Amendment to the Patent Act of Japan, Year 2011

I. Date of enforcement

This Act shall come into effect as of April 1, 2012 as approved by Cabinet order No. 369 of December 3, 2011. (Note: Only this section of the article was rewritten on December 16, 2011.)

II. Summary of Amendment

1. Expansion of application of “Exception to lack of novelty of invention” (Article 30)

Under the current Patent Act, among the inventions which have become publicly known due to the conduct of a person who has the right to obtain a patent, the “exception to lack of novelty of invention” (grace period) is only applicable to the inventions which have become publicly known due to predetermined conduct such as conduct of test or conduct of presenting the invention in a printed publication. For example, “the exception to lack of novelty” cannot be applied to the inventions which have become publicly disclosed by the conduct of sales by the person who has the right to obtain a patent. According to the Amendment Act, the “exception to lack of novelty” will also be applicable to inventions which have become publicly disclosed by any conduct including sales and announcement on television (except for those published in domestic/foreign patent publications or the like) of the person who has the right to obtain a patent (Article 30, Paragraph 2). There have been many cases where the filing of a patent application in Japan has been given up as for the inventions which lost novelty because of being publicly disclosed before filing the patent application in the first country such as by sales; however, filing patent applications in Japan should be positively considered after the enforcement of the Amendment Act. In order to enjoy the “exception to lack of novelty” system, a Japanese patent application or a PCT application must be filed within six months from the disclosing date.

2. Change in correction system for patent invalidation trial

(1)Prohibition of correction appeal after instituting a lawsuit against a JPO trial decision invalidating the patent (Article 126 (2))
Under the current Patent Act, a patentee may file a correction appeal into the JPO in order to restrict invalidated patent claims or the like within 90 days from the date of instituting a lawsuit against a JPO trial decision invalidating the patent to the Intellectual Property High Court. However, according to the Amendment Act, filing such a correction appeal will be prohibited.

(2)Request for correction allowed in response to preliminary trial decision (Article 164bis (2))
According to the Amendment Act, in proceedings of a patent invalidation trial, the chief JPO trial examiner must issue a preliminary trial decision if he intends to issue a trial decision invalidating the patent. The patentee may request correction for restricting patent claims or the like within a predetermined period from the date of the preliminary trial decision, in order to argue the validity of the patent claims. The JPO trial examiners further conduct a trial examination whether or not the corrected claims are still invalid before the issuance of the trial decision.

Accordingly, the preliminary trial decision will most likely be the last chance for correcting the claims. Therefore, the patentee should make careful consideration to appropriately correct claims that are subject to invalidation proceedings so as to overcome the grounds for invalidation.

3. An unregistered non-exclusive license and the like shall have effect against a person who subsequently acquires the patent right (Article 99(1))

Under the current Patent Act, a non-exclusive licensee has to register his/her non-exclusive license with the Patent Office to claim the effect thereof on any person who subsequently acquires the patent right.

According to the Amendment Act, the registration system of non-exclusive license is abolished and a non-exclusive licensee may claim the effect of a non-exclusive license on any person who acquires the patent right after the non-exclusive license is granted even if the non-exclusive license is not registered.

4. A person who is entitled to obtain a patent right may demand the transfer of a patent right pertaining to a usurped application and the like (Article 74(1))

Under the current Patent Act, when a patent is granted to an applicant who has no right to obtain a patent or an applicant whose application falls under the violation of the obligation of joint application (Article 38), a person who has the right to obtain a patent (person who is entitled to obtain a patent) can only invalidate the patent right by filing a patent invalidation trial to the JPO (Article 123, Paragraph 1, item (6)) (Case No.2009 (Wa) No.297).

According to the Amendment Act, when a patent is granted to an applicant who has no right to obtain a patent or an applicant whose application falls under the violation of the obligation of joint application, a person who is entitled to obtain a patent may demand that the patentee transfer the patent right to the entitled person. This right to demand the transfer is normally claimed in litigation by such an entitled person, and if he/she wins the case, he/she can apply for a registration of the transfer of the patent right with the JPO with the final and conclusive judgment of the winning.

5. Effects of double jeopardy prohibition do not apply to a third party (Article 167)

Under the current Patent Act, once a JPO trial decision of dismissal in a patent invalidation trial becomes final and conclusive, no one may file a similar patent invalidation trial on the basis of the same facts and evidences any longer, that is, the effects of double jeopardy prohibition apply.

According to the Amendment Act, the effects of double jeopardy prohibition apply only to the invalidating party and an intervenor in the patent invalidation trial case and do not apply to any other third parties. That is, even after a JPO trial decision to dismiss a request for a patent invalidation trial becomes final and conclusive, third parties other than the invalidating party and the intervenor in the final and conclusive trial decision may file a patent invalidation trial on the basis of the same facts and evidences.

6. Remedy for a lapse of the period if there is a justifiable reason

(1)Under the current Patent Act, if a Japanese translation of a specification and the like is not submitted to the JPO within two months (the period for submission of a translation) after a PCT application has entered the national phase in Japan, the application that has entered the national phase in Japan is deemed to be withdrawn and there is no regulation to remedy the withdrawal.

According to the Amendment Act, as long as there is a justifiable reason (Due care) for failing to submit the translation within the period for submission of the translation, it is possible to submit the translation to the JPO, provided that it is within two months from the day when the reason disappears and within one year from the deadline for submission of the translation (Article 184quarter, Paragraph 4). This revised regulation is intended to be in harmony with the PLT.

(2)According to the Amendment Act, even when the period for the payment of an annual fee to maintain a patent has elapsed and the six-month period for a late payment with a double fee has elapsed, as long as there is a justifiable reason (Due care) for the elapsed late payment period with the double fee, it is possible to pay the annual fee, provided that it is within two months from the day when the reason disappears and within one year from the deadline for the late payment period with the double fee (Article 112bis, Paragraph 1). This revised regulation is intended to be in harmony with the PLT.

7. Restriction of a retrial (Article 104quarter)

In patent infringement litigation, after a court judgment to approve a claim of a patentee had become final and conclusive on the assumption that the patent is valid, if a JPO decision to invalidate the patent has become final and conclusive in a patent invalidation trial, this final decision to invalidate the patent is considered to give grounds for a retrial for the final court judgment in the patent infringement litigation (Code of Civil Procedure, Article 338, Paragraph 1, item (8)).

According to the Amendment Act, in the above case, the parties to the patent infringement litigation case cannot argue that the final and conclusive JPO decision to invalidate the patent gives grounds for the retrial for the court judgment in the patent infringement litigation.

Thus, an alleged infringer should attempt to win the decision to invalidate the patent in the patent invalidation trial at an earlier stage.

8. Abolishment of effects to exclude trademark registration for one year after extinguishment of a trademark right of other owner (Trademark Act, Article 4(1), item (13))

The regulation of the current Trademark Act to disapprove registration of a trademark of other owner or a trademark similar thereto within one year after the trademark right has been extinguished will be abolished.