Cabinet Decisions on the “Cabinet Order to Set the Effective Dates for Parts of the Act on the Partial Revision of the Patent Act and Other Acts” and the “Cabinet Order to Partially Revise the Order on Fees Related to the Patent Act and Other Acts”

1. Background

The 204th Ordinary Session of the Diet (2021) enacted the “Act on the Partial Revision of the Patent Act and Other Acts” (hereinafter referred to as the "Amending Act").
The Amending Act stipulates that the act by persons from overseas of bringing goods or other items into Japan via mail or other methods is defined as an act of "importing" under the Trademark Act and the Design Act, thereby clarifying that such an act is subject to regulations even if carried out by a business operator that is not entitled to do so (Article 1, item 4 of the Supplementary Provisions of the Amending Act).
In addition, the requirement for restoring patent rights that expired because the procedure timeframe was missed shall be relaxed from "justifiable grounds" to "unintended consequences," and a restoration fee shall be collected from persons who intend to file to restore the said rights. Additionally, the two-part payment system of individual fees applicable to international applications for trademark registrations based on the Madrid Protocol shall be abolished, and lump-sum payments will be made possible (Article 1, item 5 of the Supplementary Provisions of the Amending Act).

2. Outline of the Cabinet Orders

(1) Cabinet Order to Set the Effective Dates for Parts of the Act on the Partial Revision of the Patent Act and Other Acts

The effective dates for parts of the Amending Act have been set as follows:
The date, which “shall fall within 1 year and 6 months after the Amending Act has been promulgated, and be set by a Cabinet Order" (Article 1, item 4 of the Supplementary Provisions of the Amending Act), has been set for October 1, 2022.
The other date, which “shall fall within 2 years after the Amending Act has been promulgated, and be set by a Cabinet Order" (Article 1, item 5 of the Supplementary Provisions of the Amending Act), has been set for April 1, 2023.

(2) Cabinet Order to Partially Revise the Order on Fees Related to the Patent Act and Other Acts

A specific amount has been determined for the restoration fee to be collected from persons who intend to file to restore their patent rights that expired because they missed the stipulated procedural timeframe.

Reference links

• Act on the Partial Revision of the Patent Act and Other Acts (Promulgated on May 21, 2021)

Division in Charge

Legislative Affairs Office, General Coordination Division, Policy Planning and Coordination Department, Japan Patent Office