JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
TMI Associates 23F, Roppongi Hills Mori Tower 6-10-1 Roppongi Minato-ku Tokyo 106-0123 Japan Tel: +81-3 6438 5511 Fax: +81-3 6438 5522 Email: info_general@tmi.gr.jp Web: www.tmi.gr.jp
1. Patents 1.1 Legal Framework and Patentable Subject Matter Patent protection in Japan is governed by the Pat- ent Act, with judicial precedents providing important interpretations. The Japan Patent Office (JPO) follows internal regulations, but these are not legally binding. Under Article 2, Paragraph 1 of the Patent Act, a patentable invention is defined as “the highly advanced creation of technical ideas utilising the laws of nature”. Natural laws, abstract discoveries, mathematical for- mulas and mental activities are excluded. However, software, business model and AI-related inventions may qualify if they utilise natural laws. An invention must also be industrially applicable; thus, methods of medical treatment are not patentable. Utility models are protected under the Utility Model Act, and are limited to devices concerning the shape or structure of articles. They require a lower inventive step and are protected for ten years from filing. 1.2 Patent Granting Procedure To obtain a patent in Japan, an application must be filed with the JPO and examined. Applications are published 18 months after filing, and examination requires a request within three years. The first Office Action is typically issued within six to 12 months, and prosecution usually takes one to two years. Once granted, the patent is valid for 20 years from filing.
Costs include official fees and professional fees, with total expenses generally ranging from USD10,000 to USD30,000. 1.3 Scope, Term and Maintenance of Patent Rights A patentee has the right to exclusively practise the patented invention, and may seek an injunction and damages against any unauthorised use. The standard patent term is 20 years from the filing date. Maintenance fees must be paid to keep the patent in force. Failure to pay results in lapse; however, non- payment may be remedied within a six-month statu- tory grace period upon payment of overdue fees and a surcharge. Even after this period, restoration may be possible under certain conditions if the failure was unintentional. A patent term extension may be granted to compen- sate for delays in examination, particularly where reg- istration occurs more than five years after filing or three years after the examination request, whichever is later. In addition, extensions of up to five years are avail- able for pharmaceuticals and agricultural chemicals, to compensate for periods during which the invention could not be used due to regulatory approval require- ments. 1.4 Ownership, Assignment and Licensing The right to obtain a patent generally belongs to the individual inventor. However, in the case of employee inventions, this right may belong to the employer if so
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