OUTLINE OF REVISION OF PATENT ACT, ETC. OF 2014
Commencement date: April 1, 2015
(Except for the revisions to implement the Geneva Act, whose commencement date is May 13, 2015)
1. Patent Act
1-1. Enhanced Relief Measures
■ Time periods allocated for the following procedures may be extended due to exceptional unavoidable circumstances such as disasters.
1. Submission of certification for applying for exception to lack of novelty of invention (Article 30)
2. Procedures for priority claim under the Paris Convention (Article 43)
3. Divisional application of patent application (Article 44)
4. Conversion of utility model registration application or design registration application into patent application (Article 46)
5. Patent applications based on utility model registration（Article 46-2）
6. Payment of patent fees (Article 108)
7. Request for refund of patent fees (Article 111)
8. Request for refund of fees (Article 195)
9. Filing of request for registration of extension of duration of patent (Article 67-2(2))
The above procedures 1 to 8 can be undertaken within 14 days (where overseas resident, within two months) following the date on which the reason for failure to comply with the time periods no longer exists, but no later than six months after the expiration of the exceeded time limit.
The above procedure 9 can be undertaken within 14 days (where overseas resident, within one month) following the date on which the reason for failure to comply with the time periods no longer exists, but no later than two months after the expiration of the exceeded time limit.
■ Time periods allocated for any of the following procedures may be extended when they could not be undertaken for good reason.
1. Patent application with priority claim (Article 41)
2. Patent application with priority claim under the Paris Convention (Article 43-2)
3. Request for examination of application (Article 48-3)
Procedure 1 can be undertaken within a time period prescribed by an ordinance of METI (1 year and 2 months from the date of the filing of the earlier application)
Procedure 2 can be undertaken within a time period prescribed by an ordinance of METI (2 months from the expiration of the period of priority under Article 4-C(1) of the Paris Convention)
Procedure 3 can be undertaken within 2 months following the date on which the reason for failure to comply with the time periods no longer exists, but no later than one year after the expiration of the exceeded time limit.
1-2. Establishment of New Opposition System
** Please see our “Opposition System: Q&A” for more details on the Opposition System.**
- Standing required to file an opposition
- Any person can file an opposition.
- Time period to file an opposition
- Within 6 months of the publication of the relevant patent in the patent gazette
- Submit a written opposition to a patent.
- Cost of filing an opposition
- 16,500 JPY per patent plus 2,400 JPY per claim
- Bases for opposition
- Introduction of new matter through an amendment
- Lack of novelty or inventive step
- Not in compliance with “first-to-file rule”
- Violation of convention
- Violation of requirements for description
- Addition of new matter beyond original text of foreign language written application
- Proceedings options
- Documentary proceedings only (no oral hearing)
- Proceedings steps
- A copy of a written motion will be transmitted to the patentee.
- Before revocation is decided, the patentee is notified of the grounds for revocation.
- The patentee may respond to the notice of the grounds for revocation by submitting a written opinion or a request for correction of the description, etc.
- If the patentee files a request for correction, a copy of the request along with the grounds for revocation is transmitted to the opposing party, and the opposing party will be given an opportunity to submit a written opinion.
- Participation in the proceedings
- Persons holding rights in the patent (for example, an exclusive licensee or a non-exclusive licensee) and persons who have interests in the patent may participate in the proceedings upon application in order to support the patentee.
- The same relevant documents as sent to the patentee will be transmitted to the participants.
- Decision of revocation
- If a patent is cancelled, the patentee may appeal to the Tokyo High Court.
- Decision of maintaining a patent
- If a decision is made to maintain a patent, the opposing party may not appeal.
- If the opposing party is an interested person, he/she may file a request for a trial for invalidation. There is no time limit to file the request.
2. Design Act
2-1. Revisions to Implement the Geneva Act
■ Establishment of provisions concerning international design registration applications
■ Establishment of provisions concerning international design registration applications seeking protection in Japan based on international registration
- Provisions for the purpose of processing an international application as a domestic design registration application
- Provisions concerning submission of required documents (certification for applying for exception to lack of novelty of invention, certification of priority, etc.) to the patent office etc.
3. Trademark Act
3-1. Expanded Scope of Protection
■ Addition of color-only trademarks and sound-only trademarks as subject matter of protection
■ Provisions reviewed in line with change in subject matter of protection
- Definition of use of mark
- Requirements for registration of trademark
3-2. Expanded Scope of Eligible Entities to Register Regional Collective Trademarks
■ The scope of eligible entities to register regional collective trademarks has been expanded to include the following:
- Associations of commerce and industry
- Chambers of commerce and industry
- Specified non-profit corporations
- Foreign entities that are equivalent to the above
『平成26年 特許法等の一部改正 産業財産法の解説』 (Partial Revision of the Patent Act, etc. of 2014, Guide to Industry Property Law), edited by Japan Patent Office General Affairs Department General Affairs Division Legal System Council