Jan 26, 2023
The Cabinet Approves the Cabinet Order
for Establishing the Effective Date for Partial Revision of the Patent Law and other related laws
Enacted in the 204th ordinary Diet session, the Act for Partial Revision of the Patent Law was passed on May 14, 2021, and promulgated as Law No.42 on May 21,2021.
In September the same year, Cabinet of Japan approved a Cabinet Order to specify the effective date for partial revision of the Patent Law and other related laws, and the specific dates for each amendment can be seen below:
Background
In the 204th ordinary session of the Diet, the Act for Partial Revision of 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.
*Patent Law (special), Utility Model Law (actual), Design Law, Trademark Law (commercial), Law Concerning Special Provisions for Procedures, Law Concerning Industrial Property Rights, Law Concerning International Applications under the Patent Cooperation Treaty (national), Patent Attorney Law
The Cabinet approved the Order today to set the enforcement date delegated to the Cabinet Order in the said Act.
Cabinet Order Outline
The effective date specified in the main clause of Article 1 of the Supplementary Provisions of the Act for Partial Revision of the Patent Act, etc. (a date specified by a Cabinet Order within one year from the date of promulgation) shall be April 1, 2022, and the effective date of the provisions listed in item 3 of the same Article (a date specified by a Cabinet Order within six months from the date of promulgation) shall be October 1, 2021. The main items for which the effective date is specified in this Cabinet Order are as follows:
(1) 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 (Effective date: October 1, 2021)
2. Prepayment of stamps will be abolished, and all relevant patent fees can now be paid by a bank transfer in a form of prepayment (Effective date: October 1, 2021) or by credit card at the counter (Effective date: April 1, 2022)
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 (Effective date: October 1, 2021). Regarding international trademark application procedures, the effective date is a date to be determined by a Cabinet Order within two years from the date of promulgation, and the effective date will be determined by a different Cabinet Order in the future.
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. (Effective date: October 1, 2021)
(2) Review of the protection of rights in response to changes in corporate behavior caused by the digitization progress
1. In response to the increasing complexity of licensing of patent rights due to the development of digital technology, the consent of the non-exclusive licensor (licensee) is no longer required for amendment, etc. of patent rights. (Effective date: April 1, 2022)
(3) Strengthening the foundations of the intellectual property system
1. In patent infringement lawsuits, the system allows the court to solicit opinions from a wide range of third parties, and patent attorneys will be able to provide consultations under the third-party opinion solicitation system. (Effective date: April 1, 2022)
2. To respond to the increased burden of examination and the digitalization of procedures, the patent fee structure will be revised to ensure the right balance between the revenue and expenditure. (Effective date: April 1, 2022)
3. With respect to the patent attorney system, consultation on intellectual property rights related to agriculture, forestry and fisheries (new varieties of plants and geographical indications) will be added to the list of services that can be performed by a patent attorney. (Effective date: April 1, 2022)