1. JPO Updates JPAA International Activities Center Fujiko Shibata AIPLA Mid-Winter Institute IP Practice in Japan Committee Pre-Meeting Seminar

2. Contents On-going revisions & their summaries Schedule Practical tips 219 May, 20152

3. Ongoing revision Patent Law revision The return of post grant opposition Design Law revision High hurdle to become a member of Hague Agreement Concerning the International Registration of Industrial Designs Trademark Law revision Subject matter will be expanded Patent Attorneys Act revision 319 May, 20153

4. The return of post grant opposition Japanese patent Law has been revised in 1959 (Enforcement Law of the Patent Act (Act No. 122 of April 13, 1959) Before 1958, Law of the Patent Act (1921) Before 1959 Invalidation trial of Patent Right (introduced in 1888) Opposition system (pre-grant, introduced in 1935) 419 May, 20154

5. The return of post grant opposition Revised in 1994 From Pre-grant review to Post-grant review, because of fast track granting and international harmonization. Revised in 2003 Post grant opposition has gone! Will be revised in 2015? Post grant opposition will return 519 May, 20155

6. Statistics for Former Opposition system 619 May, 20156

7. New Opposition system to be Introduced in Japan (1) Reasons for New post grant opposition Lacking novelty, Inventive step ---(Articles 29(1), 29 bis, Article 29(2)) Requirements for specifications and claims ---(Articles 36(4), (6)) Addition of New matter--- (Article 17 bis (3)) Not including claimed invention in an original foreign application---applied only non-Japanese application 719 May, 20157

8. New PGR to be Introduced in Japan (2) Eligible Person for filing an opposition --- No change (Anybody ) Opinion from an opponent---Change! Submitting comments when the patent is corrected non ［ ne ］ bis in idem---No change Not applied– Same evidences can be used in invalidation trial Term for filing an opposition---No change 6 months from issue date of letters patent Fee: 49,500 + 5,500/claim (JP Yen) 819 May, 20158

9. New PGR to be Introduced in Japan (4) January 201419 May, 20159

10. Practical Tips-1 Post-grant review Term for submitting request is short---6 M Japanese translations of English evidences are necessary  Please instruct as early as possible ! Official Fee is not expensive Non [ne] bis in idem is not applied---two chances  Patent holder must be careful January 201419 May, 201510

11. Design Law Revision-1 Public Comments window has been just closed on January 25, 2014(Based on the draft report of Intellectual Property Policy Committee in Industrial Structure Council) Main Issues Becoming a member of Hague Agreement There are many hurdles Protection of image design 1119 May, 201511

12. Design Law Revision-2 Hurdles in the law to be cleared for the design application under Hague Agreement One application includes multiple designs Designs included the application is individually rejected Postpone of publication timing---until 30 month Exception of lack of novelty---the term for filing of certificate will be change (30 days to longer) Related designs---filed by the international publication 1219 May, 201512

13. Design Law Revision-2 Hurdles in the law to be cleared for the design application under Hague Agreement (continued) Partial designs---a guide line is reviewing by WG Design for a set of articles--- reviewing by WG Secret design---not applied for the application under Hague Agreement Self designation---applied Fee payment, receiving an international application ---still considering 1319 May, 201513

14. Design Law Revision-3 Protection of image design ---still considering Pre-examination is assumed Right is given to a function Right is given to an article Post-examination is assumed !! Granted without examination??? 1419 May, 201514

15. Trademark Law revision-1 –Expansion of scope of marks as trademarks –A trademark being composed of moving images –File shows moving will be necessary US Reg. No. 3872001(Int. Reg. No. 1032093) 1519 May, 201515

16. Trademark Law revision-2 Trademark by using hologram Trademark by using plural colors Germany Reg. No. 304532819 Australia Reg. No. 749403 16 19 May, 201516

17. Trademark Law revision-3 Trademark composed of figure and color(s) CTM Reg. No. 2319937 US Reg. No. 3776468 January 201419 May, 201517

18. Marks composed of sound –Sound file will be necessary and scope of the right is found on the basis of a score(?) CTM Reg. No. 8622144 January 201419 May, 201518

19. Practical Tips-2 Trademark Revision Time schedule is unknown---Forced into April of 2015? Details of documents for filing are not clear Please ask Japanese Benrishi before filing of Madrid protocol application January 201419 May, 201519

20. Any Questions? Thank you for your kind attention Ayafune International Patents & Trademarks Fujiko Shibata dania@ayafune.com 2019 May, 201520