IP Pages 2019: Message from the Kyosei president

Since our establishment as an IP law firm in 1970, we at Kyosei International Patent Office have been providing individuals and a variety of companies and other organisations with professional services to protect and enhance their IP rights.

Kyosei’s guiding principle is: ‘Growing together with our clients.’ Accordingly, in consultation with each individual client, we formulate and implement strategies for protecting and promoting each client’s IP interests, thereby creating new value for our clients.

We have clients not only in Japan but in many different countries around the world. However, foreign individuals and companies can encounter unexpected problems regarding their IP rights in Japan, not only because of legal considerations unique to Japan, but also due to Japanese business customs, which sometimes differ from those in other countries.

We are committed to providing our foreign clients  with solutions best suited to meet their needs, based on knowledge and expertise we have accumulated from our long and wide-ranging experience in the Japanese legal system and in serving overseas individuals, companies, and law firms. We are thereby able to aid our clients in overcoming any problems that they might encounter while advancing their IP rights in Japan.

Our ability to serve foreign clients in Japan and to help Japanese clients meet their needs overseas is enhanced by personnel who have competency in a wide variety of languages, including Chinese, Korean, Vietnamese and other Asian languages, as well as English, French, German and other Western languages.

Our services

We can provide individual and corporate clients with a full range of services necessary to fully protect and make best use of their IP rights.

Patents

Japan’s  Patent  Law defines an invention as “the highly advanced creation of technical ideas utilising the laws of nature,” (Article 2) and provides that inventions that can be patented are “those that are industrially applicable, have novelty, and involve inventive step.” (Article 29[1]). In Japan, patent rights, which are exclusive rights granted to an applicant pursuant to the Patent Law, are effective for 20 years from the date of filing of a patent application.

Trademarks

Japan’s Trademark Law provides that “a trademark is any character(s), sign(s), or three dimensional shape(s), or any combination thereof, or any combination thereof with colours … which is used in connection with the goods of a person who produces, certifies or assigns the goods as a business…” (Article 2). Trademark rights protect trademarks as property, so as to ensure the business confidence of those who use trademarks. In Japan, trademark rights are effective for 10 years from the date on which a trademark is registered.

Designs

Japan’s Design Law defines a design as “the shape, patterns or colours, or any combination thereof, of an article, … which creates an aesthetic impression through the eye” (Article 2). Design rights are effective for 20 years from the date of registration of a design.

In Japan, as explained above, patent rights, utility model rights, trademark rights, and design rights have unique definitions and characteristics. Using our extensive knowledge of these IP rights and Japan’s legal system in general, we listen to our clients and give each one appropriate advice, which enables us to appropriately represent foreign clients in Japan and guide them through complicated application procedures.

Copyright

Under the Japan Copyright Law, a wide variety of cultural creations—books and other writings, musical compositions, paintings and other artistic works, and others—can be provided with legal protection in the form of a copyright. Under the Berne Convention, protection is automatically granted at the moment of creation for a period of 50 years following the death of the creator, and thus a copyright need not be registered to be protected.

However, because in Japan the following will not be effective against any third party unless registered, we recommend registration of: (1) the transfer or alteration by trust of a copyright, or a restriction on the disposal of a copyright; and (2) the establishment, transfer, alteration or expiration, or restriction on the disposal, of a right of pledge relating to a copyright. Furthermore, because, for example, the creator of a program work may have the date of creation of such a work registered only within six months after the creation of that work, ‘on-time protection’ is important.

Prior art searches

When seeking a patent or registration of a utility model, design, trademark, or other IP rights in Japan, a foreign applicant must be aware of relevant prior applications. If, for instance, a foreign applicant intends to file an application for an invention that (1) is the same as an invention for which an application has already been filed in Japan by another party and has already been published in the government gazette, or (2) is widely known through a distributed publication or is on goods that have been publicly distributed in commerce, it will be difficult for the later applicant to obtain the applied-for patent.

In particular, sometimes an invention that has been patented or allowed as a utility model or granted some other IP rights in another country is not granted corresponding IP rights in Japan, on the ground that the object sought to be registered is the same as one that has already been applied for or registered in Japan.

This can be a big obstacle for an individual or company that wishes to introduce a product into Japan. Therefore, it is necessary for such a potential applicant to find out in advance whether any similar invention(s) or the like have been applied for or registered in Japan. This is the main objective of a prior art search.

Invalidation searches

Japan’s Patent Law allows a party to file a request for a trial for to invalidate a patent or patent application. Such a request can be filed by a foreign client against a patent that is considered to infringe that client’s rights in some way, or by another party seeking to invalidate a foreign client’s Japanese patent or application.

IP infringement searches

Under Japan’s Patent Law, a patentee may initiate legal action against a party that the patentee alleges is infringing or is likely to infringe the patentee’s rights,  so as to stop or prevent such infringement. Measures available to the patentee include requesting both an injunction against the sale of the allegedly infringing products and indemnification of damage(s) suffered by the patentee.

Therefore, a foreign party wishing to introduce its product(s) into Japan is advised to first conduct an infringement search in order to  be  sure  that it will not be subjected to a legal action because its product(s) infringe on another party’s patent(s) or other IP rights.

Conversely, if a foreign owner of patent rights in Japan believes that its rights might be being infringed, it should conduct an infringement search in order to protect its rights and to take remedial measures as appropriate. These considerations apply equally well to trademarks and other IP rights.

We excel at the above types of searches because we are based in Japan and have personnel who are well-versed in Japanese IP laws. We are committed to providing to our clients correct and precise analyses; the best IP results possible; and significant reductions in their costs, workload, and other burdens; and, in the end, satisfaction with our service. Our searches are not limited only to documents in Japanese, but encompass those in English, French, German, Chinese, Korean, and Vietnamese as well. n