On March 1 2019, the Japanese government announced that it submitted a bill to the Diet to amend the laws of patent, utility model, design and trademark. The major part of the amendment lies in the patent law and the design law. And we reported most of them in the previous articles. But we would like to pull them together here to show the outline of the amendment of Japanese patent law and design law for your reference.
- Introduction of inspection procedure. Courts will be able to issue the inspection order, in response to the patent holder’s motion, by which neutral experts inspect the facility of the alleged infringer to gather evidences.
- Improvement of damage calculation. Presumed damages will be possibly calculated higher, as follows.
- Patent holder will be able to receive separately the equivalent to license fee for the deducted amount from the damages because it exceeds the production capacity of the patent holder.
- For the equivalent to license fee, courts will be able to consider the amount of license fee in case of existence of the infringement.
Note: For the damage calculation, the same amendment will be made for the utility model law, the design law and the trademark law.
- Slowly changing Japan’s IP dispute resolution system
- Updates of discussion on possible revision of Japan’s IP dispute resolution system
- JPO commissioner mentions the review of damage calculation method
- Expand the scope of protection of design. It will be able to protect images which are not recorded or displayed on an article, and also protect appearance and interior designs of buildings such as a store.
- Enhance the Related Design system, which is for the protection of similar designs, to improve protection of a series of designs, as below.
- Extend the term for filing applications for related designs. The applicant for an original design (Principal Design) will be able to file applications for the related designs within 10 years from the filing date for the principal design. Currently, it is until the publication date of registration for the principal design, i.e. about 8 months.
- Accept registration of a related design which is similar only to other related designs, but not similar to the principal design. Currently, it required to similar to the principal design.
- Change the term of protection, from “20 years from the registration date” to “25 years from the filing date”.
- Expand indirect infringement. It will include activities to divide an infringing product into parts, and separately manufacture, import them etc. with an aim to avoid crackdown.
- A single application for multiple designs will be allowed.
The amendment of the design law is likely to provide some motivation to file more design applications, especially because of the expansion of the scope of protection of design.
On the other hand, the effects of the amendment of the patent law is uncertain. The inspection is allowed under strict conditions, considering trade secret leakage and burdens of “alleged infringers”. The inspection is allowed only when (i) it is required to prove infringement, (ii) it is probably infringement, (iii) the patent holder cannot gather evidences by other means, and (iv) it does not place excessive burdens on the alleged infringer. Also, the patent holder is required to identify the location of evidences. Therefore, it seems that courts will control the success of the introduction of the inspection procedure, as well as the new damage calculation methods. We should watch how courts will operate the new system.
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