Japan amends its Patent, Trademark and Design Laws to protect information technology related subject matter

In response to the tremendous progress made in the field of technology, the Amending Act, deemed effective from September 1, 2002 has formulated specific regulations to deal with various issues, which the traditional patent system did not anticipate. The principal features of the 2002 amendments are as follows:

1. Definition of "Working" of inventions consisting of computer programs

Article 2(3) of the Amended Patent Act defines the term "working" of an invention as follows:

(i) With regard to an invention of a thing including computer programs, etc., acts of producing, using, assigning etc., (meaning assignment and leasing and, when such thing is a computer program, the term includes providing through electric communication network) or importing, or offering for assignment etc., ( including displaying for the purpose of assignment etc.) such a thing ;

(ii) Article 2(4) explains 'Computer Programs' as instructions to a computer combined so as to obtain results and other information analogous to computer programs to be used for processing by a computer.

2. The scope of acts that are regarded as infringing patent rights is expanded to include the following:

When a patent is granted to an invention of a thing or process, an act of producing, assigning etc., as a business, materials (other than those widely distributed within Japan) to be used for production of such thing or process which are indispensable for the solution of a problem by the invention, knowing that the invention is patented and the materials will be used for the working of the invention, will constitute infringement.

3. Scope of claim(s) for a patent must be separated from the specification of the patent by filing claim(s) application and specifications in separate documents.

4. Relevant filing requirements

(i) Disclosing source of information in detail pertaining to inventions in the public knowledge that are described in publications;

(ii) In the event of the application not meeting the requirements, reasonable time will be provided for filing counter statement;

(iii) A Patent Officer may, on grounds of non-filing of counter statement within the stipulated period, reject the application for patent;

5. Procedure for international patent applications is amended as follows :

(i) A period of 2 years and six months is set uniformly for the submission of domestic documents. Japanese translation of a foreign language patent application to be submitted together with domestic documents may be submitted within two months from the submission of domestic documents;

(ii) For an international patent application based on an application filed in a member country of the World Trade Organization, the provisions setting forth the procedure for claiming priority under the Paris Convention are not applicable.

6. Word "Use" in relation to a mark is redefined to include:

(i) An act of offering through electric communication networks, goods bearing the mark;

(ii) An act of offering services via images created by an electromagnetic method by showing the mark in such images;

(iii) An act of providing by an electro-magnetic method, information on promotional matters, price lists or transaction documents bearing the mark.

7. Amendment of procedure for international registration under Madrid Protocol

(i) Payment of fees in two parts; one before effecting international registration and second at the time of granting the trademark.

(ii) Amendment of trademark not permitted in an application for international trademark registration.