Bill for Partial Revision of Japanese Intellectual Property Laws Submitted to the Diet

On February 27, 2018 the “Bill for the Act of Partial Revisions of the Unfair Competition Prevention Act” was submitted to the diet. The purpose of the bill is to address issues related to advances associated with the fourth industrial revolution, such as innovations in information technologies. There are four major areas of change proposed by the bill.

The first major area of change is a partial revision of the Unfair Competition Prevention Act. This revision would provide civil remedies for the wrongful acquisition, use, or provision of data which was limitedly provided and protected by management systems. These revisions would expand the target range of acts considered unfair competition with respect to technological restriction measures.

The second major area of change is a partial revision of the Industrial Standardization Act. The Japan Industry Standards (JIS) would be updated to entitle the subject matter of data, services, and management systems to standardization under the JIS. There would also be an allowance for private associations with expertise in the area to allow the establishment of new JIS without needing to be reviewed by the Japanese Industrial Standards Committee. The revisions to the Industrial Standardization Act would also raise the upper limit for fines from 1 million yen to 100 million yen for the unauthorized labeling of the JIS mark.

The third major area of change proposed by the bill would be a partial revision to the Patent Act. The changes sought by this revision included a patent system in which SMEs are entitled to a 50% reduction of fees. There is also a provision to improve the procedures related to deciding in private the necessity of documents utilized in an IP legal dispute as well as a provision limiting the disclosure of documents containing trade secrets under the system for providing advisory opinions as to the technical scope of the rights of a patent. Some other proposed changes include provisions to expand the period for the exception of the lack of novelty of inventions, the introduction of a system for making credit-card payments for fees, the introduction of a system for providing the digital exchange of priority documents for design applications, and improvements to the trademark filing system—namely that divisional applications can only be filed after payment for the original application so as to prevent or minimize trademark squatting.

The final major area of change is related to the Patent Attorney Act which would stipulate new practices for patent attorneys so that the attorneys are able to provide IP oriented support to business utilizing data and allowing them to prepare proposals for new JIS and other standards.