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Recent Discussions in the JPO to Change Japan’s Patent Law (July 9, 2014)

Here I will introduce recent discussions in the Japan Patent Office to change Japan’s Patent Law, based on the report entitled “Toward Early Acquisition of Strong and Stable Patent Rights and Improvement of User-Friendliness.” issued by the JPO’s Patent System Subcommittee on February 2013 (“Report”).

I. Background

In 2012, the Subcommittee, established under the Intellectual Property Policy Committee of the Industrial Structure Council, discussed possible changes of Japan’s Patent Law. In order to adjust Japan’s patent system to better meet current needs, the Subcommittee discussed (1) a new system to enable strong and stable patent rights to be granted more quickly, and (2) adjusting and simplifying procedures to improve user-friendliness.

II. Summary of the Subcommittee’s Report

A. Introduction of the Post-Grant Patent-Review System
The report states that it is appropriate
  1. To introduce a post-grant patent-review system; i.e., a system for reviewing a patent during a predetermined period after the patent has been granted.
  2. Especially in post-grant patent-review systems, while balancing the interests of all relevant parties: (a) to enable parties of interest to present their opinions by a simple procedure and without relying only on an examination by the JPO, so as to not lose the benefit of speedy examinations, (b) to enhance the participation of those parties in procedures, and (c) to reduce the burden of a patent owner and to enhance the owner’s opportunity to defend its rights.
  3. Upon the introduction of a post-grant patent-review system that enables parties to present their opinions, to limit the parties eligible to initiate a patent-invalidation trial to only parties that have an interest in the outcome, while considering the difference between the patent-invalidation trial system and the post-grant patent-review system.

B. Introduction of Relief Systems Complying with the Patent Law Treaty (PLT)

The PLT is an international treaty intended to harmonize, among signatory countries, formal procedures relating to patent applications, so as to reduce the burden on applicants, to mitigate requirements concerning procedural time periods, and to improve user-friendliness. Japan and other major IP countries have not signed the treaty, but these countries are separately considering the introduction of respective PLT-compliant systems for reviving an application that has been abandoned due to a failure to meet a procedural deadline.

However, because Japan’s current system regarding such relief is not adequate, the report states that it is necessary to introduce two forms of relief provided for by Article 12 of the PLT: (1) relief for failure to file a request for a substantive examination, and (2) relief for failure to file a request to claim priority. Regarding (1), the report states that it is appropriate to protect a bona fide third party that, believing that a patent application has been withdrawn, uses a patented invention, by not allowing the patent owner to demand compensation from the third party, and by in effect granting to the third party a free, nonexclusive license to use the patent.

III. Our Comments

The JPO intends to take measures to enhance the stability of IP rights, considering the present situation, where the creation and use of intellectual property is becoming more important for improving the competitive power of Japanese industries in an environment of fiercer competition and growth of global markets, including in developing countries.
For example, because the number of PCT applications annually received by the JPO doubled from 2003 through 2012, it is important that companies that intend to acquire and use patent rights globally can quickly acquire strong and stable patent rights in Japan.
However, after Japan’s opposition system was repealed in 2003, although the number of patent-invalidation trials increased temporarily, many patent rights remain unreviewable.
In addition, inasmuch as prior-art search sources such as Chinese and Korean gazettes are increasing rapidly, and the chance for the JPO to receive information from third parties has become slim due to the JPO’s recent shortening of the time for conducting examinations, a new system of providing information to the JPO is desired.
Considerations of international harmonization have increased the need for Japan to join with other major IP countries and organizations that are considering the introduction of PLT-compliant relief systems.

IV. Recent Developments

On April 25, 2014, the Japan’s Diet approved an amendment to the Patent Act that introduces a Post-Grant Patent Review system and the relief systems reported on above. The act will go into effect on a date to be specified by a cabinet order to be issued within one year of May 14, 2014, the date on which the amendment was promulgated.

Under the new Post-Grant Patent Review system, any party may object to the patentability of an issued patent for up to six months after the date on which the patent has been granted. After six months from that date, only a party of interest may object regarding a patent that has been granted.

Under the new relief system, a patent application that has been abandoned for failure to meet a procedural deadline may be revived if the failure resulted from unavoidable circumstances, such as a natural disaster.

Hiroshi HARI, Patent Attorney

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