|
<Revision Overview>
June 1, 2008 - The Japanese Patent Office (JPO) has published a
notice proposing a number of changes in Japanese patent and
trademark regulations. The goal is to accelerate and optimize
the strategic exploitation of Intellectual Property Rights (IPR)
with a particular emphasis on relieving the fee burden for small
entity status applicants (independent inventors, small business
concerns or non-profit organizations). There are four proposed
new rules, the first of which will go into effect immediately.
The rest should become effective starting January 1, 2009.
The proposed revisions are as follows: (1) a reduction in patent
and trademark-related fees; (2) revisions in the period for
filing a demand for a trial against an examiner's final decision
of rejection; (3) the updating of the JPO's electronic system to
increase the number of intellectual property offices
participating in the electronic transfer of priority documents;
(4) revisions in the registration system for non-exclusive
licensing of utility models.
<Discussion of Specific Rules>
I.
Adjustments in Patent and Trademark Fees (effective June 1,
2008)
Effective June 1, 2008, the JPO will implement an adjustment in patent and trademark-related
fees. The JPO's patent and trademark rates have long been higher than other foreign countries,
causing complaints, particularly from small and mid-sized companies
that suffer the brunt of the costs. The JPO’s new fee regulations will introduce discounts in both patents and trademark fees with official patent fees going down an average of 12%,
and official trademark fees an average of 43%.
The deepest discounts will be for patents 10 years and older.
The average official fee for a 10-year-old patent will go down from $4900 to $4300, and an average 20-year-old patent from $16,800 to $13,400. (Note: fees will vary depending
upon the number of claims in the specifications). Official
trademark fees will also come down, with biggest reductions for trademarks 10 years or older. The average
10-year-old trademark's renewal fee will be cut down from $1,510 to $485 (note: fees will vary depending upon the
number of classifications). Below is a table of the crucial fee
changes:
1. Application Fees
Old fees
New fees
*International Patent applications (approx.) $160
(approx.) $150
entering into the national
phase in Japan (under the PCT)
*Trademark (approx.) $210 per classification (approx.) $230
per classification
2. Annual Fees/Registration Fees
*Patents (For patent applications requested
for examination on or after April1, 2004)
10-25th year: annually (approx.) $812+$64 per claim
(approx.) $612+$48 per claim
*Trademarks Registration Fee (approx.) $660 per classification (approx.)
$380 per classification
*Renewal Fee (approx.) $1510 per classification (approx.) $485
per classification
For more details on the new
schedule of fees,
click here
for a link to the JPO web site.
II. New Licensee Protection
Through Provisional License Registration
and Denial of Public Access to Privileged License Information
(effective January 1, 2009)
Background and New Rules:
(1) The pending
period beginning with the filing of a patent application to receiving a patent
can take several years. However, the need to license the right
to patent before a patent is granted is on the rise in Japan.
This need is greatest for university TLOs, university
spinouts, and other venture companies because such applicants need to start collecting
royalties early in the application process, so as to supplement continued research.
In Japan, license
agreements for pending patents do not provide
executory protection for licensees in the event the licensor
goes bankrupt.
The licensor in such a case can assign the license agreement to
a third party, resulting in two possible outcomes: Termination of the license causing the licensee to lose rights
over the licensed technology, or altering the license in contravention of the license terms.
Therefore, the proposed
new regulation will put in place a registration system in which
license agreements for patent pending applications can be filed
with the JPO as a "provisional license," thus
protecting the licensee's licensing rights against the new
owner's injunction, demand for compensation, or contract
annulment. This new regulation will go into effect in January of next year.
(2) In
response to an ever-greater demand for licensee protection, the JPO has introduced a revision in the current non-exclusive license registration's
license disclosure requirement. All except to the parties
involved, the new regulation makes inaccessible certain sensitive information to the general public. The following information will be considered
privileged starting January 1, 2009: the licensee’s name, the
license's scope of claim, and the name of the bankruptcy
administrator.
(*Note: Exclusive licenses confer rights to the exclusion of all
others with a serious impact on other parties. Therefore, its
disclosure requirements will remain the same.)
III. Extending The Period for
Filing a Demand for a Trial
Against An Examiner's Final Decision of Rejection
(effective January 1, 2009)
Background and New Rules:
The JPO has responded to a long-standing complaint that its permitted period for filing a demand for a trial is
too short. The complaint seems justified, in view of the period of time
allowed by other intellectual property offices: 3 months
in the U.S., 2 months in the E.U. and 3 months in China. The new
time table is as follows:
For Japanese applications, the
period for filing a demand for a trial
against an examiner's final decision will be extended from 30
days to 3 months.
(2) For foreign applications, the
period for filing a demand for a trial against an examiner's
final decision will be extended from 3 months to 4 months. Prior
to the revision, the applicant was given 60 days to appeal after
receiving the final refusal and an additional 30 days
to file an amendment. The new
regulation requires that the appeal and the amendment be filed
at the same time.
(3) For designs and trademarks, the
period for filing a demand for a trial
against an examiner's final decision of rejection and for the
amendment will also be extended from 30 days to 3 months.
IV. Increasing the number of
foreign Intellectual Property Offices to Participate in
Electronically Transferred Priority Documents
(effective January 1, 2009)
The JPO has expanded the number of foreign intellectual property
offices permitted to transfer electronically certified copies of
priority documents. In order to support a smooth application
process and a smooth administrative procedure, not only will
priority documents from the original countries be
accepted, but electronic transfer of priority documents from
other international offices will also be accepted.
(Posted June 2, 2008) |
