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AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar JPO Updates JPAA International 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 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 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 <History of Opposition System in Japan> l Japanese 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 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, 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 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 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 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 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, 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 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 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 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 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 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 * 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 • 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? 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 Any Questions? Thank you for your kind attention Ayafune International Patents & Trademarks Fujiko Shibata [email protected] com * 20 20