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Japan’s Patent Law Revised: Major Draft Amendments

Mar 11, 2021

Japan’s Patent Law Revised: Major Draft Amendments


To cope with the changes caused by Covid-19, such as the demand for digital services and remote working conditions, the Patent Law and other related laws have been revised proposing the following amendments : (1) improving procedures adopting digitization and other activities (2) reviewing the protection of rights in response to changes in corporate behavior caused by the digitization progress (3) strengthening the foundations of the intellectual property system by reviewing litigation procedures and fee structures.

Digital transformation and other procedures in response to the spread of the new coronavirus

1.Appeal oral proceedings to be conducted online using a web conference system at the discretion of the chief trial examiner.
2.Prepayment of stamps will be abolished, and all relevant patent fees can now be paid by a bank transfer (prepayment) or by credit card at the counter.
3.Simplification of procedures for notifications of decisions on international applications for designs and trademarks, including the possibility of electronic submission instead of by post, which can be disrupted in the event of the spread of infectious diseases.
4.Exemption from payment of surcharges within a reasonable period of time will be allowed in case of delay in patent fee payment due to natural disasters or the spread of infectious diseases.

Review of the protection of rights in response to changes in corporate behavior caused by the digitization progress

1.To deal with the increasing number of counterfeit goods imported for personal use, stricter controls will be implemented, such as any counterfeit goods brought or sent to Japan by post will be regarded as an infringement of trademark rights.
2.In order to cope with the increasing complexity of licensing of patent rights due to the development of digital technology, the consent of the non-exclusive licensee is no longer required for amendment of patent rights.
3.The requirements for the restoration of rights where a patent right, etc. has expired due to the expiration of a procedural period are to be relaxed.

Strengthening the foundations of the intellectual property system

1.Introduction of a third-party opinion solicitation system in patent infringement litigation:

 ●The system allows the court to solicit opinions from a wide range of third parties in patent infringement litigation, which has become increasingly complex
 ●Supplementing the parties’ collection of evidence to enable the court to make a decision based on a wide range of opinions in cases having significant social impact.
 ●Patent attorneys are now able to respond to consultations under the third-party opinion solicitation system.

2.To respond to the increased burden of e2.xamination and the digitalization of procedures, the patent fee structure has been revised to ensure the right balance between the revenue and expenditure.

3.Revision of the Patent Attorney System:

 ●Addition of agriculture, forestry and fisheries to the list of intellectual property work which can be performed by a patent attorney
 ●Official change of the corporation name to Patent Attorney Corporation
 ●Introducing a new single-person corporation system

Source: “Outline of partial amendment of the Japanese Patent law”
     March-2020 Japan Patent Office