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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
218 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 revision318 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)
418 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
518 April 2023 5
Statistics for Former Opposition system
618 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
718 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)
818 April 2023 8
New PGR to be Introduced in Japan (4)
January 2014 18 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 18 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
1118 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
1218 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
1318 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???
1418 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)
1518 April 2023 15
Trademark Law revision-2
• Trademark by using hologram
• Trademark by using plural colors
Germany Reg. No. 304532819
Australia Reg. No. 749403
1618 April 2023 16
Trademark Law revision-3
Trademark composed of figure and color(s)
CTM Reg. No. 2319937US Reg. No. 3776468
January 2014 18 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 18 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 18 April 2023 19
Any Questions?
Thank you for your kind attention
Ayafune International Patents & Trademarks
Fujiko Shibata
2018 April 2023 20
