February issue [Legal Affairs] Newsletter

Chinese designs: Amendments to the Patent Law Implementation Regulations and Examination Guidelines
2024Enforced on January 1th

In China, since the fourth revision of the Patent Law went into effect on June 2021, 6, it has taken time to revise the Patent Law Implementation Regulations and Patent Examination Guidelines, but it was finally revised on January 1, 4. The revised law has come into effect.

In this newsletter, we would like to introduce the "partial design" part of the revised law, which will have a major impact when filing a design application from Japan to China.

Product name of partial design

　Write the name of both the entire article and the part to be protected.

　　(Example) "Car door", "Mobile phone camera"

Partial design drawing

　・A drawing of the entire item is required.

　- Indicate the area to be protected using a combination of broken lines and solid lines, coloring, etc.

　- A dashed-dotted line can be used to indicate the boundary between a dashed line and a solid line.

Brief explanation of partial design

　・Describe the part to be protected, except when indicated by a combination of broken lines and solid lines.

　- If necessary, state the purpose of the part to be protected.

　・Specified drawings expressing design points should include the parts to be protected.

Registration requirements for partial designs

　・A relatively independent area of ​​a product or a part that does not constitute a relatively complete design unit cannot be registered as a partial design. (Examination Guidelines: Part 1, Chapter 3, Section 7.4)

　- If the design consists only of a pattern on the surface of an article or a combination of pattern and color, it cannot be registered as a partial design. (Examination Guidelines: Part 1, Chapter 3, Section 7.4)

One design of a partial design

　Two or more partial designs of the same article that have no connection relationship can be filed as a single design if they are related in function or design and have a specific visual effect. (Examination Guidelines: Part 3, Chapter 9, Section XNUMX)

The design of the braid

A partial design cannot be included in a set design application. (Examination Guidelines: Part 1, Chapter 3, Section 9.2)

Divisional application for partial design

　If the parent application is a partial design, a divisional application cannot be filed for the whole article or other parts. (Examination Guidelines: Part 1, Chapter 3, Section 9.4.2)

Determination of similarity of partial designs

　Regarding partial designs, when determining whether the categories of articles are the same or similar, it is necessary to consider the use of both the article as a whole and the part to be protected. (Examination Guidelines: Part 4, Chapter 5, Section 5.1)

 

Agency for Cultural Affairs, “Regarding AI and Copyright”
About the idea (draft)” published

　At the 5th meeting of the Legal System Subcommittee of the Copyright Subcommittee of the Council for Cultural Affairs held on December 20, 2023, the Agency for Cultural Affairs announced the ``Considerations regarding AI and copyright (draft).''

　This letter introduces some of the Agency for Cultural Affairs' current thinking regarding the interpretation of Article 30-4 of the Copyright Act and its scope of application.

Copyright Act Article 30-4

(Use not for the purpose of enjoying the thoughts or feelings expressed in the work)

Article 30-4　

In the following cases and in other cases where the purpose is not for the purpose of enjoying the ideas or feelings expressed in the work for oneself or for others to enjoy it, the work may be processed by any method to the extent deemed necessary. It can be used regardless of the However, this shall not apply if it would unduly harm the interests of the copyright holder in light of the type and purpose of the work and the mode of use.

(1) Where the work is used for testing for the development or practical application of technology related to sound recording, video recording, or other use of the work;

(ii) Information analysis (extracting information related to language, sounds, images, and other elements that make up the information from a large number of works and other large amounts of information, and performing comparison, classification, and other analysis. Section 40) The same applies in Article 7-5, Paragraph 1, Item 2).

(iii) In addition to the cases listed in the preceding two items, the use or other use of a work in the process of information processing by a computer (in the case of a program work), without human perception of the expression of the work. (excluding the execution of the work on a computer)

The article stipulates that use can be made without the permission of the copyright holder "if the purpose is not to enjoy the thoughts or feelings for oneself or to allow others to enjoy them" (hereinafter referred to as "non-enjoyment purposes"). Article 30-4 of the Power Act). Paragraph 2 of the same article cites "cases where information is used for information analysis (...)". Therefore, under current copyright law, if generated AI is used for information analysis, including for learning content, it falls under non-enjoyment purposes and cannot be used without the permission of the copyright holder. It has been understood that it is possible.

However, a single act of use may have multiple purposes at the same time, and even if a certain act of use is performed for a non-enjoyable purpose, such as "for information analysis (...)" If even one purpose of enjoyment is evaluated to coexist with this purpose of non-enjoyment, the requirements of the same article are not met, and the rights restriction provisions of Article 30-4 of the Act cannot be applied. .

Regarding generative AI, the following are the specific cases in which it is assessed that the purpose of enjoyment coexists:

■Article 30-4 of the Act stipulates that the use of works for learning to develop AI other than generative AI (AI that performs recognition, identification, human judgment support, etc.), and works for technology development and practical application testing. This also applies to acts such as the use of software, reverse engineering of programs, etc.

Summary

　Article 30-4 of the Copyright Act was established as a rights restriction provision that can flexibly respond to new ways of using copyrighted works due to technological innovation. At the time of the legislation, it is thought that AI learning was intended for use in Internet search services, etc. However, recent advances in generative AI technology have been tremendous, and it is becoming widespread not only among businesses but also among the general public, and the interpretation and scope of application of the same article are increasingly being questioned. Therefore, there is a need to formulate rules and reorganize the scope of application with generative AI in mind.

　According to the draft plan recently released by the Agency for Cultural Affairs,Even when a generated AI learns a copyrighted work, it is indicated that permission from the rights holder will be required if the purpose is to output a portion of the copyrighted work.

According to the Agency for Cultural Affairs' schedule, public comments will be held in January 2024, and a report will be made at the Copyright Subcommittee of the Council for Cultural Affairs in March of the same year. We plan to provide further updates in our newsletter.

Reference URL: https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/hoseido/r05_05/

[Reference] https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/hoseido/r05_05/pdf/93980701_01.pdf

 

Revised Trademark Law will come into effect on April 6, 4
Introduction of consent system, including other people's names
Relaxation of trademark registration requirements

　Part of the Trademark Law, etc. (Patent Law, Utility Model Law, Design Law, Trademark Law, Law Concerning Special Provisions for Procedures Related to Industrial Property, etc.) was revised by the "Act for Partial Amendment of the Unfair Competition Prevention Law, etc." be done.

　This revision is scheduled to (i) introduce the consent system, and (ii) relax the requirements for registering trademarks that include the name of another person. It will come into effect from the 6st.

*(ii)will apply to applications filed after the enforcement date (April 6, 4).

Summary of the amendment

(i) Outlet system

　With this amendment, Paragraph 4 has been newly established in Article 4 of the Trademark Act, and even if a trademark falls under Paragraph 1, Item 11 of the same article, the prior registration must be registered with the consent of the trademark right holder. Registration is permitted if there is no risk of confusion between the trademark and the applied trademark.

In addition, the following provisions will be newly established or partially revised in order to ensure the prevention of confusion after registration regarding trademarks that are concurrently registered due to the application of the consent system.

・If the use of one right holder is likely to harm the business interests of the other right holder, request that an appropriate indication be attached to the use to prevent confusion between the two trademarks (confusion prevention). (Request for display) (Trademark Law Article 24-4, Items 1 and 2).

- If one right holder uses a trademark that causes confusion with goods or services related to the business of another right holder for the purpose of unfair competition, no one may file a trial (trial for cancellation of unfair use) to cancel the trademark registration. (Article 52-2, Paragraph 1 of the Act).

Source: Japan Patent Office <https://www.jpo.go.jp/system/trademark/gaiyo/consent/index.html>

(ii) Relaxation of registration requirements for trademarks containing another person's name

　Under the Trademark Law before the amendment, if a trademark included in the composition of an application for trademark registration includes the name of another person, it could not be registered as a trademark without the consent of the other person. In the revised Trademark Law, a requirement for popularity has been added to the "name of another person" section: "The name must be one that is widely recognized among consumers in the field of goods or services in which the trademark is used." Article 4, Paragraph 1, Item 8 of the Act). As a result, in the case of a trademark that includes the name of another person who does not meet the name recognition requirements, the consent of the other person is not required, and if the requirements of the Cabinet Order are met (㋐ ``Substantial relevance'' ㋑ ``Not for fraudulent purposes''), the trademark Registration becomes possible.

 

Source: Japan Patent Office <https://www.jpo.go.jp/system/trademark/gaiyo/seidogaiyo/shimei.html>

 

 

Newsletter translated into English

China Designs: Revision of Implementing Regulations of the Patent Law and Examination Guidelines – Entered into force on January 20, 2024

Since the 4th Amendment of the Patent Law was implemented on June 1, 2021, it has taken a long time to amend the Implementing Regulations of the Patent Law and the Guidelines for Patent Examination in China, which finally came into effect on January 20, 2024 .

In this newsletter, we would like to mainly introduce from revised law “partial designs”, which will have a significant impact on design applications from Japan to China.

Name of the article of a partial design

The name of the article as a whole and the name of the part to be protected must be stated.

(Examples: “door of a car”, “camera of a cellular phone”)

Drawings of the partial design

　・A drawing of the entire article is required.

　・The part to be protected shall be indicated by a combination of dashed and solid lines, with or without coloring, etc.

　・A dashed dotted line may be used to indicate the boundary between dashed and solid lines.

Brief explanation of partial design

　・The part to be protected should be described, except in cases where a combination of dashed and solid lines is used.

　・The use of the part to be protected should be indicated, if necessary.

　・Designation drawings expressing the essentials of the design shall include the parts sought to be protected.

Requirements for registration of a partial design

　・Any part of a product that does not constitute a relatively independent area or a relatively complete design unit may not be registered as a partial design. (Examination Guidelines: Part 1, Chapter 3, Section 7.4)

　・A design which consists only of a pattern on the surface of an article or a combination of pattern and color is not registrable as a partial design. (Examination Guidelines: Part 1, Chapter 3, Section 7.4)

Single design or a partial design

Two or more unconnected partial designs of the same article may be filed as a single design if they are related in function or design and have a specific visual effect. ((Examination Guidelines: Part 1, Chapter 3, Section 9)

Design of an assembly

A partial design may not be included in an application for a design of an assembly. (Examination Guidelines: Part 1, Chapter 3, Section 9.2)

Divisional application of a partial design

If the parent application is a partial design, a divisional application may not be filed for the whole or any other part of the article. (Examination Guidelines: Part 1, Chapter 3, Section 9.4.2)

Judgment as to whether a partial design is similar or not

When determining the identity or similarity of the category of articles for a partial design, it is necessary to consider the use of both the whole article and the part to be protected. (Examination Guidelines: Part 4, Chapter 5, Section 5.1)

 

Agency for Cultural Affairs releases “Draft Approach to AI and Copyright”

At the 5th meeting of the Subcommittee on Legal System of the Copyright Subcommittee of the Council for Cultural Affairs held on December 20, 2023, the Agency for Cultural Affairs published a “Draft Approach to AI and Copyright”.

This article introduces some of the Agency's current thinking on the interpretation of Article 30-4 of the Copyright Act and its scope of application.

Article 30-4 of the Copyright Act

(Exploitation without the Purpose of Enjoying the Thoughts or Sentiments Expressed in a Work)

Section 30-4

It is permissible to exploit a work, in any way and to the extent considered necessary, in any of the following cases, or in any other case in which it is not a person's purpose to personally enjoy or cause another person to enjoy the thoughts or sentiments expressed in that work; provided, however, that this does not apply if the action would unreasonably prejudice the interests of the copyright owner in light of the nature or purpose of the work or the circumstances of its exploitation:

(i) if it is done for use in testing to develop or put into practical use technology that is connected with the recording of sounds or visuals of a work or other such exploitation;

(ii) if it is done for use in data analysis (meaning the extraction, comparison, classification, or other statistical analysis of the constituent language, sounds, images, or other elemental data from a large number of works or a large volume of other such data; the same applies in Article 47-5, paragraph (1), item (ii));

(iii) if it is exploited in the course of computer data processing or otherwise exploited in a way that does not involve what is expressed in the work being perceived by the human senses (for works of computer programming, such exploitation excludes the execution of the work on a computer), beyond as set forth in the preceding two items

Article 30-4 of the Copyright Act stipulates that “when the purpose is not to personally enjoy or cause another person to thoughts enjoy or sentiments” (hereinafter referred to as “non-enjoyment purpose”), the use may be made without the permission of the copyright holder (Article 30-4, Pillar 1 of the Copyright Act). Paragraph 2 of the same Article states “use in data analysis”. Therefore, under the current Copyright Law, it has been understood that any use of material for data analysis, including the training of generative AI, falls under the category of a non-enjoyment purpose and thus can be carried out without the permission of the copyright holder.

However, there can be cases where multiple purposes coexist in a single act of use. In such a case, even if one or more purposes of a certain act of use falls under the category of “use in data analysis” or another non-enjoyment purpose, if any of the purposes is deemed to be an enjoyment purpose, the requirements of Article 30-4 of the Act are not met and the rights limitation provision of Article 30-4 of the Act may not be applied.

In the case of generative AI, the following cases can be assumed as specific examples of cases in which the an enjoyment purpose is regarded as coexisting with a non-enjoyment purpose.

Article 30-4 of the Copyright Act also covers the use of works for learning in order to develop AI other than generative AI (AI that performs recognition, identification, human judgment support, etc.), use of works for technological development and practical use testing, reverse engineering of programs, and other acts.

Summary

Article 30-4 of the Copyright Act was established as a right limitation provision to flexibly respond to new modes of use of copyrighted works in line with technological innovation. At the time of the legislation, it was believed that AI learning was intended for Internet search services and the like. However, the recent technological progress of generative AI has been tremendous, and it is becoming widely used not only by businesses but also by the general public, which has led to an increasing number of problematic situations regarding the interpretation and scope of application of the Article. Therefore, there is a need to formulate rules and reorganize the scope of application in anticipation of generated AI.

According to a draft proposal recently released by the Agency for Cultural Affairs, the direction is that even in the case of having a generative AI learn a copyrighted work, permission of the right holder is required when, for example, the purpose is to output a part of the copyrighted work.

According to the Agency's schedule, public comments will be made during January 2024, and a report will be made at the Copyright Subcommittee of the Council for Cultural Affairs in March of the same year. We plan to provide further updates in our newsletter.

Reference URL: https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/hoseido/r05_05/

[See also] https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/hoseido/r05_05/pdf/93980701_01.pdf

 

Revised Trademark Law Comes into Effect on April 1, 2024 – Introduction of Consent System, Relaxation of Requirements for Registration of Trademarks Containing Names of Others

The Trademark Law, etc. (Patent Law, Utility Model Law, Design Law, Trademark Law, Law Concerning Special Provisions for Procedures, etc. concerning Industrial Property Rights, etc.) will be partially amended by the “Law for Partial Amendment of Unfair Competition Prevention Law, etc.”

The amendments will (i) introduce a “Consent System” and (ii) ease the requirements for registration of trademarks that contain the name of another person. The provisions of the revised Trademark Law will come into effect as of April 1, 2024.

*(ii) below will apply to applications filed on and after the effective date (April 1, 2024).

Outline of the Amendment

(i) Consent system

The new amendment establishes Article 4(4) of the Trademark Law, which provides that a trademark that falls under Article 4(1)(xi) of the Trademark Law may be registered if the prior registered trademark owner's consent has been obtained and there is no likelihood of confusion between the prior registered trademark and the applied-for trademark.

In addition, the following provisions will be newly established or partially revised to ensure the prevention of confusion after registration of a trademark that has been registered concurrently by applying the Consent System.

・Where the use of a trademark by a first proprietor is likely to harm the business interests of a second proprietor, the second proprietor may demand that an indication suitable for preventing confusion between the two trademarks be attached to the use of the trademark (Article 24 -4, Items 1 and 2 of the Trademark Law).

・Where a first right holder uses a trademark in a manner that causes confusion with the goods or services pertaining to the business of a second right holder for the purpose of unfair competition, any person may file a request for a trial for cancellation of the trademark registration (trial for cancellation due to unfair use) (Article 52-2(1) of the Trademark Law).

Source: Japan Patent Office＜https://www.jpo.go.jp/system/trademark/gaiyo/consent/index.html>

(ii) Relaxation of requirements for registration of trademarks containing the name of another person

Under the Trademark Law prior to the amendment, an application for registration of a trademark that contains the name of another person in the composition thereof could not be registered without the consent of that person. Under the revised Trademark Law, the “name of another person ” is now limited to “a name that is widely recognized among consumers in the field of the goods or services in which the trademark is used.” (Article 4(1)(viii) of the Trademark Law). As a result, a trademark that includes the name of another person which does not meet the name recognition requirement does not need the consent of that person, and can be registered as long as it meets the requirements of the Cabinet Order ((a) “Reasonable relationship” and ( b) “No dishonest purpose”).

Source: Japan Patent Office＜https://www.jpo.go.jp/system/trademark/gaiyo/seidogaiyo/shimei.html>