Partial Revision of the Patent Act and Other Acts (summary)
The “Draft of the Act for the Partial Revision of the Patent Act and Other Acts”, approved by the Cabinet of Japan on March 13, 2015, was passed by Parliament on July 3, 2015 and promulgated as Act No. 55 on July 10, 2015.
In the following, we provide an overview of these changes. The revised acts are not yet in force but are slated for implementation as of April 1st, 2016.
1. Review of employee invention system
In order to provide incentives for researchers’ performance and to improve a company’s competitiveness, the following provisions are made.
i) The right to obtain a patent on an employees’ invention can be vested in the company from the outset via an agreement between the company and the employer.
ii) The Minister of Economy, Trade and Industry shall draw up guidelines for said agreement.
iii) Employee inventors shall be entitled to claim a financial or other benefit for an invention.
2. Amendment of renewal and other fees
Renewal fees shall be revised in order to promote the use of patent and trademark rights. For example, the renewal fees for patents shall be reduced by ca. 10% for each year following registration of a patent right, the trademark registration fee shall be reduced by ca. 25% and trademark renewal fees by ca. 20%.
3. New provisions in accordance with Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks
In line with both treaties, the provisions for performing procedural acts within a time limit are amended. Examples are given below.
i) The time limit for submitting a translation of a preliminarily filed English-language subsequent patent application in Japan is extended by 2 months to 4 months following expiry of the 12-month priority period according to the Paris Convention. Where this time limit is missed, the JPO will issue a notification requesting the applicant to perform the omitted act within a period to be specified.
ii) If a patent application contains a defect which would lead to a non-remediable loss of rights, such as missing specification pages, or when the applicant’s name is not given, the JPO will henceforth issue a notification requesting the applicant to correct the defect within a period to be specified.
iii) Where the use of a trademark at an exhibition has been indicated upon filing the trademark application and proof thereof has still not been submitted within 30 days of filing, the applicant may validly perform the omitted act within a period to be specified (not yet determined).