Business Brief 2021: Japan

Design rights are now effective for 25 years from the date of application, and the conventional definition of design has changed significantly. Ryo Maruyama of Kyosei International Patent Office reports.

DESIGN

What is the completely new IP advance in design law in Japan?

Article 2 of Japan’s Design Law (Ishō-hō) defines design as “shapes, patterns or colours, or any combination thereof, of an article, which create an aesthetic impression through the eye”.

Newly amended in April 2020, design rights are now effective for 25 years from the date of application, and Japan expanded protection to images, buildings, and interiors, drastically changing the conventional definition of design.

Protected images include those used to operate devices, and indicated in performing device functions, such as in a graphical user interface or on a user’s mobile phone through a network. Protected objects include real estate building exteriors and interiors, and images indicated on a website (not only recorded in goods). This includes both exteriors and interior objects such as chairs, walls, and pillars if they “evoke a unified sense of beauty as a whole”.

PATENTS

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

Any person can apply to the Japan Patent Office (JPO) to obtain a patent. An international applicant can take action pursuant to the Paris Convention or initiate a Patent Cooperation Treaty (PCT) national-phase application or both in Japan.

The JPO requires a specification in Japanese, but one can first submit in English, followed later by a Japanese translation.

Is there anything unusual about the patent laws that companies should be aware of?

The Supreme Court issued holdings that if a process to manufacture a product is stated in the claims for an invention of a product, the requirement of clarity of the claims would be only if there are circumstances such that it was impossible or entirely impractical to directly specify the product by its structure or characteristics at the time that the application was filed.

The JPO published processing procedures under which the examiner will not refuse to approve an application for lack of clarity involving product-by-process claims when the examiner finds that the invention involves “impossible or impractical circumstances”.

The examiner will notify the applicant of the reason for refusal to provide the applicant with an opportunity to contend and provide evidence of the “impossible or impractical circumstances” or to amend the claims or both.

“There is no official fee to conduct a trademark search; the agent’s fee depends on the number of classes applied for, among other factors.” - Ryo Maruyama

The JPO does this to avoid granting a patent that might include grounds for invalidation, or a situation that could unfairly harm the interests of third parties. We recommend that applicants should amend the specification, before the JPO conducts a substantive examination:

1. Delete any claim concerned;
2. Amend any applicable claim into a claim concerning an invention for a process of producing a product;
3. Amend any applicable claim into a claim concerning an invention of a product that does not recite a manufacturing process, apart from arguing and verifying the existence of “impossible or impractical circumstances”, based on a written opinion;
4. Assert and prove the existence of “impossible or impractical circumstances” based on a written argument; and/or
5. Assert that any applicable claim is not “a claim concerning an invention of a product that includes the method of manufacturing the product”.

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

Fact-finding

First, we examine the features of the allegedly infringing product to determine whether the product infringes our patent. Normally, we analyse each claim of our patented invention into “claimed elements” and then determine whether the claimed elements of our patent include all the features of the allegedly infringing product.

We prepare a “claim chart” to conduct a speedy and accurate comparison between the claimed elements and the features of the allegedly infringing product.

Procedures after determining that a patent was infringed

Considering the actual situation, and to promote our client’s best interests, we consider options including (a) requesting the infringer to cease from manufacturing or selling the product or both; (b) licensing the infringer to practise the patent so that the patent owner can receive licence fees for the product that will be manufactured and sold in the future without requiring the infringer to stop manufacturing or selling the product or both; or (c) seeking damages from the infringer for its manufacture or sale of the product or both in the past. If it is evident that infringement was intentional, we might seek criminal charges against the infringer.

Also, if the allegedly infringing product is manufactured in another country and imported into Japan, the patent owner can submit to the Japan Customs Office requests to suspend customs clearance of the infringing goods and to conduct certification procedures to determine whether the goods are infringing.

Cease-and-desist letter and lawsuit

After the previous steps we will send the infringer a cease-and-desist letter informing them that the product infringes our client’s patent and specifying what our client wants from the infringer, as a basis for negotiating with the infringer as much as possible to reach a settlement regarding damages, a licence agreement, etc.

If the infringer does not respond sincerely, we recommend our client to file a lawsuit.

TRADEMARKS

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

You must submit applications to register trademarks to the JPO. Under the Madrid Protocol, international applicants specify Japan in the international application. If the JPO rejects the application, a Japanese patent attorney must reply to the office action.

Before submitting any kind of application, a trademark search is essential. This is to avoid applying either (i) when there is no chance of approval because the subject application is obviously identical or extremely similar to a trademark that was already applied for or registered; or (ii) when costs to attempt to succeed against opposition would be excessive.

What are the costs of registering and defending a trademark?

There is no official fee to conduct a trademark search; the agent’s fee depends on the number of classes applied for, among other factors. Basic costs to defend a trademark vary primarily according to the attorney time necessary, which depends on factors such as number of classes and number and type of legal issues raised.

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 the JPO to cancel a trademark 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.

COPYRIGHT

What are the key challenges for copyright owners in your jurisdiction?

Japan’s copyright registration system is weak regarding maintaining evidence. Therefore, when we seek copyright registration, we also submit the material to Japan’s Agency for Cultural Affairs. We also make an abstract for the copyright, or attach photos 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. 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.

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