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. W S Design Law has been expanded to include 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 Operation screens of video recording / play back devices Digital camera screens operation

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 ＜Example of partial designs (before the amended law)＞ Must be filed on the same date Headlight (Partial design of the whole automobile) Automobile (the whole design) ＜After the amended law＞ Issue date of Design Gazette (Application) (Application) Automobile (filing date) Later Headlight (may be filed at a later date)

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 Extended from within 14 days to within 30 days of the filing date. (effective September 1, 2006)

10. Current Law After amendment Trademarks used in connection with goods Trademarks used in connection with services ○Affixing to goods or packages of goods ○Affixing to articles to be used by a person who receives the services Thus, trademarks can be protected while a service is occurring. Trademark affixed to goods itself Trademark affixed to packages of goods       A badge Trademark Law Amendment ○Trademarks used by retail traders or wholesalers 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. Completion of the examination Within 30 days (added by this amendment) Filing original app. Requesting examination for Invention A ＜Patent application ＞ Requesting examination for Invention B as another application Invention A: A highly sensitive antenna for a cell phone Divisional Invention B: A folding mechanism of a cellular phone Invention B: A folding mechanisms of a cellular phone Example of the newdivisional 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 A Examination of Invention B The subject of examination is changed to Invention B. Invention A is the subject of examination. ＜Patent application after amendment＞ ＜Patent application＞ Invention B: a folding mechanism of a cellular phone 発明Ｂ:携帯電話の折りたたみ機構 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 Court’s 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!