This country-specific Q&A provides an overview to intellectual property law in Japan.
It will cover intellectual property rights, licensing, enforcement, establishing infringement or liability, and challenges to intellectual property.
This Q&A is part of the global guide to Intellectual Property. For a full list of jurisdictional Q&As visit http://www.inhouselawyer.co.uk/index.php/practice-areas/intellectual-property/
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
(a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how);
Inventions: Highly advanced creation of technical ideas utilizing the laws of nature are protected under the Patent Act.
Devices: Creation of technical ideas utilizing the laws of nature relating to the shape or structure of an article or combination of articles (minor inventions, so to speak), are protected by the Utility Model Act.
Trade secrets: Technical or operational information useful for business activities that is controlled as a secret and is not publicly known is protected by the Unfair Competition Prevention Act.
(b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees);
Registered Trademarks: Any character, figure, sign or three-dimensional shape, or any combination thereof, or sounds, motions, holograms, colours, or positions that are used in connection with goods or services are registrable and protectable under the Trademark Act.
Unregistered Marks: Even if an indication of origin of goods or services is not registered as a trademark, it still can be protected under the Unfair Competition Prevention Act if the indication has acquired well-known or famous status.
Trade Names: No person may use, with a wrongful purpose, any name or trade name which makes it likely that the person may be mistaken for the other business entity under the Companies Act and the Commercial Code.
Geographical Indications: Name of agricultural products from which a specific geographical origin and established characteristics such as the quality that are linked to that origin are identified are registerable and protectable under the Act on Protection of the Name of Specific Agricultural, Forestry and Fisher Products and Foodstuffs.
(c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
Copyrights: Literary, academic, artistic or musical productions in which thoughts or sentiments are creatively express can be protected automatically upon creation under the Copyright Act.
Registered Designs: The shape, patterns or colours, or any combination thereof, of an article (including a part of an article) of aesthetic nature is registrable and protectable under the Design Act.
Unregistered Designs: Configurations of goods (shape of goods and their associated patterns, colour, gloss, and texture) are protected against substantially identical imitations within three years from the day on which the original goods were first sold in Japan.
Layout-Designs of Semiconductor Integrated Circuits: Layouts of circuitry elements in semiconductor integrated circuits and the lead wires connecting such elements are registrable and protectable under the Act on the Circuit Layout of a Semiconductor Integrated Circuits.
Plant Varieties: Any plant groupings which can be distinguished from any other plant grouping by the expression of at least one of the important characteristics and which can be propagated while maintaining all its expressions of characteristics without change are registrable and protectable under the Plant Variety Protection and Seed Act.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents: 20 years from the filing date of the application. An extension of such duration up to 5 years is available for patent registrations regarding pharmaceuticals and agricultural chemicals under certain circumstances.
Utility model rights: 10 years from the filing date of the application.
Trademark rights: 10 years from the registration date. Such registration may be renewed any number of times by filing an application for renewal.
Design rights: 20 years from the registration date. Such registration is not renewable.
Copyrights: 50 years after the death of the author from the creation, with some exceptions, for example: 50 years after the work is made public in the case of works attributed to an organization; and 70 years after the work is made public in the case of cinematographic works.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
Patents/Utility model rights/Design rights: The first owner of a right to obtain a patent is the inventor. For employee inventions, the right to obtain a patent belongs to the employer from the time of occurrence of such right by stipulating so in an agreement, employment regulation or elsewhere in advance. The same rule applies to utility model rights and design rights.
Trademark rights: The first owner of a trademark right is the applicant in whose name the trademark is registered.
Copyrights: The first owner of a copyright is the author of the work. For employee creations, the owner of the copyright is the employer, under the circumstances stipulated in §15 of the Copyright Act, unless otherwise stipulated in an agreement, employment rule or elsewhere at the time the work is created.
Which of the intellectual property rights described above are registered rights?
Patents, utility model rights, trademark rights and design rights.
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Patents/Utility model rights/Design rights: The first owner to obtain the rights (see Question 4 above) or the assignees of such rights may apply for registration by submitting a written application to the Japan Patent Office.
Trademark rights: Anyone who uses or intends to use the mark in connection with the designated goods or services may apply for registration.
How long does the registration procedure usually take?
Patents: 14.6 months on average from a request for examination to the establishment of rights (in FY2016).
Trademark rights: 6.8 months on average from the filing of an application to the establishment of rights (in FY2016).
Design rights: 7.0 months on average from the filing of an application to the establishment of rights (in FY2016).
Do third parties have the right to take part in or comment on the registration process?
During the application process for patents, utility model rights or trademark rights, anyone may anonymously provide information to inhibit or prevent registrations of those rights by submitting documents to the Japan Patent Office.
What (if any) steps can the applicant take if registration is refused?
An appeal to a trial court at the Japan Patent Office against examiner’s decision of refusal is available within three months from the date on which the certified copy of the examiner’s decision is served. In addition, the applicant may file with the intellectual property high court a suit for cancelling such trial decision.
What are the current application and renewal fees for each of these intellectual property rights?
See the “Schedule of fees” (on or after April 1, 2016) webpage of the Japan Patent Office (https://www.jpo.go.jp/tetuzuki_e/ryoukin_e/ryokine.htm).
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
The registered right will lapse due to non-payment of renewal fees.
In the case of a failure to pay renewal fees, the rights holder may make an additional payment along with the unpaid renewal fees within the six-month grace period from the payment deadline in order to maintain or renew the registered right.
In addition, where the rights holder has justifiable reasons for having been unable to pay the renewal fees by the payment deadline, the rights holder may make an additional payment along with the unpaid renewal fees only within two months from the date on which such reasons have ceased to exist but not later than one year (six months in the case of trademarks) after the expiration of the payment deadline.
What are the requirements to assign ownership of each of the intellectual property rights described above?
A registration for an assignment of a patent, utility model right, trademark right or design right is required in order for such assignment to take effect. For assignments of other types of intellectual property rights, no registration is required.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Assignments of patents, utility model rights, trademark rights and design rights do not take effect until such assignment is registered.
What are the requirements to licence a third party to use each of the intellectual property rights described above?
No formality, including registration, is required in order to license intellectual property rights to a third party, with the exception of “exclusive registered licenses” as set forth in, for example, §77 of the Patent Act, which are required to be registered to take effect under the Utility Model Act, Trademark Act and Design Act, as well as the Patent Act.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Registration is basically not required for a license of intellectual property rights. However, no grants of “exclusive registered licenses” of patents, utility model rights, trademark rights and design rights take effect until such grant is registered.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
The holders of an “exclusive registered license” of a patent, utility model right, trademark right or design right are eligible to seek an injunction against or compensation for damages from the infringer of the exclusive registered license. The holders of other types of licenses, on the other hand, are generally not in the position to make such claims. However, there are court decisions which found that the holders of an exclusive non-registered license are eligible to seek compensation for damages depending on the circumstances.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Criminal penalties of imprisonment and/or fines are available for infringement upon each type of intellectual property rights when such infringements were committed deliberately. Basically, prosecutors have the authority to determine whether criminal procedures are appropriate. However, in the case of copyright infringement, it is necessary for the victim to file an accusation in order for prosecutors to institute a prosecution.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
- Filing formal lawsuits in a court to seek an injunction and/or compensation for damages
- Filing petitions for preliminary injunction in a court
- Filing applications for Import suspension with Customs
Alternative dispute resolution:
- Mediations and arbitrations
What is the length and cost of such procedures?
The average length of a formal lawsuit at the district court level regarding intellectual property rights was 13.3 months in 2016. The filing cost for a civil lawsuit is calculated based on the amount of the claim.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
For court actions concerning patents, utility models or copyrights for computer programs, the Tokyo or Osaka District Court has exclusive jurisdiction in the first instance. A plaintiff may bring a court action concerning other intellectual property rights to a court which has jurisdiction in accordance with the provisions of the Code of Civil Procedure, as well as to the Tokyo or Osaka District Court.
Lawsuit proceedings are initiated by way of a plaintiff submitting a complaint. Then the court sets the first court hearing date and the defendant has to submit a written answer by, or appear to answer the complaint at, the first court hearing. After that, both parties submit briefs and evidence several times until the suit is in condition for the court to render a final judgment. Courts often attempt to arrange a settlement before rendering a final judgment.
For the time to judgment, see 18. For the award of relief, see 31. Appeals to the Intellectual Property High Court or other courts with jurisdiction in the second instance and final appeals to the Supreme Court are also available.
What customs procedures are available to stop the import and/or export of infringing goods?
Identification Procedures: When Customs finds any goods suspected to infringe upon intellectual property rights, it initiates an “identification procedure” in which it makes a decision as to whether or not the suspected goods are infringing intellectual property rights. If Customs decides that the goods are infringing intellectual property rights based on opinions and evidence from the rights holder and the importer, it may confiscate and destroy the infringing goods.
Application for Suspension: The owners of intellectual property rights may request Customs to initiate identification procedures in the case where Customs detects goods suspected of infringing their intellectual property rights in imports or exports. In cases where the suspected goods are those which the intellectual property rights holder applied for suspension and Customs has accepted such application, simplified identification procedures may be available, except in cases of patents, utility model rights and design rights.
For more details about these procedures, please see the Japan Customs’ website: http://www.customs.go.jp/mizugiwa/chiteki/index_e.htm.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
What options are available to settle intellectual property disputes?
Parties may settle disputes out of court by entering into a private settlement agreement. Disputes may also be settled during court proceedings by the parties reaching a judicial settlement. When a judicial settlement is stated in a record, such statement has the same effect as a final and binding judgment.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
To establish infringement of an intellectual property right, the plaintiff must prove the following facts. The strength of the evidence submitted by the parties is freely assessed by the judges.
A person infringes upon other’s patent if the person does any of the following in Japan without the patent owner’s consent:
- In the case of an invention of a product, producing, using, assigning, leasing, exporting or importing, or offering to assign or lease the product;
- In the case of an invention of a process, using the process; or
- In the case of an invention of a process for producing a product, using the process, or using, assigning or leasing, exporting or importing, or offering to assign or lease the product produced by the process.
In addition, certain acts may be deemed to constitute patent infringement as set forth in §101 of the Patent Act; for example, acts of producing, assigning or leasing, importing, or offering to assign any product to be used exclusively for the producing of the said product as a business.
Utility Model Rights
Utility model right infringement occurs when the alleged infringer makes, uses, assigns, leases, exports, imports or offers to assign or lease an article which embodies the device. In addition, certain acts set forth in §101 of the Utility Model Act may be deemed to constitute an infringement.
The acts which constitute trade secret infringement are set forth in §2(1)(iv)-(ix), including wrongfully acquiring, or using or disclosing, other’s trade secret wrongfully acquired.
A trademark infringement is established if, for example, the alleged infringer uses any mark identical or similar to the registered trademark in connection with goods or services identical or similar to the designated goods or services.
If a person creates confusion with other’s goods or business by using an indication which is identical or similar to the other’s indication which is well-known among consumers, such use constitutes unfair competition. Further, use of an indication which is identical or similar to the other’s famous indication constitutes unfair competition without establishing the creation of consumer confusion.
A copyright infringement action may be brought if the alleged infringer violates the copyright owner’s right to reproduce, perform, present, transmit, recite, exhibit, distribute, transfer, rent out, or translate or otherwise adapt the copyrighted work in certain ways set forth in the Copyright Act. In addition, certain acts set forth in §113 of the Copyright Act may be deemed as infringing copyright. Furthermore, the author of a work has moral rights, i.e., the right to make a work public, the right to attribution, and the right to integrity.
Design right infringement occurs when the alleged infringer manufactures, uses, assigns, leases, exports or imports, or offers to assign or lease, an article identical or similar to the registered design. In addition, certain acts set forth in §101 of the Utility Model Act may be deemed to constitute infringement.
If a person assigns, leases, displays for the purpose of assignment or lease, or exports or imports a product created, based on the configurations of another’s product and whose configuration is substantially identical to that of the other’s product, such act may constitute unfair competition.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties' expert witness evidence?
Judicial research officials, full-time court staff members consisting of former JPO trial examiners and patent attorneys, etc. and/or technical advisors, part-time national public officers designated by the court in each case, are engaged in technology-based IP-related litigation.
b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
Discovery is not available in Japan. However, courts may, upon a motion from a party, order the other party to produce documents that are required to prove the infringing act or to calculate the damage, unless there are reasonable grounds for the person possessing the documents to refuse production of such documents. If the other party does not comply with the order, the court may recognize that the party’s allegations are true.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
The strength of the evidence submitted by the parties is freely assessed by the judges. Cross examination is available, but not frequently employed in the IP infringement litigation.
What defences to infringement are available?
- Patent invalidity
- Use for experimental or research purposes
- Abuse of right
- Prior user’s right, etc.
- Non-use as a trade mark
- Invalidity of trademark registration
- Parallel importation
- Abuse of right
- Prior user’s right, etc.
- Reproduction for private use
- Stage performance, etc. for non-commercial purposes
- Reporting of current events
- Exploitation of an artistic work on public display
- Abuse of right, etc.
- Invalidity of design registration
- Use for experimental or research purposes
- Abuse of right,
- Prior user’s right etc.
Who can challenge each of the intellectual property rights described above?
Patents: Anyone may file an opposition to a granted patent with the Japan Patent Office within six months after issuance of the official gazette in which the patent is published. Only interested parties can file for an invalidation trial at the Japan Patent Office at any time.
Trademarks: Anyone may file an opposition to a trademark registration with the Japan Patent Office within two months after issuance of the official gazette in which the trademark is published. Only interested parties can file for an invalidation trial at the Japan Patent Office at any time or within 5 years from registration depending on the reasons for invalidation.
Utility Model Rights and Design Rights: Anyone may file for an invalidation trial at the Japan Patent Office at any time.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
Patents: The grounds for invalidation and opposition include:
- Lack of novelty or inventive step
- Interference with another patent application that has an earlier priority date
- Violation of claim clarity, enablement or written description requirements
- Violation of conditions for an amendment during prosecution
- Falsification of inventorship (for invalidation only)
Registered Trademarks: The grounds for invalidation and opposition include:
- Trademark has no distinctive character
- Trademark is likely to negatively affect public policy
- Trademark is identical or similar to a registered or well-known mark
- Trademark is likely to cause confusion in connection with the goods or services pertaining to the business of another person
Regarding the forum and the procedure, see 27.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
In cases where it is effective and adequate for a person who allegedly infringes on a third party’s intellectual property rights to seek a declaration of non-infringement in order to remove the danger or anxiety to the plaintiff’s legal status, the person may file a lawsuit to seek a declaratory judgment which confirms that the defendant has no claims against the person based on infringement upon the defendant’s intellectual property rights under certain circumstances.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
- Preliminary/permanent injunction along with measures necessary to suspend and prevent infringement (such as destruction of infringing goods
- Compensation for damages
- Measures to restore credibility (such as a public apology in a newspaper)
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
Basically, the defeated party shall bear the court costs. In the case of partial defeat, the burden of court costs on each party shall be determined by the court at its discretion. To recover attorneys’ fees a plaintiff needs to establish the amount of reasonable fees as damages. The amount of recoverable attorney’s fees depends on the complexity of the case and other circumstances. In many cases, the amount is around 10% of the financial damages awarded by the court.
If a plaintiff does not have any domicile, business office or other office in Japan, the court shall make an order to the effect that the plaintiff should provide security for court costs upon a petition by the defendant.