[News Flash] Outline of Amended Patent Law Effective April 1, 2016

 

　The “Act on Partial Amendments to the Patent Law (Act No. 55 in 2015)” (Amended Law) including the revision on the rules for employee inventions will come into effect on April 1, 2016. We have attached the “Outline of Amended Law”. Please do not hesitate to contact us if you have any concerns.

 

SUZUYE & SUZUYE

 

 

Outline of Amended Law

 

    I. Revision on Rules for Employee Inventions

    (1) Right to obtain a patent ascribed to employer
    To resolve instability concerning the ascription of rights, where an agreement, employment regulation, or any other stipulation provides in advance that the right to obtain a patent shall vest in an employer1, the right to obtain a patent shall be ascribed to the employer.

    (2) Reasonable monetary or other economic compensation
    Where an employee2 vests the right to obtain a patent, the employee, etc. shall have the right to receive reasonable monetary or other economic compensation.

    (3) Guidelines on procedures for providing reasonable compensation
    To encourage inventions, the Minister of Economy, Trade and Industry shall draw up guidelines regarding procedures for determining such reasonable monetary or other economic compensation by hearing opinions of the Industrial Structure Council. (publically released after April in 2016)
    (http://www.jpo.go.jp/seido/shokumu/shokumu.htm)

 

    II. Revision of Patent-related Fees

    (1) The patent annual fees after the establishment of registration of rights will be reduced by around 10%.

    (2) The registration fee for trademarks will be reduced by around 25%, and the renewal fee for trademarks will be reduced by around 20%.

    (3) For international searches in relation to PCT international applications, the maximum amount of the fees for searches and examinations are to be set depending on the languages (Japanese or English) used in the application.
    (https://www.jpo.go.jp/tetuzuki_e/ryoukin_e/revision_fee_2015.htm)

1 “employer” means an employer, employers, or other concerned parties.
2 “employee” means an employee, employees, or other concerned parties.

 

    III. Rearrangement of Rules for Applying Singapore Treaty on Patent Law Treaty (PLT) and Trademark Law Treaty (TLT)

    (1) Clarification of requirements for establishing filing date and supplement of procedure (Art. 38-2 of the Patent Law)
    Based on PLT, Art. 5 (1), the establishment of the filing date of a patent application is clarified in the Patent Law. If an application does not comply with the requirements for establishing the filing date, supplementary procedures may be taken.

    (2) Patent Application by reference to a previously filed application (Art. 38-3 of the Patent Law)
    Based on PLT, Art. 5 (7), a system will be introduced in which the filing date is established under the requirements prescribed in the Patent Law, even without attaching the specification to a patent application.

    (3) Supplementation of missing part of Specification or Drawings (Art. 38-4 of the Patent Law)
    Based on PLT, Art. 5 (5) and (6), a system will be introduced in which, if a part of the specification or drawings attached to a patent application is missing, the missing part may be supplied.

    (4) Relief in respect to designated time limits (Art. 5 (3) of the Patent Law)
    Based on PLT, Art. 11 (1), a system will be introduced in which a request for extension of the time limit may be filed even after the expiration of the time limit designated in Office Actions, but within the time limit prescribed in the Patent Law.
    (See the attached “Outline of Revision of Rules for Extensions of Response Period to Office Actions” for the details concerning relief of the designated time limit for patent applications.)

    (5) Notification after expiration of time limit for filing translations of foreign language applications (Art. 36-2 (3) and (4) of the Patent Law)
    Based on PLT, Art. 6 (3) and (7), a system will be introduced in which a translation of a foreign language application may be filed even after the expiration of the time limit, but within the time limit prescribed in the Patent Law.

    (6) Notification after expiration of time limit for filing priority documents (Art. 43 (6) and (7) of the Patent Law)
    Based on PLT, Art. 6 (5) and (7), a system will be introduced in which a priority document may be filed even after the expiration of the time limit, but within the time limit prescribed in the Patent Law.

    (7) Notification after expiration of time limit for filing appointment of patent administrator for international patent applications (Art. 184-11 (3), (4) and (6) of the Patent Law)
    Based on PLT, Art. 7 (2)(a) and (5), when no appointment of patent administrator is filed for an international patent application based on the PCT that has entered into the national phase within the time limit prescribed in the Patent Law, the Japan Patent Office shall notify the applicant (with addresses outside Japan). The applicant shall file an appointment of patent administrator within the time limit prescribed in the Ministry Ordinance (within two months after the notification date).

    (8) Direct procedures by applicants with addresses outside Japan
    Based on PLT, Art. 7 (2)(a), even the applicants with addresses outside Japan may carry out procedures for patent applications (except for special applications such as divisional applications) directly, not through a representative. Based on PLT, Art. 7 (2)(b), even the applicants with addresses outside Japan may pay the annual fees after the fourth year directly, not through a representative.

    (9) Independent Request for Transfer of Patent Right Registration, etc. (Arts. 18 and 38 of the Patent Registration Order)
    Based on the Regulations under the PLT, Rule 16, etc., any one of the concerned parties may independently request a transfer of patent right registration or the like by attaching documents prescribed in the Regulations.
    (https://www.jpo.go.jp/torikumi/kokusai/kokusai2/plt_tetsuzuki_20160210.htm)

 

 

 

Outline of Revision on Rules for Extensions of Response Period to Office Actions
(Patent Applications) (Effective April 1, 2016)

 

(1) Request for extension during the original response period
For applicants with addresses outside Japan
A two-month extension is allowed by filing a single request for extension, and another one-month extension is allowed by filing another request for extension (the maximum available extension term is three-months in total). The official fee per request for extension is JPY 2,100 (unchanged).

(2) Request for extension after the original response period
A two-month extension is allowed by filing a request within two months after the original response period expires. The official fee for the request is JPY 51,000.

If the request for extension during the original response period is filed (i.e., case of (1)), a request for extension cannot be filed after the original response period expires. Once a response is filed during the original response period, a request for extension cannot be filed after the original response period expires.

(3) Cases for which the revision is applied
The revised rules are applied to the cases for which the original response period for an Office Action expires on or after April 1, 2016, and a request for extension is filed on or after April 1, 2016.

* The rules for extensions are not changed for Office Actions issued after a Request for Appeal is filed (in the pre-appeal examination and the appeal examination stages) even after the revision is effective.