AIPLA Mid-Winter Institute IP Practice in Japan Committee

AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar JPO Updates JPAA International Activities Center Fujiko Shibata

Contents l On-going revisions & their summaries l Schedule l Practical tips * 2 2

Ongoing revision l Patent Law revision l The return of post grant opposition l Design Law revision l High hurdle to become a member of Hague Agreement Concerning the International Registration of Industrial Designs l Trademark Law revision l Subject matter will be expanded l Patent * Attorneys Act revision 3 3

The return of post grant opposition l Japanese patent Law has been revised in 1959 (Enforcement Law of the Patent Act (Act No. 122 of April 13, 1959) l Before 1958, Law of the Patent Act (1921) l Before 1959 l Invalidation trial of Patent Right (introduced in 1888) l Opposition system (pre-grant, introduced in 1935) * 4 4

The return of post grant opposition l. Revised in 1994 l From Pre-grant review to Post-grant review, because of fast track granting and international harmonization. l Revised in 2003 l Post grant opposition has gone! l Will be revised in 2015? l Post grant opposition will return * 5 5

Statistics for Former Opposition system 9, 000 Total No. of PGR 8, 000 7, 000 Successful No. 6, 000 5, 000 4, 000 3, 000 2, 000 1, 000 0 1996 1997 1998 1999 2000 2001 2002 2003 * 6 6

New Opposition system to be Introduced in Japan (1) l. Reasons for New post grant opposition l. Lacking novelty , Inventive step ---(Articles 29(1), 29 bis, Article 29(2)) l Requirements for specifications and claims ---(Articles 36(4), (6)) l. Addition of New matter--- (Article 17 bis(3)) l. Not including claimed invention in an original foreign application---applied only non-Japanese application * 7 7

New PGR to be Introduced in Japan (2) l. Eligible Person for filing an opposition --- No change (Anybody ) l. Opinion from an opponent---Change! l. Submitting comments when the patent is corrected lnon ［ne］ bis in idem---No change l. Not applied– Same evidences can be used in invalidation trial l. Term for filing an opposition---No change l 6 months from issue date of letters patent l. Fee: 49, 500 + 5, 500/claim (JP Yen) * 8 8

New PGR to be Introduced in Japan (4) * January 2014 9

Practical Tips-1 l Post-grant review l Term for submitting request is short---6 M l Japanese translations of English evidences are necessary Please instruct as early as possible! l Official Fee is not expensive l Non [ne] bis in idem is not applied---two chances Patent holder must be careful * January 2014 10

Design Law Revision-1 l Public Comments window has been just closed on January 25, 2014(Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council) l Main Issues l Becoming a member of Hague Agreement l There are many hurdles l Protection of image design * 11 11

Design Law Revision-2 l Hurdles in the law to be cleared for the design application under Hague Agreement l One application includes multiple designs l Designs included the application is individually rejected l Postpone of publication timing---until 30 month l Exception of lack of novelty---the term for filing of certificate will be change (30 days to longer) l Related designs---filed by the international publication * 12 12

Design Law Revision-2 l Hurdles in the law to be cleared for the design application under Hague Agreement (continued) l Partial designs---a guide line is reviewing by WG l Design for a set of articles--- reviewing by WG l Secret design---not applied for the application under Hague Agreement l Self designation---applied l Fee payment, receiving an international application ---still considering * 13 13

Design Law Revision-3 l Protection of image design ---still considering l Pre-examination is assumed l Right is given to a function l Right is given to an article l Post-examination is assumed !! l Granted without examination? ? ? * 14 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) * 15 15

Trademark Law revision-2 • Trademark by using hologram Germany Reg. No. 304532819 • Trademark by using plural colors Australia Reg. No. 749403 * 16 16

Trademark Law revision-3 Trademark composed of figure and color(s) CTM Reg. No. 2319937 * January 2014 US Reg. No. 3776468 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 18

Practical Tips-2 l Trademark Revision l Time schedule is unknown---Forced into April of 2015? l Details of documents for filing are not clear l Please ask Japanese Benrishi before filing of Madrid protocol application * January 2014 19

Any Questions? Thank you for your kind attention Ayafune International Patents & Trademarks Fujiko Shibata dania@ayafune. com * 20 20