IP Law Amendment in 2015｜IP Laws & Practices

A bill of an amendment of the Japanese IP Law was submitted to the current session of the Diet in March 2015, and passed on July 3, 2015, and the Amended IP Law was promulgated on July 10, 2015. The Amendment includes (1) the review of the employee invention system, which historically changes the original belonging of invention from an inventor (employee) to a legal entity (employer), (2) the reduction of the patent and other fees, and (3) Improvement of the provisions for implementing the PLT and STLT.

(1)Review of Employee Invention System(i) Under the old Patent law, a right to obtain a patent regarding an employee invention originally belongs to the employee (inventor), and employers may make a contract and the like with employees in advance that the employees (inventors) shall assign the right to the employers, while, under the new Patent law, the right will originally belong to the employer if any provision in any agreement, employment regulation or any other contract stipulates in advance that the right will be vested in the employer. Even under the new law, the right will not originally belong to the employer, but to the employee (inventor) as is if there is no such provision in advance.

(ii) Under the old Patent law, when an employee (inventor) assigns the right to the employer on the basis of the above contract and the like, the employee (inventor) is entitled to receive reasonable remuneration, which means monetary one only, from the employer, while, under the new Patent law, when an employer originally obtain the right on the basis of the above provision, the employee (inventor) will be entitled to receive reasonable remuneration or any other economic profits, which includes not only monetary one, but also promotion, and the like. The additional resolution accompanying enactment of the bill states that the "reasonable remuneration or any other economic profits" under the new law should be substantially the same as the reasonable remuneration under the old law.

(iii) Under the old Patent law, the Patent Law provides no specific article about guidelines for how to determine the remuneration, while under the new Patent law, the law newly stipulates that the Minister of Economy, Trade and Industry will draw up guidelines for procedures to determine the details of the "reasonable remuneration or any other economic profits". The guidelines will be published soon after the Amended Law becomes effective.

(2) Reduction of Patent and Other Fees(i) Annuities for patent will be reduced by about 10%.
(ii) Registration fee for trademark will be reduced by about 25%.
(iii) Renewal fee for trademark will be reduced by about 20%.

(3) Improvement of Provisions for Implementing PLT and STLT(i) The Amendment is to improve the provisions for implementing the PLT, including the provisions that when an applicant fails to submit a translation of a foreign language written application and other documents within a predetermined period of time, the JPO Commissioner will send a notice to the applicant, and that the applicant is allowed to submit the translation, even after the expiration of the period of time, only if he/she submits it within another predetermined period of time.
(ii) The Amendment is to improve the provisions for implementing the STLT, including the provisions that when an applicant fails to submit a document certifying the applicant's eligibility for the special provisions concerning the time of filing the application within a predetermined period of time, he/she is allowed to submit the document, even after the expiration of the period of time, only if he/she submits it within another predetermined period of time.

(4) Effective DateThis Amendment will become effective within one year from the promulgation date. The specific effective date has not been officially fixed yet, but it is expected around April to June next year.

Kawaguti & Partners