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Japan Patent OfficeCabinet Decision on the Bill for the Act of the Partial Revision of the Patent Act, etc.-Aiming to realize an IP system with the world’s fastest and best qualified procedures-

On March 11, 2014, the Cabinet decided to approve the Bill for the Act for the Partial Revision of the Patent Act, etc. In response, the bill will be submitted to the Diet during the 186th ordinary session.

The bill aims to establish a more user friendly intellectual property (IP) system for applicants, including SMEs and small enterprises, which bolster regional economies and employment, while being harmonized with other patent systems overseas.

In addition, along with the bill, the Japan Patent Office (JPO) will endeavor to set new numerical goals concerning patent examination, including an effort for shortening by half the examination period required for granting patent rights, as well as to introduce fresh framework under which experts outside the JPO review the quality management process of patent examination, so as to realize “the world’s fastest and highest quality” IP system.

I. Outline of the bill

1. Purpose of the revision

In June 2013, the Cabinet decided to approve the Japan Revitalization Strategy and the Basic Policy Concerning Intellectual Property Policy. Based on this approval, the Government of Japan will aim to become the most advanced nation in the area of intellectual property in the next decade. To achieve this goal, the Government will take measures for quickly developing systematic and human resource bases that contribute to further IP creation, protection and utilization.

2. Outline of the bill

1) Revision of the Patent Act

[i] Improving relief measures
In line with the legal systems overseas, the Patent Act is to be revised to take relief measures so that applicants are entitled to extend certain periods required for filing, examination, and other procedures when they have compelling reasons, e.g., following disasters, etc. These measures will also be applied to the same cases covered by the Utility Model Act, Design Act, Trademark Act, and Act on International Applications under the Patent Cooperation Treaty.
[ii] Creating a new system for submitting an opposition to a granted patent
The Act is to be revised to create a new system for submitting an opposition to a granted patent, so as to realize the stability of patent rights earlier.

2) Revision of the Design Act

Japan is now considering acceding to Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs. Based on the Geneva Act, Japan’s Design Act is to be revised to improve the provisions for simultaneously filing a design application with multiple offices overseas in one procedure, so as to contribute to reducing the cost imposed on applicants.

3) Revision of the Trademark Act

[i] Expanding the scope of protection
The Act is to be revised so as to additionally cover certain trademarks in Japan, e.g., colors and sounds, which have already been broadly protected overseas.
[ii] Expanding the scope of eligible entities concerning the regional collective trademarks
The Act is also to be revised in order to add associations of commerce and industry, chambers of commerce and industry, and specified non-profit corporations as entities entitled to register regional collective trademarks,* from the viewpoint of further accelerating popularization and dissemination of regional brands.

*Note:
The regional collective trademarks system is Japan’s initiative under which requirements for registering trademarks are relaxed and applicants are able to register their trademarks consisting of a regional name combined with a product name in a common manner. Under the current Act, eligible entities are restricted to cooperative associations and other bodies.

4) Revision of the Patent Attorney Act

The Act is to be revised so as to clarify patent attorneys’ missions as IP experts and to stipulate consulting services in a process of developing ideas before filing applications, as one of the businesses that they are able to engage in.

5) Other revisions

The Act on International Applications under the Patent Cooperation Treaty (PCT) is to be revised to improve the provisions under which applicants are able to pay fees for international applications with the JPO in the same way as domestic fees, when they file such international applications with the JPO under the PCT systems.

II. Setting new goals for patent examination

The previous goal concerning patent examination procedures was to shorten the period from the time a request for examination is made, up to when the first notice of examination results (first action (FA)) is sent to 11 months or less (FA11) by the end of FY2013, which is expected to be met as scheduled.

Based on this expectation, METI Minister Motegi stated at a press conference on December 13, 2013, that the JPO should enhance its efforts for patent examination procedures, including setting quantitative goals, so as to make the procedures as a whole smoother and more efficient as well as further enhancing the quality of the procedures. In response to the minister’s direction, the JPO studied possible approaches and decided to set the following new goals that should be achieved for such procedures:

Within the next decade (by FY2023), the examination period required for granting patent rights should be 14 months or less, and the period from the time a request for examination is made, up to when the first notice of examination results is sent should be 10 months or less.

Notes:

  1. If the “examination period required for granting patent rights” is successfully shortened from the current 29.6 months (the annual average based on the results in 2012) to 14 months or less by developing a required examination system, the period will be shortened by half, marking the world’s fastest level.
  2. The said examination period excludes such cases where the JPO requests an applicant to respond to the second notification of reasons for refusal and other actions by submitting an amendment and other documents within a period stipulated under the law.

Aiming to further improve the quality of examination, the JPO will create a new committee this spring consisting of external experts and make them review the current situations and systems underway concerning quality management of the examination procedures.

As a result of the user survey in FY2013, it was found that about half of the respondents who are applicants said that they are “satisfied” or “relatively satisfied” with the examination of their patent applications, while some pointed out that they are “not satisfied” or “relatively not satisfied” with the results of examiners’ prior art searches of international patent documents or with the examiners’ determination on the novelty of their filed arts, a requirement for patentability of the invention.

The JPO sincerely accepts these opinions and will endeavor to further improve the quality of patent examination under the new framework for receiving reviews from such experts.

Release Date

March 11, 2014

Division in Charge

I. Information on the bill:

  • Legislation Planning Office, General Affairs Division, General Affairs Department, JPO

II. Information on the new goals for patent examination:

  • General Affairs Division, General Affairs Department, JPO
  • Administrative Affairs Division, First Patent Examination Department, JPO
Ministry of Economy, Trade and Industry
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