○Clarify Patent Attorneys’ Missions and Expand the Scope of their Business Clarify patent attorneys’ missions as “IP experts” and stipulate consulting services in a process of developing ideas before filing applications as their business.
In light of the global momentum to harmonize international IP systems, the Government of Japan is systematically developing the foundations of its IP system through revising its laws such as its Patent Act, Design Act, Trademark Act, and Patent Attorney Act. Based on the revised Patent Act, relief measures will be enhanced; and a new system that will enable applicants to submit oppositions to granted patents will be created. Under the revised Design Act, applicants will be able to file single applications to register their designs in multiple countries. Under the revised Trademark Act, legal protection will be expanded so that non-traditional trademarks will be given protection; and more entities will become eligible to register the regional collective trademarks. And the revised Patent Attorney Act more precisely clarify the roles and responsibilities of patent attorneys and also increase the scope of the services they are able to provide.
Outline of the Partial Revision of the Patent Act, etc.
3.Outline of Measures
1.Background In June 2013, the Japanese Cabinet approved the “Japan Revitalization Strategy” and the “Basic Principles Concerning IP Policy,” aiming at becoming the most advanced IP-based nation in the next decade. In order to ensure the successful implementation of these policies, we need to promptly reform various systems as well as improve human resource capabilities, which will further promote the creation, protection and strategic use of IP.
A. Revision of the Patent Act
B. Revision of the Design Act
(1) Enhance Relief Measures In line with overseas legal systems, the Patent Act is to be revised to take relief measures so that applicants are entitled to extend certain periods required for filing, examination, and other procedures due to exceptional unavoidable circumstances such as disasters. These measures will also be applied to the same cases covered by the Utility Model Act, Design Act, Trademark Act, and Act on International Applications under the Patent Cooperation Treaty.
○Stipulate Provisions for Simultaneously Filing a Design Application in Multiple Countries Based on the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs to which Japan is now preparing for acceding, Japan’s Design Act is to be revised to stipulate provisions for simultaneously filing a design application in multiple countries, in order to reduce the cost imposed on applicants.
(1) Expand the Scope of Protection Add non-traditional trademarks such as “color” and “sound” that are already being protected in some foreign countries. (2) Expand the Scope of Eligible Entities to Register the Regional Collective Trademarks Add associations of commerce and industry, chambers of commerce and industry, and specified non-profit corporations as entities entitled to register the regional collective trademarks in order to popularize and develop regional brands.
C. Revision of the Trademark Act
Color Trademark Tombow MONO Plastic Eraser (Registered in Europe)
Sound trademark Hisamitsu Pharmaceutical (Registered in Europe)
Olive oils made in Shodo-shima Island in Kagawa Prefecture (Olive Oil Association of Shodo-shima)
【Examples of registered trademarks filed by Japanese companies in foreign countries】
【Examples of popularized regional brands】
(2) Create New Opposition System for Patent Rights In order to stabilize patent rights earlier, a new opposition system for granted patents is to be created.
○Simplify Payment Procedures for Fees [Revision of the Act on International Applications under the Patent Cooperation Treaty (PCT)] Enable applicants to pay fees for their international applications filed at the JPO in the same way as domestic fees, when filing such international applications at the JPO under the PCT systems.
Country A
Country B
Country A
Country B
Country CApplicant
【Before legal revisions】 【After legal revisions】
D. Revision of the Patent Attorney Act
Other Revisions
【Before legal revisions 】
【After legal revisions 】
- Any person may request - Oral proceedings or documentary proceedings
[May request at any time]
[May request at any time]
- Any person may file an opposition - Documentary proceedings only
Opposition system for granted patents
Trial system for invalidation
[within 6-month period]
Applicant Patent OfficeCountry C
2.Outline of the Act
- Only interested parties may request - Oral or documentary proceedings