On March 2, 2021, the bill on revision of the Patent Act, the Utility Model Act, the Design Act, and the Trademark Act was approved by the Cabinet. The revision bill will be discussed during the ongoing regular Diet session and enacted in May of 2021 at the earliest.

 

 

 

The revision bill includes the following five major revisions:

(1) Relaxation of Requirements for Restoration of Rights

(2) Enhanced Control of Counterfeit Goods from Abroad

(3) Introduction of System of Inviting Third-Party Comments in Infringement Suit

(4) Introduction of Online Oral Proceedings

(5) Consent of Non-exclusive Licensee Is No Longer Required for Amendment of Rights, etc.

These revisions are outlined below.

 

 

Each contracting state of the Patent Law Treaty (PLT) can choose the “due care” criterion or the “unintentional” criterion regarding the requirements for restoration of rights that were lost due to failure of the necessary procedures by the applicant or the proprietor by the deadline. Japan currently applies the “due care” criterion, but has changed to apply the “unintentional” criterion according to the revision bill.

It has been considered that restoration of right is less likely to be approved in Japan than in other countries. It is expected, however, that the revision bill will lead to an increased approval rate of restoration of right.

 

 

 

Currently, with respect to counterfeit goods brought into Japan from abroad, an act of importing and selling those by a provider in Japan is regarded as infringement of rights, while an act of directly selling and sending those to an individual in Japan by an overseas provider is not always regarded as infringement of rights.

According to the bill on revision of the Design Act and the Trademark Act, it is stipulated that an act of bringing counterfeit goods into Japan by an overseas provider shall be also regarded as infringement of rights.

 

 

 

In the revision bill, a system of inviting third-party comments has been introduced for the first time. It allows the court to seek comments from the public when the court finds it necessary. This will help the court to make an appropriate decision in cases that are becoming more complicated and sophisticated in the age of AI/IoT technology. This system will be first introduced only in suits against infringement of patent rights or utility model rights.

 

 

 

In the current system, oral proceedings conducted for trials, such as invalidation trials, require parties concerned to appear in the trial court. According to the revision bill, in order to cope with the coronavirus pandemic, oral proceedings may be conducted using a web conference system at the discretion of the chief trial examiner. The detailed operation of the web conference system will be clarified by the guidelines to be established in due time.

 

 

 

Currently, consent of the non-exclusive licensee is required for amendment of patent rights or utility model rights. However, there have been opinions that, for example, in a case where the rights are licensed to multiple licensees through a patent pool, it is practically difficult to obtain consent of all the non-exclusive licensees, and there is a concern that the proprietor cannot amend the rights and thus would lose the suit. To remove such concern, consent of the non-exclusive licensee is no longer required for amendment of rights according to the revision bill.

In addition, although there are currently similar provisions regarding abandonment of patent rights, utility model rights, and design rights, consent of the non-exclusive licensee is no longer required according to the revision bill.

 

We will provide detailed explanations of some of the revisions above in our newsletters in the near future.

 

 

Edited by Mariko Haniu