Amendments to patent law, design law and trademark law

The amendment to the Trademark Law came into effect on August 1, 2014, and the amendments to the Patent Law and the Design Law will come into effect within a year of the announcement of the act, although the date for each has not yet been decided. The detailed changes to these laws are as follows.

Post-grant review

Under the new review system, any party may file an opposition to the grant of a patent by requesting, within six months of the issue of the patent publication, that the Japan Patent Office (JPO) appeal examiners review the granted patent. If, in response to such a request, the patent holder in turn requests a correction of the patent, the opposition party may in turn submit an opinion in response.

Along with the introduction of a post-grant review, the patent invalidation trial system has been changed so that only a party of interest may file a request to invalidate a patent after six months have passed since the patent publication was issued.

A new relief system

A party that has failed to follow the required JPO procedures, due to circumstances for which that party is not responsible, may request an extension of the period within which the procedures must be completed.

An applicant that for a justifiable reason has failed to file, within the period for claiming the priority, an application claiming priority of a prior application, may claim that priority if a priority claim is submitted within 14 days (two months for foreign residents) after the reason no longer exists and within six months after the end of the priority-claim period.

Amended design law

An international application that has been registered and published pursuant to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs—an agreement that Japan is not a contracting party to—seeking protection of a design by the JPO, is deemed to be a design application that was filed with the JPO on the date of the international registration.

"relief measures have been provided for an applicant that has failed, for a justifiable reason, to meet an OA response deadline in a JPO proceeding."

An international application seeking protection of multiple designs shall be regarded as multiple applications, each of which is filed for one of the multiple designs.

Design Law Article 14, which provides that an applicant may keep a design secret from being published, is waived for an international application because an international application must be published.

Amended trademark law

Under the amended Trademark Law, a mark that consists of a colour or colours or specific sound/s is eligible for protection as a trademark.

Commerce and industry associations, chambers of commerce and industry, and not-for-profit organisations have been added to the list of organisations entitled to obtain the registration of a regional collective trademark.

Recapitulation

The amendments to the Patent Law and Design Law will come into effect within a year of the date on which the adoption of the act was announced. As of August 13, 2014, the effective date has not been decided.

The amendments to the Trademark Law came into effect on August 1, 2014.

In response to mounting demand for relief measures to save priority claims or applications that have been deemed abandoned for failure to file a timely response to an office action (OA), relief measures have been provided for an applicant that has failed, for a justifiable reason, to meet an OA response deadline in a JPO proceeding.

Provisions to protect an image design for use as a design, eg, in an information device, have not been included in the amendments to the Design Law.

Hiroshi Hari is a patent attorney at the Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp