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JPO Updates

JPO Updates

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JPO Updates

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  1. AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar JPO Updates JPAA International Activities CenterFujiko Shibata

  2. Contents • On-going revisions & their summaries • Schedule • Practical tips 2

  3. Ongoing revision • Patent Law revision • The return of post grant opposition • Design Law revision • High hurdle to become a member of Hague Agreement Concerning the International Registration of Industrial Designs • Trademark Law revision • Subject matter will be expanded • Patent Attorneys Act revision 3

  4. The return of post grant opposition <History of Opposition System in Japan> • Japanese patent Law has been revised in 1959 (Enforcement Law of the Patent Act (Act No. 122 of April 13, 1959) • Before 1958, Law of the Patent Act (1921) • Before 1959 • Invalidation trial of Patent Right (introduced in 1888) • Opposition system (pre-grant, introduced in 1935) 4

  5. The return of post grant opposition • Revised in 1994 • From Pre-grant review to Post-grant review, because of fast track granting and international harmonization. • Revised in 2003 • Post grant opposition has gone! • Will be revised in 2015? • Post grant opposition will return 5

  6. Statistics for Former Opposition system 6

  7. New Opposition system to be Introduced in Japan (1) • Reasons for New post grant opposition • Lacking novelty , Inventive step • ---(Articles 29(1), 29bis, Article 29(2)) • Requirements for specifications and claims ---(Articles 36(4), (6)) • Addition of New matter--- (Article 17bis(3)) • Not including claimed invention in an original foreign application---applied only non-Japanese application 7

  8. New PGR to be Introduced in Japan (2) • Eligible Person for filing an opposition • --- No change (Anybody ) • Opinion from an opponent---Change! • Submitting comments when the patent is corrected • non [ne] bis in idem---No change • Not applied– Same evidences can be used in invalidation trial • Term for filing an opposition---No change • 6 months from issue date of letters patent • Fee: 49,500 + 5,500/claim (JP Yen) 8

  9. New PGR to be Introduced in Japan (4) January 2014

  10. Practical Tips-1 • Post-grant review • Term for submitting request is short---6 M • Japanese translations of English evidences are necessary Please instruct as early as possible! • Official Fee is not expensive • Non [ne]bis in idem is not applied---two chances Patent holder must be careful January 2014

  11. Design Law Revision-1 • Public Comments window has been just closed on January 25, 2014(Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council) • Main Issues • Becoming a member of Hague Agreement • There are many hurdles • Protection of image design 11

  12. Design Law Revision-2 • Hurdles in the law to be cleared for the design application under Hague Agreement • One application includes multiple designs • Designs included the application is individually rejected • Postpone of publication timing---until 30 month • Exception of lack of novelty---the term for filing of certificate will be change (30 days to longer) • Related designs---filed by the international publication 12

  13. Design Law Revision-2 • Hurdles in the law to be cleared for the design application under Hague Agreement (continued) • Partial designs---a guide line is reviewing by WG • Design for a set of articles--- reviewing by WG • Secret design---not applied for the application under Hague Agreement • Self designation---applied • Fee payment, receiving an international application ---still considering 13

  14. Design Law Revision-3 • Protection of image design ---still considering • Pre-examination is assumed • Right is given to a function • Right is given to an article • Post-examination is assumed !! • Granted without examination??? 14

  15. Trademark Law revision-1 • Expansion of scope of marks as trademarks • A trademark being composed of moving images • File shows moving will be necessary US Reg. No. 3872001(Int. Reg. No. 1032093) 15

  16. Trademark Law revision-2 • Trademark by using hologram • Trademark by using plural colors Germany Reg. No. 304532819 Australia Reg. No. 749403 16

  17. Trademark Law revision-3 Trademark composed of figure and color(s) US Reg. No. 3776468 CTM Reg. No. 2319937 January 2014

  18. Marks composed of sound • Sound file will be necessary and scope of the right is found on the basis of a score(?) CTM Reg. No. 8622144 January 2014

  19. Practical Tips-2 • Trademark Revision • Time schedule is unknown---Forced into April of 2015? • Details of documents for filing are not clear • Please ask Japanese Benrishi before filing of Madrid protocol application January 2014

  20. Any Questions? Thank you for your kind attention Ayafune International Patents & Trademarks Fujiko Shibata dania@ayafune.com 20