Summary of Revisions of Japanese Intellectual Property Laws
(Effective April 1, 2007)

The Japanese Design Law, Patent Law, and Trademark Law have been revised as of April 1, 2007. The following is a summary of the revisions:

Design Law

1. Term of a design right

   Under the revised Design Law, the term of the right to a registered design has been extended from the previous period of 15 years to 20 years from registration. (Only effective for applications filed on or after April 1, 2007)

2. Protection of designs displayed on graphical user interface (GUI) screens of personal digital electronic devices.

   Enhancing protection beyond the designs displayed on initial screens of electrical products, non-initial screens and those displayed on separate devices may now be protected. Examples include the number selection screens of a cell phone and the user setting screens of a digital camera.

3. The revised Design Law stipulates that similarity of designs is to be determined based on the visual aesthetic of consumers and merchants.

4. Protection is afforded to partially identical designs.

   Under the pre-revised Design Law, the design in a later-filed application could not have been registered if the design was identical or similar to part of the design of an earlier-filed application. Under the revised Law, however, such an identical or similar design in a later application may be registered if the applicant of the later application files the later application before the publication date of the design of the earlier application.

5. Greater protection is afforded to related designs.

   Under the pre-revised Design Law, a related design could have been registered only if the application for the related design was filed on the same day as the application for the principal design. Under the revised Law, however, a related design may be registered if that application is filed before publication of the principal design.

6. Additional opportunity to request that designs are kept secret.

   Under the revised Design Law, a request for keeping a design secret can be made not only at the time of filng, as before, but also at the time of payment of the registration fee for the first year.

7. The provisions for granting exception to loss of novelty have been revised (effective as of September 1, 2006).

   The period for submitting documentary evidence to claim exception to loss of novelty has been extended from 14 days to 30 days from the date of application of the design.

Patent Law

1. Relaxation of time limitation for filing divisional applications

   Under the pre-revised Patent Law, a divisional application could be filed only during the period in which amendments could be made. Under the revised Patent Law, however, a divisional application may be filed additionally within a period of 30 days from the Decision to Allow a Patent or the Decision of Refusal (note that once a Decision to Allow a Patent is issued, a divisional application must be filed prior to the registration of the allowed patent). If the period for paying the patent fee or the period for demanding an appeal against the Decision of Refusal is extended, the period for filing a divisional application is accordingly extended. Once a demand for appeal is submitted, however, a divisional application can be filed only during the period in which amendments to the specification, etc., can be made, as under the pre-revised Patent Law.

2. Limitations on amendments to divisional applications

   To prevent misuse of divisional applications, if a reason for rejection has not been overcome in the parent application, the same restrictions on amendments to the parent application apply to the divisional application, as if a final Notification of Reasons for Refusal had been issued for the divisional application. In other words, if a reason for refusal that remains unresolved in the parent application is applicable to the divisional application (e.g., if the claims of the divisional application include substantially the same invention as that in the parent application, and the parent remains refused for lack of inventiveness), the first Notification of Reasons for Refusal issued for the divisional application will be the final Notification of Reasons for Refusal (i.e., only one Notification of Reasons for Refusal will be issued for the divisional application).

3. Prohibition of amendments for changing inventions

   After the first Notification of Reasons for Refusal is issued, the applicant is prohibited from changing the invention under examination to another invention having a different technical feature (i.e., an invention that fails to meet the unity of invention standard with respect to the pre-amendment invention).

   Any amendment that attempts to change the invention as filed in an application to a different invention will be refused, and the amendment will be dismissed after the final Notification of Reasons for Refusal, but such an amendment will not constitute grounds for invalidation of the application since such amendment is a mere procedural defect and does not directly infringe others’ interests.

4. Extension of the period for submitting a translation of foreign language documents

   The period for submitting a translation of a document originally filed in a foreign language in Japan has been extended from two months from the date of filing to one year and two months from the date of filing in Japan, or from the filing date of the original application in the first country (i.e., the priority date) if the Japanese application is a second country application claiming priority under the Paris Convention.

Trademark Law

1. Retail or wholesale services available

   Retail or wholesale services will be available for designation on and after April 1, 2007.

   The revised Trademark Law, allowing a trademark to be registered for “retail or wholesale services” per se in Class 35, took effect on April 1, 2007.

   The current Japanese Trademark Law as applied by the JPO and the courts does not allow retail services, per se, to be registered, taking a strict approach that a trademark used for retail related services should not be protected as service mark, but should instead be registered for the particular goods retailed under the trademark. For example, the following description of services is impermissible under the current Law: such as “the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase those goods.” Essentially, the Trademark Law follows the principle that trademarks used for retail services are not materially used in connection with a service, per se, but, in reality, are used for offering sales of goods.

   The revised Law defines the term “retail services” as including the businesses of retailers or wholesalers “offering for the benefit of others, a variety of goods, enabling customers to conveniently view and purchase those goods.”

   The revised Law specifically allows trademark applications to be registered for retailing or wholesale business with the following advantages:

   • A) Sunrise Period

     All applications for trademarks designating retailing or wholesale services will be afforded the same seniority date (date of filing) if the application is filed between April 1, 2007 and June 30th, 2007.

     With respect to applications filed in an applicant’s home country or territory within the Sunrise Period for registering a mark for retail or wholesale services in Class 35, an applicant can claim Convention priority before the Japanese Patent Office so that it may enjoy the same seniority date as domestic applications filed during the Sunrise Period, provided that the Japanese application is filed within 6-months from the filing date of the home application.

   • B) Mark in use overcomes mark in non-use

     If a Sunrise Period Application applies to a trademark in actual use on or before March 31, 2007, the application will be granted priority of registration over applications filed by third parties filed during the sunrise period that are not in use in the ordinary course of trade.

   • C) No Statement of Use with evidence when filing

     No Statement of Use of Mark with supportive evidence is required when filing a trademark.

     If identical or confusingly similar marks are filed during the Sunrise Period, an examiner will provide each applicant a “cooling-off” period so that the parties may negotiate in order to decide which application shall advance at the Japanese Patent Office.

     Instead of negotiating with other applicants of identical or confusingly similar marks, an applicant who registers a trademark in actual use can file a Statement of Use of Mark with supportive evidence within the “cooling-off” period*, which is non-extendible.

     * The Implementing Regulation sets up a “cooling-off” period, the length of which is yet to be officially announced. Nonetheless, we would anticipate at least 40-days for this period, plus an extra amount of time for non-resident applicants.

   • D) Evidence of use of mark

     While there are no requirements, formalities or limitations regarding the form of acceptable evidence showing use of marks, applicants are required to demonstrate that:

     • i) A trademark applied for in an application per se represents a trademark actually in use in the ordinary course of trade.
     • ii) A trademark applied for in an application per se has been actually used on or before March 31, 2007.
     • iii) A trademark applied for in an application per se has been used in a territory of Japan.
     • iv) A trademark applied for in an application is used in association with retail or wholesale services per se.
     • v) The description of services set forth in the application per se corresponds to the use of the mark established in the evidence as submitted under provision (D).
     • vi) In principle, the applicant of an application is using the trademark exclusively.

2. Additional types of entities eligible for collective trademarks

   The range of entities eligible for collective trademarks has been expanded so that associations (excluding those without juridical personality and/or company) have become eligible. (Examples of such associations include chambers of commerce and industry, chambers of trade, NPO corporations, and intermediate corporations.)

Other (Common Revisions in Intellectual Property Rights Laws)

1. The definition of “working” in the Design Law, the Patent Law, and the Utility Model Law, as well as the definition of “use” in the Trademark Law, have been expanded to include “importation.”

2. Possession of an infringing article for the purpose of transfer is now deemed an infringement.

3. Criminal penalties have been increased for violations of the Intellectual Property Rights Laws (effective as of January 1, 2007).