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The Patent Law (including Utility Model Law and corresponding part of Design Law) and Trademark Law were partially reviewed.  The revision was made mainly for coping with the increase of network businesses, for promoting international harmony and reducing the burden of applicants and promoting speedy and precise examination.

 

1.      Reinforcement of Patent Protection for Information-based Property such as Software and Enhancement of Network Transactions

 

　　Existing legislation was drawn up with the concept of inventions being utilized as tangible items. As a result the extent that computer programs themselves as intangible items are protected under the Patent Law is not necessarily obvious.  This revision was made to clearly show that programs or the like is included in “invention of tangible items”.

The phrase “programs or the like” refers to programs and data structures (aggregation of data having specific structures, such as database), whereas each data (for example, aggregation of data listed with no rule) is not included in “programs or the like”.

Moreover, in view of the fact that the sale/distribution via the Internet of programs not stored on such media as CD-ROM has been on the rise as a result of the popularization of broadband, the amendment was made to clearly show that transmission of patented programs over the network without approval falls under the category of infringement of the patent right.

This amendment came into force on September 1, 2002.

 

2.      Expansion of Provisions for Indirect Infringement of Patent Law

 

Under existing legislation, activities to aid and abet the infringement of the patent right by providing parts or materials used therefor are included in the activities of infringement; however, there are many judicial precedents in which infringement has been admitted since the subject of the law's application is limited to exclusive parts (i.e., materials used only for production).

From the viewpoint of reinforcing protection of the right, the amendment expanded the scope of indirect infringement to include the activity of providing parts with malicious intent (knowing that it is a patented invention and that it is used for the purpose of infringement).

This amendment of rule will come into force on January 1, 2003.

The revised rule of indirect infringement will also be applied to the right established before the enforcement of this revision, whereas the rule is applied to an act after the enforcement of the revision.

 

3.      Reinforcing Protection of Trust for Trademarks used in Internet Business

 

Existing legislation has been drawn up with trademarks attached to tangible items in mind. In recent years, due to the increase of network businesses, provision of commodities on the Internet has been promoted. Consequently sufficient protection for trademarks displayed on the screens of PCs and mobile phones of users is needed.

Under such circumstances, the amendment shows clearly that such activity as to use trademarks by displaying them on screens in conjunction with business activities such as commodity distribution, provision of services, and advertising via networks falls under the category of trademark infringement.

With this amendment, as designated commodity to be distributed on the Internet, computer programs and “electronic publications” are added to the commodity in classification 9.

This amendment came into force on September 1, 2002.

 

4.      Reduction of Applicant Burden and Promotion of Speedy and Efficient Examination

 

A. Separation Of The Scope Of The Patent Claim From The Specification

The burden of application preparation on the part of applicants was reduced by making application procedures compatible with the PCT international application as well as applications of advanced nations.

This amendment of the rule for separating the scope of the patent claim from the specification will come into force within 18 months from April 17, 2002 (the date of enforcement is not determined as of September 19, 2002).

 

B. Separation Of The Scope Of The Patent Claim From The Specification

The deadline of the submission of domestic documents for international application is extended to as long as 30 months uniformly in line with such a resolution of the Assembly of the International Patent Cooperation Treaty Union, and a grace period of two months for the submission of translations is provided to enhance the quality of translations, user convenience and examination efficiency

The amendment of the rule for extending the deadline of the submission of domestic documents for international application to as long as 30 months came into force on September 1, 2002, and is applied to applications which are within due date on the day of enforcement.

In the case where a domestic document (document stating the applicant’s name, title, address or residence or the inventor’s name, address or residence, and the international application number or the like) are submitted in the period from two months before the due datae for submission of the domestic documents to the due date, a translation of the document is allowed to be submitted within two months from the submission date of the domestic document.  (This amendment came into force on September 1, 2002. and is applied to applications which are within due date on the day of enforcement.).

 

C. Introduction Of A Disclosure System Of Prior Art Information

Any prior art documents known at the time of filing of an application must be identified in the Detailed Description of the Invention.  Documents of prior applications that have not yet been laid opened at the time of filing of the application need not to be identified.  (Note that, even if they are identified, the conduct would not cause any problem.)

It is currently understood that, unlike the duty of disclosure in U.S., failure to disclose such documents would not give rise to a substantial risk that any patent granted on the application will be unenforceable or invalid due to inequitable conduct.

 

D. Installment Payment Of International Trademark Registration Individual Fees

Among the individual fees for international trademark registration, allow payment of the registration fee to be made only when the application is granted domestic registration, the same as for domestic applications.

The installment payment of international trademark registration individual fee will come into force on January 1, 2003, and will be applied to applications filed within a period to be defined after the enforcement of the revision.