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Amendments to Japanese Patent Law
(Effective from January 1 and April 1, 2004)
Amendments to Japanese Patent Law were announced on May 23, 2003, and guidelines relating to the amendments were published in late December of 2003. The aims of the amendments are 1) to achieve prompt and precise settlement of disputes relating to patents, 2) to promote strategic acquisition of patent rights by introduction of a new fee system, and 3) encouraging acquisition of foreign patents. Most of the amendments became effective on January 1, 2004. Among the amendments, a new official fee system will be introduced on April 1, 2004.
Overview
1. Integration of Dispute Resolution Systems with Patent Validity Determination
As of January 1, 2004, it is no longer possible to file an opposition against a patent even if the opposition period has not expired. The opposition and invalidation trial systems were integrated into a new invalidation trial system to reduce time for dispute resolution and burdens on the concerned parties.
2. Achievement of Prompt Resolution regarding Patent Validity
Procedures were changed to reduce the time for resolution regarding the validity of patents and to eliminate redundant procedures where an invalidation trial and a lawsuit occur simultaneously.
3. Statement of Opinion by the JPO in a Suit against Trial Decision
In order to achieve prompt and precise resolution, the Japanese Patent Office (JPO) shall state an opinion relating to the construal of provisions and the examination guidelines when appropriate.
4. Harmonization of "Unity of Invention" Requirements with Global Standards
There had been a difference in requirements for "unity of invention" between Japanese Patent Law and global standards. This could sometimes impede acquisition of foreign patents when foreign applications are filed based on Japanese patent applications.
In international applications filed on or after January 1, 2004, applicants are no longer able to designate States separately due to the PCT Reform. In other words, all States are automatically designated in an international application unless the applicant expressly requests withdrawal of the designation of certain States. To encourage acquisition of foreign patents, requirements pertaining to "unity of invention" were harmonized with global standards, namely PCT guidelines.
5. Information Filing System after Patent Grant
Before January 1, 2004, presentation by a third party of relevant information concerning prior art, etc., was allowed only prior to the grant of a patent from an application. In the new system, any third party may submit relevant information to the JPO on or after grant of a patent, as well as prior to patent grant.
6. Introduction of New Patent-related Fees
To encourage strategic acquisition of patents, the application and annual fees will be reduced and the fee for request of examination will be increased. This change will reduce the total cost for acquisition of a patent. Further, a new refund system will be introduced to reduce the applicant's cost burden. Our recommendation for fee payment is shown in the detailed information below.