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Revision to the Acts: Patent Act of Japan

May, 2014

Revision to Patent Act

Patent Act, as revised, newly includes a Procedure for Lodging Oppositions to Patents (or "the post-grant reviewing procedure").

The procedure is aimed at earlier stabilization of patent rights by allowing a third party to review the patent examination procedures, while ensuring faster and easier proceedings than those for a trial for invalidation of a patent (stipulated by the Patent Act, Article 123).

Briefly, the Procedure for Lodging Oppositions to Patents is summarized as follows:

Qualification for Lodging opposition:

None (any person/party can lodge an opposition) (Patent Act, Article 113 (1))

Time period in which lodging an opposition is lawfully effective:

Within 6 months after issuance of Patent Publication for the concerned patent
(Patent Act, Article 113 (1))

Subjects to the oppositions:

Each claim can be subject to lodging an opposition.
(Patent Act, Article 113 (1))

Grounds for lodging an opposition:

Basically same as reasons for refusal to the concerned patent application. Such reasons, however, may include those which do not constitute the grounds for lodging oppositions. Opponents should be minded of this point.
(Patent Act section 113 (1) items 1-5)


Shall proceed as a documentary examination by a collegial body.
(Patent Act, Articles 114 and 118)

Response from Patentee:

Can be made by filing a written opinion and a request for correction.
(Patent Act, Article 120 bis 5)


A decision that will be made, is either of the cancellation of a patent, or the maintenance of the patent (Patent Act, Article 114)
In response to the decision for cancellation of the patent, the patentee can appeal to the Tokyo High court.
On the other hand, the opponent that has lodged opposition cannot appeal to the Tokyo High court in response to the decision for the maintenance of the patent.

(*) Anyone of those who are interested can request a trial for invalidation. This request for trail can be made anytime, therefore having a potential to be pending at the same time as the procedure for lodging oppositions to patents.


Revision of Trademark Act in Japan

August 31, 2014

1. Relation to New Types of Trademarks:

  1. (1)Types of trademarks to be added to those intended for protection under the Trademark Act

The following new types of trademarks are to be added:

  1. 1)Color marks (without delineated contours/ single color or color combinations);
  2. 2)Sound marks;
  3. 3)Motion marks;
  4. 4)Hologram marks, and
  5. 5)Position marks
  1. (2)How to identify new trademarks in application documents

In application documents, it is necessary to indicate the type of trademark on the application, and submit a specimen of, and, in some cases, a detailed explanation of, trademarks such as those set forth below:

  1. 1)Color marks:
    The name of the color and an explanation of the state of use.
  2. 2)Sound marks:
    A sound file or musical score.
  3. 3)Motion marks and 4) Hologram marks:
    Multiple drawings of the figure through which the changes can be seen, or video files.
  4. 5)Position marks:
    A drawing that specifies the position of the mark with continuous and dashed lines.
  1. (3)Distinctiveness and Other Requirements for Registration

- In the case of color marks without delineated contours, particularly single or double colors, the distinctiveness thereof is also denied, because they are colors that are inherent to conventional products or they are ordinarily used for improving the aesthetics of products, etc.

- For sound marks as well, it is thought that sounds that ordinarily occur in products or services, such as “the alarm sound of an alarm clock, the sound of a motorcycle engine, or the sound of cooking as part of restaurant services,Edo not have distinctiveness.

- Even if such marks are regarded as being new trademarks, that are difficult to distinguish from a source of a product or service, they may still be allowed registration by obtaining a secondary meaning as a result of use.

- Those solely consisting of elements indispensable for securing the functions of the goods or services cannot be registered. (e.g. Trademark: “Bowling ball hitting pins soundE Services: “Providing bowling alleysE

  1. (4)Transitional Measure

A person who has used a new type trademark in relation to goods or services prior to the enactment of the revised Trademark Act in Japan has the right to use the trademark.

2. Other Revised Articles:

  1. (1)Unregistrable trademarks (Article 4 (1)(iii))

Even if the trademark is identical with, or similar to, a mark indicating an international organization, the said trademark shall be registered in the following cases:

  1. (i)where the said trademark is well known among consumers as that indicating goods or services pertaining to the business of an applicant; or
  2. (ii) where the said trademark is used in connection with goods or services which are not likely to mislead people to believe the association with the said international organization.
  1. (2)Expanding of Eligibility for Obtaining a Regional Collective Trademark Registration (Article 7-2 (1))

The following persons shall be newly added as a person who shall be entitled to obtain a regional collective trademark registration:

  1. (i)a commerce and industry association;
  2. (ii)a chamber of commerce and industry;
  3. (iii)a specified non-profit corporation; and
  4. (iv)a foreign juridical person equivalent thereto



Revision to the Acts: Design Act of Japan

May, 2014

Revision to Design Act

Japan is bound to be a member of the Geneva Act of the Hague Agreement, and the Locarno Agreement. Accordingly, the following revisions to the Design Act are to be made corresponding to the rule and the agreement stated above.

1. International Applications as set forth in Geneva Act of the Hague Agreement

An application for design registration can be filed via WIPO by designating Japan (Design Act, Article 60 bis 6).

An internal application designating Japan is examined by the JPO after national publication of international registration of the internal application.

Japanese national or residents in Japan can file, in the JPO, an international application set forth in the Geneva Act of the Hague Agreement (Design Act, Article 60 bis3, item 1). In other words, an application for design registration designating multiple countries can be filed.

In this case, an application document in a concerned foreign (other than Japanese) language and required items should be filed (Patent Act, Article 60 bis 3, item 2). Applicants are also permitted to designate their own country.

2. A single application can include multiple designs

According to the international application, a single application for design registration can include multiple designs. More specifically, an international application can include 100 designs at maximum as long as such designs fall within the same group stipulated in the International Design Classification (Locarno agreement).

However, for an international application including multiple designs, the JPO will expectedly raise the application fee and the registration fee in accordance with the number of the designs.

3. Application of Exception to Lack of Novelty

Exception to lack of novelty (Design Act, Article 4), which is an exceptional treatment applicable to applications directly filed in the JPO, is applicable also to international applications. Those wishing to exploit the exception to lack of novelty must file i) a document stating application of exception to lack of novelty and ii) a related certification document within a predetermined period from the date on which the international application is nationally published (Design Act, Article 60 bis 7).

4. Related designs

According to the current system of application for design registration, protection can be sought for related designs. (Design Act, Article 10)

Registration of a related design is permitted even if at least either of the following is an international application:

i) an application for design registration on a principal design of an applicant;


ii) a related design (a design similar to and filed on and after the filing date of the principal design) of the applicant.

However, where the principal design is an international application for design registration, the related design must be filed before the international application of the principal design is nationally published.

5. Partial Design

Under the current system of application for design patent, protection can be sought for a partial design (Design Act, Article 2). Such protection for a partial design can be sought also by utilizing an international application.

6. Secret Design

As for an international application for a design registration designating Japan, since a design that is nationally published is to be registered, such an application does not fall under a secret design set forth in the Design Act Article 14.

7. National Publication of International Application

A design, for which protection by an international design registration is sought by an international application, is nationally published 6 months after the international registration thereof. By the national publication of the international application, the applicant acquires a right to demand compensation (Design Act, Article 60 bis 12, item 1).

8. Postponing national publication of international application

The applicant can postpone the national publication of an international application designating Japan within a period of 30 months at maximum from the date of the filing of the international application thereof.

9. Requirements for the Drawings

For the drawings showing the design, 6 drawings are requisite as conventional, namely, a front view, a back view, a plan view, a bottom view, a left side view, and a right side view. Perspective views or sectional views should accompany therewith as necessary.