E-News No.45

E-News No.45

Partial amendment to the Japanese patent law in 2016 by Hirohito Katsunuma (Kyowa Patent and law office – Japan)

The amendments include: (1) activation of the employee’s invention, (2) revision of Patent Fees, etc. and (3) amendments to the Patent Act and the Trademark Act to conform to the Patent Law Treaty (PLT) and the Singapore Treaty on the Law of Trademarks (STLT).

I. Activation of the Employee’s Invention

1. The current employee’s invention system is as below:

a. The right to obtain a patent for an employee’s invention originally belongs to the employee, etc.;

b. Where the employee, etc. has obtained a patent for an employee’s invention, the employer shall have a non-exclusive license on the patent right concerned (Patent Law Article 35(1));

c. When the employee, etc. has transferred the right to obtain a patent or the patent right to the employer, etc., or the employee, etc. has granted an exclusive license to the employer, etc. in accordance with the employment contract , the service regulation, etc., the employee, etc. shall have the right to a reasonable remuneration (Patent Law Art. 35(3));

d. The payment of the remuneration as provided for in the employment contract, the service regulation, etc. shall not be considered to be unreasonable under the following situation:

(i) A negotiation was carried out between employer, etc. and employee, etc. in the course of establishing the criteria for determining the remuneration;

(ii) The criteria established were disclosed, and

(iii) The views of employee, etc. were heard for calculating the amount of the remuneration (Patent Law Art. 35(4)).

2. The amended employee’s invention system is featured by the following points:

a. Where the employment contract, the service regulation, etc. stipulates that the right to obtain a patent for an employee’s invention belongs to the employer, etc., the right to obtain a patent for an employee’s invention shall belong to the employer, etc. (Amended Patent Law Art. 35(3));

b. When the employee, etc. has given the right to obtain a patent for an employee’s invention to the employer, etc. in accordance with the employment contract, the service regulation, etc., the employee, etc. shall have the right to a reasonable remuneration (Amended Patent Law Art. 35(4));

c. The Minister of Economy, Trade and Industry will issue a guideline for the situation of negotiation described in the above item 1.d.(i). (Amended Patent Law Art. 35(6)).

“Activation of the employee’s invention” is an expression used by the legislator with the purpose to increase the number of the employee’s inventions. The major change of the law is that the right to obtain a patent for an employee’s invention will now originally belong to the employer. Thus, the transfer of an employee’s invention to the employer will be simpler and straight forward. At the same time the employee’s right to obtain a fair and predictable remuneration based on the new guideline to be issued by the Minister of Economy.

3. It should be noted that the right to obtain a patent for an employee’s invention would belong to the employee, etc., if the contract, the service regulation, etc. does not explicitly stipulate that the right to obtain a patent for an employee’s invention should belong to the employer, etc.

4. The guideline is to be issued by the Minister of Economy, Trade and Industry and will describe the procedures or criteria of reasonableness for negotiation described in the above item 1.d.(i). The guideline will not have legal force. However, as the court may refer to the guideline if a dispute for the reasonable remuneration is brought to the court, it is expected to lead the contract, the service regulation etc. to reach a standard level.

II. Revision of Patent and Trademark Fees, etc.
The Patent Application Fees and the Annual Fee will be reduced by about 10%. The Fee for Trademark Registration will be reduced by about 25%. The Renewal Fee for a registered trademark will be reduced by about 20%. Different fees will be applied to the international patent applications filed in Japanese and in English.

III. Amendments to the Patent Act and the Trademark Act to Conform to the PLT and the STLT
The following amendments to the Patent Law and the Trademark Law are adopted:

  1. Patent Law Art. 5(3) is newly established to conform to PLT Art. 11(1)(ii);
  2. Patent Law Art. 36-2(3), (4) are newly established to conform to PLT Art. 6(7);
  3. Patent Law Art. 38-2 is newly established to conform to PLT Art. 5(1)-(4);
  4. Patent Law Art. 38-3 is newly established to conform to PLT Art. 5(7);
  5. Patent Law Art. 38-4 is newly established to conform to PLT Art. 5(6)(a),(b);
  6. Trademark Law Art. 9(3) is newly established to conform to STLT Art. 14(2)(ii).