November 2002

JAPAN PATENT ATTORNEYS ASSOCIATIONInternational Activities Committee
1. SUMMARY OF REVISIONS OF THE JAPANESE PATENT LAW AND
THE JAPANESE TRADEMARK LAW
1-1. Object
The Japanese Patent Law and Japanese Trademark Law have beenrevised recently to reinforce intellectual property right protection, to reduce
the work load on applicants and to promote efficient examination
procedures.
1-2. Outline
1-2-1. Reinforcement of intellectual property right protection(1)
Under the Patent Law, the scope of protection with respect tocomputer programs (intangibles) has not always been clear. In viewof the recent increase in the selling and distributing of patented
computer programs without a recording medium through theInternet, a new revision has been made to give a full and detailed
definition of the working of an invention. That is, it shall be deemed
to be a patent infringement to transmit a patented program, etc. via
such a network without permission.
(2)
There have not been many precedent cases in which it has
been admitted that indirect infringement had occurred because under
the old Patent Law, the article used in an act in which indirect
infringement is asserted must be an article to be exclusively used (anexclusive article) for manufacturing a patented product or forworking a patented process, in order that the requirements forshowing that indirect infringement has occurred are met. In orderto strengthen the protection of patent rights, a new revision provides
that it shall be considered as constituting an act of indirect
infringement to supply an article in bad faith, i.e., knowing that suchan article is used for manufacturing a patented product or working apatented process.
(3)
The Trademark Law was drafted based on the assumptionthat a trademark would be applied only to tangibles. Recently,
however, use of the Internet has spread to the distribution of goods,
offering of services, advertising and so on. Therefore, a new revision
gives a full and detailed definition of use of a mark. That is, it shallbe deemed to be a trademark infringement to use a trademark on the1screen of a user’s personal computer or cellular phone.
1-2-2. Reducing the work load on applicants and promoting efficientexamination procedures(1)
The format of a patent application shall be brought into
conformity with those of other industrialized nations andinternational patent applications, and the claims part shall beseparated from the specification part, so that the work load on
applicants can be reduced.
(2)
In accordance with an agreement made by the PCT General
Assembly of WIPO, the provision regarding the deadline forcommencing the national phase in the case of any international
patent application under PCT was revised to be extended to 30
months starting from the international filing date or the priority date
if the priority is claimed. Further, a two-month grace period is given
for submitting a translation of a PCT application in order to improve
the translation quality and to promote efficient examination
procedures.
(3)
More prompt and precise examinations may be expected as aresult of introducing a system in which patent applicants disclose in
the descriptions of patent applications, prior art literature which theapplicants know at the time of filing the patent applications.
(4)
The individual fees in respect of a designation of Japan shallbe paid in two installments, the first installment to be paid before theinternational registration is registered (at the time of filing theinternational registration) and the second installment to be paid after
a decision for grant of the registration is issued.

22. THE MAIN REVISIONS
2-1. Patent Law
2-1-1. Clarification of the working of an invention
2-1-2. Expanded definition of what constitutes indirect infringement
2-1-3. Separation of the claims part from the specification part2-1-4. Introduction of requirement for disclosure of information on prior art
2-1-5. Revision regarding the procedure for entering into the Japanesenational phase of a PCT application
2-2. Trademark Law
2-2-1. Reinforcing protection of goodwill for trademarks used in Internet
business
2-2-2. Installment payment of international trademark registrationindividual fees
2-2-3. Amendments of the trademark applied for international trademark
registration

33. CLARIFICATION OF THE WORKING OF AN INVENTION
3-1. Reason
With the recent remarkable progress in IT, networks connected by ITsuch as the Internet have been rapidly expanding and as a result, in
addition to the conventional distribution system wherein the patented
products are supplied to the market, a new distribution system wherein
patented computer programs and the like are supplied to the market via
such networks is expanding.
Further, due to the increasing demand forthe protection of computer programs supplied via such networks, theJapanese Examination Guidelines were modified in 2001 so that a“program” itself can be claimed in a patent application, irrespective ofwhether or not it is recorded in a medium (January 10, 2001).
A patent right is an exclusive right to commercially work a patented
invention (Article 68). The Patent Law defines the “working” of an
invention as meaning certain acts in the case of a product invention andthose in the case of a method invention in order to make clear the scope of
the protection provided by the patent right (Article 2, Paragraph 3).
The Patent Law specifically defines the content of such acts constituting“working”, namely, “manufacturing”, “using”, “assigning”, “leasing”,“importing” and the like (Article 2, Paragraph 3).
However, a “product” is generally considered to be a “tangible” productand thus it has not been always clear whether or not a “program” can beprotected as a product under the Patent Law.
In addition, when a computer program is provided via a network or
when a program is provided by an application service provider, ASP, theoriginal program is usually retained by the provider or the ASP.
In
such a case, it has not always been clear whether or not the providing ofsuch programs can be considered to be the working of an invention,
especially, “assigning”or “leasing”of the programs.
To eliminate the ambiguity concerning the working of an invention,
the Patent Law has been amended so that a program can now beprotected as a “product” and the providing of a program through electric
telecommunication lines can be considered to be the “assigning” or“leasing” of the product.
3-2. Content
3-2-1. New Article 2, Paragraph 3 of the Patent Law stipulates as follows:
In the case of an invention of a product (including a program and thelike –hereinafter the same), acts of manufacturing, using, assigning andthe like (meaning assignment and leasing and, if the product is a
program and the like, including providing the same through electric
telecommunication lines -hereinafter the same) or importing or offering4

for assigning and the like (including displaying for the purpose of
assigning and the like -hereinafter the same) of the product.
3-2-2. New Article 2, Paragraph 4 of the Patent Law stipulates as follows:“Program and the like” in this Law means a program (instructions to
a computer that are so combined as to produce a single result –hereinafter the same) and other kinds of information which are used in
the processing by a computer and which are equivalent to the program.
3-2-3. Examples
According to the amended Law, the following acts are considered to be“working” of an invention.
3-2-3-1. Act of downloading a program(see Fig. 3-1)

Fig. 3-1
3-2-3-2. Act of using a program provided by the ASP via the Internet
and receiving the results（Fig. 3-2）

Fig. 3-2
Therefore, an unauthorized person who commercially conducts theabove acts, infringes the patent right, which will result in the issuing of
an injunction and said person being liable for damages under the Patent
Law.
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4. EXPANDED DEFINITION OF WHAT CONSTITUTES INDIRECTINFRINGEMENT
4-1. Reason
Under our Patent Law, even if all of the elements (such as an article)
for a patented product or process are not commercially worked, acts by an
unauthorized party for preparing or assisting in the supplying of anarticle (exclusive article) to be used exclusively in manufacturing such apatented product or working such a patented process are construed as
acts of infringing the patent rights for the patented product or process(indirect infringement), for the purpose of improving the effectiveness ofthe patent rights.
However, acts of indirect infringement have only been admitted if
such acts occur with respect to, as noted above, an exclusive article andsubjective criteria for assessing the motivations of the alleged infringer
such as “bad faith” are not considered in determining whether therequirements for finding that an act of indirect infringement has occurred
have been met.
With respect to articles which can be used for a
purpose other than that of the patented invention or staple articles, it is
not possible to show that indirect infringement has occurred even if a
supplier of such articles had acted in bad faith. Therefore, there havebeen few litigation cases wherein an assertion of indirect infringement
has been accepted and thus more strong protection of the patentees has
been demanded in this respect.
In particular, in the case of a softwarerelated invention, it is usual that the parts (modules) to be used in a
program have many functions (uses) while there are few parts which areused exclusively for only a certain program. Therefore, if the term
“exclusively” is strictly interpreted in the software field, it may become
extremely difficult to find a remedy for preventing indirect infringement.
Thus, under the new law, even if an article which is an importantelement for a patented invention is not an exclusive article, acts ofcommercially supplying such an article with the knowledge that such an
article will be used for manufacturing a patented product or for working apatented process (so-called “bad faith”) will also be construed as acts ofindirect infringement.
4-2. Content
Article 101 (Acts to be construed as constituting infringement)
The following acts shall be deemed to be an infringement of a patentright or exclusive license:(1) (omitted)(2) (newly added)in the case of a patent for an invention of a product, acts ofcommercially manufacturing, assigning and the like, importing oroffering for assigning and the like, an article to be used for the
manufacture of the product (excluding those articles which are6

distributed widely and commonly in Japan) which is indispensable forattaining the object of the patented invention, with the knowledge thatthe invention is patented and that the article will be used for theworking of the patented invention.
(3) (omitted)(4) (newly added)in the case of a patent for an invention of a process, acts ofcommercially manufacturing, assigning and the like, importing oroffering for assigning and the like, an article to be used in the process(excluding those articles which are distributed widely and commonly inJapan) which is indispensable for attaining the object of the patented
invention, with the knowledge that the invention is patented and thatthe article will be used for the working of the patented invention.
4-3. Example
According to the new law, the following act is considered to constituteindirect infringement.
It is usual for a software program to be divided into several parts(modules) and manufactured by ordering subcontractors to manufacture
the modules as shown by Fig. 4-1 (the final product (a software program)is a patented invention and the modules are not exclusive articles to be
used only for manufacturing the final product).
In this case, the act bya third party of commercially manufacturing or supplying the module
constitutes indirect infringement, if such a module is indispensable forattaining the object of the patented invention and if such a third party
acts with the knowledge that the module will be used for the working of
the patented invention.

Fig. 4-1

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5. SEPARATION OF THE CLAIMS PART FROM THE SPECIFICATION
Under the current law, the claims part is stipulated to be a part of thespecification (Article 36, Paragraph 3).
However, in the PCT, the claims part is stipulated to be a separate
item from the specification. WIPO will start to accept electronic filing ofan application from March 2003.
According to the electronic application
format to be used in WIPO for electronic filing of an application, the part“Specification” and the part “Claims” are separated into two different itemsin the same manner as in the case of PCT applications.
This format is
expected to be a common technical standard for the electronic filing system.
Therefore, under the new law, the claims part has been made aseparate item from the specification part in order to conform with theinternational filing format.

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6. INTRODUCTION OF REQUIREMENTINFORMATION ON PRIOR ARTFORDISCLOSURE

OF

6-1. Reason
The requirement for Disclosure of Information on Prior Art
Documents as defined in the revised Patent Law is that the prior art
acknowledged by applicants shall be disclosed in the description of patentapplications when the applications are filed, otherwise the applications
shall be rejected.
Only about 40% of the patent applications previously filed at theJapan Patent Office (JPO) describe the prior art that would be relevant tothe claimed inventions. When patent applications do not describe any
prior art in the descriptions thereof, even if the applicants acknowledge
the prior art at the time of filing the patent applications, the Examinersof the JPO must conduct independently searches for the prior art.
Under the circumstances, the revised Patent Law imposes arequirement on the applicants to disclose the prior art that the applicantsacknowledge when the applications are filed. Under the revised Patent
Law, even if the applicants fail to disclose the prior art in the descriptionsof the applications as filed, this shall not result in the issuance of any
reason for refusal, but, instead, it shall result in the issuance of an official
communication requesting the applicants to disclose the prior art thatthey have acknowledged at the time of filing the patent applications.
Thereafter, if the applicants do not sufficiently disclose the prior art in
response to the official communication, a reason for refusal shall be
issued. It is not necessary to disclose the prior art if the applicants
become aware of the prior art after the applications have been filed.
As a result of the revised Patent Law, the Examiner can effectively
utilize the information on the prior art provided by the applicants so thatthe examination of the patent applications may be accelerated, whereas
the applicants will be able to reevaluate the claimed invention in view ofthe prior art.
The prior art defined herein means literature that describes aninvention relevant to the claimed invention, as defined in Article 29,
Paragraph 1 (iii).
6-2. Content
6-2-1. Article 36 (Applications for patent)(4)
The detailed description of the invention under the preceding
Subsection (iii) shall comply with the requirements in each of thefollowing paragraphs:(i) (omitted)(ii) (newly added)
Where a person desiring a patent for an invention knows, at9

the time of filing a patent application, any inventions publicly known
through documents (inventions referred to in Section 29(1)(iii)※; thesame meaning shall apply thereunder in this paragraph) which are
related to the invention, the detailed description of the invention
shall contain the source of information on the invention publicly
known through such documents such as the title of a publication inwhich the invention publicly known through said document is
described.
<Reference>※Paragraph (iii) of Section 29(1)29(1)
Any person who has made an invention which is industriallyapplicable may obtain a patent therefor, except in the case of the following
inventions:(iii)
inventions which were described in a distributed publication or
made available to the public through electric telecommunication lines inJapan or elsewhere prior to the filing of the patent application.
6-2-2. Article 48 septies. (Notification about description of information on
inventions which are publicly known in literature)(newly added)
The Examiner may, if he/she judges that a patent application
fails to satisfy the requirement provided in Section 36(4)(ii), notify
the applicant to that effect and give the applicant an opportunity tosubmit an argument, designating an adequate time limit for doing so.
6-2-3. Article 49. (Examiner’s decision for refusal)
The Examiner shall make a decision that a patent application is
to be refused where it falls under any of the following paragraphs:(i)〜(iv) (omitted)(v) (newly added)
when a notice under the preceding Section was issued, and thepatent application still fails to satisfy the requirement provided in
Section 36(4)(ii), despite the amendment of the specification or thesubmission of the argument.
(vi)〜(vii) (omitted)
6-3. In what cases is a patent application refused ?
6-3-1. Example;
6-3-1-1.
after an applicant receives a notification under the
Subsection 48 septies, he/she submits neither a statement of his/herarguments nor an amendment of the specification.
6-3-1-2.
after an applicant receives a notification under the
Subsection 48 septies, he/she submits an amendment which discloses
literature, but the literature discloses only inventions which are notrelated to the invention.
6-3-1-3.
after the applicant receives a notification under the
Subsection 48 septies, he/she submits a statement of his/her
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arguments in which the reason for non-disclosure of prior art
literature is explained, but the Examiner does not recognize that the
explanation is adequate.
6-3-2. The flow of the procedure.

Fig. 6-1

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7. REVISION REGARDING THE PROCEDURE FOR ENTERING INTO
THE JAPANESE NATIONAL PHASE OF PCT APPLICATION
7-1. The deadline for entering into the Japanese national phase
The deadline for entering into the Japanese national phase wasrevised from 20 months to 30 months starting from the international
filing date (or the priority date if the priority is claimed) regardless ofwhether a Demand for an International Preliminary Examination of the
PCT application under Chapter II has been filed or not.
Therefore,
even if an International Preliminary Examination is not requested for the
PCT application designating Japan, the applicant of the PCT application
is able to submit a “national form paper”(a request to enter into theJapanese national phase) within 30 months from the international filingdate (or the priority date).
This revision is in accordance with the agreement made by the PCTGeneral Assembly of WIPO to revise PCT Section 22(1). The aim of thisrevision is to reduce the work load on the International Preliminary
Examination Authority and the applicant.
7-2. The period for submission of a Japanese translation of specification,
claims, abstract and drawings of a PCT application
The applicant is able to submit a Japanese translation of thespecification, claims, abstract and drawings, if any, of the PCT
application, within 2 months from the submission of the national form
paper (if the national form paper is filed within 28 months from theinternational filing date (or the priority date), the translation should be
filed simultaneously with the national form paper), without having to pay
any extra official fee.
Before the revision, it was necessary for the applicant to submit thetranslation by the deadline of 20 months (or 30 months if the Demand forInternational Preliminary Examination was filed within 19 months fromthe international filing date or the priority date). There was no grace
period for submission of the translation. If the translation was not
submitted by said deadline of 20 months (or 30 months) for entering into
the Japanese national phase of the PCT application, the application wasdeemed to be withdrawn.
Under the new law, the applicant of a PCT application in a foreign
language is able to proceed to enter into the Japanese national phasewith a good quality Japanese translation of the PCT application, even if
the decision on entering into the Japanese national phase was madeimmediately before said deadline of 30 months.

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7-2. Due date chart

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8. REINFORCING PROTECTION OF GOODWILL FOR TRADEMARKSUSED IN INTERNET BUSINESS
8-1. Reason
The Trademark Law was drawn up with trademarks attached
to tangible items in mind.
In recent years, however, due to theincrease in network businesses, provision of commodities such as
computer programs through the Internet has been promoted.
Consequently proper legal protection for trademarks displayed on thescreens of personal computers (“PC’s”) and mobile phones is required.
Under such circumstances, the amendment is intended toshow clearly that to use trademarks by displaying them on the screensof PC's , mobile phones, etc., in conjunction with business activities,
such as commodity distribution, provision of services, and advertising
via networks, will fall under the category of trademark infringement.
8-2 Content
8-2-1. New Article 2, Item 3, Paragraph 2.
(Existing) acts of assigning, delivering, displaying for the purpose of
assignment or delivery, or importing, the goods on which or on the
packaging of which a trademark has been applied;+(New) acts of providing the goods on which or on the packaging of
which a trademark has been applied via an electric communicationline.
(Example) According to the amended Paragraph 2, the following acts
are considered to be use of a trademark.
Addition of Internet Transmission as a Form of the Use of Trademarks.

Fig.8-1
8-2-2 New Article 2, Item3, Paragraph 7.
(New) acts of providing services through a screen while displaying a
trademark on the screen by means of an electro-magnetic method.
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(Example) According to the amended Paragraph 7, the following acts
are considered to be use of a mark.
Addition of Service marks displayed on a Computer screen as a Form of
the Use of Service marks.

Fig.8-2
8-2-3. New Article 2, Item3, Paragraph 8.
(Existing) acts of displaying or distributing advertisements, price lists
or business papers with respect to the goods or services on which amark has been applied.
+(New) acts of providing information on advertisements, price lists orbusiness papers with respect to the goods or services on which a markhas been applied, by means of an electromagnetic method.
(Example) According to the amended Paragraph 8, the following acts
are considered to be use of a mark.
Addition of Trademark (Service marks) on advertisements or contracts
displayed on a computer screen.

Fig.8-315

9. INSTALLMENT PAYMENT OFREGISTRATION INDIVIDUAL FEES

INTERNATIONAL

TRADEMARK

Amended Articles (68undevicies, 68duodetricies, 68tricies) allow
payment of the registration fee among the individual fees for international
trademark registration to be made only when the international application
is granted a domestic registration, which is the same as in the case ofdomestic applications.
10.
AMENDMENTSTO
THE
TRADEMARKINTERNATIONAL TRADEMARK REGISTRATIONAPPLIEDFORThe existing Section 68duodetricies allows an amendment to thetrademark itself. New Section 68duodetricies will allow only amendmentsof the designated goods or designated services, not of the trademark itself.

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11.EFFECTIVE DATES OF REVISIONS
11-1 Patent Law
11-1-1. Amendment of the law concerning the working of the invention;
September 1, 2002
11-1-2. Amendment of the law concerning expanded definition of what
constitutes indirect infringement; January 1, 2003
11-1-3 Amendment of the law concerning separation of the claims partfrom the specification; the effective date of this revision to be
assigned by the Government; it shall be within one year and a halffrom April 17, 2002.
11-1-4. Amendment of the law concerning introduction of requirement fordisclosure of information on prior art documents; September 1,
2002
11-1-5. Amendment of the law concerning the procedure for entering into
the Japanese national phase of a PCT application; this revisionbecame effective as of September 1, 2002. This revision is applied
to a PCT application filed before September 1, 2002 and whose 20month period has not expired as of September 1, 2002.
11-2. Trademark Law
11-2-1. Amendment of the law concerning reinforcing protection of
goodwill for trademarks used in internet business; September 1,
2002
11-2-2. Amendment of the law concerning installment payment ofinternational trademark registration individual fees; January 1,
2003
11-2-3. Amendments to the trademark itself; September 1, 2002

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