Research Activity Summary of FY1998
- 1. Research and Study on More Appropriate Procedures for Intellectual Property Infringement Litigation
In order to achieve remedies that will be implemented broadly, strongly and promptly in intellectual property rights infringement litigation, a study was conducted with the aims of establishing better court procedures which enable the infringed party to easily prove the existence of the infringement as well as the amount of damages suffered, and grant substantial compensation for these damages. For these purposes, consideration was given to the following points in terms of policy making, laws and practical operations: expanded use of document production orders; establishment of special provisions concerning affirmative rebuttal; facilitation of proof of the infringer's profits; setting up a system of expert witnesses in damage assessment; and a system which awards substantial damages.
- 2. Research and Study on the Madrid Protocol and International Harmonization of the Trademark System
Based on the research on the international application and registration system of trademark in 1997, we have researched the problems and obstacles to become a party to the Madrid Protocol, from the viewpoint of the Japanese trademark system, and also how the contracting parties to the protocol have harmonized their domestic rules with protocol.
In addition, considering the fact that there has been a growing demand for prompt and appropriate examination of trademark applications, a survey was also conducted into the needs of users for the purpose of establishing the global standards for the trademark system.
- 3. Research and Study on the Legal Protection of Digital Content
With regard to information (in other words "content") distributed in a digital network society, consideration was given to the following two points: (1) what kind of regulations should be laid down against acts invalidating the technical measures which enable control over access to or copying of the contents; and (2) how to protect "collections of information" (databases) under the law.
In the process of study, taking into account of circumstances with regard to legal protection in other countries and organizations as well as those in Japan, various issues were clarified, such as its necessity, the benefit and protection of the law, the scope of protection and its problems. For (1) above, the report specifically deals with regulations by the Unfair Competition Prevention Law.
- 4. Research and Study on the Online Publication of the Official Gazette
Along with the advancement of networking technology in recent years, it has become technically possible to publish the official gazette online (on the Internet). Compared with traditional official gazette in paper or CD-ROM form, online publication has great benefits in that it allows information to be transmitted instantly. However, there would be various obstacles, including having to take the necessary legal measures for online publication. Thus, possible problems in online publication and their countermeasures were studied from technical, legal and practical points of view.
- 5. Research and Study on Alternative Dispute Resolution for Intellectual Property
As the number of disputes over intellectual property has increased in recent years, other countries have increasingly made use of alternative dispute resolution (ADR) systems such as arbitration or mediation. In Japan, however, such systems have thus far rarely been used by the parties in a dispute. To improve this situation, research was conducted into the systems and the operation of the major ADR organizations in Europe, the US and Japan, including advisory opinion ("Hantei") system in JPO. Also, an interview survey was conducted at companies with regard to the ADR system. In this research, the ideal ADR system for intellectual property for Japan was sought, and necessary basic materials were prepared for making proposal on the system.
- 6. Research and Study on the Policies on Intellectual Property Rights in the Future
The fruits of the intellectual creative activities are expected to be even further advanced and diversified in the future. This means that, it is necessary to seek a new protection rules from the existing legal system by taking the situations in other countries into account.
Thus, the research was conducted into the situations regarding the protection of intellectual creation in the U.S., and also those in the Japanese industries, particularly, service industries.
- 7. Research and Study on the Tax System for the Promotion of the Acquisition and More Effective Use of Intellectual Property Rights
Towards the 21st century, it is becoming ever more important to adequately promote investment in R&D and appropriately protect of its fruit - intellectual property. However, the recent stagnant economy has brought about reduction of companies' R&D expenses.
Under these circumstances, a questionnaire survey was conducted on the state of companies' R&D expenses, patent-related costs and their tax treatment. In addition, current problems on the Japanese tax system were analyzed and studied.
- 8. Research and Study on the Depository System for Biological Inventions
The Patent Microorganism Depository Center of the National Institute of Bioscience and Human-Technology (NIBH) under the Agency of Industrial Science and Technology is the sole domestic depository for patent purposes in Japan. However, due to the Center's limited range of biological materials to be deposited, patent applicants whose inventions are related to the biological materials out of that range currently have to deposit such materials either on their own, so-called "self-deposit" or with overseas depository authorities. In order to solve this problem, consideration has been given to the possibility of expanding the range of biological materials to be deposited at the NIBH, establishing a domestic patent depository authority other than the NIBH, improving the accessibility to overseas depository authorities and reviewing the current self-deposit system; and based on these findings, some proposals have been made to build more effective and convenient patent depository system in Japan.
- 9. Research and Study on the Resolution of Disputes over Intellectual Property
Preparatory to the TRIPs Agreement 1994, which emphasizes the importance of trade secret protection, Japan has recently revised the Unfair Competition Prevention Law to provide civil protection against infringement of trade secrets. However, more and more disputes over trade secret infringements have been raised recently especially regarding unfair information acquirement through networks and between employers and ex-employees. Under the current legal system, civil remedies are considered to be insufficient to protect trade secrets in such cases, and there appear to be also problems with the application of criminal laws. A survey of other countries shows that few countries such as UK provide only civil protections for trade secrets. Therefore, this research has been done for the purpose of providing appropriate protections against trade secret infringements mainly by introduction of criminal sanctions, taking negative impacts on labor migration into consideration.
- 10. Research and Study on the Economic Analysis of the Intellectual Property System
In recent years we have seen a growing demand for stronger protection of intellectual property rights in Japan. The strength of this protection influences severely to the social economy, and therefore it is important to study on the intellectual property system from the viewpoint of economy, when we make the new policy on intellectual property.
Based on this recognition, we researched on the European and the U.S. studies concerning with the economic analysis of the patent system and compared these studies with the present situation in Japan. Consequently we researched in the three aspects of requirements for patentability, scope of protection and license, and found some implications on making the new policy on intellectual property.
- 11. Research and Study on Intellectual Property Rights and Competition
This is a study aiming at making proposals for revising the Japanese FTC's Guideline, titled "the Guidelines for the Regulation of the Unfair Trade Practice with respect to Patent and Know-how Licensing Agreements" in 1989. In particular, research including comparative studies with other countries were conducted in order to establish new rules regarding: the issues on unfair transactions that are not mentioned in the current Guideline (e.g. transactions involving software); and the relationships between private monopolization/unreasonable restraint of trade (Article 3 of the Anti-trust Acts) and intellectual property (for example, parallel imports, patent pools and compulsory licenses, etc.).