March 1, 2019
The Japan Patent Office (JPO) hereby announces that the Cabinet has approved the Bill for the Act of Partial Revision of the Patent Act. On March 1, 2019, the bill will be submitted to the ongoing 198th ordinary session of the Diet.
1. Purpose of the bill
The digital revolution has removed barriers between industries and has been promoting open innovation in Japan. This trend expands opportunities for SMEs and venture businesses to make a leap forward taking advantage of their own outstanding technologies. At the same time, having superiority in customer experiences with products/services becomes increasingly important for businesses to improve their competitiveness.
In light of such changes in business environments, the JPO decided: to improve the litigation systems involving industrial property rights in order to fully protect the important technologies and other strong points of Japanese companies under the patent rights and other intellectual property rights in case of legal disputes; and to enhance the design system for protecting designs using digital technologies and encouraging right holders to establish new brands.
2. Outline of the bill
The key points of the bill are as follows:
(1) Partial revision of the Patent Act
- Creation of a new system under which neutral technological experts conduct on-site inspections of suspected infringers (inspection certificate)
The bill is to create a new system under which if a third party is suspected of infringing on a patent right of a patent-right holder, neutral technological experts conduct on-site inspections of plants and other sites of the suspected third party as an infringer, implement research necessary for proving the infringement, and file a report on the research results with a court.
- Review of the method of calculating compensations for damages
- Under the current provisions, a patent right holder is not allowed to request its infringer for compensation for damages as a certain portion of the total number of products in question sold by the infringer if the portion is estimated to exceed the production capacity of the right holder. However, the bill is to revise the provisions and to allow such rights holders to request its infringer for compensation for damages for all products sold by the infringer by deeming that the rights holder has licensed the patent right to the infringer.
- The bill is to explicitly stipulate that if a patent right holder intends to calculate the total amount of compensation for damages by estimating the amount of money equivalent to licensing fees, he/she is allowed to take into account the estimated amount of money that may be determined if he/she conducts negotiations with the infringer concerning such fees on the premise of the presence of the infringement.
Note: As for item [ii], the Utility Model Act, the Design Act and the Trademark Act are to be revised for the same purpose as explained above.
(2) Partial revision of the Design Act
- Expansion of the scope of designs subject to protection
The bill is to expand the scope of designs subject to protection under the Design Act and newly cover graphic images that are not recorded or shown on articles as well as interior and exterior designs of buildings.
- Review of the Related Design System*
*Note: Under this system, an applicant is allowed to register a design similar to the design for which the applicant has filed an application or a design similar to the design for which the applicant has made a registration (principal design).
- Concerning the period for which an applicant is permitted to file an application for a related design of the principle design, the bill is to extend the closing date of such application from the date before the publication date of the design gazette containing the principal design (about eight months) to the date before ten years from the filing date of the principle design.
- The bill is to allow an applicant to register a design similar only to the related design.
- Change of the duration of design rights
The bill is to change the duration of design rights from 20 years from the registration date to 25 years from the filing date.
- Streamlining of procedures for filing applications for design registration
- The bill is to allow an applicant to file an application for multiple designs on a batch basis.
- The bill is to abolish the classification table of articles in order to allow an applicant to describe the title of the article in a flexible manner.
- Expansion of the provisions for indirect infringement*
*Note: Under this system, if a third party conducts a preparatory or supporting action that has an extremely high probability of inducing infringement of a design right of a right holder, such action is deemed to be infringement.
The bill is to stipulate the provisions for subjective elements of a design, such as “being aware that the given article is used for working the given design” and thereby to allow authorities to crack down on acts of manufacturing or importing infringing products by separating such products into components in order to avoid such crackdowns.
(3) Other revisions
The bill is to take other measures, such as a measure to allow public interest associations and entities, e.g., municipalities and universities, to license the right of a famous trademark representing such associations.
3. Enforcement date of the bill
The revised Patent Act, etc. will come into effect as of the day specified by Cabinet Order within a period not exceeding 12 months from the date of promulgation, except some provisions.
Division in Charge
General Coordination Division, Policy Planning and Coordination Department, Japan Patent Office