With the spread of the COVID-19 pandemic, economic activities have been impacted, and changes have had to be made, particularly in terms of digitalization, teleworking and contactless services. To address these changes, the Japan Patent Office (JPO) has decided to revise the Patent Law by lending weight to the following aspects:
- developing new procedures (e.g., digitalization of procedures) to cope with the spread of the COVID-19 pandemic;
- adapting Patent Law to the changes in business activities that accompany the advance of digitalization and of other technologies; and
- strengthening the basis of intellectual property systems, including the review of litigation procedures and revision of the fee structure.
A bill to revise the Japanese Patent Law was passed on 14 May 2021 and the revised Patent Law was enacted on 21 May 2021. The main revisions are listed below.
- A new Amicus Brief system has been introduced. This new system allows courts to seek the opinions of third parties as Amicus Curiae in cases of patent infringement litigation.
- The conditions for the restoration of rights lost due to the expiry of a time limit have been considerably relaxed. This revision applies to several procedures, such as the submission of the translation for the opening the Japanese national phase, the priority claim and the filing of a request for review. The procedures concerned can be reinstated if the lapse was purely unintentional (as is the case in the USA). Only a brief statement is required and no proof is needed. However, reinstatement costs of approximately $2700 must be paid.
The previous time that the Japanese law was amended was in 2015, following the Fukushima nuclear accident. A rights reinstatement procedure had then been introduced, but only in the event of serious external circumstances (natural disaster, fire, etc.).
- The patentee is not required to obtain the consent of non-exclusive licensees to correct or abandon a patent.
- Parties summoned to an oral hearing in patent invalidation proceedings are allowed to attend via a video conferencing system without physically appearing before the JPO.
- The fee structure has been revised. The specific annuity amounts are to be increased (amounts to be determined at a later date). This revision aims to address the increasing cost of reviews and of digitalized procedures, and attempts to balance income against expenditure.
- Patent holders are exempted from annuity surcharges if their failure to meet the due date for annuity payments is due to the COVID-19 pandemic, natural disasters or other similar reasons.
The revised Law shall be applied on a date to be determined by Order within a period not exceeding one year for items 1., 3. and 5., two years for item 2., and six months for items 4., 6., from the day of the enactment of the Law.