IP IN JAPAN: LOOKING TO THE RISING SUN

Japan is one of New Zealand's largest export markets - with the clean, green image associated with many of our country's products a huge selling point for the Japanese public.

With an aging population, the potential for growth in the healthcare/ nutriceuticals market is particularly impressive, and there are many opportunities for New Zealand made products and technologies to make their mark.

When entering any overseas market, it is important to ensure your products are given the protection they deserve to avoid unfair competition, or worse, counterfeit products. Protecting your intellectual property in non-English speaking countries like Japan can be daunting, but with the right advice the process should be relatively straightforward.

For inventors who have filed a first patent application in New Zealand, an equivalent Japanese patent application can be filed within 12 months. Legally, a local patent agent must be used and all New Zealand Patent Attorneys maintain relationships with Japanese associates for this purpose.

There are many similarities between New Zealand and Japan in terms of IP protection. Both countries offer a patent protection period of 20 years for new inventions, and also offer protection for new medicinal uses of known pharmaceutical ingredients. Software and business method patents are also generally patentable in Japan, as they are in New Zealand. This inclusion within the scope of patentabililty is not widely seen in other countries, particularly the US.

Recently the Japanese government has announced plans to revise the current examination standards for new and inventive dosage regimens, and new modes of administration. This change will bring both types of innovation within the scope of "patentable subject matter".

This is great news for inventors in the healthcare field, as they will see the same standard of protection in Japan for their work in optimising known medicines as they would be afforded in New Zealand. These new examination standards are expected to be implemented as early as the end of this year, and will both reduce costs previously associated with amending applications to suit the differing Japanese law, and increase the likelihood of seeing a return on the patentee's investment.

The Japanese government is also looking at changing the allowability of patenting medical treatment of humans. Currently, any patent claims directed to a method of treating humans that involves a surgical step or the treatment of a disease are not allowed, either in New Zealand or Japan.

If this exclusion is removed in the future, the scope for patentability in Japan regarding the treatment of humans will be in line with that afforded in the US. This will provide a further option for New Zealand companies exporting products or technologies to Japan in the pharmaceutical/healthcare field.

Similarly to patent protection, protecting your brand in Japan can also be easily managed by a New Zealand attorney and their Japanese agent. Trade marks filed in New Zealand can be registered in Japan with the New Zealand date, if an application is lodged in Japan within 6 months of the New Zealand filing date.

Typically the registerability of trade marks between the two countries does not differ widely. The main difference in the systems is that Japan grants rights to the first person or company to file an application, rather than the first to use a trade mark. It is therefore not uncommon to find your mark has already been applied for in Japan by a third party who will then look to do a "deal" with you for use of the mark.

The best way to overcome this problem is to apply to register your trade mark in Japan before you do anything else. If you are uncertain as to whether uptake of the brand in Japan is going to be positive, it can be a good strategy to file a variant of your trade mark in New Zealand. This provides you with another 6-month period to file the variant mark in Japan should you decide to continue in the market, without running the risk of a third party filing for your mark before you can.

Additionally, any mark to be registered in Japan will be assessed based on its appropriateness for the Japanese market, rather than New Zealand. Any concerns you have that a particular mark or brand may not sit well with the public or be registerable in Japan can be addressed before you file. Again a New Zealand attorney can investigate this on your behalf before any expensive decisions are made.

The future potential for New Zealand exports is immense, not just in Japan, but across all of Asia. If you have any questions about IP protection in specific countries, your local patent attorney will be able to provide you with the answers.

By Jennifer Lucas, Registered Patent Attorney