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Intellectual Property in Japan

In Japan, the most common types of intellectual property rights are patent rights, utility model rights, design rights, trademark rights and copyrights. Patent is one of the most important forms of protection available. The Japan Patent Office (JPO) is the Japanese government agency responsible for granting trademark, patent, utility model and design rights. The agency is composed of a number of departments, including the Trademark, Design and Administrative Affairs Department. If you do not have an existing business entity in Japan, you will be required to obtain the services of a local IP expert to conduct any procedures with the JPO. In addition to helping you with the IP processes, experts can also assist in understanding local culture to prevent misunderstandings that could become obstacles for businesses expanding into Japan. Applications for IP rights can be filed electronically through the JPO website. A good first step is to search existing IP to check whether your anticipated IP use may conflict with or infringe on someone’s prior rights.

Patent in Japan

In Japan, an invention meets the patentability requirement if it was created with the use of technical concepts and the laws of nature. The patent must also be industrially applicable. There are 2 ways to file an application: send it directly to the JPO or apply through the Patent Cooperation Treaty (PCT). Applications that are filed in English must include a Japanese translation. The translation must be sent within a month of the submission of the initial application. A request for examination must be filed within 3 years from the initial application filing date. The request notifies the JPO that the invention is ready for examination. If you fail to send the request within that time, the application will be considered withdrawn. In Japan, patent protection generally lasts for up to 20 years from the filing date. However, the term of protection for patent applications relating to agricultural chemicals and pharmaceuticals may be extended for an additional 5 years. Japan has a “first-to-file” patent system, meaning that a patent is granted to the first person who files for patent protection. Applicants can use the Patent Prosecution Highway (PPH) to speed up the examination process for corresponding patent applications filed in Japan.

Trademark in Japan

In Japan, a trademark is any character, figure, sign, 3-dimensional shape, sound or colour, or any combination thereof, that is used in connection with a person or company’s goods or services. Japan follows a “first-to-file” system for trademark rights. This means that whoever registers a trademark first holds the exclusive right to the use of the trademark. Foregoing trademark registration in Japan may leave a business vulnerable to the risk of others registering the trademark. A trademark can be filed directly with the JPO or through the Madrid System for the International Registration of Marks. In Japan, a trademark is registered for 10 years and can be renewed every 10 years. If you are not regularly using your trademark in the Japanese marketplace, it may be subject to a dispute or challenged for non-use. Cancellation of trademark registration may be requested if the trademark is not used for more than 3 consecutive years.

Industrial design in Japan

In Japan, a design is any shape, pattern or colour of an article, or any combination of those. A design must be new and innovative in its form. Ensure that you do not publish or disclose your design before filing an application, because once a design is disclosed to the public, it may be deemed as non-novel and barred from being registered. In the event that a design has been publicly disclosed before filing, the applicant may be entitled to a 1-year grace period under certain circumstances. In Japan, designs are granted on a “first to file” principle. Under this principle, if multiple design applications for an identical or a similar design are filed on different dates, only the earlier application is entitled to registration. Some designs, such as those that go against public order or those deemed immoral by the JPO, cannot be registered. In Japan, designs are protected for 20 years from the registration date, with no option for extension.
Applications must be made directly with the JPO or through the Hague System for the International Registration of Industrial Designs.

Copyright in Japan

Japan adopted its first modern copyright statute in 1899 and joined the Berne Convention in the same year. This statute, as revised from time to time, remained in effect for 70 years. As the technology of reproduction and communication progressed, however, pressure for major revision intensified, and ultimately the current Japanese Copyright Law was approved in 1970.Among other changes, the 1970 Law divided the panoply of author’s rights into moral rights and economic rights, extended copyright protection to broadcasting and phonograms, increased the period of protection, created a number of specific fair use provisions, and established neighboring rights for performers, phonogram producers, and broadcasting organizations. In Japan, copyright protects original literary, scientific, artistic or musical works in which thoughts or sentiments are expressed in a creative way. Copyrights are automatically granted when content is created. Copyright registration is administered by the Japan Copyright Office. As there is no general ‘fair use’ doctrine in Japan, rather than apply- ing general standards, specific special exemptions set out the terms under which a work may be used legally. Under Japanese law, copyright protection continues “until the end of a period of seventy years following the death of the author” or, in cases where the work bears the name of a corporate body, “until the end of a period of seventy years following the making public of the work.”

IP enforcement in Japan

There are several ways to enforce your rights against unauthorized use of your IP in Japan:
▪ Japan maintains a strong framework of enforcement measures to protect against IP infringement. IP owners can send a warning letter to notify the infringer of their actions. The letter is intended as a first step for IP owners. The optimal result is for the infringer to cease all wrongful actions.
▪ In cases where a warning letter is not sufficient, it may be best to seek legal action.
▪ If you believe your IP rights are being infringed upon in Japan, you should consult a lawyer licensed to practise in Japan or an IP professional to discuss the next steps.
▪ IP right holders can request a provisional injunction to prevent infringing acts from continuing until the case is resolved.
▪ In 2016, Japan established the Intellectual Property High Court to shorten the duration of civil procedures related to IP.
▪ The Japan Customs tariff law gives IP owners the option of filing for custom suspension of infringing goods. If the goods are found to be infringing, the company may face a fine of up to USD 100,000.
▪ Japan also provides the option of ADR processes, such as mediation and arbitration. ADR processes are generally more informal, less adversarial, cheaper and settlement-focused. They can be used before or as an alternative to going to court.
▪ Before taking any action, you may wish to consult a qualified IP professional who is familiar with Japan’s legal system to explore the various enforcement mechanisms available.