Under the amended law, the request for examination must be filed within
three (3) years from the date of application. Before the amendment, the
period for request for examination was seven (7) years from the date of
application, and about half of the applicants filed the request for examination
during the sixth or seventh year. It was one of the reasons why the average
examination time in Japan was longer than that in other jurisdictions.
Now, applicants are encouraged to determine whether their applications
deserve examination earlier. Since all applications are laid open in eighteen
(18) months after the filing date, however, they should have sufficient
time to study competing applications for determining whether there is an
application defeating theirs.
Under the Japanese court practice, the plaintiff must present a specific
description of the accused product/process. In the past, the defendant
could merely deny it without presenting an alternative description. Now,
under the amendment, the defendant denying the plaintiff's description
must present an alternative one and specify the differences between the
two. Depending on the circumstances, the court may issue a court order
compelling the defendant to produce documents showing the accused product/process.
If the defendant asserts that disclosing the specifics of the accused product/process
would jeopardize his/her trade secrets, the court may examine the documents
in camera, that is, without presence of the plaintiff. The court has discretion
to determine to what extent such documents should be produced.
The amendment authorizes the court to appoint an expert calculating the
damages when a party fjles a request for such appointment. When such an
expert is appointed, the parties are required to give relevant information
to him/her. Although it is often the case that the parties are reluctant
to disclose financial information to each other, they are expected to disclose
such information more cooperativey to the expert. When it is difficult
to calculate the amount of damages, the amendment allows the court to decide
it at its discretion with the best available information. Therefore, acting
cooperatively with the expert would be usually recommended.
An invention is not novel under the amended Patent Law if it falls into
one of more of the following categories:
(1) inventions known prior to the filing date;
(2) inventions practiced prior to the filing date; or
(3) inventions described in a publication, or made available to the public
electronically, prior to the filing date.
Before the amendment, categories (1) and (2) applied only to inventios
known or practiced in Japan, that is, inventions known or practiced only
in a foreign country was still regarded as novel for the purpose of determinging
patentability. It was also unclear whether an invention made available
to the public on the Internet should be deemed as actually known to the
public.
The amendment came into effect as of January 1, 2000.