Revision 2006 of Japanese Industrial
Property Laws
1. Design Law
(1) Extension of Duration of Design Right
1) The duration of design right is 15 years from the registration date
under the current law, but is to be extended to 20 years under
the revised law.
The revision enables you to appropriately protect your design applied
to an over 15 years long selling product. In addition, if you wish
produce goods again that caught on once, taking an advantage of a recent
revival boom in Japan, the revision helps you to protect your revival
goods more effectively than ever. We suggest you to maintain your design
rights applied to goods that have once enjoyed a burst of popularity,
even if they do not sell currently.
2) Note that this revised provision is to be applied to design rights
under applications for design registration filed on or after
April 1, 2007.
(2) Expansion of Protection of Design on Display
1) According to the current Examination Standard, a design on a
display has to satisfy following three requirements to be recognized
as a design under the law:
(i) it be indispensable for a product to which it is applied;
(ii) it be displayed in accordance with a function of a product to
which it is applied; and
(iii) its varying form be specified when it varies.
The revision adds a new subsection 2 (2) to the Design Law. This
subsection enables you to protect your "design on a display of a
product used for an operation necessary to enable the product
implement its inherent function."
For example, you are to be able to obtain a design right to your
design on a display of a cellular phone for selecting a calling party,
or on a display of a DVD recorder for programming.
This revision certainly expands the protection of a design on a
display, but it does not yet enable you to protect your design on a Web
page, contrary to the CD (Community Designs) or the Korean Design Law.
In addition, you can not protect your design on a display of a game
machine that shows a scene of the game.
If you create a design on a display of a device that is used to
operate the device to fulfill its primary function, you may be able to
protect your design under the revised law. Please contact us whenever
you come up with such a design.
2) Note that this revised provision is to be applied to designs in
applications for design registration filed on or after
April 1, 2007.
(3) Clarification of Scope of Similarity of Design
1) The current Design Law does not specify how to determine whether
one design is similar to another or not. The revision makes it clear
that one has to determine the similarity of design on the basis of
an aesthetic impression on the consumers' sense of sight.
The "consumers" here are interpreted to include both transactors
and consuming public.
We suppose that examiners have determined the similarity of designs
on the basis of a "creativity doctrine," which places an emphasis on a
creator's viewpoint. It is not certain yet what change we can see in
the examination after the revised Design Law is put into practice. We,
however, suppose that the scope of similarity will be determined
broader than ever before concerning some products. This may make it
difficult to obtain design rights to the products.
2) Note that this revised provision is to be applied to designs in
applications for design registration examined on or after
April 1, 2007.
(4) Relaxation of Timing Requirements in Article 3bis
(Expanded First-to-File Provision)
1) According to current Article 3bis of the Design Law,
no one can obtain a design right for a design identical with or similar
to a partial design in the product or a design in a part of the product
filed earlier than his/her application.
Under the revision, one is to be able to obtain the design right on
condition that:
(i) the applicants are the same between the prior and latter
applications; and
(ii) the latter one is filed before a date that the Design
Registration Gazette is published for the prior one.
Since an examination of an application for design registration takes
about 7 months in average, you are to be able to file an application
for a whole design in a product first and file an application for a
partial design in the product or a design in a part of the product later
if you need, under the revised provision.
2) Note that this revised provision is to be applied to designs in
applications for design registration filed on or after
April 1, 2007.
(5) Relaxation of Timing Requirements for Associated Design
Application
1) Under the current Design Law, a design similar to a principal design
can be registered as an associated design only when the same applicant
files applications on the same day for the principal and the associated
designs. This is an exception of the "first-to-file principle."Under
the revision, you are to be able to file an application for the
associated design before a date that the Design Registration
Gazette is published for the principal design application.
It is very natural for you to design a prototype first, and
thereafter design a finished product slightly modifying the prototype.
You have to file an application for a design in the prototype before
placing the prototype in public. A product is usually finished after
the publication. Under the current Design Law, you can not obtain a
design right for the design in the finished product if it is similar to
one in the prototype, although a design in the finished product is more
likely to be imitated by others. The revision will eliminate such a
disadvantage because it enables you to file an associated design
application for the design in the finished product until the day before
the Design Registration Gazette is published for the prototype design
application.
2) Note that this revised provision is to be applied to designs in
applications for design registration filed on or after
April 1, 2007.
(6) Other Revisions
1) Under the current Design Law, you can keep your design secret for
up to 3 years even after your design is registered only when you submit
a demand to that effect at the same time as you file an application for
the design. The revision enables you to submit the demand also at the
same time as you pay an issue fee. This revised provision is to be
applied to designs in applications for design registration filed
on or after April 1, 2007.
2) Under the current Design Law, you have to submit a document proving
that your design has been placed in public to enjoy the provision of
exception to lack of novelty of a design within 14 days after filing
an application for the design. The revision enables you to submit the
document within 30 days after filing the application. This revised
provision is to be applied to applications for design registration
filed on or after September 1, 2008.
2. Patent Law
(1) Relaxation of Timing Requirements for Divisional
Application
1) Under the current Patent Law, an applicant for patent can file a
divisional application only within periods when the applicant can amend
his/her specification, i.e.:
(i) before receiving an examiner's notification of reasons for
refusal;
(ii) a period for responding to an examiner's notification of reasons
for refusal;
(iii) a period for responding to an examiner's notification of lack of
information on prior art documents; and
(iv) a period within 30 days after the applicant demands an appeal
trial against an examiner's decision of refusal.
The revision allows an applicant to file a divisional application
within 30 days from the transmittal of an examiner's decision
of grant (but before a patent registration), and within 30 days
from the transmittal of an examiner's decision of refusal, in
addition to the periods (i) to (iv).
Under the current Patent Law, if you want to file a divisional
application after receiving an examiner's decision of refusal against
the parent application, you have to demand an appeal trial against the
decision even if you do not wish to pursue a patent right for the
parent application any longer. The revision allows you to file the
divisional application without demanding the unnecessary appeal trial.
Further, since you are to be given a chance to file a divisional
application even after the examiner's decision of grant, you are to be
able to wait for the examiner's decision either of grant or refusal to
decide whether to file a divisional application.
In the U.S., an applicant can file a continuation application under
37 CFR 1.53(b) and a divisional application under 35 USC 121 before an
issuance of a patent. In Europe (EPC), an applicant can file a
divisional application until the day before the announcement of grant.
Thus, the revision makes Japan closer to the U.S. and Europe in terms
of timing requirements for a divisional patent application.
2) Note that this revised provision is to be applied to patent
applications filed on or after April 1, 2007.
(2) Restriction on Amendment to Divisional Application
1) Under the current Patent Law, a patent applicant can file a
divisional application without amending claims that have already been
notified to be rejected by an examiner's notification of reasons for
refusal.
Under the revision, an amendment to a divisional application
responding to an examiner's first notification of reasons for refusal
against the divisional one, is subject to the same restriction as on
an amendment responding to an examiner's final notification of reasons
for refusal if the reasons for refusal already notified against its
parent application have not been resolved. If the amendment does not
comply with the restriction, the examiner shall decline the amendment,
similarly to that responding to the examiner's final notification of
reasons for refusal.
You have been able to file a divisional application transferring a
claimed invention from its parent application without an amendment
after receiving a notification of reasons for refusal against its
parent application under the current Patent Law so far. This practice
has been giving you a good chance to undergo an examination freshly for
the same invention by another examiner. You, however, can not make use
of a divisional application for such a purpose any longer after the
revision.
In the US, an applicant receives the first but final office
action if he files a continuation application under 37 CFR 1.53(b)
without amending the claims after receiving a final action against its
parent application. Thus, the revision makes Japan closer to the U.S.
in terms of restriction on amendment to a divisional application.
2) Note that this revised provision is to be applied to patent
applications filed on or after April 1, 2007.
(3) Prohibition of Claim Amendment beyond Unity of Invention
1) Under the current Patent Law, a patent applicant has been able to
amend the claims of his/her application to another invention different
in technical characteristics, i.e., beyond the unity of invention, in
response to an examiner's notification of reasons for refusal. This
has been giving you an advantage of taking examination for two
applications.
The revision prohibits such an amendment that replaces a clamed
invention with another one beyond the unity of invention after
receiving a notification of reasons for refusal.
Suppose that you have already filed a patent application claiming a
telephone having a characteristic display. You can amend the
application by deleting the claim and newly claiming up a telephone
having characteristic keys from his/her specification, under the current
Patent Law. In such a way, you can undergo an examination for the two
inventions in one application. You, however, can not enjoy such a
practice any longer after the revision. The revision makes Japan keep
pace with the U.S. and Europe in terms of prohibition of claim
amendment beyond the unity of invention.
2) Note that this revised provision is to be applied to patent
applications filed on or after April 1, 2007.
(4) Extension of Period to Submit Translation of Foreign
Language File Application
1) Under the current Patent Law, a patent applicant has to submit a
translation into Japanese of his/her foreign language file application
within two months from the filing date. An applicant who has filed a
foreign language file application claiming Paris priority, therefore,
can enjoy up to one year and two months from the filing date of the
first foreign application to prepare the translation. On the other
hand, an applicant who has filed a foreign language file application
as the first foreign one has been given only two months to prepare the
translation.
The revision extends a period for submitting the translation of a
foreign language file application to one year and two months from
its filing date (but the filing date of the first foreign
application when the foreign language file application is the
second foreign one with a claim of Paris priority).
A number of English-speaking foreign engineers are working for
Japanese companies. For inventions made by such engineers, patent
specifications written in English are sometimes prepared in higher
quality than those in Japanese. This is because they can precisely
check out draft specifications written in their language before the
applications are
filed.
For inventions made by researchers from universities or colleges,
patent specifications are sometimes prepared in parallel with English
research reports to be published in academic journals. In such cases,
patent specifications written in English are sometimes prepared faster
by making use of the draft reports than those in Japanese.
Foreign language file applications, which are better choices for
those two cases, become more user-friendly by the revision because the
applicants are to be given one year and two months to prepare the
Japanese translations after filing the applications. In addition, if
an applicant of the first foreign application files a foreign language
file application as the second foreign one claiming Paris priority
earlier than one year after filing the first foreign one, he/she can
enjoy longer period than two months to prepare a Japanese translation.
A Japanese applicant can file the U.S. patent application with a
specification written in Japanese. The applicant has to submit a
translation into English of the application usually within two months,
precisely, a period designated in a notification inviting the applicant
to submit the translation under 37 CFR 1.52(d). Thus, the revised
Japanese Patent Law is more applicant-friendly than the current U.S.
regulations in terms of a period for submitting the translation of a
foreign language file application.
2) Note that this revised provision is to be applied to patent
applications filed on or after April 1, 2007.
3. Trademark Law
(1) Trademark Right for Retail Service
1) A retail service has not been regarded as a "service" traded
independently but as a service dependent of goods to be sold under the
current Trademark Law.
The revision allows a retailer or a wholesaler, such as:
(i) a general retailer, e.g., a department store, convenience
store or general electric appliance store;
(ii) a special store, e.g., a shoe store, book store or
vegetable store;
(iii) a mail-order house; or
(iv) an internet retailer
to obtain a trademark right for their retail or whole sale
service.
If goods sold by a retailing service and the service itself are
recognized similar to each other, it may be only necessary in some case
to obtain a trademark right for the retailing service on condition that
the mark is not used as a trademark for the retailed goods. We,
however, can not suggest this with certainty because the revised
examination guideline corresponding to the revised law has not yet
been released.
2) Note that this revised provision is to be applied to
applications for trademark registration filed on or after
April 1, 2007.
(2) Expansion of Eligibility for Applicants of Collective
Trademarks
1) Under the current Trademark Law, only such legal entities are
eligible for applicants of collective trademark registration, as
aggregate corporations established under Section 34 of the Civil Code
or industrial business corporative associations and other associations
established under the special law, or foreign legal entities
corresponding thereto.
The revision expands the eligibility for applicants of collective
trademark registration to aggregate corporations (excluding no
legal entities) or industrial business corporative associations
and other associations established under the special law.
The aggregate corporations include chambers of commerce, societies
of commerce and industry, NPO (Non-Profit Organization)
legal entities and intermediate corporations.
2) Note that this revised provision is to be applied to applications
for trademark registration filed on or after September 1, 2006.
4. Common Provisions
(1) The "working" in definition in the revised Design Law, Patent Law
and Utility Model Law includes "exporting." In addition, the
acts deemed to be infringement prescribed in those revised laws,
includes "acts of possessing products that fall under infringement with
an intention of assigning, leasing or exporting them." Those revised
provisions are to be applied on or after January 1, 2007.
(2) The revisions of the Design Law, Patent Law, Trademark Law and
Utility Model Law stiffen criminal penalties for infringements.
For example, the penalty for the direct infringement of a patent right
is toughened to imprisonment up to 10 years, a fine up to 10
million yens, joint imposition of those two penalties, and a
fine up to 30 million yens imposed on a legal entity.
Those revised provisions are to be applied on or after January
1, 2007.
(Updated in August 2006)
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