RECENT IP DEVELOPMENTS IN JAPAN

1
RECENT IP DEVELOPMENTS IN JAPAN
APLF - DePaul University College of Law
2006 Symposium on Intellectual Property Law

• Yoshi Kishimoto, Esq.
• SUGHRUE MION, PLLC

2
Changes in IP Laws

• Design Law Amendment
• Trademark Law Amendment
• Patent Law Amendment
• (effective on April 1, 2007)

3
Goals of the Amendments

• To strengthen and harmonize protection of
  Industrial Property Rights (IPRs), including
  design, trademarks, and patents
  
• Stronger IPR protection and greater IPR
  acquisition improves the global competitiveness
  of Japanese industry.
  
• To strengthen penalties against counterfeit
  goods
  
• Stronger penalties are needed to discourage
  counterfeiting (including distribution, export
  and import of counterfeit goods)
  

4
Design Law Amendment
The design term has been extended
from 15 years to 20 years.

• Extension of the design term

?Examples of products that could benefit from
this extension
Motorcycle
Beverage container
Source JPO
5
Design Law has been expanded to in
clude designs of operating screens (such as those
in household appliances), including (a) screens
beyond the initial screen, and (b) screens
displayed on a separate display unit.

• New Protection of Screen Designs

?Examples of screens eligible for protection
under the new Design Law
Digital camera screens operation
Operation screens of video recording / play back
devices
6

• Defining Similarity of designs

• Similarity is judged from the viewpoint of
  consumers and large-scale purchasers of the
  relevant goods.
  

7
The due date for filing an application for
design variations (related designs) and for the
designs of components and part of an article
(partial designs) has been extended from the
filing date of a principal design or a design for
a whole article, to the issue date of the Design
Gazette.

• Extended filing period for related and partial
  designs

law)
Must be filed on the same date
Headlight (Partial design of the whole automobi
le)
Automobile (the whole design)

Issue date of Design Gazette (Application)
(Application)
Automobile (filing date)
Headlight (may be filed at a later date)
Later
8

• Extended period for request of protection of
  secret designs

• The secret design registration system may be
  used for registered designs not made public for
  up to three years. The request period has been
  extended from the filing date only to include the
  date of registration fee payment.

9

• Extended time limit for filing certificate
• to avoid loss of design novelty

(effective September 1, 2006)

• Extended from within 14 days to within 30 days
  of the filing date.
  

10
Trademark Law Amendment
? Trademarks used by retail traders or who
lesalers are protected as service marks for
business convenience and international
harmonization. ? Transitional measures
For the purpose of the new law, all applications
filed within 3 months of the enactment date shall
have the filing date as the enactment date. This
is in the interest of fairness to those
applicants with more limited resources.
Applicants who have actually used the
trademark in their business are given priority.

• Enhancing protection of distribution-level
  trademarks

11

• Patent Law Amendment

• Before the Amendment
• Can file a divisional application only at a time
  of filing an amendment
  
• Not acceptable after completion of examination
• After the Amendment
• Can file a divisional application within 30 days
  after issuance of a decision of rejection
  
• Can file a divisional application after issuance
  of a notice of allowance

12
Example of the new divisional practice
13
Revisions to Amendment Practice
Applicants can amend their claims to clarify
technical scope, etc. After the first office
action (initial notification of reasons for
refusal) is issued, claims cannot be amended so
as to change the subject matter of the claimed
invention to a different invention having a
different special technical feature (i.e., unity
of invention must be maintained).
Initial notification of reasons for refusal
Examination of Invention B
Examination of Invention A
The subject of examination is changed to
Invention B.
Invention A is the subject of examination.


??B????????????
Invention B a folding mechanism of a cellular p
hone
Amendment
Invention A a highly sensitive antenna for
a cell phone
Invention B a folding mechanism of a cellular
phone
?If invention B has unity with invention A
otherwise impermissible.
14

• The period for filing a Japanese translation is
  extended to 14 months from the priority date.
  
• (old rule Within 2 months from the filing date
  of the original language application).
  

15
Increasing the countermeasures against
counterfeits goods(effective on January 1, 2007)

• The act of exportation of infringing goods is
  regarded as an infringing act. (4 IP-related
  Laws)
  
• Possession of infringing goods for the purpose of
  transferring or exporting them is deemed as an
  infringing act.
  
• (Design Law, Patent Law and Utility Model
  Law)
  
• Criminal penalty is increased for example, the
  penalty against infringing acts for a patent
  right, a design right, a trademark right and
  trade secret are increased up to a maximum
  10-year imprisonment and a maximum JPYen 10
  million fine (US 83 thousand).

16
Recent Court Decisions

• Fujitsu v. Texas Instruments
• Canon Ink Cartridge Case

17
Fujitsu v. Texas Instruments

• Before
• The JPO had exclusive jurisdiction over patent
  invalidation appeals.
  
• After
• Courts may decide the validity issue only where
  the reason for invalidity is clear.
  
• Courts could decline to enforce the patent,
  because such enforcement would be a patent misuse.

18
Article 104-3

• In April, 2005, the Patent Law was amended. The
  amended Patent Law, Article 104-3, eliminated the
  requirement of the clear reason for
  invalidity.
• The courts are now empowered to use the same
  criteria as the Patent Office to judge on the
  validity of patents.
  
• The courts can decide to decline enforcement
  of a patent where there are grounds for
  invalidity without having to wait for a Patent
  Office decision.

19
The Canon Ink Cartridge Case(Repair v.
Reconstruction)

• The IP High Court reversed the Tokyo District
  Courts decision.
  
• The IP High Court ruled that an ink cartridge
  importer cannot sell recycled ink cartridges for
  ink jet printers.
  
• Cleaning empty ink cartridges, thereby restoring
  the function of the interface (a component that
  constitutes an essential part of the patented
  inventions) and then refilling them with ink
  constitutes an infringement.

20
Invalidation Appeals

• The JPO abolished a post-grant opposition system
  (January 1, 2004) and merged it into the
  invalidation appeal procedure.
  
• Both the patent owner and the third party that
  requested the invalidation are allowed to
  participate at every stage of the proceedings
  (inter partes).

21
Patent Prosecution Highway

• Cooperative project between the JPO and the
  USPTO
  
• Started on July 3, 2006
• Facilitate examinations at both PTOs by
  accelerating examination of patent application
  whose claims are determined to be
  allowable/patentable in the OFF (Office of First
  Filing) to have the corresponding applications
  filed in the OSF (Office of Second Filing)
  advanced out of turn for examination while at the
  same time OSF can exploit the search and
  examination results of the OFF.

22
Thank you for your time!