The 2014 Revision of the Patent Law, etc. will go into force on April 1, 2015. This revision relates to the Patent Law, Design Law, Trademark Law, etc., and involves important aspects in prosecution in Japan.
For your information, we summarize the revision below. We also indicate an outline of the post-grant opposition system that is considered to be of particular interest among the matters of the revision.
We assure you that SUZUYE & SUZUYE will be devoted to researching and utilizing the new system to provide comprehensive intellectual property services to our overseas clients. For any questions relating to the revision, please feel free to let us know.
It is always our pleasure to be working with you and we shall continue providing the highest level of intellectual property services to fulfill your needs.
(1) Enhancement of relief measures
a) Stipulation for extension of designated period
A certain extension of designated period for procedures under the Patent Law is permitted in the event that there was a reason outside control of the party who shall perform the procedures (e.g. disasters).
b) Stipulation for priority claim
(b-1) If filing of a patent application with priority claim has failed within the priority period due to a justifiable reason, the priority claim is admitted for a certain period.
(b-2) A Form to claim priority does not have to be filed concurrently with an application, but within a certain period. An amendment to the Form may also be admitted within a certain period.
c) Stipulation for relief regarding expiration of period for requesting examination
If filing of a request for examination of a patent application has failed within a designated period due to a justifiable reason, the request for examination is admitted within a certain period. In this case, provided that a patent is granted based on the patent application, a third party is entitled to obtain a non-exclusive license if the third party practiced the invention between the issuance of a patent gazette showing expiration of the period for requesting examination and the issuance of a patent gazette showing the fact of the request for examination.
(2) Post-grant opposition system
a) Any party may file an opposition to a grated patent in the JPO within 6 months from the issuance date of the patent.
b) An opposition is examined through documentary proceedings. When it is found that a patent right should be revoked, a chief appeal examiner must give a patentee and its participant an opportunity to submit a response. Also, when the patentee requests an amendment to claims, etc., the chief appeal examiner must give an opponent an opportunity to rebut.
c) Trial for invalidation of a patent may be requested only by related parties.
Amendment will be made to enable appropriate implementation of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (effective from May 13, 2015).
(1) Expansion of scope of protection
a) Definitions of trademarks are revised. The scope of protection widens to cover trademarks consisting only of color or sound.
b) Definitions of use of marks are revised. For example, an act of making a sound mark is added to the definitions of use.
(2) Expansion of scope of eligible entities to register regional collective trademarks
Commerce and industry associations, commerce and industry chambers, and specific non-profit organization, as well as their equivalent foreign corporations are added to the eligible entities to register the regional collective trademarks.
1. Revision of Patent Law, etc.
By the revision of the Japanese Patent Law, etc. effective on April 1, 2015, the post-grant opposition system will be reinstated. Under this system, any party may file an opposition to a grated patent issued on or after April 1, 2015.
2. Outline of Post-Grant Opposition System
(1) Eligibility for opponent and time requirement
Any party (not “anonymous”) can file an opposition against a granted patent within 6 months from the publication date of the Official Patent Gazette containing the granted patent (Section 113 (1)).
As to a trial for invalidation, the law has been revised to state “only a related party can request”, instead of “any party can request” (Section 123 (2)).
(2) Reasons for Opposition
Opposition must be based on public-interest reasons, such as patentability requirements (e.g., novelty and inventive step), formality requirements and amendment requirements (Section 113). Solutions for issues relating to a patent right belonging can be made by a trial for invalidation which mainly purposes solution of dispute.
(3) Subject of Opposition
Where a patent contains two or more claims, an opposition can be filed for each claim (Section 113).
(4) Examination of Opposition
Opposition will be examined and its decision will be made by a group of 3 or 5 appeal examiners through documentary proceedings (Section 114 (1) and Section 118 (1)).
A chief appeal examiner must forward a copy of Opposition to a patentee (Section 115 (3)).
No appeal can be allowed against a decision to hold that the patent is valid (Section 114 (5)).
(5) Examination under Authority
During examination of Opposition, appeal examiners can also take into consideration the reasons which were not submitted by a patentee, opponent or participant (Section 120bis (1)).
Appeal examiners must not examine claims to which no opposition has been filed (Section 120bis (2)).
(6) Submission of Written Opinion, etc.
(6-1) When it is found that a patent should be revoked, a chief appeal examiner must notify a patentee and its participant of a reason for revocation, and give them an opportunity to submit a response within a certain period designated (Section 120quinquies (1)).
(6-2) A patentee is allowed to amend the claims, specification and/or drawings within the period designated in (6-1). The amendments will be limited to the following purposes (Section 120quinquies (2)):
(i) limitation of claim (not restrictive limitation)
(ii) correction of errors or mistranslations
(iii) clarification of unclear expressions
(iv) change of a claim form from “dependent” to “independent”
(6-3) Where two or more claims are concerned, amendments applicable to (6-2) can be made for each claim (Section 120quinquies (3)).
(6-4) When an amendment of (6-2) is filed within the period designated in (6-1), the chief appeal examiner must forward a copy of the notification of reason for revocation and the patentee’s request for amendment accompanied by amended specification, claims and/or drawings to the opponent, and give the opponent an opportunity to rebut within a certain period designated (Section 120quinquies (5)).
(7) Appeal against Decision of Revocation
Appeal against a decision of revocation will be handled solely by Intellectual Property High Court (Section 178).
When the decision of revocation is affirmed, the patent concerned will be deemed to have been non-existed from the beginning (Section 114 (3)).
(8) Official Fees for Opposition (Section 195, appendix)
JPY 16,500 plus JPY 2,400 per claim.
Please do not hesitate to contact us for further information.
SUZUYE & SUZUYE
