Japan jurisdiction report: Policies for better service

09-04-2018

Ryo Maruyama

Japan jurisdiction report: Policies for better service

phototechno / iStockphoto.com

Since Naoko Munakata assumed the position as commissioner of the Japan Patent Office (JPO), on July 5, 2017, the JPO’s IP policies have been smoothly and dramatically improved, driven by Munakata’s intelligence and the practical knowledge that she obtained while working for Prime Minister Shinzō Abe.

At the beginning of 2018, Abe revealed his “Japan Productivity Revolution” policy, which included actively promoting artificial intelligence and other new technologies, and requiring the JPO to provide better services to applicants and to owners of IP rights. Despite this, Japan’s productivity is the one of the worst of the world’s developed counties.

Set forth below are policy initiatives that, although still under deliberation by government officials, when put into practice will be very important and will yield beneficial results for current and future applicants for, and owners of, IP rights being processed by the JPO.

Promoting the use of IP by SMEs

This is the area where Japan is placing the most effort. Small and medium-size enterprises (SMEs) account for only about 15% of the total number of patent applications submitted in Japan by Japanese applicants.

More utilisation of IP by small companies is desired, because the Japanese government believes that the “Production Revolution” will enhance the technical strength of small Japanese businesses.

The following measures help to achieve that objective:

Extend the grace period regarding lack of novelty from six months to one year

In Japan, to avoid a refusal based on lack of novelty, a patent application must be filed within six months after the subject invention has been discussed in a printed publication, academic presentation, or the like. What is necessary, therefore, is to adopt a major amendment of Japan’s patent law to extend that period to one year, as in the US and Korea.

Cut patent application fees in half for small businesses

Governmental officials in Japan are currently discussing whether a measure to reduce patent-related fees should be limited to Japanese businesses only, or whether fees should be reduced according to the size of businesses, similar to the US’s reduced fee system for small entities.

It is expected that such a reduction of fees will result in more applications by SMEs, both from Japanese enterprises and from foreign businesses that are interested in the Japanese market.

Expanding the IP dispute-resolution processes

This requires the strengthening of evidence-gathering processes. When a court orders the submission of documents, for example, for conducting IP litigation, the court must be able to decide not only which documents need to be submitted, but also to make at its discretion decisions regarding such submission issues, as well as the final case decision and rulings regarding what materials, such as trade secrets, are to be revealed or not in open court.

It is also necessary to further clarify and strengthen the court’s ability to determine when, how, and to what extent impartial third-party experts are to be involved in litigation cases, and how to make best use of their expertise.

IP disputes are intensifying internationally and it is expected that Japan’s IP dispute-resolution processes will benefit from such international experience.

Enhancing the convenience of JPO procedures for applicants and others

"JPO procedures are expected to be improved in other ways in order to be more convenient for those who utilise the JPO’s services."

JPO procedures are expected to be improved in other ways in order to be more convenient for those who utilise the JPO’s services, such as making it possible to pay patent-related fees by credit card; introducing a system for the online exchange of design priority certificates; and optimising the trademark application process.

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

Naoko Munakata, Kyosei International Patent Office, Ryo Maruyama, Japan Productivity Revolution, Japanese patents, WIPR jurisdiction report

WIPR