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On April 1, 2022, a number of patent and other legal amendments went into effect

Apr 1, 2022


On April 1, 2022, a number of patent and other legal amendments went into effect


 

 

 

 

 

Please see below for a summary

1. Act for Partial Revision of the Patent Act, etc.

1.1 Payment by credit card at the JPO application counter

Credit card payment (designated advance payment), which was previously limited to online procedures, can now also be paid at the JPO application counter.

The user can visit the JPO and pay the required fee amount at the counter by credit card. VISA, MasterCard, JCB, and American Express are accepted.

(Excerpt from JPO to Start Credit Card Payments at the JPO Window) Created by processing
For details, please refer to the JPO website (jpo.go.jp)

 

1.2 Review of requirements for consent of non-exclusive licensee in abandonment, trial for correction, and request for correction (Patent Law, Utility Model Law, Design Law)

(1) No consent of non-exclusive licensee is required for abandonment of patent right, however, the consent of the exclusive licensee and the pledgee for the abandonment of the patent right is required.In addition, consent is still required as to whether or not waiver of exclusive license or provisional exclusive license is required.Consent of the non-exclusive licensee (or consent of the provisional non-exclusive licensee for the waiver of the provisional exclusive license) in a patent application based on a utility model registration is also still required.

(2) When filing a request for a trial for correction, or when filing a request for correction in the proceedings of a patent opposition or a patent invalidation trial, the consent of the non-exclusive licensee is not required. The consent of the exclusive licensee and pledgee will continue to be required.

(3) Utility Model Law

The consent of the non-exclusive licensee is no longer required for abandonment or amendment of a utility model right.The consent of the exclusive licensee or pledgee is still required.

(4) Design Law

The consent of the non-exclusive licensee is no longer required for the abandonment of a design right. The consent of the exclusive licensee and the pledgee will continue to be required.

(5) Trademark Law

The consent of the holder of non-exclusive right to use, etc. will continue to be required for the abandonment of trademark rights.

 

 

Persons whose consent is required under the Patent Law

Common by permission Non-licensee

(or provisional ordinary (Licensee)

Employee inventions Normal Licensee

Exclusive License Right holders

Pledgee

 

 

 

 

Consent is required Actions to be taken

(Request for a Trial for Correction)

(Patent Law Article 127)

Required -> Unnecessary

Required -> Unnecessary

Required

Required

   Request for Correction

(Article 120-5, Paragraph 9 of the same Act, Article 134-2, paragraph 9)

Required -> Unnecessary

Required -> Unnecessary

Required

Required

   Waiver of Patent Right

(Article 97, Paragraph 1 of the same law)

Required -> Unnecessary

Required -> Unnecessary

Required

Required

 Waiver of exclusive license (Article 97, Paragraph 2 of the same law)

Required

 

 

Required

Waiver of provisional exclusive license

(Article 34-2, Paragraph 7 of the same law)

Required

 

 

 

Patent application based on utility model registration

 (Article 46-2(4) of the same Act)

Required

Required

Required

Required

 

 

1.3 Establishment of a system for soliciting third-party opinions in patent infringement suits, etc. (Patent Law, Utility Model Law)

In the age of AI and IoT technologies, patent infringement suits are expected to become more sophisticated and complex than ever before.

Therefore, in order to enable judges to make decisions based on a wider range of opinions as necessary, a system has been introduced that allows the court to solicit opinions from third parties such as legal professionals, academic societies, industries/organizations, overseas organizations and companies only when deemed necessary by the court upon motion of a party.

 

(1) Target jurisdictions for introduction

First, it was introduced for patent and utility model infringement suits, which are highly necessary

Other fields (design right, trademark right, etc.) and types of litigation (actions for revocation of trial decisions, etc.) will be expanded in the future if necessary and have not been introduced at this time.

(2) Target trial level

The Intellectual Property High Court, as well as the Tokyo District Court and Osaka District Court, which have exclusive jurisdiction of the first instance. To learn more about the system for soliciting third-party opinions, please visit Intellectual Property High Court Website 

(https://www.ip.courts.go.jp/tetuduki/vcmsFolder_1615/vcms_1615.html)

(3) The Patent Law will also be introduced to compensation lawsuits

(4) Addition of services for patent attorneys regarding the system for soliciting third-party opinions by courts

When a third party, such as a company intending to submit an opinion, considers the contents of the opinion, it is considered beneficial for the third party to be able to utilize the knowledge and expertise of a patent attorney through consultation with the patent attorney in order to accurately convey such third party’s opinion to the court. Therefore, we have made it possible for a third party such as a company intending to submit the above opinion to utilize the knowledge and expertise of a patent attorney through consultation when examining the content of the opinion.


(Adapted from the 15th Session of the Intellectual Property Subcommittee, Industrial Structure Council) Created by processing

 

1.4 Revision of Patent Fees, etc.                 

Main types of fees ( Revised fees are in red) 

 

 

 

 

 1. before entitlement – policy level below actual cost

– Maximum amount set by law and Specific amounts are specified by government ordinance.

2. post-entitlement – level to balance overall income and expenditure

– Specific amounts are stipulated by law.

Revision of the law to set a maximum amount and delegate the specific amount to a government ordinance.

Patent Application

Filing and examination fee

Patent fee

PCT

Transmittal/search fee

 

Design Application

Filing fee

Registration fee

Trademark Application

Filing fee

Registration/renewal fee

(Adapted from the 15th Session of the Intellectual Property Subcommittee, Industrial Structure Council) Created by processing

 

 

        Patents

Item

Amount before revision

Amount after revision

Reference: Patent fee in the case of claim 5 (for one year)

Before Revision

After Revision (Price Increase)

Annual fee
1-3rd year

¥2,100
+
¥200 per claim

¥4,300

¥300 per claim

¥3,100

¥5,800
(¥2,700

4-6th year

¥6,400

¥500 per claim

¥10,300

¥800 per claim

¥8,900

¥14,300
(¥5,400

7-9th year

¥19,300

¥1,500 per claims

¥24,800

¥1,900 per claim

¥26,800

¥34,300
(¥7,500

10-25th year

 ¥55,400

¥4,300 per claim

¥59,400

¥4,600 per claim

¥76,900

¥82,400
(¥5,500

 

        Trademarks

Item

Amount before revision

Amount after revision

Registration fee

¥28,200 per classification

¥32,900 per classification

Renewal application

¥38,800 per classification

¥43,600 per classification

 

 

                        Fees related to international applications (patents, utility models)

Item

Amount before revision

Amount after revision

Transmittal fee
research fee

Japanese

Total 80,000円

Transmittal fee10,000円

Research fee 70,000円

Total 160,000

Transmittal fee 17,000

Research fee 143,000

English

Total 166,000円

Transmittal fee 10,000円

Research fee 156,000円

Total 186,000


Transmittal fee 17,000

Research fee 169,000

Additional fees for international research

Japanese

60,000円
×
Number of inventions in the claim -1

105,000
×
Number of inventions in the claim-1

English

126,000円
×
Number of inventions in the claim-1

168,000
×
Number of inventions in the claim-1

Preliminary
Examination fee

Japanese

26,000円

34,000

English

58,000円

69,000

Additional fees for preliminary
    examination

Japanese

15,000円
×
Number of inventions in the claim-1

28,000
×
Number of inventions in the claim-1

English

34,000円
×
Number of inventions in the claim-1

45,000
×
Number of inventions in the claim-1

 

 

1.5 Review of Patent Attorney System

(1) Agriculture, forestry, and fisheries IP services have been added to the scope of practice of patent attorneys. Patent attorneys are allowed to provide only support services for overseas applications and consultation services for which there is an obvious need for users. Domestic application support services (application for variety registration) are not provided by patent attorneys but by administrative scriveners.

(2) The name of the corporation established by patent attorneys will be changed from Patent Professional Corporation to Patent Attorney Corporation along with the increase of consulting services related to intellectual property and the Unfair Competition Prevention Law pertaining to trade secrets and data, in addition to patent, design, and trademark application representation services.

Profession

Lawyer

Judicial clerk

Administrative clerk

Taxation

Certified Public Accountant

Social Insurance Laborer

The name of the corporation

*As of Dec. 2020

Lawyer Corporation

Judicial scrivener corporation

Administrative scrivener corporation

Tax accountant corporation

Audit corporation

Social Insurance Labor and Social Security Attorney Corporation

(Adapted from the 15th Session of the Intellectual Property Subcommittee, Industrial Structure Council) Created by processing

 

A revision has been made to change the corporate name from “Patent Professional Corporation” to “Patent Attorney Corporation”. The period of the corporate name change will be from April 1, 2022 to March 31, 2023.

If a patent attorney firm does not change its name from patent professional corporation to patent attorney corporation within this period, it will be deemed to have been dissolved and must change its name during this period.

 

(3) Introduction of one-person corporation system

Prior to the amendment, two or more patent attorneys were required to establish a corporation to which a patent attorney belonged. However, there are a certain number of patent attorney firms that have not been able to incorporate due to the refusal of patent attorneys to become members of such corporation due to unlimited liability.

In addition, in the event that a patent attorney of such corporation suddenly becomes unable to perform his/her duties, there are cases in which the business succession of the firm does not proceed smoothly since the personal and business assets of the patent attorney are not separated and the transfer of personal contracts must be handled. Therefore, in order to facilitate business succession and to provide continuous support to users, a system was introduced to allow the establishment and continuation of a corporation even with only one patent attorney as a member.

 

2. Restriction on multiple dependent claims depending on other multiple dependent claims.

In order to reduce the burden of third-party monitoring and excessive examination, the inclusion of multiple dependent claims depending on other multiple dependent claims in patent and utility model applications on and after April 1, 2022 will no longer be permitted in Japan. For details, please see here (asamura.jp).

 

3. Revision of EPO fees.

Official fee was revised on April 1, 2022 (about 5% increase).
Please refer to the EPO website.