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, 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 employee invention system has been amended as follows:
An invention by an employee belongs to the inventor’s employer when the right becomes effective and when any provision in any agreement, employment regulation or any other contract stipulates in advance that the right to obtain a patent for any invention made by the employee will be vested in the employer, aiming to eliminate the instability in the ownership of a patent right;
An employee has the right to receive reasonable remuneration or other economic benefits if the employee causes the employer to acquire a patent. The minister of economy, trade and industry will define guidelines for procedures to determine the details of reasonable remuneration; and
Since 2015 the Patent System Subcommittee under the Intellectual Property Committee of the Industrial Structure Council has deliberated over the draft guidelines for procedures to determine the details of reasonable remuneration or other economic benefits, and the Intellectual Property Committee approved them in February 2016. Once the revised act comes into force, the guidelines will be announced by the Ministry of Economy, Trade and Industry.
In addition, the Act for Partial Revision of the Patent Act and Other Acts (Act No. 55 of 2015), which includes provisions to implement the terms of the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks, came into force on April 1, 2016. For the Patent Act to comply with the PLT, when an applicant cannot submit a translation of the application in a foreign language within the designated time limit, the JPO commissioner notifies the applicant of the absence of submission, and then the translation shall be accepted only if it is submitted within the designated extension time.
Finally, the fee schedule for patents was amended on April 1, 2016, reducing annual and application fees by around 10%.
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.
"An employee has the right to receive reasonable remuneration or other economic benefits if the employee causes the employer to acquire a patent."
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?
For the Trademark Act to comply with the Singapore Treaty, even when an applicant cannot submit a proving document for receiving special treatment in filing an application within the designated time limit, the document shall be accepted only if it is submitted within the designated extension time.
Registration and renewal fees for trademarks have been reduced by around 25% and 20% respectively.
What are the key challenges for 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 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 owner 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 Cultural Affairs Agency 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 as an unknown rights owner (article 67); and (ii) how a person can use neighbouring rights of an unknown rights owner (article 103).
Also what constitutes ‘reasonable effort’ in searching for unknown rights owners 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: firstname.lastname@example.org
Ryo Maruyama, JPO, Kyosei International Patent Office, Patent Law Treaty, patent, trademark, copyright,