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.
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
to circumstances for which that party is not responsible, may request an extension under article 108(4) of the Japan Patent Act.
• Post-grant review: Opposition: Under the new review system, any party may file an opposition to the grant of a patent by requesting, within six months of the issue of the patent publication, an appeal against a granted patent. If, in response to such a request, the patent owner in turn requests a correction of the patent, the opposition party may submit an opinion in response (article 113).
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: • A new relief system: A party that has failed to follow the required JPO procedures, due
• Invalidation: the patent invalidation trial system has been changed so that only a party of interest may file a request to invalidate a patent aſter six months following its issuance (article 123[2]).
Tere have also been changes to Japan’s design laws. • An international application that has been registered and published pursuant to the Geneva Act of the Hague Agreement Concerning the International Registration of
Industrial Designs—an agreement that
Japan is not a contracting party to—seeking protection of a design by the JPO, is deemed to be a design application that was filed with the JPO on the date of
the international
registration, as covered in article 60-6(1) of the Japan Designs Act.
• An international application seeking protection for multiple designs shall be regarded as multiple applications, each of which is filed for one of the multiple designs (article 60-6[2]).
• Article 14, which allows an applicant to prevent a design secret from being published, is waived for an international application because an international application must be published (article 60-12).
100 World Intellectual Property Review Annual 2015
Trademarks 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. Te 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. 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.
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