Business brief 2015: Japan

Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?

Applicants can apply to the Japan Patent Office (JPO) to obtain a patent. Foreign applicants can take action under the Paris Convention and/or initiate a Patent Cooperation Treaty (PCT) national-phase application in Japan. The JPO requires a Japanese specification, but it can be filed first in English, followed later by the Japanese translation. We recommend this when translation time is short.

Is there anything unusual about the patent law(s) that companies should be aware of? What are the most common mistakes businesses make?

After registration, some patent owners tend to fail to check that their claims have been registered appropriately. If a third party seeks to invalidate a patent, the specification can be corrected. However, it is less troublesome and less costly for owners to find and correct mistaken registrations without needing to defend the patent. Also, proprietors tend to fail to update changes to their names and addresses, which can result in extra costs later.

What is the best strategy if you suspect someone is infringing your patent?

First, of course, determine if infringement is actually occurring. If yes, send a warning letter and take action based on the reply, eg, voluntarily correct the patent if it seems weak. Initiate a lawsuit as a last resort.

Have there been any changes to the patent law(s) in the last 12 months?

The most important change(s) are as follows:

•  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 under article 108(4) of the Japan Patent Act.

• Post-grant review:

Opposition: 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, an appeal against a granted patent. If, in response to such a request, the patent owner in turn requests a correction of the patent, the opposition party may submit an opinion in response (article 113).

• Invalidation: 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 following its issuance (article 123[2]).

There have also been changes to Japan’s design laws.

•  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, as covered in article 60-6(1) of the Japan Designs Act.

•  An international application seeking protection for multiple designs shall be regarded as multiple applications, each of which is filed for one of the multiple designs (article 60-6[2]).

•  Article 14, which allows an applicant to prevent a design secret from being published, is waived for an international application because an international application must be published (article 60-12).

Trademarks
How do you register or secure trademark rights, and what protection do they grant?

Applications to register trademarks must be submitted to the JPO. Under the Madrid Protocol, foreign applicants specify Japan in the international application. If the application is then rejected by the JPO, a Japanese patent attorney must reply to the office action. Before submitting either a direct Japanese application or a Madrid Protocol international application, a trademark search is essential. The JPO’s trademark database is very useful in that regard.

What are the costs of registering and defending a trademark?

Conducting a trademark search before submitting an application is highly recommended, to avoid applying when either (i) there is no chance of approval because the subject application is obviously identical to, or so extremely similar to, a trademark that has already been applied for or registered; or (ii) when the costs of attempting to succeed against opposition would be excessive. There is no official fee for conducting a trademark search; the agent’s fee depends on the number of classes applied for, among other factors.

"If a trademark owner’s business is expanding, it might forget to file new applications to register the same trademark in new classes of goods or services."

The basic costs of defending a trademark vary primarily according to the attorney time necessary, which depends on factors such as the number of classes and the number and type of legal issues raised.

What is the best strategy for dealing with infringement?

Through searches, we try to confirm the infringement as much as possible, and to calculate the financial damage suffered by the trademark owner due to the infringement. The strategy in general corresponds to that regarding patents, including sending warning letters, with a lawsuit as a last resort.

What are the most common mistakes trademark owners make?

After registration, some trademark owners don’t use their trademarks or don’t use them correctly, eg, by not collecting evidence of use. Japan’s Trademark Law allows a trademark to be cancelled if it is not used for three years. Also, if a trademark owner’s business is expanding, it might forget to file new applications to register the same trademark in new classes of goods or services.

Have there been any changes to the trademark law(s) in the last 12 months?

As of 2015, “new” trademarks are protectable in Japan. A mark that consists of a colour, or colours or specific sounds, 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 (article 7 bis of the Paris Convention).

Copyright
What are the key challenges to copyright owners in your jurisdiction?

Japan’s copyright registration system is weak with respect to maintaining evidence. Therefore, although under the Berne Convention it is not necessary to file and register a copyright, when copyright registration is sought we also submit the material to Japan’s Cultural Affairs Agency. We also make an abstract for the copyright, and/or attach photos and/or digital software-code data as appropriate.

How should people ensure they are protected against copyright infringement?

If a copyright holder has enough evidence to confirm the date of the work’s creation, infringement litigation is much easier to undertake. We strongly urge the copyright owner to keep its copyrighted material, proof of creation, etc, with a third party as evidence. Registration of copyright at Japan’s Agency for Cultural Affairs is useful.

What is the best way to deal with infringement, and what are the costs associated with it?

First, determine if infringement is actually occurring. If yes, send a warning letter and take action based on the reply. The costs typically are:

•  Infringement confirmation: JPY50,000 ($416) to 100,000

•  Warning letters (up to three times): JPY60,000 to 100,000

•   Lawsuit: JPY500,000 to 1,000,000

Have there been any changes to the copyright law(s) in the last 12 months?

The Japan Copyright Act now specifies (i) that a person can use neighbouring rights the same as an unknown rights holder (article 67); and (ii) how a person can use neighbouring rights of an unknown rights holder (article 103).

Also what constitutes ‘reasonable effort’ in searching for unknown rights holders has been clarified (article 67).

Ryo Maruyama is a Japanese patent attorney and vice-president and chief patent attorney of Kyosei International Patent Office. He can be contacted at: info@kyosei.or.jp