- JPO and CNIPA News -
1. JPO will relax standard for reviving expired patents, designs, trademarks, and utility models beginning next April
Japan has long been a difficult jurisdiction to revive intellectual property which expired after the applicant/right holder failed to act in a timely manner (e.g., by failing to pay the maintenance fee for a patent in a timely fashion). The standard in Japan to revive such IP has long been that the failure to act in a timely manner must be due to a "valid reason," and the JPO's interpretation of a "valid reason" has been extremely strict. Accordingly, revival of expired IP rights has been unlikely outside of extraordinary circumstances. The JPO recently demonstrated a degree of flexibility for rights holders who were unable to act in a timely fashion due to the coronavirus pandemic (see our July, 2020 newsletter).
The JPO has announced, however, that rather than requiring demonstration of a "valid reason," a rights holder will soon be able to revive expired IP by showing the failure to act in a timely manner was "unintentional."1 The language of this proposed standard is similar to that used in the United States (see 35 USC § 27), which suggests that the standard for revival may be relaxed. Filing for revival of expired IP in this manner will also require the payment of a fee (JPY 297,000 for a patent applicant/patent, JPY 25,000 for a design patent/application, JPY 50,000 for a utility model/application, and JPY 102,000 for a trademark/application2).
The new standard and procedure will come into effect April 1, 2023.
Specific information on this topic can be found here. (Japanese)
2. JPO provides revised guidelines for the collective application process to fit the business strategies of applicants
In July 2022, the JPO revised the collective examination guidelines to make it easier for applicants to utilize. The main revisions are as follows:
- The guidelines clarify that the business explanation meetings and examiner interviews which may take place during collective examination will be possible both in person and online (previously there was no documentation explicitly providing for this);
- Collective examination for a group of applications will be possible as long as a group of applications contains at least 1 patent application (previously at least 2 patent applications were required);
- Collective examination will be possible even when examination has already started for an application in the group (previously as a general principle this was not possible); and
- In collective examination, where accelerated examination is desired for patents and designs, it will not be necessary to submit an explanation of the circumstances why accelerated examination is being requested (an explanation will still be required for trademarks; previously, an explanation was required for patents, designs, and trademarks).
Specific information on this topic can be found here. (Japanese)
3. JPO releases newly revised guide for negotiations involving standard essential patents (SEPs)
In an effort to prevent and quickly resolve disputes over standard essential patents, the JPO has released a revised guide for negotiations involving standard essential patents (SEPs), which are patents necessary for the implementation of standards (e.g., in the field of wireless communications).
This guide was originally developed in 2018 to increase transparency and predictability regarding license negotiations for standard essential patents. At the time when this guide was first developed in 2018, attention was focused on the preliminary ruling by the European Court of Justice in the case of Huawei v. ZTE, which provided a framework for good faith negotiations. The 2022 revision is intended to further address issues such as the scope of information to be provided by the parties at each stage of negotiations and the response period. In doing so, the guide attempts to set forth norms of good faith negotiations to be followed by rights holders and implementers to encourage early settlements and avoid unnecessary disputes.
The guide can be found here. (English)
4. CNIPA changing scope of preliminary assessment of utility model applications: obvious lack of inventive step now in scope
Presently, China has adopted a system of "preliminary examination & evaluation report" for new utility model applications. In this preliminary examination, the examiner may examine whether the utility model application obviously does not possess novelty according to the information obtained about the prior art or the conflicting application.
In addition, recently there has been an important adjustment to this preliminary examination system for utility model applications in China. Specifically, on the 20th of July 2022, in a reply letter from CNIPA to the recommendation No. 8842 of the 5th Session of the 13th National People's Congress , it is mentioned that "in order to further improve the quality of the granted utility model, CNIPA actively promoted the reform of the utility model examination system. In the revised draft of 'Implementing regulations of the patent law of the People's Republic of China', the obvious lack of inventive step was brought into the scope of preliminary examination of utility model application; moreover, the 'Guidelines for Patent Examination' are amended accordingly.".
In other words, in the examination practice for utility model applications from this point on, CNIPA's examiners will now not only consider an obvious lack of novelty, but also an "obvious lack of inventive step".
Further information can be found here (Chinese)
5. CNIPA issues its Annual Report 2021
On June 1, 2022, CNIPA issued its Annual Report 2021. Highlights of the report include the detailed data of different kinds of intellectual property in that year. Some of the main trends are summarized below.
In 2021, the number of newly filed invention patent applications in China stood at 1.59 million, a year-on-year increase of 5.9%.
Furthermore, 696,000 invention patents were granted in 2021, marking a year-on-year increase of 31.3%.
The number of utility model applications was 2.85 million, showing a year-on-year decrease of 2.5%. The amount of granted utility models stood at 3.12 million.
For designs, the number of design applications was 806,000, a year-on-year increase of 4.6%, while 786,000 design patents were authorized.
Looking at the trends, in 2021, China's invention patent granted rate was 55% and the number of utility model patent applications fell for the first time in eight years.
Looking at trademark applications, this reached a total of 7.74 million, and furthermore 5928 Madrid international trademark registrations were received by CNIPA.
Concerning other types of IP, 13,000 layout designs of integrated circuits were registered; 99 products were approved for geographical indication (GI) protection; 477 GI certification marks and collective trademarks were registered; and 7,677 market entities were authorized to use the special sign for geographical indications.
Finally, the report also reported on the examination pendency. In 2021, the average pendency for invention patents was reduced to 18.5 months, and the pendency for the high-value invention patents was shortened to 13.3 months. For trademarks, the average pendency for examination remained stable at 4 months.
Further information can be found here. (English)
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Footnotes
1. The details of the procedures for restoration of rights are stipulated in the METI Ordinance, so it is necessary to confirm the METI Ordinance that will be released in the future.
2. The restoration fee is waived in cases where the failure to pay in a timely fashion for processing is not attributable to the applicant, such as due to a disaster or infectious disease.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.