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Research Activity Summary of FY2005

 
1. Desirable Border-Enforcement System Against Intellectual Property Infringing Goods

   This research was based mainly on the following two processes. Firstly, the Committee on Border Measures Against Counterfeits Through Application of the Unfair Competition Prevention discussed a guide for determining violation of the Unfair Competition Prevention Law for import suspension. The guide will be used as a reference in the preparation of the written opinion of the Minister of Economy, Trade and Industry as is required upon seeking import suspension. It will also be used for the provision of the opinion of the Minister of Economy, Trade and Industry when such an opinion is sought in the infringement-determination procedure in the system of border enforcement against goods that constitute the acts referred to in Article 2(1)(i) to (iii) of the Unfair Competition Prevention Law, which was introduced by the amendment of the Customs Tariff Law on March 1, 2006. Secondly, the Working Group for Studying Japan's Desirable Border-Enforcement System Against IP Infringing Goods was set up to gather information to contribute to the study of Japan's desirable border-enforcement system. This was conducted by identifying the current status and challenges of Japan's border-enforcement system and investigating overseas border-enforcement systems and frameworks. Furthermore, discussions were held to make contributions to upgrading the Japanese border-enforcement system against intellectual property infringing goods.

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2. Institutional Issues Regarding Distribution and Securitization of Intellectual Property

   In this research study, in light of the development of systems relating to the distribution and securitization of intellectual property (IP), we aim to discuss (1) how to protect the non-exclusive licensee against the effects of the licensor's bankruptcy or the transfer of the IP rights from the licensor to a third party in cases where the license is not registered, and (2) how to solve problems arising from IP trusts in order to promote IP management and utilization by way of IP trusts.

   Regarding the issue mentioned in (1), we propose a new system under which a statutory license shall be granted to the licensee within the scope of the existing non-exclusive license if the licensee is exploiting or preparing to exploit the IP rights at the time of the licensor's bankruptcy or the transfer of the IP rights. We discuss the requirements, effects, and legal relationships under the statutory license system as well as the relationship of the statutory non-exclusive license system with the Bankruptcy Law and with the existing registration system.

   Regarding the issue mentioned in (2), we discuss the applicability of Section 102(1) and (2) of the Patent Law in cases where the holder of the patent rights in trust (trustee) seeks to claim damages for patent infringement, and showed directions of solution.

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3. Management and Utilization of Intellectual Property at Universities

   Steady progress has been made so far in the development of systems for the management and utilization of intellectual property (IP) at universities. However, if we regard IP activities as constituting an intellectual creation cycle that starts from creation and leads to protection and utilization, we must say that IP activities at universities are still in the process of nearly finishing the first stage of the cycle.

    For the future, universities should gradually shift from the first stage, of raising their awareness of IP and filing applications, to the second stage, of obtaining useful rights and licensing technology, while establishing systems and operations for carrying out IP activities on a medium and long-term basis.

   To this end, it is necessary to further advance IP-related organizations, and from a more practical perspective, it is also necessary to identify and examine specific problems that occur in IP activities, with the aim to increase the effectiveness of IP activities.

   This committee is organized with people engaged in pioneering IP activities and activities for industry-academia collaboration at universities. The committee members reported the ongoing initiatives and future visions at their universities, and held discussions on various issues with expert members from the legal and industrial communities.

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4. Desirable Form of Design System Suitable for Protection of Creative Designs

   In order to successfully produce differentiated products and high-value-added products through strategic use of design, thereby strengthening the competitiveness of Japanese industry, it is necessary to protect creative designs appropriately in order to encourage design creation, while enabling active use of design rights.

   Regarding protection of designs, the "Intellectual Property Strategic Program 2005" states as follows: The GOJ will consider specific measures to develop an environment for providing products of higher value through the creation of attractive designs, including the development of a desirable form of the design system, and draw a conclusion by FY2005.

   With the aim to contribute to future discussions at the Design System Subcommittee, this study, based on the discussions heretofore at the subcommittee, closely examines specific legal issues relating to a desirable form of the design system, the core system for protecting designs, including the effect of design rights, the design registration system, and the scope of the subject matter.

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5. Multiple Protection of Inventions

   From the perspective of helping front runners' efforts to obtain multiple protection rights and achieving international harmonization of systems, research studies were carried out on the relaxation of content requirements for divisional applications (allowance of division of an invention into substantially identical inventions), a scheme of exceptions to the lack of novelty of an invention (a grace period), and the continuation-in-part application system of the U.S.

   Regarding the relaxation of content requirements for divisional applications, as a result of a review from the legal perspective and discussion on the possibility of handling the issue under the current divisional application system or otherwise, it was found that multiple protection of an identical invention was possible to a considerable extent under the current system and that there seemed to be no major problems.

   Regarding exceptions to the lack of novelty of an invention, only a few survey participants were in favor of modifying the framework for characterizing them as exceptions to the current system. Paying attention to the developments in revision of US Patent Law and the reaction of Europe and from a perspective of system harmonization, further discussion is necessary so that Japan can handle this issue at an appropriate time and with an appropriate system.

   Regarding the continuation-in-part application system of the U.S., there is a strong trend of opinion against the introduction of such a system due to reasons including concern that the monitoring burden for third parties will increase and the view that the current priority system is sufficient. As such, careful consideration is required.

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6. Analysis of Various Issues Concerning the "Tragedy of the Anticommons"

   Many patents relate to the research, development, production, and sales of one product. This situation, a so-called "patent thicket," has given rise to concerns that such a thicket will cause various problems for corporate activities. The most worrisome of those problems is the "tragedy of the anticommons," in which the use of a patented technology is made impossible by another patent.

   In this study, we conducted a positive analysis through a macro-economic approach on the results of the "Survey of Intellectual Property-Related Activities" conducted by the Patent Office. In addition, we held interviews with companies that represent each business field to obtain their views on the current situation regarding "patent thickets" and also on their respective stances.

   The results of this study indicate that, in most cases, companies have taken measures including such management strategies as patent and license exchanges in order to prevent "patent thickets" from causing damage to their business. However, this does not deny the possibility of existence of the "tragedy of the anticommons."

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7.  New Framework for Protection and Management of Knowledge

   Amid the rapid progress in industry and technology in Asian countries such as China, South Korea and Taiwan, it is time for Japan to drastically reform its conventional industrial structure, which is based on cost competitiveness through mass production. In order to survive fierce global competition, Japanese companies need to create technologies of an extremely high level that are unrivaled in foreign countries and make arrangements to prevent foreign companies from easily imitating their technologies.

   Under such circumstances, various policy measures have been implemented in the intellectual property area. For further development of the Japanese industry, companies should make a choice, from a strategic perspective, between obtaining exclusive rights for their technologies by filing patent applications that are bound to be published, and applying tight control for their technologies as trade secrets and keeping them confidential. There is also a need to create an environment that enables a flexible response to companies' intellectual property strategies. This study is conducted by a committee consisting of experts from academic and industrial circles in order to discuss a new framework for protection and management of knowledge, focusing on the prior use system.

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8. Ideal Scheme for the Development of Human Resources Related to Intellectual Property

   Efforts have been made hitherto to promote the development of human resources related to intellectual property. In order to achieve the goal of making Japan a nation built on intellectual property, it is absolutely necessary to understand the paradigm shift taking place in society and increase the quality and quantity of IP experts. With visions for the near future, we should construct a plan for human resource development based on clear concepts, formulate a comprehensive strategy to promote the plan, develop specific policies and measures, and achieve progress in implementing them.

   In this study, we aim to grasp the current status of the development of IP experts in various sectors as well as the latest theories of human resource development and e-learning, and point out core concepts for the human resource development plan, such as formulation of a new model for IP experts, qualitative change and quantitative expansion, as well as the spread of an IP culture. Based on this discussion, we make recommendations for IP experts in different categories. Our recommendations include promotion of advancement, expansion, and generalization of people in charge of protecting intellectual property and obtaining rights therefor, and encouragement of interaction among IP experts. We also propose a comprehensive human resource development policy, which covers: establishing human resource development bases, considering of related licenses, qualifications, and certifications, implementing measures to establish education on IP management, and extending of IP education to local areas.

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9. Measures for Smooth Use of Patented Inventions

   The use of patented inventions has been discussed as a general subject, focusing especially on technical standards and upstream technologies in life science. However, it has been pointed out that measures thereof should be further examined based on a more specific understanding of the current situations. In this research, specific cases relating to that subject in question and the current situations in the industry and academic sector are investigated, and studies on measures thereof is developed.
     With respect to technical standards, the investigation of the current situations was focused on patent pools that are formed to efficiently conduct the licensing of essential patents, identification of essential patents, and patent statements in international standardization. With respect to upstream technologies in life science, the investigation reveals the current situations that patented inventions are not necessarily used smoothly. For example, a license on another's patent is not obtainable, and thereby, the relevant patented invention is not accessible, and subsequent research is thus blocked.

Possible measures including compulsory licenses should be further discussed based on the current situations and specific cases investigated in this research.

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10. Ideal Framework for the Future Patent Attorney System

   A comprehensive revision was made to the Patent Attorney Law in 2000 for the first time in 80 years since its enactment. This revision has expanded the scope of services that patent attorneys are authorized to provide, such as intermediary or agency services for contractual issues, consulting services, agency services for import suspension at Customs, and agency services for alternative dispute resolution. Reforms have also been made with respect to the patent attorney examination by abolishing the preliminary test, reviewing and enhancing the scope of potential examination candidates eligible for exemption from the examination, reducing the number of examination subjects required to be taken and including the Copyright Law and the Unfair Competition Prevention Law in the examination syllabus. Furthermore, in the Supplementary Provisions, it is provided that the revised law shall be reviewed five years following its enforcement.

   In this study, in order to inquire into the actual condition of the patent attorney system and discuss future development of the system amidst the change in surrounding circumstances following the revision to the Patent Attorney Law, we conducted questionnaire surveys on the patent attorney system in general, targeting patent attorneys and companies that use their services, and investigated their evaluation of the revised Patent Attorney Law and the current use of and needs for the patent attorney system. We also discussed a wide range of issues at the committee focusing on four major themes, namely the "patent attorney examination system," "training for patent attorneys," the "code of ethics (relating to conflicts of interest) for patent attorneys" and "disclosure of patent attorney information," thereby identifying problems with the existing patent attorney system.

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11. Importation, Possession, and Sale of Counterfeit and Pirated Goods by Individuals

   In this study, we examined the actual conditions of damage arising from importation, possession, and sale of counterfeit and pirated goods by Japanese citizens, the current measures implemented in order to cope with such damage, and legislative and other measures required in this context. First, we collected information on actual damage, thereby improving our understanding of the possibility that while it becomes easier to imitate or reproduce products with the advancement of technology and distribution methods becoming more global, acts committed by individuals may affect not only the private domain but also the industrial domain. Next, we discussed how to design a regulatory framework that will satisfy various requirements under the existing Japanese legislations, such as guaranteeing property rights and ensuring due process, while achieving a balance with other regulatory measures. We also investigated the latest legislative and policy measures in major European countries, including France and Italy, as well as in the United States, with the aim to explore appropriate methodology and ensure international harmonization. We hope that this issue will be understood and discussed more widely so that both goals will be achieved equally to develop the Japanese industry through appropriate protection and utilization of intellectual property and to improve the standards of wholesome, economic, and cultured living for Japanese citizens.

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12. Study on Current Conditions Regarding Industrial Property Disputes

   In recent years, issues related to industrial property disputes have been attracting a lot of attention. Reflecting this trend, the Strategic Program for the Creation, Protection and Exploitation of Intellectual Property 2005 highlighted such outstanding issues as how to reduce the burden of proof shouldered by a party filing a lawsuit over infringement of intellectual property and how to improve the examination system of the Patent Office.

   This paper presents the results of our study conducted to grasp current conditions regarding the compensation system and allocation of the burden of proof. In this study, we reviewed court decisions on intellectual property cases and also conducted a survey on companies by sending them questionnaires and conducting interviews with them.

   In addition, in order to study the burden currently shouldered by related parties in providing proof for the value of an invention, we have conducted research on court decisions and inspection of relevant court documents. We have gathered and analyzed information on the calculation methods for such invention value and the methods for justifying the amount of compensation.

   Furthermore, in an attempt to find out how to improve the examination system of the Patent Office, we conducted a survey on users of the system by sending them questionnaires and holding interviews with them in the hope to obtain an evaluation from system users and review the functions and roles of the system employed in dealing with intellectual property disputes.

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13. Internet-Related International Trademark Disputes :The State of Law in Western Countries, and the Case of Japan
Cédric Manara
Invited Researcher, Institute of Intellectual Property
Associate Professor of Law, EDHEC Business School

   Trademarks being granted protection in the country where they are registered, similar trademarks can have various but legitimate owners located in different countries. A conflict can arise when these similar trademarks are used on the internet - hence displayed on a global scale - by competing rights owners.

   How such conflicts can be solved? In western countries (especially USA, France - two of the three countries, with Japan, where there is the highest number of trademark registrations), there have been several and somewhat contradictory rulings on the concurrent electronic use of a same sign by legitimate trademarks holders. In their rulings, the courts took into account the language as a relevant factor to address the question of the risk of confusion in the "cyberspace", a multilingual environment. Some UDRP cases did the same.

   The purpose of my research here is to study this question in the Japanese perspective. The specific goal is to figure out whether, on the Internet, the level of trademark protection is dependant on the language with which it is used, and what conclusions can be drawn for Japanese trademark owners.

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14. Protecting Geographical Indications as Collective Trademarks: The Prospects and Pitfalls
Dev Gangjee
Invited Researcher, Institute of Intellectual Property
Lecturer in Intellectual Property of London School of Economics, Research Associate of Oxford Intellectual Property Research Centre

   Geographical Indications (GIs) are defined in Article 22.1 of TRIPS as 'indications which identify a good as originating in the territory of a Member… where a given quality, reputation or other characteristic of the good is essentially attributable to its geographic origin.' They are words or symbols which indicate both geographical origin as well as certain qualities associated with that origin. Prominent examples include Champagne, Parma ham, Darjeeling tea and Kobe beef. By regulating the use of such labels, consumers are protected against confusion or deception and producers from the region have a collective remedy where their valuable goodwill is misappropriated. Thus GIs are functionally similar to Trademarks.

   However, there are important differences as well, as GIs are geographical names, which trademark doctrine considers descriptive and therefore unprotectable. They also give rise to a collective interest in their protection. This report reviews the extent to which these differences are accommodated in the current legal regime for protecting GIs in Japan, which includes administrative regulations, unfair competition law and trademark law. Additionally it focuses on (i) the new Regional Collective Trademarks law due to take effect from 1 April 2006; and (ii) the consequences of international protection of GIs through the trademark regime.

   This study concludes by highlighting the inequitable consequences of 'First in Time, First in Right' as a solution to trademark versus GI conflicts, through the case study of international trademark registrations for Kobe beef. It proposes a solution to these conflicts based on the recent WTO Panel Report (DS 174) which considered the relationship between GIs and trademarks.

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15. A Delimitation of Design Protection and Copyright
Catharina Maracke
Invited Researcher, Institute of Intellectual Property

   The proposed paper aims to contribute to solving the question whether industrially designed articles can be protected by copyright. It undertakes to outline the principles for protection of such industrially designed articles in Germany and under the present Japanese legislation. The focus of the presentation lies on protection based on previous and new German Design legislation in comparison with the current discussion about Design protection in Japan.

Ⅰ Current situation in Germany and Europe

   The starting point of the proposed analysis is the current legislation in Germany and Europe, respectively. It shall be determined under which conditions industrially designed articles can enjoy copyright protection. The decisive question is thus whether such designs can be acknowledged as a product which can be protected by copyright or whether they rather fall within the scope of mere design patents. The main objective of this research project, therefore, is to give an outline of the protection of designs and models in Germany under the former Design Act in comparison with the new implemented Design Act of June 2004. The differences and following consequences shall be identified and presented in detail.

Ⅱ Current Situation in Japan

   Furthermore, the current legislation in Japan is to be analyzed. In Japan, there are also different understandings of how to protect industrially designed articles. According to the Japanese Copyright Act, artistic works are protected (Sec. 2 (2) Japanese Copyright Act). Therefore protection of industrially designed articles is possible under the Japanese Copyright Act as well as their protection under the Design Act of April 13, 1959. According to the original intention of the legislation, copyright protection should only be available for aesthetically designed individual pieces of works of fine art, whereas protection of products manufactured in series should be reserved to design protection. However, this view is not generally taken by the courts, which will be revealed in the proposed essay in detail.

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16. A Study of Patentability of Computer Software -Related Inventions - Practice in U.S., Europe and Japan and Outlook for China -
Zhou Junqiang
Invited Researcher, Institute of Intellectual Property
Attorney at Law, Associate Professor of School of Law of Anhui Normal University, P.R.C.

   Software is a global business. Computer software has the dual nature: the Copyrightability and the Patentability. The features of the computer program away from the traditional opinion that software is just the implementation of mathematics logical algorithm. With the development of software industry, software has become an indispensable tool for human to solve problems or realize some functions, with some essential elements required by the patent law, such as "technology" and "non-obviousness".

   The proposed paper will review the exploring and practice of software-related inventions patent case law in USA. It will compare the legislation and the examination guiderlines about the patentability of software-related inventions between USA, JP and EU and, study substantive requirements for software-related invention patent, specially the requirement of "non-obviousness" of software-related inventions in USA, JP and EU. Finally, it will give the status and the future about the protection of software-related inventions in China, including the prospect and suggestion about software under protection of patent system in China. At end of the paper, it will bring forward some conclusions and questions of the author.

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17. Comparative Study on Legal Protection in the USA, EU, Japan and Korea for Computer Programs -Focus on Program Reverse Engineering-
Jeong Jin Keun
Invited Researcher, Institute of Intellectual Property
Doctor of Law, Professor of Hankyong National University, Researcher of Korean Institute of Technology and the Law (KITAL)

   Computer programs have been protected under copyright from the late 1970's, and the leading countries in IP law area, like USA, EU, Korea and Japan, have the same or similar legal system for the protection of computer programs. We can find several reasons of the same or similar legal system's adoption, in the short history of the protection of computer programs, the agreement among countries for harmonization of legal system, the boundlessness for electric commerce, and the effect of network.

   Although most of countries have the same or similar legal system for computer programs, there are delicate differences among those legal systems, especially in the determination of the limit of copyright. In USA, there was an important case dealing with the limit of copyright. In this case, USA's Federal Circuit ruled that the contractual terms, prohibiting from reverse engineering the computer program, are not preempted by federal law under the Copyright Act. Relating to this decision, many scholars criticize the reason and the background of the decision. Unlike USA's decision, EU adopted the directive prescribing that any contractual provisions contrary decompilation shall be null and void, and Korea adopted the statute for allowing the reverse engineering as a free use.

   I think that these differences are from the historical and theoretical background of each country. Therefore, based on these statues and theories, I recommend the best solution of enacting a mandatory statute for Japan and for the desirable future of international society and for the development of computer program industry.

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18. Generation and Development of the Structure of Systematic Distinction between Design Law and Copyright Law in Germany
Masahiro Motoyama
Long-term Overseas Research Fellow, Institute of Intellectual Property

   For the purpose of exploring some of the significant aspects of the systematic distinction between industrial property law and copyright law, this research examines the generation and development of the approach to systematically distinguish between design law and copyright law by using German law as reference material.

   Generally speaking, the research can be divided into three parts: the process of generation of the approach to systematically distinguish between the two laws; the details and development of the distinction approach under the 1876 Design Act; and the significance of the 2004 Design Act viewed from the development of the distinction approach in recent years. The theoretical contents of the approach to distinguish between design law and copyright law are founded on the "gradation theory," which gradually distinguishes between the subject matter of the two laws based on the aesthetic level of the subject matter. In this research, the generation and development of this gradation theory is analyzed based on Supreme Court decisions, dominant academic theories, the "kleine Munze" concerning demarcation of the subject matter of copyright, and the recent revision of the Copyright Act in response to EU directives and recent trends of academic theories. The analysis results indicate that the development of discussions over the gradation theory had the effect of gradually diluting the distinction between design law and copyright law as well as diluting the significance of systematic existence of design law. The significance of the 2004 Design Act is examined in relationship with such developments of the systematic distinction approach.

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19. Trends in the U.S. Pro - Patent Policy in the Pharmaceutical and Biotechnology Fields -Focusing on the Hatch-Waxman Act-
Toshihiko Asano
Short-term Overseas Research Fellow, Institute of Intellectual Property

   The United States is said to have achieved significant economic development, particularly in the information technology and biotechnology fields, through promotion of a "pro-patent" policy twenty years ahead of Japan. However, there is a concern that in the pharmaceutical and biotechnology fields, a pro-patent policy might have raised problems in relation to research tool patents and genetic patents. This report analyzes the current situation and trends in the United States from this viewpoint. The first part of this report gives an overview of what pro-patent policy was implemented in the United States, focusing on court decision and policy separately. The second part features the enactment of the Hatch-Waxman Act in 1984, which had a significant impact on the pharmaceutical and biotechnology fields. This Act can be regarded as legislation that typically realizes US balance-oriented policy. The second part reviews the background and legislative process of the Act, and studies future trends by examining the outcomes of various cases involving patent term extension, abbreviated new drug application (ANDA), and the Section 271(e)(1) exemption.

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20. Application of the Doctrines Limiting the Doctrine of Equivalents and Claim Drafting Concerning U.S. Patents -Foreseeability and Importance of Claim Limitations in Limiting the Range of Equivalents-
Taijiro Takase
Short-term Overseas Research Fellow, Institute of Intellectual Property

   This study considers two vertically related industries, intermediate goods producers and final goods producers, and makes an economic theoretical investigation of the effect that the strength of the protection of intellectual property rights (IPRs) has on cooperative R&D between final goods producers and intermediate goods producers. The focus is on the effects of IPRs on vertical cooperative R&D as strengthened IPR protection reduces the degree of R&D spillover. R&D spillover is the use of technology and knowledge by parties other than the inventor without payment of remuneration. The results supported the following conclusions. Vertical cooperative R&D promotes technological improvement regardless of the effectiveness of IPRs at ensuring the appropriability of the technology. However, when IPR protection is strong, R&D investment in vertical cooperative R&D may be excessive from the perspective of social welfare and joint profits of all firms in the two vertical industries. This means that when IPR protection is strengthened, conducting vertical cooperative R&D does promote technological improvement, but does not necessarily increase the joint profits and social welfare.

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21. Civil Liability of Patent Owners for Inoperative Inventions
Raita Imanishi
Research Fellow, Institute of Intellectual Property

   In order to make Japan more internationally competitive, we need to promote the proper use and protection of intellectual property. Recently, the Japanese government announced the Strategic Program for the Creation, Protection and Exploitation of Intellectual Property, which proposed "proactive" measures to enhance the environment for intellectual property exploitation including the introduction of TLOs and intellectual property trusts. However, the operativeness of a patented invention is not necessarily guaranteed under the current patent system. Thus, it is equally important to devise sufficient "reactive" measures in order to deal with such problems as the "inoperativeness" of a patented invention.

   In the case where a person concludes a patent license agreement (hereinafter "license agreement"), if that person finds the patented invention inoperative, what civil liability must the patent owner assume? In practice, most license agreements have a warranty clause. Nonetheless, it is still difficult to create such a clause applicable to all events that might happen in the future.

   It is therefore necessary to establish general rules based on which the provisions of license agreements should be created. Then, I will try to clarify the civil obligations of patent owners to licensees who find the inventions in question inoperative.

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22. Do Compensation Systems for Employee Inventions Increase Incentives for Researchers? -Evidence from Japanese panel data-
Koichiro Onishi
Research Fellow, Institute of Intellectual Property

   This research empirically analyzed whether compensation systems for employee inventions that are currently implemented by companies actually lead to R&D results. A detailed questionnaire survey, targeting 310 manufacturing companies listed on the first section of the Tokyo Stock Exchange, was conducted about the status of implementation of compensation systems for employee inventions. This was in order to investigate whether such compensation systems have a positive effect on the number of US patents and the number of patents adjusted for the number of forward citations. Estimation results revealed that both compensation systems based on overseas filing/registration and compensation systems based on performance such as sales and royalty income are effective in increasing the number of US patents, but that they do not contribute to increasing the number of patents adjusted for the number of forward citations. This outcome indicates that compensation systems for employee inventions are effective in increasing the number of patents rather than increasing the quality of patents. In other words, it suggests that compensation for employee inventions is effective to a certain extent as performance-based pay but that this effect is limited.

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23. Criteria for the Recognition of Inventors and the Procedure to Settle Disputes about the Recognition of Inventors
Toshitaka Kudo
Research Fellow, Institute of Intellectual Property

   Under the existing Japanese laws, the indication of the inventor or inventors of an invention in the patent application is not subject to substantive examination. Therefore, once a patent is granted, even if the indication turns out to be false, the false indication does not influence the validity of the patent. However, with the increasing awareness of the inventor's right among researchers and technicians, the number of disputes over recognition of inventors has surged in recent years. In order to solve and prevent such disputes, we need to establish clear substantive and procedural rules.

   In order to enhance the criteria for recognition of inventors, the author proposes that Japan should further develop the standards of "creation of technological thought" and "present of conception and its materialization", both of which have been adopted by judicial precedents and prevailing theories. In this process, a comparative study with the U.S. case law called "doctrine of simultaneous conception and reduction to practice" should be conducted. The doctrine focuses on the correlation between the technical fields to which the invention in question belongs and the necessity of an experiment.

   The author also makes some proposals from the perspective of both construction and legislation in order to improve the procedure for the settlement of disputes over recognition of inventors. Those proposals are mainly about the case of usurped applications where the issue of recognition of inventors is often raised as an underlying problem. More specifically, the author discusses on what conditions the real right holder should be permitted to request the usurping applicant to surrender to him the patent or the right to receive a patent. Furthermore, the author points out the necessity to establish a new procedure that allows the real inventor to amend or correct the false indication of an inventor on the application or the patent.

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24. Database Protection and Competition Policy Consideration on Protection of Databases without Creativity Requirement: A Competition Policy Perspective
Yoshikuni Sato
Research Fellow, Institute of Intellectual Property

   This research attempts to consider the legal protection of databases without the creativity requirement from the competition law standpoint.

   Some lower court decisions regulated the piracy of an automobile information database and news article headlines under tort law. On one hand, these decisions and the special law bill on database protection have raised concerns that they will cause information monopoly. Or exclusive possession of information by certain specific persons would hinder the business activities of other business entities or impede on the development of culture. On the other hand, there is a view that suggests the application of the Anti-Monopoly Law for such information monopoly while protecting the information.

   This research refers to recent court decisions and academic theories in Europe, and states, for example, that the Anti-Monopoly Law is not a proper remedy for information monopoly and that, while granting proper protection, the problem of information monopoly can be avoided by limiting the scope of protection depending on the nature of the database.

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