Japan
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
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8-14 Akasaka 3-chome
Minato-ku, Tokyo 107-0052 Japan
Tel: +81-3-3585-8092
Fax: +81-3-3588-0310 & +81-3-3586-0644
E-mail: info@kyosei.or.jp
www.worldipreview.com IP Pages 2019 77