13 years ago

After legislative passage (Act No. 63 of 2011), amendments of the Japan Patent Law were published on June 8, 2011, and will be effective within one year of such date. The effective date is expected to be announced in the near term.  A summary of some of the most relevant provisions of such legislation is set out below.

Broadening of Novelty Exception for Public Disclosure of Invention

Under the new law, novelty of invention for patenting purposes is not destroyed by public disclosure by the inventor or a party obtaining patent rights from the inventor, if a Japanese patent application is filed within six months of the "making public" date.

Abolishment of Registration Requirement for Patent Enforcement by Non-Exclusive Licensee

The new law abolishes the registration requirement for non-exclusive licenses, in order for a non-exclusive licensee to enforce the licensed patent rights against an infringer.

Collateral Estoppel Against Re-Litigation of Final Infringement Judgment

A final and binding judgment of patent infringement cannot be re-litigated by the adjudged infringer, if a later trial decision becomes final and holds the patent to be invalid.

Invalidation Trial and Correction Trial Procedure

The new law prohibits the patentee from a requesting a Correction trial after appealing to the Intellectual Property High Court the result of an Invalidation trial in the Japanese Patent Office.  In addition, the prior estoppel against third party requests for invalidation trial on the same facts and evidence, after an initial Invalidation trial brought by other parties on such facts and evidence has become final and binding, is abolished by the new law.

 Steven Hultquist

September 17, 2011