Revisions of Japanese Patent and Trademark Laws

Effective as of September 1st, 2002

1. Extension of the submission deadline of domestic documents for entering PCT applications into Japan

We can file a Japanese national phase application by thirty (30) months from a claimed priority date for a PCT international application irrespective of whether or not the International Preliminary Examination has been demanded. In addition, if the applicant files the Japanese national phase application within the last two (2) months of the above mentioned 30 months, the applicant can have two (2) more months from the filing date of the Japanese national phase application.

Based on the recent PCT revision, Japanese Patent Law was revised so as to extend the deadline of domestic documents to enter PCT applications into Japan. According to the revision, we can file a national phase application before the JPO by thirty (30) months from a claimed priority date for a PCT international application, irrespective of whether or not the International Preliminary Examination has been demanded.
If the applicant files the Japanese national phase application within the last two (2) months of the 30 months from the priority date, the applicant can have two (2) more months from the filing date of the Japanese national phase application in order to submit a Japanese translation of Specification, Claims, Drawings, and Abstract.
The revised patent law will not be applied to national phase application of a PCT international application in which the term of twenty (20) months from the priority date expires before September 1st, 2002 but the International Preliminary Examination has not been demanded. In other words, the revised term 30 months is applied to a national phase application of the PCT international application of which claimed priority falls on or after December 31st, 2000.

2. Duty for disclosure of information on prior art documents

An applicant must disclose pertinent information of prior art that the applicant knows in the specification at the time of filing before the Japanese Patent Office.

It is an object of this duty to realize a quick and accurate examination of the patent application.

(1) Requirement:
If the applicant is aware of Inventions publicly known through documents (inventions which were described in a distributed publication etc.) relating to his/her invention at the time of filing of patent application, the applicant must disclose the name of the publication in the specification.
There is no necessity of submitting the original or duplicate copy of the publication.
Where there are a lot of inventions publicly known through documents which are related to the invention, it is desirable to indicate information about an appropriate number of inventions publicly known through documents which are more relevant to the invention.
If there is no information on prior art document to be indicated at the time of filing a patent application, it is desirable to indicate to that effect in the detailed description of the invention, stating the reason.
Once the applicant discloses the necessary information with respect to a bibliographic data on technical information obtained from the publication (ex. name of a patent gazette) in the specification at the time of filing the application, the applicant is NOT required to disclose further publications even if the applicant knows the publications after filing the application.
This revision is applicable to a Japanese application which will be filed on or after September 1st, 2002 and a Japanese national phase application of which PCT international application will be filed on or after September 1st, 2002.

(2) Treatment of patent applications which fail to satisfy the requirement for disclosure of information on prior art documents:
If the examiner judges that the patent application does not satisfy the above requirement, the examiner notifies the applicant to that effect and gives the applicant an opportunity to submit a written argument (Section 48 septies).
Where the notice under Section 48 septies made, and the patent application still fails to satisfy the above mentioned requirement despite the submission of the written amendment or argument, the examiner gives a notice of reasons for refusal for not satisfying the requirement for disclosure of information on prior art documents.
In response to the notice under Section 48 septies or the notice of reasons for refusal, the applicant may add information on prior art documents through amendment or submit a written argument that he/she has no knowledge of relevant inventions publicly known through documents.
In a case where the written amendment or argument does not change the examiner’s conviction that the requirement for disclosure of information on prior art documents is not satisfied, the examiner makes a decision of refusal for such reason.
However, after a patent is granted, having a specification that does not disclose the information sufficiently is not grounds for either invalidity of or opposition to the patent right.
If the examiner judges that the patent application does not satisfy the above requirement and finds out other reasons for rejecting the application, the examiner may issue an official action for noticing the reasons of refusal without issuing the notice under section 48 septies.

3.Protection for program-related inventions

The revised Patent Law defined that a computer program itself can be patented, and transmission of patented programs over the Internet infringes the patent right.

The 2000 revision of the Patent Examination Guidelines stated that “computer programs” can be described in claims as inventions of products irrespective of whether or not they are recorded on recording media. In order to more clearly ensure the computer program protection, the Patent Law was revised to include “computer programs” in patentable inventions.
In sending computer programs or providing Application Service Provider (ASP) services via networks, the original copies of programs remain at the sender or the service provider even after the programs or services have been sent or provided. It was therefore not clear whether such processing or services can be covered by such terms as “transfer (handover)” or “lend” and therefore whether such acts can be covered by a patent right in the current Patent Law.
To ensure adequate protection for program-related inventions, the provision in Section 2(3) of the Patent Law that defines “working of an invention” is revised in such a way that statutory subject matter is clearly defined.
A patent is an exclusive right to commercially “work ” the patented invention (Section 68 of the Patent Law). Section 2(3) of the Patent Law defines what constitutes “working”, making a clear distinction between “inventions of products” and “inventions of methods”. Section 2(3) of the Patent Law is revised in such a way that it expressly states that “a computer program” is included in “inventions of products”, without introducing a third category.
The Section is further revised so that “offering via telecommunication line” is included in “working” of an invention and “a program” is defined as “instructions for a computer, combined so as to bring a result.”
As a result, transmission of patented programs over a network falls under the category of infringement of the patent right. As a result, transmission of patented programs over a network falls under the category of infringement of the patent right.
This revision is applicable to a Japanese application which will be filed on or after September 1st, 2002 in Japan, and a Japanese national phase application based on a PCT international application which will be filed on or after September 1st, 2002.

4. Broadening of concept of use of trademarks/servicemarks

Displaying a registered trademark on a consumer’s PC screen infringes the trademark right.

Goods referred to in the Trademark Law have basically been regarded as tangible articles. However, with the rapid expansion of e-commerce in line with the spread of the Internet, intangible information assets such as computer programs that have been distributed as tangible goods including CD-ROMs, books, etc. have come to be traded through the Internet. Theory and judicial precedent have shown construction of the concept of goods laying stress on the distributable nature of goods. Taking into account these circumstances, under the Trademark Law of Japan, it is considered reasonable to construe that intangible information assets including computer programs, are included within the concept of goods without introducing a new definition of “goods” in the Trademark Law.
The Trademark Law is revised to broaden the scope of the provision of Section 2(3) of the Trademark Law defining the use of trademarks for goods in such a way that “offering goods accompanied by a trademark via telecommunication line” is included in the use of a trademark.
Servicemarks may be displayed on the screen of the user’s personal computer when offering network-bases services. When the servicemarks displayed on the screen are providing services through a telecommunication network, those servicemarks can perform the same functions (such as source indicating function, quality guarantee function, and advertising function) as the use of trademarks given to conventional tangible articles.
Section 2(3) of the Trademark Law is revised so that “act of providing services through the computer screen while displaying a mark on the screen” is included in the use of a servicemark.
Accordingly the act of selling goods and providing services with displaying a trademark/servicemark on a screen via a network falls under the category of infringement of the trademark/servicemark right.

Effective as of January 1st, 2003

1. Expansion of indirect (contributory) infringement

It indirectly infringes a patent right to sell a component part necessary for solving “the problem to be solved by the patented invention” with being aware that the sold component part is used for an infringing products.

Infringement of a patent right primarily occurs only when the whole claim of the patent is commercially worked in any one of the modes set forth in Section 2(3) of the Patent Law (“direct infringement”). However, Section 101 of the Patent Law does, for the purpose of securing effectiveness of enforcement of patent rights, prescribe that certain kinds of acts shall be especially construed as infringement of patent rights, regarding such acts as preparatory or assisting acts of infringing patent rights (so-called “indirect infringement”).
For example, any act of selling all parts necessary for assembling a patent-infringing product as a set would not constitute direct infringement of the patent right, because such an act is not an act of manufacturing, transferring, etc. the patent-infringing product itself. However, if these parts have no other use than manufacturing or assembling such a patent-infringing product, they are extremely likely to constitute infringement of the patent right. Thus in this provision such acts as “manufacturing” and “transferring” any part to be used exclusively for manufacturing (objective criterion) the thing covered by the patented invention are prohibited as preparatory or assisting acts of direct infringement of the patent right.
However, with respect to any neutral article having other uses, even if the supplier is, in selling such an article, aware of a related act of infringing any patent by the receiving party, such selling did not constitute indirect infringement.
It has become necessary to better protect these inventions to cope with the actual development and distribution of, especially, software products.
New acts of indirect infringement is added to Section 101 of the Patent Law, which have an objective criterion “necessary for solving the problem to be solved by the patented invention” instead of “used exclusively for” and have a subjective criterion “being aware of an act of infringing”, in order to broaden the scope of the indirect infringements.

2. Payment in two installments for Madrid Protocol trademark registration in Japan

The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (the “Protocol”) became effective in Japan on March 14, 2000. As a result, trademark owners in any of the Contracting States can secure protection in Japan through the international registration by the International Bureau of the World Intellectual Property Organization.
According to the old Japanese Trademark Law, any person desiring the registration of the establishment of trademark rights based on the international registration shall pay, in advance of the international registration, to the International Bureau an individual fee defined by the Article 8(7)(a) of the Protocol in the sum amounting to 4,800Yen per case plus 81,000Yen for each class of the classification of goods and services.
However, according to the amended Trademark Law, a portion of the individual fee in the sum amounting 4,800Yen per case plus 15,000Yen for each class shall be paid to the International Bureau in advance of the international registration. A remaining portion of the individual fee of 66,000Yen for each class shall be paid to the International Bureau within three months from the JPO’s allowance.

Effective by October, 2003 (not decided yet)

1. Separation of "Patent Claim(s)" from the "Specification"

Separate documents for “Patent Claim(s)” and “Specification” will be required.

At present, “Patent Claim(s)” must be stated in “Specification”.
In order to adjust for a future PCT electronic application format, separate documents for “Patent Claim(s)” and “Specification” will be required.
The Japanese Patent Office plans to start the accepting of the electronic filing of the PCT applications in January 2004, the same time as the start of electronic filing at WIPO.