Jan 22, 2024
Japan: IP Lump-Sum Act Now in Effect
This is an overview of The Act for Partial Revision of the Unfair Competition Prevention Act (IP Lump-sum Act) that went into effect on January 1, 2024.
Patent Law: Establishment of provisions for online submission of the Paris Convention for the certification of priority documents
(Article 43(2) of the Patent Law, Article 10(8) of the Utility Model Law, Article 10-2(3) of the Design Law, Article 10(3) of the Trademark Law, etc.)
When filing an application claiming priority under the Paris Convention for the priority certificate issued by the IP Office (First Office) that filed the application on which the priority claim is based, the applicant or his/her agent (hereinafter referred to as the “applicant”) must
1) in principle, submit the original in writing to the JPO (Article 43(ii) of the Patent Law).
2) *If the priority certificate is exchanged electronically using the Digital Access Service (DAS) of the World Intellectual Property Organization, it shall be deemed to have been submitted to the JPO (Article 43(5) of the Patent Law).
*Digital Access Service (DAS) of the World Intellectual Property Organization: A service that enables the electronic exchange of priority certificates between DAS participating Offices and eliminates the need to submit written certificates.
(Please note that in cases where electronic exchange is not possible, such as where the Office of First Filing does not participate in the DAS or where the trademark application is not covered by the DAS, the priority claim certificate must be submitted in original in writing in accordance with the principle).
All of the above was not possible prior to January 1, 2024, however, in order to respond to the rapidly developing digital society and to further improve the convenience of administrative procedures, an amendment has been made to allow electronic filing of priority right documents. This amendment also allows for the submission of a photocopy of a priority certificate issued in writing and or provided electronically (online submission of a priority certificate). Also, a certificate of priority provided electronically by the Office of the first country may be accepted.
Patent Act, Article 43:
(2) A person that has made a priority claim as under the preceding paragraph must submit a document to the Commissioner of the Japan Patent Office showing the filing date of the application and bearing the certification of the country of the Paris Convention Union in which the application was first made, or found to have been first made pursuant to Article 4.C(4) of the Paris Convention, or found to have first been made pursuant to A(2) of the Article, as well as certified copies of documents equivalent to the description, patent claims or utility model registration claims, and drawings submitted at the time of the filing of the application, or any bulletin or certificate giving the same type of details that published by the government of that country (excluding those issued by electronic or magnetic means (meaning an electronic means , a magnetic means, or any other means that it is impossible to perceive through the human senses alone) . The same shall apply in Paragraph 5 and Article 44, Paragraph 4) (hereinafter in this Article referred to as “priority certification documents, etc.”) or copies of these (hereinafter in this Article referred to as “priority certification documents, etc.”), within one year and four months from the earliest of the following dates:
(1) – (3) (Omitted)
(5) In cases where matters stated in the priority proof documents, etc. may be exchanged electronically with the Paris Convention or an international organization concerning industrial property rights, where the person who has claimed the priority right under paragraph (1) submits, within the period provided in paragraph (2), a document stating the application number (3) wherein a person who has claimed a priority right under paragraph (1) submits to the Commissioner of the Patent Office a document stating the matters provided by Ordinance of the Ministry of Economy, Trade and Industry as necessary for the exchange of the said matters, the person shall be deemed to have submitted the priority documents, etc. for the purpose of application of the preceding two paragraphs.
Relaxation of requirements for application of exception to loss of novelty (proviso to Article 4(iii) of the Design Law)
When applying for the exception to lack of novelty of design, due to numerous difficulties such as 1) submission of a certificate of exception to lack of novelty for all the published designs within 30 days of filing the application 2) rejection on the basis of lack of novelty since the published design was insufficient to qualify for the exception to lack of novelty 3) the exception to lack of novelty not being applicable to designs that were published after the date of publication, the requirements for application of exception to loss of novelty have been relaxed.
Specifically, the new requirement for “any act of publication on the date of the earliest publication” means that if there are two or more acts of publication on the same day, the applicant needs to submit only a certificate for any of the acts of publication on the same day (even if the acts occurred on the same day but at a later time). In addition, if there are two or more public acts on the same day, a certificate need only be submitted for one of the acts (or acts on the same day but at a later time). For example, if there are simultaneous acts of publication on the same day nationwide, there is no need to be aware of the time of the most recent act of publication on the same day.
The exception to lack of novelty applies to designs that meet the following requirements:
1) A design must have become public knowledge as a result of an act of the person entitled to obtain a design registration (Article 4(ii)).
Please note that the exception to lack of novelty does not apply to a design that became public knowledge as a result of publication in the gazette of an invention, utility model, design or trademark.
2) A design was published on or after the same date of publication of the certified design by a certificate submitted within 30 days of the filing date of the application for design registration.
3) A design is the same as or similar to the design proved in the certificate submitted within 30 days of the filing date of the application for design registration.
A design that is dissimilar to the design shown in the certificate may be the basis for rejection of the requirements of non-easiness of creation, etc. in relation to the applied design.
Guidelines:
1) No special certification is required to prove that the design in the certificate is the earliest published design.
2) It is possible to submit a certificate for multiple published designs, and there is no particular disadvantage if there are duplications.
3) Even in the case where a design is made the basis for reasons of refusal, etc. as a design whose publisher is unknown in the course of examination or trial, if the published design was made public due to the act of a person who has the right to obtain a design registration, the applicant may argue and prove that the requirements for the application of the exception to lack of novelty are met.
4) The exception based on the submitted certificate does not apply to designs published on a date earlier than the date of publication of the design stated in the certificate.
5) If multiple identical or similar designs are published, it is sufficient to mention one of them in the certificate.
Proviso to Article 4(3) of the Design Law
Article 4(3) of the Design Act shall not apply to a person who has the right to obtain a design registration; provided, however, that where there have been two or more acts of a person entitled to obtain a design registration which have resulted in the same or similar design falling under Article 3(1)(i) or (ii), it shall be sufficient to submit a certificate with respect to the first of such two or more acts which took place on the earlier of the dates of such acts.
Trademark Law Madrid Revision of fee payment for international registration of a trademark by e-Filing (Trademark Law Article 68-2(5))
If an applicant from Japan wishes to register his/her trademark in various countries, he/she may use the system of applying for international registration of a trademark based on the Madrid Protocol (international registration application system).
However, when an application for international registration of a trademark is filed with the International Bureau of the World Intellectual Property Organization (WIPO) under the international filing system, the home office fee*¹ must be paid to the Japanese Patent Office in Japanese yen, while the basic fee*², individual fees*³, etc. must be paid to WIPO in Swiss francs, which made it a complicated procedure.
Therefore, in order to enable payment of the Office fees together with other fees to WIPO in Swiss francs, the amendment was made to the effect that the Office fees shall be paid to the WIPO International Bureau only when the application for international registration is filed through Madrid e-Filing*⁴ (Article 68-2(5) * of the Trademark Law, Article 8 of the Industrial Property Special Provisions Law).
*¹ Home Office fee: Fee for home office certification, etc.
*² Basic fee: Fee for formality examination and international registration by WIPO
*³ Individual fees: Examination fee in the designated country, e.g. Japan Patent Office + 10-year registration fee
*⁴ Madrid e-Filing: WIPO’s online application service for the international registration of trademarks.
* Article 68-2(5) of the Trademark Law (newly established)
A person who intends to file an application for international registration electronically (except those provided by Cabinet Order) shall pay to the International Bureau as provided in Article 2(1) of the Protocol an amount equivalent to the amount provided by Cabinet Order in consideration of the actual costs.
For applications for international registration of trademarks filed on or after January 1, 2024, an amount equivalent to the Office fee of 9,000 yen is to be paid to the WIPO International Bureau in Swiss francs together with the other fees for the application for international registration.
Fees to be paid
Madrid e-Filing calculates and confirms the commission fee. Please refer to “4.14 Fee Calculation” (page 69) and “4.17 Fee Payment” (page 73) of the Madrid e-Filing User Guide (madrid_efiling_user_guide_jpo_2024.pdf) for more information.
Payment guidelines
1) The Office fee cannot be paid to the JPO for an application for international registration of a trademark filed through Madrid e-Filing. The method of submitting a document containing the electronic cash payment number from the “Attachments” screen of Madrid e-Filing is also not available.
2) The Office will not authenticate the submitted international application until both the fee to WIPO and the Office fee of 9,000 yen have been paid.
3) If the payment of the fee to WIPO is not completed, the Office will not send the application to WIPO.
4) In case the Madrid e-Filing service is unavailable for some reason, either on the part of WIPO or the applicant, you must be prepared for the possibility that the service may be unavailable. When filing an application with a priority claim or responding to a deficiency report, it is necessary to do so well in advance.
If the problem with the service is not resolved, the application must be converted to MM2 written submission for processing. In this case, the date of receipt of the application by the Office will, in principle, be the international registration date.
5) For applications filed through Madrid e-Filing, no copy of the application for international registration sent to the International Bureau under Article 68-3(3) of the Trademark Law will be sent. Please make sure to check on Madrid e-Filing and download the summary if necessary.