16th May 2012
The Act on Partial Revision of the Patent Act entered into force from April 1, 2012 in Japan. It contains a host of provisions covering trademarks, utility models, designs and Patent Cooperation Treaty as well as small and medium sized enterprises. One of the major changes brought about by the Act is the system of ‘Automatic Perfection’ to enable non-exclusive licensees to have effect on third parties (other assignees) even without being registered with the Japan Patent Office (JPO). Prior to this non-registered non-exclusive licenses were open to challenge by patent assignees.
Another change relates to joint technology or product development activities. The new provisions enable a person who is the rightful owner and who has been denied intellectual property rights, to regain such right. Earlier he could only obtain an invalidation of the patent for misappropriation of his rights.
Aiming to improve dispute resolution the new law provides for prohibition of filing a request for correction trial after filing with the IP High Court a law suit against a trial decision. The new law also has provisions relating to extension of period for reduction or exemption from patent fees, acquisition of trademark within one year of extinguishment of another’s trademark right, remedy procedures for submission of Japanese translations of patent application in foreign language and expanding the scope of exception to lack of novelty when invention becomes publicly known under certain circumstances.
The Act on Partial Revision of the Patent Act entered into force from April 1, 2012 in Japan. It contains a host of provisions covering trademarks, utility models, designs and Patent Cooperation Treaty as well as small and medium sized enterprises. One of the major changes brought about by the Act is the system of ‘Automatic Perfection’ to enable non-exclusive licensees to have effect on third parties (other assignees) even without being registered with the Japan Patent Office (JPO). Prior to this non-registered non-exclusive licenses were open to challenge by patent assignees.
Another change relates to joint technology or product development activities. The new provisions enable a person who is the rightful owner and who has been denied intellectual property rights, to regain such right. Earlier he could only obtain an invalidation of the patent for misappropriation of his rights.
Aiming to improve dispute resolution the new law provides for prohibition of filing a request for correction trial after filing with the IP High Court a law suit against a trial decision. The new law also has provisions relating to extension of period for reduction or exemption from patent fees, acquisition of trademark within one year of extinguishment of another’s trademark right, remedy procedures for submission of Japanese translations of patent application in foreign language and expanding the scope of exception to lack of novelty when invention becomes publicly known under certain circumstances.