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Home > Laws and Regulations > Review of Laws > archive > Review of Patent Attorney (benrishi) Law

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Review of Patent Attorney (benrishi) Law

The Patent Attorney Law Partial Amendment Bill was approved in the Diet on April 11, and was proclaimed on April 17.

The outline of the Amendment is as follows.

1. Objectives of the Amendment

The number of intellectual property right infringement lawsuits has doubled in the last ten years (from 311 cases in 1991 to 610 cases in 2000) and is expected to increase further.
On the other hand, the number of (those who have registered as) attorneys at law specializing in intellectual property has remained at less than 300. Compared with the U.S. (where the number of registered patent attorneys is approximately 16,000) it is difficult to render sufficient services. There have been strong demands from the "user side" for strengthening and enrichment of dispute resolution services by means of a qualitative and quantitative increase in such expert representatives in lawsuits.
Under such circumstances, it is necessary to provide intellectual property right patent attorneys (benrishi) with the authority to act as counsel in patent right infringement lawsuits.

2. Outline of the Amendment

Granting to Patent attorneys (benrishi) the Authority to Act as Counsel in Infringement Lawsuits

  • To provide patent attorneys (benrishi) with authority to act as counsel in intellectual property infringement lawsuits (limited to cases in which attorneys at law are involved as counsel) and for this purpose take measures to afford a high a level of reliability to patent attorneys (benrishi) who desire to obtain this right to act as counsel
    • Concretely speaking, intellectual property right infringement lawsuits are infringement lawsuits involving patent, utility model, industrial design, trademark, and layout of semiconductor integrated circuit rights as well as unfair competition.
    • The "measures to afford a high level of reliability" shall consist of training regarding practice in civil procedures and testing to determine the effects of the training.
  • Patent attorneys (benrishi) are required in principle to appear in court together with the attorney at law jointly undertaking the case. Patent attorneys (benrishi) can, however, attend court on their own when determined by the court as appropriate.

Excerpts

[Recommendations of the Justice System Reform Council ] (June 12, 2001)

II. Justice System Responding to Public Expectations

Part 1. Reform of the Civil Justice System
3. Strengthening of Comprehensive Response to Cases Related to Intellectual Property Rights

In addition to measures related to the reinforcement and speeding up of civil trials, the following measures should be carried out with the aim of reducing the duration of proceedings for cases related to intellectual property rights by about half:

-The right of representation for infringement proceedings concerning patent rights, etc., should be extended to patent attorneys, after taking highly reliable measures to assure their ability.

(2) Concrete Measures to Strengthen Comprehensive Response
In order to utilize the expertise of patent attorneys (benrishi) possessing technical knowledge, the right of representation in infringement proceedings concerning patent rights, etc. (limited to cases in which a lawyer is a representative for the litigation) should be given to patent attorneys after taking highly reliable measures to assure their ability.

III. How the Legal Profession Supporting the Justice System Should Be

Part 3. Reform of the Lawyer System
7. Utilization of Specialists in Fields Adjoining Law

For utilizing, in legal proceedings, the expertise of specialists in fields adjoining law (so-called quasi-legal professionals):

-Patent attorneys (benrishi) should be granted the authority to serve as representatives in patent infringement lawsuits (limited to cases in which a lawyer is a representative for the litigation), after highly reliable measures to secure their ability have been taken;

With respect to the relationship between lawyers and quasi-legal professionals, it is necessary to comprehensively reconsider who should carry out legal services in the future when the amount of lawyers will significantly increase and various reforms concerning lawyers become a reality, in view of the purpose and significance of the scheme for each kind of specialist and the convenience of and demands for protection of the rights of users. However, in light of the necessity to immediately remedy the present situation whereby rights of the public are not sufficiently protected, measures must be taken to meet the existing demands for legal services from the public's point of view.

From this standpoint, to utilize the expertise of quasi-legal professionals in legal proceedings, at the least, after highly reliable measures to secure their ability have been taken,...(omission)...,and patent attorneys should be granted the authority to serve as representatives in patent infringement lawsuits (limited to cases in which a lawyer serves as representative for the litigation).

The Patent Attorney (benrishi) System

Old Patent Attorney Law

Under the old Patent Attorney Law the affairs of patent attorneys (benrishi) centered upon serving as agents handling the filing of industrial property right applications to the JPO.

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Complete revision in 2000

Addition of Alternative Dispute Resolution (ADR) related affairs

arrowpetitions for arbitration: 2, petitions for adjustment: 19,
consultations: approx. 1,200

(Japan Intellectual Property Arbitration Center)

Clarification of intervention, representation, and consultation affairs regarding intellectual property right contracts

arrowExpansion of affairs from industrial property rights to intellectual property rights (copyrights, trade secrets, etc.)

arrowIn effect from February 1, 2002 based on obligatory training concerning copyrights, etc.(over 90% of those targeted have completed training)

Removal of the ban on institutionalization of offices and establishment of plural offices (branches)

arrowPatent related corporations: 11 corporations, branches: 66 locations nationwide

arrowPatent attorneys (benrishi) now operating in all prefectures of Japan

Large increase in the number of patent attorneys (benrishi) by drastic Patent Attorney Examination reform

arrowNumber of patent attorneys: 4,100 (end of May 1999) 4,800 (end of December 2001)

arrowNew Patent Attorney Examination planned from May 2002

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Present amendment

Granting of the authority to act as counsel in intellectual property right infringement lawsuits

[Last updated 26 April 2002]

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