Brief overview of amendments to Japanese Patent Law

April 02, 2012

Outline of Amendments

The amended Japanese Patent Law and other IP laws have been effective since April 1, 2012.  Outline of the amendments is as follows:

Major amendments

1) Enhancement of protection of a license 
  A license agreement without registration may be duly asserted against a third party's patent right which is obtained  after the agreement.

2) Expand remedy for a usurped patent by a third party
  A person with the right to obtain a patent may request a transfer of a patent right which is obtained by a part of joint  inventors without a consent or which is usurped by a third party.

3) Speeding-up of invalidation trials and lawsuits
  No trials for correction may be requested after an institute a suit against a decision of an invalidation trial, while correction may be requested during the proceedings of the invalidation trial after an advance notice of the decision.  When a request for a trial for patent invalidation or correction is filed for each claim, the final decision shall be  binding on the claim.

4) Effect of a trial decision dismissing a request for invalidation
  A person but the parties or the interveners may request an invalidation trial on the basis of the same facts and evidence after a trial decision is made to dismiss the request for invalidation.

5) Relaxation of system of grace period for patent applications
  Right acquisition is not denied to a patent application after its invention has been made public due to the commencement of sales of a product. It is required that the applicant declare to claim a grace period at the time of  filing the patent application and a document of evidence to support eligibility within 30 days from the filing date.

Other amendments

・Expansion of reduction or release of annual fees for small entities, reduction of design registration fee
・Abrogation of article 4(1)13 (rejection of registration of a trademark application within 1 year after
 extinguishment of a trademark right which is the obstacle to the application) of Trademark Law

Practice guideline of grace period under Japanese patent law

The amended Japanese patent law provides comparatively generous applicability of grace period, which covers a commercial offer for sale.
However, it is better not to rely on the grace period because an application claiming priority has to be filed within six months from the disclosure in and out of Japan (even if the application has been applied to the grace period in a foreign county).  Also, there is possibility that an application be objected by a third party’s prior disclosure.

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