The revision of the Patent Act, which was enacted on May 14 and promulgated on May 21, contains revision to promote digitalization of procedures.

“Online oral proceedings in trials” is one of the actions introduced into the revision. With the increasing spread of the new coronavirus infection, remoteness has accelerated in the entire society, and the JPO has responded to the rapid changes in the society.

This article introduces the online oral proceedings in trials.

 

 

 

In the Japanese Patent Act, there are trial systems, such as trials for invalidation in which an interested person etc. can file a request for invalidation of a right. Such invalidation trials etc., basically require oral proceedings (Article 145(1) of the Patent Act).

The ongoing oral proceedings require that parties concerned physically appear before the Patent Office.

However, due to the recent outbreak of the new coronavirus infection, there has been a cause for concern about holding face-to-face oral proceedings in light of the status of infection. In addition, there has been an urgent need to be adapted to the recent rapid changes in social structures, such as digitization.

As a result of the revision at this time, online oral proceedings (by sending and receiving video and audio to mutually communicate while observing the other party’s situation/condition) are available at the discretion of chief trial examiners, more specifically, upon a motion by parties concerned or intervenors, or ex officio (Patent Act, Article 145(6): newly established).

 

The parties concerned or the intervenors who participate in the online oral proceedings shall be deemed to have “appeared” at the oral proceedings (Patent Act, Article 145(7): newly established).

 

Quoted from JPO 15th Industrial Structure Council, Intellectual Property Committee, Document 4

 

In this way, the JPO has been increasingly accelerating digitalization. Please see our newsletter No.10 dated July 30, 2021 as well, which is also available on our website.

“Is it possible for a foreign applicant and its local representative to participate in an examiner interview held at the JPO?”

 

Our firm continues to monitor trends in intellectual property in Japan and trends in the JPO to post a variety of information. If you have any topics of interest, we would be happy to receive your feedback.