IP Updates in Japan 2020
1. Recent IP Law Changes in Japan
The Japanese Patent and Design Acts were revised in 2018. The Official Fee Reduction Program has already started from April 1, 2019, and we make active use of this program especially for small/medium/venture companies and universities. The other changes (except for On-site Inspection) will come into force from April 1, 2020.
Changes in Patent Act
- Official Fee Reduction Program – No certificate required
- On-site Inspection by Experts – Facilitates discovery of infringement
- New Damage Calculation System – Damages can be higher
- Determination of Damages for portion beyond right holder’s production/sales capacity
- Change in Determination of “Reasonable Royalty” (or Sum Equivalent to Licensing Fee)
Changes in Design Act
- Enlargement of Scope of Protection
- Enhancement of Related Design System
- Extension of Protection Period
- Multiple Designs in Single Application
The revisions to Patent Act are related to litigation. In Japan, it is sometimes said “infringer wins”, since it’s difficult to prove infringement because of evidence and the damage awarded sometimes low. So, we needed to prevent such a situation, and the new system is a pro-patent revision. Unlike the US, there is no discovery system in Japan, but the revised act (item i.) will introduce new means of evidence collection. Further, the new damage calculation system (item ii.) will probably permit higher amount of damages than before. Generally speaking, it will be easier to find infringement, and the amount of damage can be higher.
As to the Design Act, these are one of the biggest changes in our history. As to item iii., the expiration date a design right is 20 years from the registration date under the current act, but it will be 25 years from the registration date under the new act.
2. Important Court Decision in Chemical/Pharma Field
- IP High Court (Grand Panel) Decision: “Pyrimidine Derivatives” Case
- Main Issue: Inventive Step – Construction of Prior Art
- Conclusion: A specific compound, which is included in a general formula encompassing numerous (in this particular case, 20 million) alternatives, cannot constitute a prior art reference, unless a person skilled in the art would have actively or preferentially selected the compound. This logic applies to not only construction of a primary prior art reference, but also construction of secondary prior art reference(s).