Revision of the Patent Act – Patent Disputes and Extension of the Scope of Protection for Designs

The draft law for the partial revision of the Patent Act was passed and adopted by the Cabinet on May 10, 2019 and announced on May 17, 2019. This revision will create a new system for collecting evidence in a potential infringement matter where an expert will have the opportunity to carry out an on-site investigation which is necessary for the provision of evidence in an infringement case. In addition, the calculation guidelines for compensation amounts will be revised (the same changes will also be made to the Utility Model, Design and Trademark Acts) and the scope of protection for designs will be extended.

The below-mentioned revisions are to be implemented within one year from the announcement.

I. Partial revision of the Patent Act

1. Established a system where neutral experts can carry out on-site investigations

A system will be created under which, in the event of suspicion of a patent infringement and after the filing of an infringement action, the aggrieved party may request that neutral experts appointed by the court carry out on-site investigations at the production facility of the infringing party which are necessary for the provision of any evidence of infringement and to submit a report to the court (Art. 105bis Patent Act and others).

2. Revised the calculation guidelines for compensation amounts

a) Previously, it has not been possible for a patentee to claim as damages a portion of the patent infringer’s profits which exceeds the patentee’s production capacity. With the new amendment, it will now be assumed that the infringer had a license for said portion, and the patentee can claim damages corresponding to the license fee (new Art. 102 Par. 1(2) Patent Act).

b) For the calculation of the damages corresponding to the license fee, the court will consider a license fee which would have been negotiated on the presumption that there had been an infringement (i.e., possibly a higher license fee than that of a normal license agreement) (new Art. 102 Par. 4 Patent Act). These changes will also be made to the Utility Model Act, the Design Act and the Trademark Acts.

II. Partial revision of the Design Act

1. Extension of the scope of protection

Images that are not applied to objects, e.g. images stored in a cloud and made available via a network, and exterior views of buildings or interior designs etc. can now also be protected as designs (Art. 2 Design Act).

2. Revision of the system for related designs (system that allows the registration of designs that are similar to one’s own design application or registered design (principal design)) (Art. 10 Design Act)

It is now possible to register multiple designs developed under a unified concept.  The new changes include: a) the time limit for filing related designs is extended to 10 years from the filing date of the principal design (previously it was until disclosure of the registered principal design, i.e., about 8 months from the filing date); and (b) designs similar only to related designs shall also be granted registration.

3. Change of term

The term is extended from “20 years from the date of registration” to “25 years from the filing date” (Art. 21 Design Act).

4. Simplification of the application procedure

a) Multiple applications may be filed; i.e., several designs may be combined in one application.

b) Classifications will be abolished in order to allow a flexible designation of the subject-matter.

5. Extension of the definition of indirect infringement

By defining subjective factors such as “the knowledge that an object can be used for the working of a design”, actions such as the manufacture and import of infringing products that have been disassembled into individual parts in order to escape control can now also be controlled.