Katzarov’´s Manual on Industrial Property

Patents of Invention

– The Patent Law, in force since April 1, 1960, revised by the Law of 1970, effective from January 1, 1971.
– Different Revisions introduced from 1976 to 2009.
– The Revised Patent Act 2011, effective from April 1, 2012.
– The recent Revisions include:
  – effective from April 1, 2016.
  – effective from June 9, 2018.
  – effective from April 1, 2020.
  – effective from October 1, 2020.
  – effective from April 1, 2022.
  – effective from April 1, 2023.

Notes: the opposition system has been reintroduced since April 1, 2015.
Further, in line with the legal systems overseas, the Patent Law was revised on April 1, 2015 to take relief measures so that applicants are entitled to extend certain periods required for filing, examination, and other procedures when they have compelling reasons, e.g., following disasters, etc.

Membership in International Conventions

– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), effective from July 27, 1970.
– Convention Establishing the World Intellectual Property Organization (WIPO), effective from April 20, 1975.
– Strasbourg Agreement Concerning the International Patent Classification, effective from August 18, 1977. – Patent Cooperation Treaty (PCT), effective from October 1, 1978.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, effective from August 19, 1980.
– WTO’s TRIPS Agreement, effective from January 1, 1995.
– Patent Law Treaty, effective from June 11, 2016.

Filing

Applicant: the applicant can be either the inventor(s) or his/her assignee(s), whether an individual or a corporate body.

Foreigners or nationals not living in the country: must appoint an agent living in Japan.

Protection of foreigners: the following persons are entitled to protection: (1) a foreigner domiciled or residing in Japan; (2) a foreigner who is a national of any country which is a member State of the Paris Convention or WTO; (3) a foreigner domiciled or residing in any country which is a member State of the Paris Convention; (4) a foreigner who is a national of a country which permits Japanese nationals to obtain patent rights.

Naming of inventor(s): the name(s) of the inventor(s) must be given in the application document, and is mentioned in the Official Patent Gazette and Letters Patent.

Kinds of protection: ordinary patent only (additional patent system has been revoked).

Confirmation patents: not provided for.

Secret patents: not provided for. However, a law covering a so-called "secret patent system" was enacted in May 2022, and will come into force in the near future.

“Provisional” applications: under the revised Patent Act effective from April 1, 2016, it is possible to obtain a patent application date with the required information and, for example, a research paper without submitting claims.

Paris Convention priority: multiple priorities can be claimed on the basis of two or more original patent applications; an applicant cannot claim any priority after the filing of an application. Priority certificate(s) must be filed within sixteen months from the earliest Convention priority date. When priority is based upon a European patent application, a Korean patent application, a U.S. patent application, or a Taiwan patent application, the priority document need not be filed because of an electronic transfer system established between these Patent Offices and the Japanese Patent Office (JPO). This electronic transfer system is expanded to member countries of the Paris Convention and WIPO from January 2009.

Inner priority: if a later application is filed within one year from the date of filing of an earlier domestic application, the applicant can claim priority from the earlier application. The earlier application will later be regarded as being withdrawn. If the applicant has claimed Paris Convention priority for the earlier application based on a foreign application, the effect of the inner priority system does not apply to what is disclosed in the original foreign application.

Notion of the invention: the creation of a high level technical idea utilizing natural laws.

Novelty: not considered as novel are (1) inventions which were publicly known in Japan or elsewhere prior to the filing of the patent application; (2) inventions which were publicly worked in Japan or elsewhere prior to the filing of the patent application; (3) inventions which were described in a distributed publication or made available to the public through electric telecommunication lines in Japan or elsewhere prior to the filing of the patent application.

Novelty grace period: twelve months for an application filed on or after June 9, 2018. An invention: (1) made public through actions of a person having the right to obtain a patent; or (2) disclosed against the will of the person having the right to obtain a patent, shall be deemed not to lose novelty, provided that a patent application is filed within twelve months from the date of disclosure, and the disclosure is made on or after December 9, 2017. For an application filed on or after April 1, 2012, an invention: (1) made public through actions of a person having the right to obtain a patent; or (2) disclosed against the will of the person having the right to obtain a patent, shall be deemed not to lose novelty, provided that a patent application is filed within six months from the date of disclosure. For an application filed before this date, an invention disclosed: (1) by experiment, presentation in a printed publication or technical conference by the person having the right to obtain a patent; (2) against the will of the person having the right to obtain a patent; or (3) at an exhibition, shall be deemed not to lose novelty, provided that a patent application is filed within six months from the date of disclosure.

Exceptions to protection (unpatentable inventions): (1) inventions contrary to public order, good morals or public health; (2) inventions which are not new; (3) inventions which do not involve an inventive step; (4) inventions which cannot be applied to industry.

Patentable: chemical substances, medicines (including the second indications), foods, etc. are accepted as patentable subject matter, however, methods for treatment of the human body by surgery or therapy and diagnostic methods practiced on the human body are not allowed.

New plant varieties: may be protected under the patent law provided that the requirements for patentability are complied with. (Note that new plant varieties may also be protected under the Seed and Seedlings Law of 1998; protection under that Law may be obtained by nationals and residents of Japan and nationals and residents of another country member to the UPOV Convention.)

Computer software: the possibility of patent protection for computer-related inventions has become more flexible. Computer programs directed to a controlled object are patentable and there could be the possibility that computer programs themselves are patentable if they are recited in the claims in such a manner that they are conducted in computer hardware. Section 2(3) of the Patent Law has been amended to include computer programs within the definition of a product and to include the provision of the computer program over electronic communication lines within the definition of assigning or leasing a product. This change was effected to clarify the status of computer programs. A computer program, though not a tangible thing, is given the status of a product under the Patent Law. Whether a patent is directed to a product or a method, for example, is relevant to the remedies available for enforcement. Furthermore, the definitions of assignment and leasing were extended to clarify that sale and distribution of a patented computer program over the Internet, etc., without permission, will constitute infringement. Computer software as such may also be protected under the Copyright Law.

Semiconductors: special protection relating to semiconductor chips may be obtained under the Act Concerning the Circuit Layout of a Semiconductor Integrated Circuit of 1985 (see Chapter VI. “Topographies of Semiconductor Products“).

English-language application: although all JPO proceedings are performed in the Japanese language, it is possible to file an initial patent application in English. In this case, a Japanese translation must be filed within fourteen months from the filing date, along with an additional fee. When an English-language application claims priority under the Paris Convention on an earlier application, the filing date is the filing date of the earlier application. Though the filing date for the application will be that of the English application, it is the Japanese translation that will be examined. The English specification can be used as a basis for making minor word corrections to the Japanese specification, although the English specification itself may not be amended.

Amendment of application: an amendment may be made to the application document, claims, description and drawings, but an amendment to the claims, description and the drawings cannot add any matter that was not substantially described in the claims, description and the drawings initially filed at the time of application. In response to the second or subsequent official action that is made final and the final decision for rejection, permissible scope of the amendment to the claims is strictly restricted (see Section 4. below: “Time limitation on filing amendments“). For applications filed after April 1, 2007, so-called “scope-shifting amendment” is prohibited. However, the strict practice on “unity of invention” and “scope-shifting amendment” has been heavily criticized and changed to relaxed practice. In Office Actions issued on or after July 1, 2013, inventions that meet certain requirements shall be the subject of the examination, as well as the inventions that meet the requirements of unity of invention.

Multiple-claim system: a plurality of claims may be filed in one application provided that they satisfy the requirements set out in the next item. Each claim is considered to define one invention whether it is of an independent form or dependent form; applicants can select either form at will. There is no limit on the number of claims. However, each claim beyond the first requires additional official fees for substantive examination and maintenance. For patent applications filed on or after April 1, 2022, it is no longer permissible to utilize multi-multi dependent claims.

Application for several related inventions: a plurality of claimed inventions can be included in a single application provided that they have a technical relationship forming a single general inventive concept as provided for in an ordinance of the Ministry of Economy, Trade and Industry.

Patent application on the basis of utility model registration: an owner of a utility model right can file a new patent application based on his/her utility model registration within three years from the filing date of the utility model application. This system is to be applied to utility model registrations of utility model applications filed on or after April 1, 2005. After a request for Utility Model Technological Assessment has been filed by the owner of the utility model right, a new patent application based on his/her utility model registration is not allowed.

Territory covered: the whole territory of Japan.

Filing requirements for an application (to be sent to resident agent):
1. Claim(s);
2. A description;
3. Power of attorney (no legalization);
4. Drawings, a sheet for figures must be A4 size (21 x 29.7 cm). The area available for figures on a sheet is 15 x 24.5 cm. Figures on a sheet must be separated in the longitudinal direction of the sheet;
5. Abstract;
6. Name(s) and address(es) of the inventor(s) and assignee(s);
7. Certified copy of the basic application, if Convention priority is claimed.

Filing without one or more requirements: a Convention priority document may be filed within sixteen months from the priority date. The JPO does not require a power of attorney for a patent attorney to file a patent application. A power of attorney is required if the invention is finally rejected and appealed, or if the patent is granted.

Inventions in the microbiological field: when filing a patent application for an invention utilizing a microorganism, it is generally required that the microorganism be deposited with the National Institute of Technology and Evaluation (NITE), Japan, before filing and that the deposit number be indicated in the specification. If an applicant claims the Paris Convention priority based on the first application and has deposited the microorganism at the time of filing of the first application in one of the organizations designated by the Commissioner of the Japanese Patent Office, the subdivision of the microorganism in Japan may be deferred until the time of registration of the patent.

National phase of a PCT application in a foreign country: the fee and translation of the filing documents must be submitted within 30 months from the priority date (Chapters I and II). When a paper stating the following is submitted to the Commissioner of the Patent Office within the last two months of the term of 30 months from the priority date, the translation can be filed within two months from the filing date of the paper, which must contain: (1) the name and the domicile or residence of the applicant; (2) the name and the domicile or residence of the inventor; (3) the international application number and other matters provided for in an ordinance of the Ministry of Economy, Trade and Industry. From April 1, 2012, remedial procedures may be applied if a legitimate reason exists with regard to expiration of a time limit for filing a translation, and if a translation is filed within one year after the lapse of the period for filing translation and within two months after the reason no longer exists. From April 1, 2023, remedial procedures may be applied if the failure is "unintentional."

Publication (laying open): in Japan, all applications are laid open (published in the Patent Office Official Gazette) eighteen months after their filing or priority date, whichever is earlier. After the application has been published, any third party may submit relevant prior art to the JPO. An applicant may also request early publication of the patent application at any time so long as certain conditions have been met, including submission of priority documents and a Japanese language translation of an application filed in a foreign language. Withdrawal of a request for expedited publication is not permitted and, generally, the application is published about three months after the request is filed. Provisional patent protection is available based on a published application. A notice letter may be sent to potential infringers demanding compensation for the unauthorized exploitation of a claimed invention, as published, which is enforceable after issuance of a patent. Accordingly, in certain situations, the expedited publication procedure should be used as a means for an early notice letter to potential infringers. Such an approach can serve to enhance damage awards and bring potential infringers to the negotiating table.

Examination

Request for examination: the applicant is free to defer the filing of a request for examination for a period of three years from the date of application. If examination has not been requested within the said period, the application is deemed to have been withdrawn at the end of this period (the due date for the request for examination is inextendible). An applicant can obtain a refund of one half of the fee for requesting examination in case where the subject application is abandoned or withdrawn before examination has begun. Any third party may file a request for examination.Examination can be accelerated for any Japanese patent application having a corresponding foreign application. To accelerate the examination, the applicant must provide a copy of at least one search or examination report. When an accelerated examination is requested, a first Office action is usually issued within three months, as compared to about ten months for normal applications.

The Japanese Patent Office also started Patent Prosecution Highway (PPH) examination. PPH enables an application with claims determined to be patentable in the Office of First Filing to undergo an accelerated examination in the Office of Second Filing with a simple procedure. PPH is available to an application allowed in the USPTO (U.S.A.), KIPO (South Korea), UKIPO (U.K.), DPMA (Germany), DKPTO (Denmark), NBPR (Finland), ROSPATENT (Russia), APO (Austria), IPOS (Singapore), HPO (Hungary), CIPO (Canada), EPO (EP), SPTO (Spain), PRV (Sweden), IMPI (Mexico), NPI (Nordic), CNIPA (China), IPOPHL (Philippines), NIPO (Norway), IPO (Iceland), IP Viet Nam (Vietnam), IPO (India), INPI (Brazil), INPI (France), DIP (Thailand), and some other countries.

PCT-PPH is available to an application which WO/ISA or WO/IPEA is issued by USPTO (U.S.A.), EPO (EP), NBPR (Finland), SPTO (Spain), PRV (Sweden), NPI (Nordic), or CNIPA (China), etc.

PPH MOTTAINAI is available with U.S.A., U.K., Canada, Finland, Russia, Spain and some other countries.

Formality and novelty: a patent application is first examined for formality requirements. Novelty and technical advance will be examined when a demand for examination is filed.

Extent of examination: a patent application is examined to ensure that the invention satisfies all the requirements for a patent.

Information disclosure: Japan does not have a formal system equivalent to the U.S.’s Information Disclosure Statement system. An applicant, however, must describe in a specification the reference of a publication in which an invention related to the subject invention has been disclosed or of a URL, for example, which has been made available to the public through electric telecommunication lines, if the applicant knows the publication or information sources at the time of filing of the subject application. Further, Japan has a procedure for any party to provide a JPO Examiner with relevant prior art for a patent application under consideration by providing copies of relevant documents to the JPO. This system, known as the “information providing practice”, was developed to allow parties with relevant knowledge or information in a certain field, primarily potential competitors, to alert the Examiner of prior art not considered in examination of an application. Applicants may also use the information providing practice effectively to ensure that the result of a patent application’s prosecution is a strong patent, which withstands invalidity trial. Such a patent is a valuable licensing resource, since competitors will invariably search for prior art, which is relevant to a patent, before agreeing to a license. Prior art cited in search and examination reports should be filed as a type of Information Disclosure Statement in all cases, to ensure that the resulting patent will withstand an invalidation trial and to provide the best opportunities for licensing. Applicants who take advantage of this practice will be able to license or enforce their patents faster and more effectively in Japan.

Division: if a patent application includes two or more inventions, it can be divided by the applicant into one or more new patent applications within the period in which amendment may be effected with respect to the claims, description or drawing (see “Time limitation on filing amendments” below).

Deadline for filing a voluntary divisional application: at the expiration of the term for responding to an official action. For applications filed after April 1, 2007, it is possible to file a divisional application within thirty days from the issuance date of a notice of allowance or a final rejection.

Conversion: an applicant for a utility model registration or a design registration may convert his/her application into a patent application within a term stipulated in the Japanese Patent Law Section 46.

Application kept secret: applications are kept secret until provisional publication (or public disclosure) of application, which is made when a period of eighteen months from the date of application (priority date) has elapsed.

Reasons for rejection of patent application: Japan has a first-to-file system. After reviewing an application, a JPO Examiner will issue a Notice of Allowance or an Office action, citing reasons why the application is rejected. A patent application is rejected by the Examiner (1) if the patent application was filed by a foreigner who has no right to file such an application; (2) if the invention is not eligible for patent because of lack of applicability to industry, novelty or inventive step; (3) in the case where the right to obtain a patent is co-owned, if a patent application is not filed jointly by all the co-owners; (4) if a prior patent application exists (claim to claim comparison and so-called whole content approach); (5) if the invention cannot be patented in accordance with the provisions of a treaty; (6) if a patent application does not satisfy the requirements for statement in the claims or description; (7) if the patent application violates certain requirements for amendments; (8) if the applicant is not the inventor and has no right to obtain a patent for the invention concerned; (9) if when the Examiner requests the addition to the specification of the reference of a publication in which an invention related to the subject invention has been disclosed or of a URL, for example, which has been made available to the public through electric telecommunication lines, an applicant does not reply to this request. Japanese Patent Law Section 29(1), which relates to novelty of an invention, was amended and became effective in 2000 to state that a patent cannot be granted for an invention publicly known or practiced beyond Japan’s borders. Therefore, an invention, which is publicly demonstrated or sold in the U.S., for example, before a U.S. priority application was filed, may be barred from patent protection. Simultaneously, the amended Law broadens the definition of publication to include not only documents printed on paper, but also material publicly distributed over electronic communications networks with wide access such as the Internet. These changes apply similarly to the obviousness requirements defined in Patent Law Section 29(2). The Office action will include a deadline, usually three months for foreign applicants, within which a response can be filed. A single three-month extension used to be automatically obtainable upon request. However, for a response filed after April 1, 2007, a request for extension of a single month can be filed, up to a total of three times, and from April 1, 2016, the time limit for responding to an Office action can be extended by two months upon a first request, and one more month upon a second request (a maximum of three months extension is available). The two requests can be filed concurrently. If the Examiner is not convinced by the reply, a second, final rejection or decision of rejection will be issued. Amendments in response to a final rejection are limited in their scope.

Interview with an Examiner: an interview with the Examiner is often an excellent way to help the Examiner understand the invention. Often the Examiner will suggest allowable claims.

Decision for allowance: after examination, if no reason for rejection exists, the Examiner makes a decision for allowance.

Appeal: an applicant may appeal a decision of rejection of a patent application. A Notice of Appeal must be filed within four months from the service of the decision of rejection and any amendments to the application must be filed at the same time as filing the Notice of Appeal. The primary Examiner will first consider the patent application and new amendments. If the Examiner still does not believe the application to be allowable, it will then be reviewed by an Appeal Board, which typically consists of three Appeal Examiners.

Time limitation on filing amendments: as long as no new matter is introduced, voluntary amendments can be entered at any time before the service of a copy of the decision for allowance. However, when an official action for rejection is issued: (1) within the period designated by the Examiner to reply against the first official action; (2) within the period designated by the Examiner to reply against the second and final official action; (3) at the same time of filing the Notice of Appeal against the decision of rejection.

New matter: the JPO, like most Patent Offices around the world, will not allow applicants to introduce new matter into the application during prosecution of an application. The definition of what constitutes new matter had been very strict in Japanese examination practice until October 22, 2003. However, the guideline of examination practice was revised on October 22, 2003, under which an allowable scope of amendment may be broader than that under the old guideline and if a newly added matter is derived “obviously” from the original disclosure, an amendment including such a matter will be allowed.

Granting, Protection

Provisional registration: not provided for.

Registration: a patent right is obtained only through registration of the invention. The registration fees for the first three years must be paid in a lump sum.

Delivery of document: the Letters Patent, giving the registered patent number, is delivered by mail. There is usually a duration of about two to three years from the filing of the application to the time of receipt of the Letters Patent, provided that a request for examination is made simultaneously with the filing of the application. The time required from application to issuance of patent has been reduced as a result of efforts of the Patent Office.

Beginning of protection: from the date of registration.

Duration – extension: twenty years from the date of application. For patents of drugs or agricultural chemicals, where the working of the patented invention is hindered because of laws to ensure safety (or others), the life of a patent may be extended for up to five years, provided that an application is filed for the extension.

Annuities: the 1st to 3rd year, annuities must be paid before registration of a patent, the 4th year annuity before the last day of the 3rd year (counted from the date of publication) and so on. The term for payment of the 1st to 3rd year annuities may be extended up to thirty days upon request of the person paying the patent fee.

Annuity grace period: six-month grace in payment of the annuity for each year after the 3rd year is granted upon payment of a fine of 100% of the amount due. From April 1, 2012, additional remedies may be applied if a legitimate reason exists, and if payment is made within two months after the day when the reason thereof no longer exists and also within one year after the above-described six-month period has elapsed. From April 1, 2023, remedial procedures may be applied if the failure is "unintentional."

Marking of patented goods: not compulsory, but desirable.

Text of marking: after registration, “Patent” or “Method Patent” with the patent number; when pending, “Patent Application Pending”.

Amendment of issued patents: during the proceedings of an invalidation trial, a patentee can correct his/her patent within the period for submission of a reply. A patentee can file a trial for correction except during the period of time when an invalidation trial becomes pending at the Patent Office and until the judgment in the trial becomes final and conclusive. However, for an invalidation trial filed before April 1, 2012, the patentee can file a trial for correction within ninety days from the date of filing a suit against the judgment in the invalidation trial. For an invalidation trial filed on or after April 1, 2012, it is no longer possible to file a trial for correction at the period of the ninety days. But only the following amendments are permitted: (1) reduction of the scope of claim; (2) correction of clerical errors; (3) elucidation of indistinct statements. Until recently, when a non-exclusive license was granted a patent right, if a patentee wished to file a trial or a request for correction or the like, it was necessary for the patentee to obtain consent of the non-exclusive licensee to proceed. Under the revised Patent Act, which came into effect on April 1, 2022, it is no longer necessary to obtain consent of a non-exclusive licensee to proceed with such a trial or request, or the like.

Assignment: possible before application, while a patent is pending or after registration of a patent.

License for exploitation: if the working of a patented invention cannot be carried out without using another patented invention belonging to a third party who filed the patent application prior to the application of said patented invention, the proprietor of the patent who desires to work such patented invention may request the prior patentee or the exclusive licensee for a consultation as to granting of an ordinary license. If such consultation is not successfully concluded or it is impossible to hold such consultation, the person who desires to work the patented invention may request the Director General of the Patent Office to arbitrate.

Cross-licensing: the prior patentee or the exclusive licensee who received the request for consultation may, in exchange for grant of license, also request the demandant for consultation on grant of a cross-license. If such consultation is not successfully concluded or it is impossible to hold such consultation, the prior patentee or the exclusive licensee may request the Director General of the Patent Office to arbitrate within the term designated by the Director General.

Working: see Section 6. below “Compulsory licenses“.

Validation of invalidated patents: restoration is possible by virtue of re-trial. A request for re-trial should be made within thirty days of the day on which the demandant became aware of a reason for re-trial. However, re-trial may not be requested once three years have elapsed from the day on which the judgment in trial became finally binding. For a request for re-trial filed on or after April 1, 2012, when a court decision on a patent right infringement lawsuit has become final and binding, and subsequently a trial decision on invalidation of a patent becomes final and binding, a party directly involved in the lawsuit is not permitted to file a request for re-trial based on the subsequent trial decision on invalidation.

Modification of Protection after Registration

Right of prior user: (1) a person who, without being aware of the contents of an invention under patent application, was carrying on an enterprise, the business of which was the working of such invention, or was making preparations for such enterprise in Japan actually at the time of the patent application, may, in accordance with the law, obtain an ordinary license with respect to the patent right relating to such patent application; (2) the Japanese Patent Law adopts the principle of “first come, first served”. A prior user has no special right with regard to prosecution, except that he may offer information in order to indicate that the invention under application is not novel.

Licenses: two kinds of licenses are provided for: (1) exclusive license and (2) ordinary (non-exclusive) license. The granting of a license to use a patented invention is freely allowed provided an agreement as to the conditions for licensing is reached between the owner of the patent and a third party. There need be no special relationship between the owner of the patent and the third party. An exclusive license does not take effect unless registered with the JPO, following which the licensee has the right to sue for infringement. From April 1, 2012, a non-exclusive license takes effect with respect to third parties without registration of a license, while before this date a non-exclusive license becomes effective upon conclusion of a licensing agreement but shall not have any legal effect against third parties unless the license duly has been registered at the JPO. An arbitral decision for cross-licensing may be requested by the patentee when he is asked or directed to grant an ordinary license to a person who has a patented invention utilizing the said patentee’s invention (see “Cross-licensing” in Section 5. above).

Compulsory licenses: (1) if a patented invention has not been worked continuously for three years or more, any person may request the patentee to grant him an ordinary license, and if no mutual agreement can be reached, the person requesting the license may demand the arbitration of the Director of the Patent Office; (2) if the working of a patented invention is particularly necessary for the public interest, a person who desires to work such patented invention may demand the patentee or the exclusive licensee a consultation as to grant of an ordinary license. If the consultation has not successfully been concluded, or if it is impossible to hold such consultation, the person who desires to work the patented invention may demand arbitration by the Minister of Economy, Trade and Industry.

Expropriation: not provided for.

Opposition: the opposition system has been reintroduced since April 1, 2015. The Patent Law had a post-grant opposition system until 2003, but it was abolished in 2004. The post-grant opposition system has been reintroduced, so that the applicant can obtain more stable patent rights at an early stage. Under the new opposition system, anyone can oppose the granted patent within six months from the date of the publication of the granted patent. The opposition system is generally conducted by documentary examination. The patentee may have a chance to correct the claims. The patentee can file a lawsuit against unfavorable opposition decision with the Intellectual Property High Court.

Dispute about ownership: if an application is filed by a person other than the inventor or his/her successor, the patent may be invalidated by a trial. For an application filed on or after April 1, 2012, a true right holder is able to file a request for transfer of a patent right against a person who has filed the usurped application.

Dispute about novelty: anyone can dispute the novelty of a patented invention by the new opposition system within six months from the publication date of the granted patent. Further, any interested party can dispute the novelty of a patented invention by trial for invalidation of a patent.

Invalidation: any interested party may begin proceedings to initiate an invalidity trial. If the reason for invalidation concerns vesting of patent right as in non-compliance with the requirements of a joint application or the filing of a misappropriated application, an interested party can file an invalidation trial. Japanese invalidity trials are heard by a JPO Appeal Board. Grounds for initiating an invalidity trial are similar to the grounds for an Examiner’s rejection of an application. However, grounds based on patent rules requirements, unity of invention on claims and requirement for disclosure of information on prior art documents of specification, are not available in an invalidity trial. A patent owner’s loss of foreign priority or benefits of the provisions of a treaty, and failure of corrections to the description or claims to meet with statutory requirements are additional bases for initiating an invalidity trial. In an invalidity trial, the patent owner will always be given an opportunity to narrow the claims through amendment to avoid invalidation of the entire patent. One of the reasons that dependent claims, which are narrower than an independent claim, are not always necessary in Japanese practice is that in the event additional prior art is presented in an invalidity trial, the patent owner can simply narrow the existing claims to eliminate that art. Usually, a decision of an invalidity trial is given in about one year. Japanese invalidity trials are in principle examined by oral proceedings. In this respect, they are different from other examinations which are generally conducted by documentary proceedings. The above statement is specified under Japanese Patent Law Section 145(1) and (3). Under the provision of the Japanese Patent Law, where a trial is conducted by oral examination, the trial Examiner-in-Chief fixes the date and place of the oral examination and summons the party and the intervener. The Law also provides that the trial Examiner-in-Chief may decide to conduct the trial by documentary examination. Infringement litigation underway in court may be stayed while pendency of an invalidity trial. However, the court may judge a patent validity in an infringement litigation case, and when a patent is judged to be invalid in court, the patentee cannot enforce the patent right against the alleged infringer.

Infringement: the remedy for infringement includes injunctions and compensation for damages. In addition to direct infringement, the following acts shall be deemed to be an infringement of a patent right: (1) in the case where an invention of a product is patented: (a) commercial acts of manufacture, assignment, etc. or import or offer for assignment, etc. of an article to be used exclusively for the manufacture of the product, (b) regarding an article used for the manufacture of the product (excluding an article which is being distributed widely and generally in Japan) and which is indispensable for resolving a prior art problem by the invention, commercial acts of manufacture, assignment, etc. or import or offer for assignment, etc of the article, which are carried out in the knowledge that the invention is a patented invention and that the article is used for the working of the invention, (c) holding a product of a patented invention for the purpose of assigning it; (2) in the case of a patent for an invention of a process: (a) commercial acts of manufacture, assignment, etc. or import or offer for assignment, etc. of an article to be used exclusively for the use of the process, (b) regarding an article used for the use of the process (excluding an article which is being distributed widely and generally in Japan) and which is indispensable for resolving a prior art problem by the invention, commercial acts of manufacture, assignment, etc. or import or offer for assignment, etc. of the article, which are carried out in the knowledge that the invention is a patented invention and that the article is used for the working of the invention; (3) in the case of a patent for an invention of a process of manufacturing a product: holding a product produced by the process for the purpose of assigning it. In the case of infringement, compensation for damages may be obtained through civil suits; a fine of not more than 300 million Yen (on a legal entity) or 10 million Yen (on a natural person) and/or imprisonment with hard labor not exceeding ten years may be imposed through criminal proceedings.

Calculation of damages: the following amendments to the provisions regarding calculation of damages came into effect on April 1, 2020: (a) Article 102(1) of the Patent Act: in view of the difficulty in proving an amount of damages caused by patent infringement, Article 102(1) provides that lost profits based on a patentees' profit margin may be considered as an amount of damages caused by patent infringement. On the other hand, the amount that could be claimed was limited to an amount that did not exceed a production capacity of the patentee. In addition, if there were circumstances under which the patentee was unable to sell the product, an amount corresponding to such circumstances could be deducted from the total amount of damages claimed. As a result of this restriction, a number of cases arose where the patentee was not satisfied with the amount of damages awarded by the courts. To rectify this situation, the revised Act allows a patentee to claim as damages an amount of lost profits equivalent to a license fee even if that amount exceeds equivalent production and sales capacity, etc.; (b) new Article 102(4) of the Patent Act: Article 102(3) of the Patent Act stipulates that an amount equivalent to a license fee can be claimed as compensation for patent infringement. In precedent cases, an amount equivalent to a license fee has been calculated by taking into consideration various factors such as precedent cases of license in the art, average license fee in the art, and degree of contribution of the patented invention. However, in these precedents, it is not clear that the facts on a patentee lost an opportunity to license a patented invention or on a valid patent right was infringed were taken into consideration; (c) new Article 102(4) came into effect on April 1, 2020, to enable award of an appropriate amount of damages. As a result, it is expected that an appropriate amount of damages equivalent to a license fee will be calculated by taking into consideration due facts of patent infringement, loss of opportunity to license, and a patented invention was worked without contractual restrictions, etc.

Third-party opinion solicitation system: a third-party opinion solicitation system, effectively a Japanese version of "Amicus Curiae," was introduced by amendment into patent and utility model infringement litigation, and came into effect on April 1, 2022. If the Tokyo District Court, the Osaka District Court, or the Intellectual Property High Court (IPHC) considers it necessary, they can invite opinions from members of the public for use as evidence in proceedings.

On-site inspection system: an amendment of the Patent Act to introduce on-site inspection system came into effect on October 1, 2020. When filing a patent infringement lawsuit in Japan, a plaintiff must prove infringement of a patent by an alleged infringer by submitting concrete evidence. However, since an alleged infringer is likely to be in possession of such evidence it is often difficult for a plaintiff to obtain and produce the requisite evidence. In such a case, as a means to collect evidence held by the alleged infringer, some procedures are stipulated including "document submission order" (Article 221 of the Civil Procedure Code, Article 105 of the Patent Act). However, for a variety of reasons, courts have been reluctant to adopt these procedures, and thus the procedures are rarely used in practice. To make it easier for a plaintiff to prove infringement of a patent, an on-site inspection system for collecting evidence was introduced.

Limits on the execution of the right of a patentee, etc.: if, in a litigation process concerning the infringement of a patent right or exclusive license, it is found that the patent at issue should be invalidated by a patent invalidation trial, the patentee or the exclusive licensee is not entitled to exercise their right against the opponent. However, it should be noted that a patent right can only be invalidated by an invalidity trial or an opposition.

Doctrine of equivalents: Japan recognizes a doctrine of equivalents, with the precedent on that doctrine having been set by the Supreme Court in a 1998 decision in the case of Tsubakimoto Seiki v Tei Eichi Kei. In Tsubakimoto, the Supreme Court stated that an accused product would be regarded as being equivalent to a claimed invention, even if a specific claim element were missing, when: (a) the element is not an essential feature of the claimed invention; (b) the claimed invention achieved the object and effect of the invention even after the element is replaced with a feature in the accused product; (c) the replacement would have been obvious when the accused product was made, to a person having ordinary skill in the art to which the invention pertains; (d) the accused product was not identical to or obvious from the prior art; and (e) the accused product does not correspond to one which was intentionally excluded from the claim during its prosecution.

Penalties: (a) crime of fraudulent act: penal servitude with hard labor not exceeding three years or a fine not exceeding 3 million Yen; (b) crime of false indication: penal servitude with hard labor not exceeding three years or a fine not exceeding 3 million Yen; (c) crime of perjury: penal servitude with hard labor of not less than three months and not more than ten years; (d) crime of having divulged secrets (applied to an official of the Patent Office or to a person who once occupied such a post): penal servitude with hard labor not exceeding one year or a fine not exceeding 500,000 Yen; (e) crime of disobedience to judicial orders to preserve secrecy of trade secrets (may be applied to a party concerned in a patent infringement litigation, who is aware of the trade secrets and received the order to preserve the secrecy): penal servitude with hard labor not exceeding five years or a fine not exceeding 5 million Yen; (f) administrative fines: up to 100,000 Yen.