BUSINESS BRIEF: JAPAN
BUSINESS BRIEF: 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. Te 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..
What are the costs of obtaining and a defending patent?
Te typical basic costs for obtaining a patent are shown in Table 1.
Where can you find information on existing patents in your jurisdiction?
Such information can be found on the JPO’s website in both Japanese and English:
http://www.ipdl.inpit.go.jp/homepg.ipdl (Japanese)
http://www.ipdl.inpit.go.jp/homepg_e.ipdl (English)
Is there anything unusual about the patent law that companies should be aware of? What are the most common mistakes businesses make?
Aſter 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?
Te most important change(s) are as follows: • Te old system of registering non-exclusive licences was abolished (Article 27[1]-2, 3, and 4). Non-exclusive licences regarding pending or registered patents can be perfected against a third party without registering a non-exclusive licence (Article 34-5, 99).
• Te true applicant can obtain the rights to a misappropriated patent application (Article 74[1]).
• It is no longer possible to correct a patent aſter a trial to correct the patent (Article 126[2] and Article 181[2]).
• Official fees were changed, and examination fees were greatly reduced, by about 75 percent.
Trademarks
How do you register or secure trademark rights, and what protection does it 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. Te JPO’s trademark database is very useful in that regard.
What are the costs of registering and defending a trademark?
Te typical basic costs for obtaining a trademark are shown in Table 2.
Conducting a trademark search before submitting an application is highly recommended, to avoid applying when either (i) there is no chance
122 World Intellectual Property Review Annual 2013
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. Tere is no official fee for conducting a trademark search; the agent’s fee depends on the number of classes applied for, among other factors.
Te 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?
Trough 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. Te 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?
Aſter 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 trademarks law(s) in the last 12 months?
Te trademark classes of goods and services were changed from version 9 to version 10, eg, dietary supplements were changed from Classes 29 and 30, to Class 5, and TV games for home use were changed from Class 9 to Class 28.
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