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AIPPI Delegation visits Japanese IP Institutions

In June 2019, a delegation of the AIPPI Bureau was in Tokyo to participate in the 50th anniversary of our sister organization – the Asian Patent Attorneys Association (APAA) – held during the afternoon on June 3rd, visited the Japan Patent Office (JPO) and the Intellectual Property High Court (IP High Court), and met with the President and other senior members of AIPPI Japan.

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The AIPPI Bureau delegation consisted of Ms. Renata Righetti Pelosi (President), Mr. Shoichi Okuyama (Second Vice President), Ms. Olga Sirakova (Secretary General), Mr. Jonathan Osha (Reporter General), and Arno Hold (Executive Director).

Annual Vistit at the IP High Court of Japan

The AIPPI delegation, accompanied by representatives of AIPPI Japan, was greeted by Chief Judge Makiko Takabe, Judge Yasuhiko Kobayashi as well as Judge Sumiko Sekine and received a summary of the IP High Court’s recent activities.

AIPPI gave an overview on the resolutions concluded at the latest Annual World Congress in Cancun, explained the study questions to be discussed at the upcoming World Congress in London and invited the IP High Court to send a judge to London.

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The IP High Court was created in April 2005 not as an independent court, but as a division within the Tokyo High Court with some autonomy. It has 17 judges and 11 technical researchers who are experienced JPO examiners and patent attorneys. It has sole jurisdiction over patent and utility model infringement cases and is a trial court where you can assert new facts and evidence. It also hears all appeals from decisions made by the Trial and Appeal Department of the JPO including invalidation decisions.

For more information, please visit the English website of the IP High Court (also available in French, German, Chinese and Korean).

The following chart shows the jurisdiction of the IP High Court (reproduced with modifications from the court’s website with permission):

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Annual Visit at the Japan Patent Office (JPO)

At the Japan Patent Office (JPO), the AIPPI delegation met with the Deputy Commissioner, Mr. Kunihiko Shimano, who heads the examining corps, and six officers.

The meeting agenda touched upon the activities of both institutions during the past one year since the last visit. Furthermore, AIPPI also extended an invitation for JPO to participate at its World Congress in London.

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Japan adopted the 12-month grace period in June 2018. This is a major change from the 6-month grace period which covered, and still covers, most of activities the inventor or those who have rights to obtain patents who disclosed an invention, including sales and academic and media publications. It is noted that a patent office publication is not a subject to the benefits of the grace period, and 12 months is counted from the Japanese filing date or PCT filing date, not from the priority date.

In May 2019, the JPO managed to pass a legislation related to the Patent and Design Acts. Changes will take effect within one year. On the design front, changes are major: 25-year protection from the filing date, instead of 20 years from the registration; plural designs included in a single application; extended protection over icons and other image designs not necessarily related to particular products; and protection over external or interior designs of buildings. Formalities will also be eased. It will also become possible to consecutively file similar designs over 10 years from the filing of an original design and have them registered as related designs.

On the patent front, it will become possible to have a neutral, court-appointed expert go into and inspect the alleged infringer’s facility for the purpose of finding infringement. Also, it has become codified that different provisions in the Patent Act for damages calculations can be simultaneously applied to complement each other to increase damages the court can find.

Lunch Meeting with AIPPI Japan

The AIPPI Bureau delegation also met with seven board members including the President of AIPPI Japan over bento lunch in order to discuss membership issues and explained the latest activities of the Bureau.

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