March 2, 2021
A Cabinet Decision was made on the Bill for the Act of Partial Revision of the Patent Act and Other Acts. The bill will be submitted to the ongoing 204th ordinary session of the Diet.
1. Purpose of the bill
Triggered by the expansion of the COVID-19 pandemic, ideal approaches to economic activities have dramatically changed as seen in digitalization, remote work and contact-less services. To address these changes, the Japan Patent Office (JPO) decided to revise the Patent Act and other Acts,* placing weight on the following pillars: (1) developing new procedures (e.g., digitalization of procedures) to address the expansion of the COVID-19 pandemic, (2) reviewing the protection of rights to address changes in corporate activities that accompany the advancement of digitalization and other technologies and (3) enhancing the foundation of the intellectual property systems, including reviews of procedures for litigation or fee structures.
2. Outline of the bill
The main measures under the bill are as follows. The corresponding Acts, which are to be revised this time, are shown in parentheses at the end of the respective measures.
(1) Developing new procedures (e.g., digitalization of procedures) to address the expansion of the COVID-19 pandemic
The revised act is to allow the parties subject to oral proceedings for a trial or appeal to complete required procedures using a video conference system without physically appearing in the trial court for the proceedings, provided that the chief administrative judge indicates his/her decision to allow such options (patent, utility, design and trademark).
The revised act is to allow users to pay patent and other fees in advance using bank transfers and other transfer methods (abolishment of advance payment by revenue stamps) or using credit card and other payments at specific service counters (industrial).
The revised act is to simplify the procedures for informing applicants of the decisions on registration of their designs or trademarks filed as international applications (e.g., allowing the JPO to electronically send such notifications via the International Bureau instead of sending them by postal mail which may stop in response to the expansion of the COVID-19 pandemic) (design and trademark).
The revised act is to stipulate a new rule for the exemption of patent surcharges during a predetermined period targeting right holders who, due to the COVID-19 pandemic, natural disasters, or other similar reasons, have failed to meet the due date for the payment of patent fees (patent, utility, design and trademark).
(2) Reviewing the protection of rights to address changes in corporate activities in line with the advancement of digitalization and other technologies
- As part of its efforts for addressing an increasing number of imported counterfeit products for private use, the revised act is to recognize the sending of counterfeit products to Japan via postal mail and other means by overseas businesses as infringement of trademark rights, at the time when those products enter the territory of Japan (design and trademark).
- As part of its efforts for addressing complicated forms of patent-right licensing along with advancement of digital technologies, the revised act is to remove the requirement for licensers to gain consent from parties (licensees) that have received their non-exclusive licenses when patent rights are corrected (patent, utility and design).
- The revised act is to relax the conditions on which right holders are allowed to restore their patent and other rights which have been forfeited due to the expiration of the timeframe for required procedures (patent, utility, design and trademark).
(3) Enhancing the foundation of the intellectual property systems
- The revised act is to introduce a new system which allows courts to broadly call for opinions from third parties in litigation involving patent right infringement and to allow patent attorneys to provide consultation services under the system (patent, utility and attorney).
- The revised act is to review the structures of patent and other fees in order to address the growing burden on examinations and digitalized procedures and to attempt to balance revenue and expenditure (patent, utility, design, trademark and international).
- Concerning the patent attorney system, the revised act is to add consultation and other services on intellectual property rights related to the fields of agriculture, forestry and fisheries (new plant varieties and geographical indications) to the list of the businesses that patent attorneys are permitted to conduct, and the revised act is also to take measures (i.e., changing the name of professional corporations incorporated by patent attorneys and introducing a system in which a patent attorney is permitted to establish a corporation in which a single patent attorney is the entire employee base (attorney)).
Division in Charge
Legislative Affairs Office, General Coordination Division, Policy Planning and Coordination Department, Japan Patent Office