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Detailed Contents of Revision
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Shortening the term of Request for Examination
Effected from 2001.10.1 (H13.10.1)
Term of request for examination was shortened to within 3 years from filing application.
Please note that applications filed before 2001.10.1 are not influenced by this revision (within 7 years from filing aplication).
Request for examination of applications filed after 2001.10.1 should be filed within 3 years from filing the application.
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International Trademark Application (Madrid Protocol)
Effected from 2000.3.14 (H12.3.14)
International Trademark Treaty "Madrid Agreement Concerning the International Registration of Mark adopted on June 27, 1989 in Madrid" is effected from March 14, 2000 in Japan. Under this law, we can file an application in Japan designating a plurality of nations . According to this application, we can file many applications with one procecution.
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Revision of Some Articles of Patent Law
Effected from 2000.1.1 (H12.1.1)
Some Patent Law were revised on Jan. 1, 2000.
(1) Revision for Novelty made available to the public through electric telecommunication lines. (Article 29(1)(iii))
Inventions published through electric telecommunication lines can not have novelity.
(2) Novelty Standard has become worldwide (Article 29(1)(i)(ii)).
Standard of publicly known or publicly worked inventions included foreign countries in addition to Japan.
(3) Extention of Patent Right becomes easier. (Article 67( 2))
Before this revision, term of patent right could be extended when the invention could not be forced for more 2 years. Under this revision, term of patent right can be extended in case there was a period in which it was not possible to work the patented invention.
(4) Prosecution for Infringement of patent right become easier. (Article 104(2))
(5) Addition of reduction and reprieve for legal entity (Article 109)
Conditions:
1. Capital fund is less than 300,000,000 yen
2. Less than 5 years after foundation
3. No duty to pay corporate tax
Contents:
1. Request for Examination Fee is 50% off
2. Grace period for Patent Fee for the first three years is three years
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New Electronic Filing System for Trademark and Design
Effected from 2000.1.1 (H12.1.1)
The following applications can be filed through electric filing system from January 1, 2000.
(1) Design Application
(2) Trademark Application
(3) Trial
(4) PCT Application (National Phase)
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Patent Fee shared by Nation and Companies
Effected from 1999.4.1 (H11.4.1)
The nation also has to pay the patent fee for its equity.
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New Design Law
Effected from 1999.1.1 (H11.1.1)
(1) Standard for easily creating the design was changed to worldwide area (Design Law: Article 3).
Therefore, design applications which are easily created based on the design publicly known in foreign countries are rejected or invalid.
(2) "Partial Design System"is started (Design Law: Article 2).
(3) "System Design"can be protected (Design Law: Article 8).
System kitchen, personal computer system etc. are protected under this revision.
(4) Registrability for Design of a set of Articles:
An application for design registration may be made as for one design, provided that the set of articles is coordinated as a whole.
(5) "Related Design System" is started (Design Law Article 10).
Related Design can be registered provided that the filing date of the application for the principal design is the same as the filing date of the application for the registration of that related design.
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Reinforcement of Penalty
Effected from 1999.1.1 (H11.1.1)
(1) Offence of Infringement of a patent right was changed from Offensive crime to Non-Offencive crime
(2) A fine for infringement of a patent right of the legal entities was raised from 5,000,000 yen to 150,000,000 yen.
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Trial for non-use ot the trademark
Effected from 1997.4.1 (H9.4.1)
The trademark registration can be canceled by cancellation trial if the registered trademarks are not in use for more than 3 years. The trademark owner have to prove that the trademark has been used in Japan within three years prior to the registration of the demand for the cancellation trial. If the demandant proves that the registered trademark has been used after knowing that the cancellation trial had been demanded, the trademark registration is cancelled.
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Trademark Registration Fee can be paid by installment
Effected from 1997.4.1 (H9.4.1)
Trademark registration fee can be paid by installation. It is worth to consider this system for short-life goods.
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Post-grant Opposition(Trademark)
Effected from 1997.4.1 (H9.4.1)
Oppositions should be filed within 2 months after the publicaiton of Trademark Gazette is issued (Article: 43 bis). Opposition is conducted by a collegial body of three or five trial examiners.
If the opposition is rejected, Trial for Invalitation can be filed (Article: 46).
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New Trademark Law is effective as follows:
Effected from 1997.4.1 (H9.4.1)
One or more classes of goods or services can be designated in one application.
Application Fee: 6,000 yen for each Appication + 15,000 yen for each class.
Registration Fee: 66,000 yen x number of the classes.
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Accelarated Examination System
Effected from 1996.1.1 (This system is not effecteive at present)
The examination is usually carried out in the order of the examination request. However if the accelerated examination is requested, a first office action will be issued within three to four months after filing the request for examination. When requesting the accelerated examination, the applicant must submit the following documents:
(1) Any document for explainig the enforcement of the invention.
(2) A document certifying that the family patent was filed to foreign country too.
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Post-grant Opposition System (Patent)
Effected from 1996.1.1 (H8.1.1)
Purpose of Revision:
So far, the opposition system was harmful for applications to grant earlier. Especially, there was much complaint from overseas becasue of the long examination period according to many oppositions made by Japanese companies.This revision has improved these problems.
Features of the new Opposition System:
* Former interested parteies system has changed to examination system.This makes it possible for the owner of the right to correspond to the trial examiner, without filing "Reply to Opposition".
* Even if more than two oppositions were filed, all of them are consolidated. This makes it easier for the owner of the right to respond to the opposition.
* Trial examiner can examine other reasons which opponents do not declare. This may make proceedings earlier.
* Judges can examine other reasons which opponents have not declared. Earlier proceeding is expected.
General outline of Opposition:
* Any person can file opposition only within 6 months from the publication of Gazette.
* Claims which the opponent has not declared can not be examined.
* Reasons which the opponent has not declared can be examined.
* When more than two oppositions were made, all proceedings are consolidated in principle.
* When the patent is determined to be cancelled, patent right lapse with retroactivity.
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Restoration of patent right
Effected from 1995.7.1 (H7.7.1)
Even after the patent right has been elapsed, annual fee can be paid within 14 days after specified reason has been ceased.
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Requirement for specification is revised
Effected from 1995.7.1 (H7.7.1)
Requirement for specification is changed as below:
1. Description of "operation" is no more required.
2. Effect of Inventionor is not forced to describe.
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Foregin Language File System
Effected from 1995.7.1 (H7.7.1)
1. It is necessary to file an application form in Japanese, a foreign language specification, necessary drawings and a foreign languageabstracct.
2. It is necessary to file Japanese translation of the foreign language file within 2 months after filing.
3. Amendment can be allowed within the range of Japanese translation.
4. When correcting mistranslation, "Correction of Mistranslation" should be submitted.
5. Amendment of foregin language specification and abstract can not be allowed.
6. When the application is laid-open, its foreign language specificaiton is also laid-open.
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Patent term is changed to 20 years from filing date
Effected from 1995.7.1 (H7.7.1)
1. Term of the patent right ends in 20 years after the filing date.
2. This revised law is effective to all applications pending in Japanese Patent Office on 1995.7.1 and to all the patent rights.
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New Utility Model
Effected from 1994.1.1 (H6.1.1)
No examination system is a system to register applications only with formality examination, namely, without substantial examination.
* Under this new Utility Model Law, term of the right ends in 6 years after the filing date.
* For applications are registrated in about 6 months after filing date, the substantive term of the right is about 5 and a half years.
Effective Use of New Utility Model System
Since the Utility Model Applications are registered in about 6 months after filing date, it is advantageous more than patent application for the cases below:
* When the goods are required to be protected shortly,
* When the life of the goods are supporsed to be short,
* When urgent protection is required for fear of copy goods.
Since the applications are registered without substantial examination, the right may be unstable.
In case of exercising the rights pertaining to the utility model rights against an infringer, the owner has to show the "Technical Opinion as to Registrability" to the infringer. This is a document that the Japanese Patent Office certifies whether the right is effective or not.
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Limited Amendment
Effected from 1994.1.1 (H6.1.1)
1. New matters can not be added into the specification after filing.
2. Amendnment of the claims after receiving final reason of rejection is strictly limited.
After receiving final rejection, amendment is allowed only for the following cases:
* to cancel claims
* to restrict the claims (new componets are not allowed to add)
* to correct errors
* to explain unclear part of the description
3. Amendment of the claims at requesting a trial is also strictly limited.
When filing amendment at the trial, all of the claims should be submitted including the claims not being amended. Above limitations 1-3 are effected for applications filed after 1994. 1. 1.
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Servicemark System
Effected from 1992.4.1 (H4.4.1)
Servicemark is a mark for discriminating own service from other services of other business such as advertisement, banking, construction, transport, lodgment and restraurant business.
Up to now, servicemark could not be protected by the trademark law in Japan.
Unfair Competition Prevention Law was the only law to protect the servicemark, but it was not enough to protect the owner's right.
On the other hand, most countries already have such servicemark system.
This revision made Japan internationalized as same as in other countries.
When filing the Service Mark Application, it is necessary to designate service class and service.
Examination of the Servicemark is applied in the same way as that of the ordinaly Trademark.
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Electronic Filing System
Effected from 1990.12.1 (H2.12.1)
* Application form, specification, drawings and abstract can be filed to Japanese Patent Office through communication line.
From 1990.12.1 to 1998.3.31:
* Specific JIS format is used as filing format.
* On-Line System can be also used for responding to the Office Action.
* Floppy-disk and paper application can be available in parallel.
* Expensive specific terminal is necessary. Personal computer cannot be used at this time.
From 1998.4.1 to 2000.12.31:
Since 1998.4.1, personal computer can be available for filing Patent applications.
* Document format is changed from JIS format to HTML format.
* Floppy-disk application cannot be allowed. Paper application needs Entry Fee.
From 2000.1.1 to now:
Applications for design and trademark can be also filed using personal computer from 2000. 1. 1.
On-line System is avilable for Trial for Rejection and PCT Application.
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Many kinds of inventions can be included in one application
Effected from 1988.1.1 (S63.1.1)
Number of the inventions that can be included in one application (Unity of application) is alleviated. Inventions that can be included in one application are: (an invention claimed in one claim is referred to as "the specified invention")
(1) Two inventions of which the industrial applicability and the problem to be solved are the same as those of the specified invention,
(2) Two inventions of which the industrial applicability and the substantial part of the features stated in the claim are the same as those of the specified invention,
(3) where the specified invention relates to a product, inventions of process of manufacturing the product, inventions of process of using the product, inventions of process used for handling the product, inventions of machines, instruments, equipment or other things used for manufacturing the product, inventions of products solely utilizing the specific properties of the product, or inventions of things used for handling the product
(4) where the specified invention relates to a process, inventions of machines, instruments, equipment or other things used directly in the working of the specified invention
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Priority claim based on domestic application
Effected from 1985.11.1 (S60.11.1)
Purpose of the system:
* All the inventions created in every step of the study can be filed as a related invention.
* Application should be filed wthin one year after filing the prior domestic application (it contains PCT application).
* The prior application is withdrawn after one year and three months.
Merit of the system:
* Application date of invention contained in the prior application is maintained, and new inventions created after the prior application can be added.
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