IP NEWS:SOEI Patent & Law Firm

The revised Japanese intellectual property law which was proposed in 2006 will come into effect on April 1, 2007. The outline of the revisions is as follows:

(I) Design Law
1. Expansion of protection for display screen designs (Design Law Section 2 Paragraph 2)
   The scope of articles which is protected for the operation screen designs of information appliances will be expanded to include, for example, screens other than the initial screen or screens that are displayed in another annunciator.
2. Revision of the partial design system (Design Law Section 3 Paragraph 2)
   The deadline for partial design applications will be extended.
3. Revision of the related design system (Design Law Section 10, etc.)
   The deadline for applications claiming variation of a design will be extended.
4. Expansion of the period during which secrecy can be requested for a design (Design Law Section 14)
   Under the current law, applicants can request that a design be kept secret for a period of up to three years after the registration has been granted. However such requests must be filed on the same day the application is filed. The revision will allow applicants to request the secrecy for design not only on the filing date of the application, but also when they pay the registration fees.
5. Extension of term for design rights (Design Law Section 21 and 42)
   The term for design right will be extended from 15 years from the registration to 20 years.
6. Clarification of the scope of similarity of the design (Design Law Section 24 Paragraph2)
   The revision makes clear that similarity of the design will be determined by the visual aesthetic sense of consumers and traders.

(II) Patent Law
1. Revision of the amendment system (Patent Law Section 17 Paragraph 2, etc.)
   After receiving the first Notice of Reasons for Rejection, the applicants will not be allowed to change the invention into another invention having a different technical feature.
2. Revision of the divisional application system (Patent Law Section 44, etc.)
   When the application contains multiple inventions, applicants can divide the inventions and file divisional applications. The revision will allow the applicants to file the divisional application not only during the Examination, but also within 30 days following a final decision (positive or negative) by the Examiner.
3. Extension of deadline for filing the Japanese translation of a foreign language application (Patent Law Section 36, Paragraph 2, Column 2, etc.)
   For applicants filing the foreign language applications in Japan, the deadline for the Japanese translation will be extended from two months to one year and two months.

(III) Trademark Law
Expand the protection of trademarks for retail sales and wholesale (Trademark Law Section 2 Paragraph 2)
   Protection will be extended to trademarks used by retail sales and wholesale services to provide convenience for the companies and to be consistent with the international system.
(III-Comment)
   Because the trademarks for “service of retail sales, etc” will be protected under the revised trademark law, the Examination standards related to the usage indicated in Trademark Law Section 3, Paragraph 1 will be revised. To prevent non-use of trademarks, applicants filing application for service trademark related to retail sales service or applications designating services other than goods or retail sales service will be strictly questioned about their use or their intention to use their trademark. Because the applicants filing a goods trademark application will be questioned about their intention to use, it is recommended that applications be filed with caution after April 1, 2007.