Bill for Revision of a Part of the Patent Law and Other Related Laws

May 10, 2002
HARAKENZO World Patent & Trademark Patent Law Firm
Patent Attorney Ichiro KANEKO

"Bill for Revision of a Part of the Patent Law and Other Related Laws" was decided at a cabinet meeting on February 19, 2002, and was passed into law on April 11, 2002 (Law No. 24 of 2002) , mainly with a view to protection of intellectual property rights and international harmonization of patent system. This bill is based on "Ideal Status of the Patent Law, Trademark Law, and Other Related Laws Coping with Networked Society", compiled on December 3, 2001, by the Intellectual Property Committee of the Industrial Structure Council. The following will describe the outline of the bill.

I. Aim of the Revision
Two aims of the revision are given as follows:
(1) To realize development of laws in response to new business activities utilizing networks with the rapid advance in information technology, and with such evolution of socio-economic system as a turning point, to reconsider an ideal status of coverage of patent rights and other rights.
(2) To review the application system for patent and utility model in terms of international harmonization of such systems, reduction of burden on applicants, and efficiency in examination by the Japanese Patent Office (JPO).

II. Outline of the Revision
1. Patent Protection Enhancement of Information Assets such as Software and Promotion of Trading on Networks
a. Definition regarding inclusion of computer programs in "product" under the Patent Law
Applications on or after January 10, 2001, are examined under Examination Standard regarding computer program as invention of products.
However, the Civil Law (section 85) defines the "product means tangible items", and the current Patent Law (Section 2 (3)) defines product in consideration that product is used as tangible items. The range of patent protection for computer program, intangible items, is therefore not necessarily clear under the Patent Law.
Considering this issue, the bill defines that "product" under the Patent Law include programs (instructions for computers and combination for obtaining a certain result), and that computer programs, themselves, are protected under Patent Law.
b. Review for Definition of "Working" of Invention
With the rapid spread of broadband communication network such as the Internet, sales and distribution for programs, which are not recorded in the media such as CD-ROM, via electric communication circuits such as the Internet has been expanding.
However, the current Patent Law does not define provision of information assets via the Internet as working of an invention (Section 2(3)). This is a matter of debate over whether the provision of information assets via the Internet applies to 'assignment' as working of an invention in the current Patent Law.
Considering this issue, the bill defines that in the case of the invention regarding programs, the provision via the electric communication circuits such as the Internet applies to "assignment", and that the provision of programs via the Internet is included in working of an invention.

2. Expansion of Definition of Indirect Infringement under the Patent Law
For protection of patentees, the current Patent Law includes acts of assisting to supply parts and materials used for infringement of patent rights to infringers in the act of infringement as so-called indirect infringement (Section 101).
However, to prevent detriment caused by abuse, the current Patent Law defines that the extremely limited articles, that is, "articles to be used exclusively for the manufacture of the product (Section 101(1))" or "articles to be used exclusively for the working of such invention (Section 101(2))" constructs indirect infringement. In judicial precedents, few cases are therefore judged as indirect infringement.
Considering this issue, in addition to the acts conventionally regarded as infringement, the bill defines that acts of manufacturing, assigning, importing, etc., or offering for assignment, etc. of articles essential for resolving problems by the patented invention with bad faith (understanding the invention is patented and the article is likely to be used for working of the invention) apply to infringement of patent rights and other related rights, aiming at enhancement of protection of patentees.

3. Protection of Trademark Used in Business on Networks
In recent years, with expansion of business on networks, provision of goods and services via the Internet have spread, and there is a demand for legally sufficient protection for trademark (mark) displayed on the screen of a portable telephone and a computer of users.
However, the current Trademark Law defines the use of marks, with respect to the trademark given to tangible items (Section 2(3)).
Considering this issue, the bill defines the following acts:
i) Acts of providing the goods on which a mark has been applied via electric communication circuits;
ii) Acts of providing services by displaying the image screen on which a mark has been applied when providing services via the image screen by electromagnetic methods; and
iii) Acts of providing information such as advertisements, price lists, or business papers on which a mark has been applied by electromagnetic methods, as use of marks, aiming at protection for trademarks displayed on the screen of a portable telephone and a computer of users.

4. Reduction of Burden on Applicants and Promotion for Prompt and Precise Examination
a. Separation of claims from specifications
In international applications and patent applications of western developed countries, claims are separated from specifications.
However, our Japanese Patent Law defines that claims are included in specifications (Section 36(3)), and this requires the matching of the domestic application with the application form provided in the PCT and other developed countries, which has been burdensome for applicants.
Considering this issue, the bill defines that claims are independently separated from specifications, which is accompanied by a request for patent application, aiming at reduction of burden on applicants.
b. Development of procedures regarding International Patent Applications
In the Patent Cooperation Treaty (PCT) Alliance held from September 24 to October
3, 2001, it is decided that the time limit of entry for national stage, which is defined in Section 22(1) of the PCT, will be extended from 20 months to 30 months from the priority date, which will be effective on April 1, 2002.
On the other hand, the Japanese current Patent Law (Section 184(4)) defines that the time limit for submitting domestic documents and translated documents for international patent application is 20 months from the priority date (30 months in the case of applications requesting for an international preliminary examination within 19 months from the priority date and selecting Japan as selection country).
Considering this issue, the bill defines that time limit for submitting domestic documents of international patent application is 30 months uniformly.
Furthermore, it defines that submission of translated documents can be possible within 2 months from the date of filing the domestic documents, aiming at promotion for improvement in quality of translated documents, convenience for applicants, and promotion for examination.
Note that, since the said bill has not been effective yet, the time limit of entry for national stage is still 20 months from the priority date as of April 1, 2002.
c. Introduction of System on Disclosure System for Information on Prior Art Invention
The current Patent Law does not demand applicants to disclose information on prior art documents possessed by the applicants to examiners upon filing a patent application.
However, for realization of prompt and precise examinations, it is preferable that applicants disclose information possessed by the applicants to examiners.
Considering this issue, in the bill, the followings are defined:
i) Person who is obtaining a patent must cite location of information such as the name of the document which include prior art invention in the embodiment of the invention;
ii) If an examiner find that there are not location of information such as the name of the document which include prior art invention in the embodiment of the invention, they can so notify for a patent applicant and provide the patent applicant the opportunity for submitting an argument; and
iii) After such a notification by the examiner, if the patent application does not meet the requirement i) despite of amendments of the specification or submission of an argument, the examiner must notify a reason for rejection for the applicant.
Note that, unlike the information disclosure system (IDS) in the U.S., the bill does not define that no citation of information on the prior art invention can be the reason for unenforceable patent rights, and that no disclosure of the above information can be the reason for opposition or invalidity of patent rights.
d. Development of Procedures Regarding International Trademark Registration Defined in the Protocol Relating to the Madrid Agreement The bill defines that with respect to each of the fees for the international trademark registration application, the fee corresponding to the registration fee may be paid if an application is registered in the national stage, as is the case of domestic applications.