amendmentsjapaneseiplaws
1 October 2011PatentsYoshitaka Sonoda

Amendments to Japanese IP laws

The amendments will be enacted by June 8, 2012. The amendments include several, but not all of those proposed by the Industrial Structure Deliberative Council to the Ministry of Economy, Trade and Industry—more than 10 provisions are to be amended. Therefore, this year’s amendments should be considered the first of a series that will take place over the next few years.

Nullity actions and trials for correction

Important amendments will be introduced to the provisions relating to nullity actions and trials for correction to simplify and expedite the procedures.

Prohibition of trial for correction during a nullity action

In a nullity action under the present patent law, the patentee is not informed about an upcoming decision by the Board of Appeals until it is officially issued. If the decision by the Board of Appeals is unfavourable to the patentee, it can file an appeal to the IP High Court, where the patentee is provided with an opportunity to submit a request for amendments.

The IP High Court may remand the case to the Japan Patent Office (JPO) for a re-examination of the patent as amended. If the JPO decides on the amended patent and the decision is again unfavourable to the patentee, the patentee may file an appeal to the IP High Court and the proceedings will be repeated in the IP High Court and before the JPO.

This procedure is simplified under the amended patent law so that when the Board of Appeals comes to a conclusion that a patent should be invalidated, it issues a provisionary notice to the patentee to provide it with an opportunity to amend the patent in response. The patentee can submit a request for amendments, and the Board of Appeals will continue the validity examination based on the amended patent.

If the conclusion is again unfavourable to the patentee, the board will issue another provisionary notice to provide the patentee with another opportunity to amend the patent, and this can be repeated. Although the repetition of the procedure will be time-consuming, it is simpler and faster than before, as the new procedure is performed only by the JPO, while the current procedure involves both the IP High Court and the JPO.

Limitation on findings in nullity actions with respect to third parties

Under the current patent law, once a decision on a nullity action is registered, nobody can file a nullity action against the same patent for the same reason, the effects of the decision as a precedent are not limited. This current system has the potential for misuse, as a frivolous nullity action can be filed so as to make evidence useless in forming the basis for future nullity actions by third parties.

The patent law will be amended so that, once the Board of Appeals decides on a nullity action and the decision is finalised, the conclusion will bind the parties involved but not any third parties. Therefore, third parties may file a nullity action against the same patent on the same evidence that has already been used in a preceding nullity action.

Limitation on re-opening of infringement lawsuits

Under the present patent law, if a patent is invalidated after the court finds infringement in an infringement lawsuit, the alleged infringer can request re-opening of the lawsuit for the reason that the invalidation of the patent is retroactive. Normally, the original infringement decision would be reversed by the re-opened lawsuit.

"THIRD PARTIES MAY FILE A NULLITY ACTION AGAINST THE SAME PATENT ON THE SAME EVIDENCE THAT HAS ALREADY BEEN USED IN A PRECEDING NULLITY ACTION."

In order to provide more stability on finalised decisions, the patent law is amended so that under the new patent law, once a decision is made on a patent infringement lawsuit and the decision is finalised, the parties cannot re-open the litigation even if the patent is subsequently invalidated by a nullity action or amended by a trial for correction. The same applies to decisions on compensation for unauthorised use of an invention after the publication of the application.

However, there are uncertainties regarding the effects of invalidation of a patent after an infringement is decided by the court, as follows:

Permanent injunction order: Will it be nullified by a later invalidation of the involved patent although the infringement lawsuit is not to be reopened?

Damage compensation: Will it remain valid against a later invalidation of the involved patent regardless of whether the payment has already be paid or not?

Patent term extension: What if there is a reason to invalidate a patent term extension? There is no provision relating to a challenge to the validity of an extension during a patent infringement lawsuit.

Criminal action: Should a preceding conviction be revoked by a later invalidation of the patent in question?

Relaxed conditions for exemption from loss of novelty

The disclosure of an invention to be exempted from loss of novelty will be broadened to include all the inventor’s disclosures. As a result, under the amended patent law, an invention will be deemed to have novelty even if the invention was publicly known, provided that the disclosure of the invention is attributable to the inventor or the applicant, or the public disclosure has been made against the intention of the inventor or the applicant, and a patent application is filed within six months of the apparent loss of novelty.

Enhanced protection of the rights of original inventors and co-inventors

Under the present patent law, if a patent is granted to a person who does not have the right to apply it, or a patent is granted to a person despite the fact that the invention was jointly made by two parties and therefore the right to apply for a patent belonged to the two parties, the true inventor or the neglected party can file a nullity action to invalidate the patent. In addition, under the amended patent law, the true inventor or the neglected party can demand compulsory transfer of the ownership of the patent.

Protection of the rights of licencees

Until now, registering a licence at the JPO was necessary for a licensee to argue for the licence against a subsequent acquirer of the patent or the exclusive licensee.

Under the amended patent law, even if a licence is not registered at the JPO, the licence right obtained by a first licensee will be protected against a patentee or an exclusive licensee who obtains the right subsequently.

The amendment is expected to provide better protection to licensees. However, in contrast, the subsequent acquirer of a patent or an exclusive licensee will need to be careful and be informed about a possible licensee who may not be registered at the JPO.

Abolishment of one-year non-registration period after cancellation of a trademark

In order to avoid confusion, a trademark application could not be registered within a year after the cancellation of an identical or similar registered trademark designating similar or identical goods or services.

However, under the new trademark law, this one-year period is abolished to expedite the protection of trademarks. Further amendments to the Japanese IP laws, especially applicant-friendly measures, are expected to be implemented in the near future, which should help promote IP practice and the economic revitalisation of Japan.

Dr Yoshitaka Sonoda is a partner and patent attorney at Sonoda & Kobayashi. He can be contacted at: ysonoda@patents.jp

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