2023 14

Trademark Law revision-1– Expansion of scope of marks as trademarks

– A trademark being composed of moving images– File shows moving will be

necessary

US Reg. No. 3872001(Int. Reg. No. 1032093)

1520 April 2023 15

Trademark Law revision-2

• Trademark by using hologram

• Trademark by using plural colors

Germany Reg. No. 304532819

Australia Reg. No. 749403

1620 April 2023 16

Trademark Law revision-3

Trademark composed of figure and color(s)

CTM Reg. No. 2319937US Reg. No. 3776468

January 2014 20 April 2023 17

• Marks composed of sound– Sound file will be necessary and scope of the right

is found on the basis of a score(?)

CTM Reg. No. 8622144

January 2014 20 April 2023 18

Practical Tips-2

Trademark RevisionTime schedule is unknown---Forced into April of 2015?

Details of documents for filing are not clear

Please ask Japanese Benrishi before filing of Madrid protocol application

January 2014 20 April 2023 19

Any Questions?

Thank you for your kind attention

Ayafune International Patents & Trademarks

Fujiko Shibata

dania@ayafune.com

2020 April 2023 20