TOKYO-HIRAKAWA Patent/Law Office

Important notice

2. Patentability examination request may be filed within three (3) years from
actual filing date in Japan, in case of Paris route,
international filing date, in case of PCT.
This rule is not applicable to applications which have been filed before October 1. 2001. which still have 7 years.

1. Thirty (30) month period from a priority date may be applied to every PCT application when entering the PCT national phase in Japan
Two (2) month extension is available..
This rule is not applicable to PCT application of which due date for submitting translation falls in before September 1. 2002.

Amendment of Patent Law

5. Changing patent-related fee, effective from 04/01/2004

Official fee lists (Unit Yen) N are a number of claims

	Old fee	New fee (from 04/01/2004)
Application fee	21000	16000
Examination fee	84300+2700xN	168000+4000xN
Annuity
1st -3rd years	13000+1100xN	2600+ 200xN
4th -6th years	20300+1600xN	8100+ 600xN
7th-9th years	40600+3200xN	24300+1900xN
10th-25th years	81200+6400xN	81200+6400xN

Note 1: Application filed after 04/01/2004 shall pay new fee.
Note 2: Appliication filed before 04/01/2004 shall pay old (less) examination fee amd new (less) anuity.
Note 3: Application and exam. request thereof filed before 04/01/2002 shall pay old (more) anuity.
Note 4: In case of PCT, whether new or olld fee being applicable depends upon internatioinal filing date.
Note 5: A part of the examination fee could be refunded in case the examination request is withdrawn prior to a first office action.

4. The existing opposition system and invalidation trial system, which coexist as system for disputing over the validity of patents would be consolidated and integrated into a new invalidation trial system. effective from 01/01/2004
Anybody may demand a new invalidation trial anytime
Processing shall be carried out between the demandant and patentee.
Appeal may be made by both sides before Tokyo High Court.

3. A patentee may demand for correcting the specification within only 90 days from a date lodging a trial before Tokyo High Court. effective from 01/01/2004.
In case where a correction is demanded, the Court may remand the case to the JPO even before the correction is accepted,
In the above-mentioned case, the patentee could demand correction of specification again.

2. The period for requesting patentability examination expires 3 years from
an actual filing date in Japan in Paris route:
an international filing date in PCT route.

1. The period for submitting translation of patent specification of every PCT case expired 30 months from a priority date plus 2 month extension being available.

From recent cases before courts

5. Ex-employee vs. Ajinomoto Co. Tokyo District Court 02/24/2004
The Court decided the company to pay $1.7 Million to the Ex-emplyoee.

4. Ex-employee vs.Nichia Gosei Co. Tokyo District Court 01/30/2004
The Court decided the company to pay $200 Million to the Ex-emplyoee.

3. Ex-employee vs.HItachi Co. Tokyo High Court 01/29/2004
The Court decided the company to pay $1.5 Million to the Ex-emplyoee.

2. Fujitsu Co. vs. Texas Instruments Co. The Supreme Court 04/11/2000
The Supreme Court invalidated a patent owned by TI. According to the decision, not only JPO but also each court could invalidate patent..

1. Licensor vs. Licensee Tokyo District Court 11/29/1982
The court decided that the licensor had not to refund the royalty to the licensee because of No-Refund Clause included in the license agreement.
But it is controversial in case where the No-Refund Clause is not included in an agreement.

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