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Research Activity Summary of FY2006

1. Typology of Acts of Infringement of Trademark Rights by Country

   The purpose of the trademark system of Japan is to protect business confidence that is embodied in registered trademarks. Several revisions have been made to the Trademark Act where necessary so far in order to create an environment for providing more valuable goods or services by making use of attractive brands.

   Under the circumstances where there is demand for intensified protection of brands and remedies for infringement of rights in order to ensure effective protection, various issues have been raised, including: protection of famous trademarks with high brand value; restriction on the use of trademarks that have become general terms; restriction on the exercise of rights in registered trademarks not in use; responsibility of agencies engaged in importing fake brand products and counterfeits on behalf of individuals.

   In this study focusing on these issues, we reviewed the legal systems of the United States, Europe (EU, United Kingdom, Germany, and France) and China, and collected and analyzed relevant judicial precedents in these jurisdictions. We also surveyed the needs among Japanese users and investigated the actual state of trademark infringement acts. Through these activities, we sought out a desirable trademark system in Japan based on international comparison and opinions of Japanese users.

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2. Future Challenges Concerning the JPO Trial System

   The patent trial system has been improved in recent years in various ways including integration of the invalidation trial system and the opposition system and legalizing determination of patent invalidity in infringement proceedings. In addition, courts have made efforts to improve the framework, such as granting the Tokyo District Court and the Osaka District Court exclusive jurisdiction over litigation related to patents and other intellectual property, introducing the expert commissioner system and establishing the Intellectual Property High Court.

   However, there are problems that remain unresolved even after these improvement efforts, so there is a need to examine the direction which should be taken in resolving these problems and to identify and examine the relevant issues for that purpose.

   Among these various problems, this study focused on the following four problems: limitation on the scope of proceedings in litigation for rescinding a JPO trial decision; court judgments on infringement litigation supposing patent corrections; prevention of the rehashing of invalidation trials; and institutional characteristics of patent trials as compared with other administrative trials. Examinations were carried out by the committee based on the results of questionnaire and interview surveys of companies and overseas surveys, and the direction for solving these problems and the relevant issues were discussed.

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3. Problems Facing Japanese Users in Using the Madrid Protocol System

   Japan became party to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) in 2000. By filing international applications under the Madrid Protocol, users can enjoy a number of advantages compared with filing applications directly with Offices of the respective countries. Such advantages include easier preparation of documents, simpler management of rights, lower filing costs, earlier ascertainment of examination results, and expansion of protection by subsequent designation.

   The number of international applications filed by Japanese users has been increasing, but the rate of use of the Madrid Protocol system has been lower than that in major European countries.

   We can assume that this is attributable to some background circumstances or problems specific to Japan.

   In the awareness of such problems, we conducted a questionnaire survey and interview survey of domestic users concerning problems in the Madrid Protocol system and practices, and investigated the opinions of overseas users and overseas Offices. We then conducted a study based on these survey results and made proposals concerning the problems in the Madrid Protocol system.

   We hope that Japanese users will be able to better enjoy the advantages of the Madrid Protocol system through resolution of these problems and that international protection of trademarks will be further facilitated in the future.

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4. Evaluation of Intellectual Property Strategies to Improve International Competitiveness of Japanese Companies -Study on Intellectual Property Statistics-

   It is important to objectively evaluate intellectual property systems and corporate intellectual property strategies based on statistical data. This study aims to statistically analyze what influence intellectual property strategies receive from the changes in intellectual property systems and the trends in technology markets. The changes in intellectual property systems such as the shortening of the examination request period, changes in fees, and the alterations to the invention compensation system are evaluated by use of econometric techniques. This paper also analyzes how corporate licensing strategies and blocking behavior vary depending on the characteristics of technology markets, and what effects the diversification of patent application fields has on corporate values.

   These analyses provide useful information for improving the efficiency of corporate intellectual property activities in response to the changing patent system and technology market.

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5. Evaluation of Intellectual Property Strategies to Improve International Competitiveness of Japanese Companies
 -Examples of Intellectual Property Strategies-

   With the development of a global and borderless economy, Japanese companies have transformed themselves from being “catch-up” companies into “front-runner” companies. To maintain and enhance the newly gained competitiveness, the management of each Japanese company needs to coordinate its business strategy and research and development strategy with its intellectual property strategy. In order for a company to implement an intellectual property strategy in coordination with the other two strategies, the company needs to make such decisions as how to increase the efficiency in making inventions, how to detect and protect inventions, how to exploit these inventions, and what system and environment to build for efficient patent management.

   The purpose of this study is to illustrate important points to take into consideration in each of the three phases, i.e., the creation, protection, and exploitation of an invention. This study also aims to examine the “category-based” patent management method that classifies inventions according to the products and technical fields to which they pertain, and the system and environment that need to be established within each company in order to devise and implement a sophisticated intellectual property strategy in coordination with its business strategy and research and development strategy.

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6. Ideal Framework for the Future Patent Attorney System

   Amid industry's pro-patent trends with a strengthened emphasis on patents and intellectual property (IP), an overall revision was made to the Patent Attorney Act in 2000 for the first time in 80 years since its enactment, with the aim of promoting the use of patent attorneys as IP experts. Through this revision, the scope of services that patent attorneys are authorized to provide has been expanded, and various measures have also been put in place regarding the examination of patent attorneys so as to increase the number of patent attorneys. Furthermore, in the Supplementary Provisions, it is provided that the revised Act 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 the future development of the system amid the changes in surrounding circumstances following the revision to the Patent Attorney Act, we discussed a wide range of issues focusing on the themes left unaddressed in the FY2005 study (which addressed the “patent attorney examination system,” “training for patent attorneys,” the “code of ethics (relating to conflicts of interest) for patent attorneys” and the “disclosure of patent attorney information”), thereby identifying any problems. The FY2006 study focused on: the “review of the scope of services,” “incorporation of patent firms (as patent profession corporations),” “corporations or employees acting as agents,” and “specially authorized patent attorneys.”

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7. Methodology for Promotion of the Development of Human Resources Related to Intellectual Property

   In the course of developing human resources engaged in IP affairs, it is of critical importance to develop not only high-level specialists but also personnel who assist/aid or support them, further expanding the volume of “supporting human resources” in the IP field. As an institutional measure for encouraging the development of such human resources, in this research study, we examined the idea of establishing a new certification, accreditation or qualification.

   As a result, it has been revealed that among IP assistant specialists who assist/aid or support IP core specialists (e.g. patent attorneys and personnel of IP departments), those engaged in “IP clerical assistance/aid work” demand a certification or accreditation, and it will be effective to establish a new certification or accreditation targeting such personnel.

   We have also developed possible models of schemes for awarding a quasi-academic degree to people engaged in management and technical work who also play an active role in the field of IP management.

   On the other hand, in order to increase the “public awareness of intellectual property,” it is necessary to make young people realize “respect for originality,” and to this end, a certification or accreditation targeting instructors of children may be more effective than the one targeting children.

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8. Appropriate Protection of Intellectual Property

   While new business styles have emerged with the progress of digitization, there have been acts of competition that are regarded as illegal under tort provisions (Article 709 of the Civil Code) from the viewpoint of maintaining fair competition among business operators, and acts of unfair competition that had not been recognized as problems in the past are now drawing attention as important issues. In order to achieve sound business development, it is necessary to clarify rules to prevent acts that will inhibit such business. Therefore, the Unfair Competition Prevention Act plays an extremely important role.

   This study examined the possibilities and challenges of the following measures: (1) regulating the misuse of indications having property value (Consumer-Attracting Indications), which is often observed in merchandizing business, as being unfair competition; (2) establishing an environment where people engaged commercially in the creation and provision of databases can conduct business with a sense of assurance; and (3) establishing complementary provisions or general provisions concerning acts of unfair competition based on the examinations above.

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9. Appropriate Use of Intellectual Property

   For the appropriate protection of licenses on intellectual property rights, Japan has a system for registering licenses held by licensees of patent rights and other industrial property rights, and has adopted a system that requires registration for countering third parties. However, there are indications that the current registration system does not comply with actual business conditions, and the system is not being fully utilized. Without registration, licensees risk facing difficulties in continuing their business activities after the licensor goes bankrupt or transfers the rights to a third party, and as such there have been calls for institutional measures to deal with such problems. Therefore, in this study, we have summarized the contract practices and demands of the industrial sector, surveyed the systems in place in foreign countries, and examined the legal nature of non-exclusive licenses, etc. as a basis for designing a new system. Based on these surveys and examinations, we have formulated two system proposals: (1) protection of licensees by way of a new registration system (a licensing contract registration file system); and (2) a desirable non-exclusive license registration system.

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10. Facilitation of the Use of Patented Inventions

   It has been pointed out that the exercise of patent rights for inventions related to upstream technologies in life sciences and those for inventions involved in technical standards in information communication and electronics would, contrary to the purport of the patent system, hinder technology development or impair the pubic interest. This study discussed this problem, which would affect the facilitation of the use of these patented inventions, while trying to find legal principles under laws other than intellectual property laws that can be applied or used as reference for solving this problem. First, the details of regulations under anti-monopoly laws in Japan, the United States and Europe with regard to the exercise of patent rights were examined, focusing on the regulations for patent licensing agreements and the cases where the exercise of a patent right was disputed under anti-monopoly law. Then, in order to understand the legal principle for determining whether to grant or deny an injunctive relief upon the exercise of a patent right in the United States, the cases after the eBay Case were reviewed. Next, the legal principle of abuse of rights under the Civil Code of Japan was researched in terms of the relevant academic theories and judicial precedents as well as the cases where the principle was applied to the exercise of a patent right. Lastly, in relation to the requirement of “for the public interest” under the award system, the legal principles for restricting private rights “for the public interest” under the Constitution, the Civil Code, and the Land Expropriation Land were examined.

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11. Facilitation of the Use of the Prior Use System

   Under the patent systems of major countries worldwide, including that of Japan, a person who has been conducting a business involving the working of an invention or making perpetrations therefor prior to another person’s filing of a patent application for the same invention, shall be entitled to obtain, as exceptional relief, a non-exclusive license for the invention without charge. This is generally referred to as the prior use system.

   However, it has been argued that the existing prior use system is not very user-friendly. In light of this argument, the FY2005 Patent System Subcommittee of the Intellectual Property Policy Committee of the Industrial Structure Council held discussions and reached the conclusion that measures should be taken to clarify the prior use system based on judicial precedents and specify the means of proof of prior use, and that guidelines should be developed to facilitate the use of the prior use system.

   For this research study, we formed a committee consisting of influential persons from the legal, academic and industrial communities, and summarized the results of the discussions of the aforementioned subcommittee with regard to the measures needed to clarify the prior use system and specify the means of proof of prior use. We also investigated the implementation status of the prior use system and the relevant court rulings in other countries (UK, Germany, France, China, South Korea, and Taiwan), by requesting local law firms to provide relevant information and their views on the prior use system.

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12. Comparative Studies on Patent Systems for Protecting High Technologies in the Advanced Medical Field

   There have recently been remarkable technological innovations in the advanced medical field, including gene therapy and regenerative medicine. It has been recognized that it is necessary to clarify the present situation of protection of technologies in the this field in other countries and problems which each country is addressing to protect advanced technologies, as well as to conduct basic study on desirable systems and their operations to protect technologies in the field more appropriately in Japan. In this study, we prepared materials that can serve as a basis for discussion on systems to protect technologies in the field and their operations, etc. More specifically, we did research on how researchers and engineers expect or foresee the future trends in R&D and how they approach to intellectual property relating to technologies in the advanced medical field, relevant provisions in the patent laws of some countries and their operational guidelines, the background of establishment of such provisions and guidelines, and specific operations of the patent system of each country, based on the present situation of specific R&D relating to technologies in this field.

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13. Current Status and Problems Concerning Typeface Protection in Foreign Countries

   Typefaces are becoming increasingly important in various media with the progress of digitization, and there are calls for discussions on how typefaces should be protected. In order to examine possible systems for typeface protection that befit the current situation, it is necessary to clarify the typeface-related markets and the distribution channels and modes of transaction of typefaces, as well as gain a precise understanding of the need for typeface protection.

   In this study, we gathered information concerning the demand of the industrial sector and reviewed and examined court judgments and academic theories concerning typefaces in Japan. In addition, with the aim of contributing to future studies on typeface protection in Japan, we surveyed and analyzed the historical background and the current status of the typeface protection systems of major countries (the United States, the United Kingdom, Germany, France, the European Union and the Republic of Korea).

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14. Accessing Genetic Resources by Japanese Private Industry under the Convention on Biological Diversity Regime with Particular Reference to Australia
Kamal Puri
Director, Intellectual Property Commercialisation Unit, Queensland Department of Primary Industries & Fisheries
Professor of Law, Queensland University of Technology, Brisbane, Australia
(Invited Researcher, Institute of Intellectual Property)

   The preservation, protection and sustainable use of genetic resources including traditional knowledge (TK), innovations and practices of indigenous peoples are of key significance to all humanity.

   However, this valuable asset is at risk in many parts of the world. In order to protect the cultural and intellectual property rights of the holders of such rights, the CBD brought genetic resources formally under national sovereignty and invited member nations to act on the three objectives of conservation, sustainable use and fair and equitable sharing of the benefits arising from the use of genetic resources. Further, it made access to genetic resources subject to the prior informed consent (PIC) of the State.

   Instead of perpetuating the rhetoric of PIC, mutually agreed terms, self-determination, active protection of cultural systems, and equitable benefit sharing, this paper confronts these perennial issues head on to examine the procedures, if any, which have been devised for gaining PIC. Further, the differences between the common law concept of free consent and the PIC and the interface between the CBD and the patent law are assessed.

   Next, the developments in Australia, especially in Queensland, dealing with access to biological resources are considered to inform the Japanese private industry of practical ways to access biological resources in Queensland. By enacting the Biodiscovery Act 2004, the State of Queensland, which is the richest state in biological resources in Australia, has taken a lead role in enacting the principles and procedures for facilitating access to biological material in a responsible and systematic way.

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15. The industrial property right protection of the producer of a database-Some reflections on the future of European and Japanese protection schemes-
Frank Gotzen
Invited Researcher, Institute of Intellectual Property
Professor at the Faculty of Law, Catholic University, Leuven and Brussels (K.U.Leuven and K.U.Brussel)
Director of the Centre for Intellectual Property Rights (CIR)

   The purpose of our research is to confront the European state of affairs with the Japanese understanding of database protection and the benefits of a specific producers’ protection in this area.

   The European Directive 96/9/EC of March, 11, 1996 decided to introduce, apart from the copyright protection of a database, an entirely new type of industrial property protection in favour of the producer of a database. Protection is made dependent on qualitatively and/or quantitatively substantial investment in either the obtaining, verification or presentation of the contents of a database.

   Fears had been expressed, especially in the United States of America, that this new type of right might lead to a monopolisation of the data contained in the database. However, on November 9, 2004 the European Court of Justice delivered a series of judgements which made it clear that the scope of this sui generis right does not reach so far and that it is intended only to protect substantial investment in a database against the counterfeiting of its structural elements.

   Just as those unfounded fears seemed to decrease came this surprising announcement from the European Commission, which had been the inventor of the sui generis scheme, that it had started doubting about the usefulness of its own construction.

   The situation thus seems to be moving, a remark that might be true for Japan also. Japan is presently reconsidering its position on the matter in order to know if it would be desirable to go further than copyright for protecting databases and to also introduce some form of unfair competition rule that would lead to a specific producers’ protection in this area.

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16. The Functions of Trade Marks and their Role in Parallel Importation Cases
-What Can the EU and Japan Learn from Each Other’s Experiences?-
Ilanah Simon
Invited Researcher, Institute of Intellectual Property
Lecturer in Law, Brunel University, London, UK

   Japan and the European Union have been operating trade mark registration systems for more than a hundred years. Yet in neither jurisdiction is there consensus on what the legally and economically recognized functions of a trade mark should be.

   This research investigates what we mean by trade mark function, arguing that it is an oversimplification to limit our analysis to a choice of origin, quality guarantee or advertising function. Instead it proposes that we recognize a more complicated framework of interconnected functions that reflects the nature of evolving markets, and the fact that the function(s) may differ, depending on the nature of the goods the mark is being used on.

   It goes on to consider how the courts have dealt with the issue of parallel importation, in which both the Japanese courts and the European Court of Justice have repeatedly justified their decisions by reference to trade mark function.

   Ultimately it will be argued that the EU would do well to follow the Japanese lead in explicitly recognizing the quality aspect of trade marks. However, Japan may want to consider its position in the light of the EU’s recognition of the advertising function of marks.

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17. Effective Protection of DNA Sequences and Gene Innovations
Dae Hwan Koo
Invited Researcher, Institute of Intellectual Property
Professor of Law and Technology, College of Law, Seoul National University, Seoul, Korea

   This Article examines whether patenting DNA sequences and gene innovations is desirable from an economic perspective to encourage innovations. In order to evaluate this, the characteristics of DNA sequences and gene innovations are discussed. DNA sequences have a dual character as a chemical and as an information carrier. Gene innovations are incremental, sequential and cumulative. Because of these characters, DNA sequences and gene innovation should not automatically be regarded as patentable.

   The main problem in the patent system is that it is based on an exclusive right that tends to impede innovations in sequential innovations. Many disadvantages of patent protection are revealed through the examination of the patent system in the context of the characteristics of gene innovation. Therefore, it is necessary to find a way to provide the first comer with incentives, and second comers with freedom to utilize the first comer’s innovation if they are willing to pay.

   In order to accomplish this goal, first, I suggest that clearly defined ‘research exemptions,’ enhanced patentability standards, and Purpose-bound Protection should be employed. Second, a clearinghouse, Genetic Sequence Right, and automatic licensing system should be introduced. Third, the patent system should integrate useful standards included in the Direct Protection of Innovation.

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18. Well-Known Trademark Protection: A Comparative Study between Japan and China
Mingde Li
Invited Researcher, Institute of Intellectual Property
Professor, Institute of Law, Chinese Academy of Social Sciences; Deputy Director, Intellectual Property Center, CASS

   While the well-known trademark protection is an important issue in domestic and international trade, Paris Convention and TRIPS Agreement oblige members to protect well-known trademarks under both the doctrine of confusion and the doctrine of dilution. In this respect, Japan and China have provided such protection in their trademark law and unfair competition law. This paper is to compare the legal provisions, practices, and cases related between Japan and China, and to find some solutions to the problems resulted in China in the protection of well-known trademarks.

   To protect the well-known trademarks under the doctrines of confusion and dilution are the common aspects in Japan and China. In comparing the legal provisions, practices, and cases, the paper suggests that China shall learn some practices from Japan, such as applying the doctrine of abuse of trademark right, or enabling a court to invalidate a registered trademark so as to protect unregistered well-known trademarks. The paper as well points out that China should follow the Japanese legislative practice to protect well-known trademarks under the doctrine of dilution in both trademark law and unfair competition law, rather than only in trademark law.

   To deal with the relationship between trade name and well-known trademark, and the effect of the designated well-known trademark, are the special problems resulted in China. The paper recommends that China shall accept the Japanese view that a trade name has a name aspect and a property aspect, and the former is regulated by the trade name recoding regulation and the later is regulated by the unfair competition law. The author also suggests that the effective of a designated well-known trademark in the disputes shall be confined to the specific case, has noting to do with advertisements and government merits.

   The paper concludes that Chinese legislative, administrative, and judicial agencies shall learn the related legal provision, practice, and cases from Japan, and thereof improve the well-known trademark protection in China.

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19. A Model of Intellectual Property Rights Enforcement for Developing Countries
Jumpol Pinyosinwat
Invited Researcher, Institute of Intellectual Property
Presiding Judge, the Central Intellectual Property and International Trade Court, Bangkok, Thailand

   As intellectual property rights have encountered an expansive growth throughout the world, the debate on the differences of substantive intellectual property laws in developed and developing countries have regained enormous attention for decades. Nonetheless, the discussion about the dissimilarity of practices, especially for the enforcement approaches in developed and developing countries, seems to be overlooked.

   This paper aims at considering and comparing the diverse approaches of intellectual property enforcement outlined above. It starts with a compressed treatment of the conceptual justification in the frame of John Locke’s labor theory and the interpretations of Hegal’s and Marx’s theory of property. The historical perspectives of abstract objects in intellectual property law in the United States and the United Kingdom are additionally analyzed.

   The paper then explores and compares the approaches of intellectual property enforcement in 3 developed countries (Japan, the United Kingdom, and the United States of America) and 4 developing countries (China, Taiwan, Thailand, and Vietnam). Focusing on practical perspective, it discusses certain procedural issues, including current law, civil remedies, criminal remedies, other remedies, court, and statistics.

   Based on the comparing analysis, the paper finds that most developed countries mainly apply and develop civil remedies to protect intellectual property rights, while a number of developing countries rarely apply such remedies. In some developing countries, criminal sanction is the only option to enforce intellectual property right; civil remedies and justification of intellectual property have been abandoned. The paper proposes a model with a minimalist solution to enforcing practices, which is based on the justification of intellectual property right and the need to harmonize the differences of practices.

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20. Bounded Rationality and Related Concepts Fundamental to Intellectual Property Analysis
Tetsuo Wada
Long-term Overseas Research Fellow, Institute of Intellectual Property

   With the spread in use of the concepts of "laws and economics" in intellectual property studies, jurists as well as economists have recognized the importance of an ex-ante perspective in the analysis, i.e., how incentives can be changed by alterations in legal systems. While the concept of bounded rationality used to be frequently neglected in conventional "laws and economics," it has, since the 1990s, become a major issue in microeconomics. The concept of bounded rationality is the source of fundamental questions and study incentives for those who are engaged in ex-ante incentive analysis. Moreover, the patent system itself and various transactions related to patents inevitably entail transaction costs formulated by use of such concepts as "incompleteness," "indescribability," and "non-verifiability," all of which stem from bounded rationality. In this study, we reviewed the history of the previous studies and reconsidered the basis of the concept of efficiency in the economic analysis of patents. We also conducted empirical studies based on the presumption that the rationality is bounded.

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21. The Scope of Rights and the Functions of Trademarks Under the European Trademark System
Masami Ashidate
Long-term Overseas Research Fellow, Institute of Intellectual Property

   It has long been pointed out that a trademark serves many functions in a market. In addition to the essential function of indicating the origin of goods, such functions as the so-called function of guaranteeing the quality of goods and the function of advertising goods have been well-known. People have been debating whether these functions should be protected under the trademark law in addition to the function of indicating the origin of goods. This debate has reemerged in Japan as well. For example, the Japanese Supreme Court addressed the issue of the function of guaranteeing the quality of goods in a recent case about parallel imports. Since then, the scope of trademark functions that should be subject to legal protection has been reexamined. This paper will cast light on the European trademark system and introduce some theories and precedents, which are categorized into several groups in this paper, concerning trademark functions debated in the course of determining the scope of protection for trademark rights. Based on those theories and precedents, we will examine and analyze the interpretations and definitions of trademark functions presented therein.

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22. Historical Overview of Formation of International Copyright Agreements in the Process of Development of International Copyright Law from the 1830s to 1960s
Akiko Sonoda
Long-term Overseas Research Fellow, Institute of Intellectual Property

   This research aimed to clarify how the international agreements for copyright protection have been formed by tracing the debates that have been held in the process of the establishment and development of international copyright law from the 1830s when moves toward establishing international copyright law and treaties became active in Britain to 1967 when the World Intellectual Property Organization (WIPO) was established. As commonly regarded by copyright history researchers, copyright law of the 20th century and that of today heavily rely on copyright law from the 19th century, a time when copyright was established as an economic right. It was confirmed in this research that international copyright treaties developed step-by-step from bilateral treaties into multilateral treaties and acted as a driving force in raising the level of copyright protection in various countries. It was also found that, during the period until the establishment of the Berne Convention and the U.S. International Copyright Act (1891), literary authors from various countries participated directly and actively in discussions on copyright based on the awareness that policies on copyright law greatly affected the quality of the works produced and the culture of the relevant countries.

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23. Free Movement Rules and Competition Law: Regulating the Restriction on Parallel Importation of Trade Marked Goods
Yuka Aoyagi
Research Fellow, Institute of Intellectual Property

   The purpose of this report is to clarify the relationship between the free movement rules and the competition laws in the laws of the EC Member States by mainly studying parallel imports cases related to intellectual property rights.

   The Treaty establishing the European Community (or the EC Treaty) uses the Internal Market as the most important means for achieving its economic and social purposes. The free movement rules and the competition laws are a central core of rules to make the Internal Market function effectively. For the purpose of the text of the EC Treaty, both legal systems appear to have different objects of regulation, but overlapping application of such systems can be observed, depending upon the matter in question. This report studies the formulation of jurisprudence cases by the European Court of Justice (ECJ) from an early stage as a subject matter of cases of parallel imports of brand products. It studies the understanding of the ECJ behind the application of the free movement rules and the competition laws, and clarifies the relationship between and the function of such rules and laws in securing effective functioning of the Internal Market through the restriction of parallel imports.

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24. Relationship Between Intellectual Property Right Enforcement in the Technology Standardization Process and Competition Policy
Ryushi Ito
Research Fellow, Institute of Intellectual Property

   Standardization of technical specifications has seen progress mainly in the information industry, with the aim to accelerate product development and dissemination. Standardization also allows consumers to enjoy convenience associated with product compatibility. In recent years, the standard setting operations have often been carried out by establishing a standards organization. In such standard setting process, a member of a standards organization could engage in an opportunistic act wherein the member takes a persuasive action to have the technology that is covered by the member’s intellectual property included in the standards while concealing the existence of such intellectual property, and enforces the intellectual property after the technology has been included in the standards to demand a large amount of royalties. In order to prevent such acts, members are often sought to disclose whether or not they hold any relevant intellectual property in advance under the organization’s patent policy. This report explores the applicability of antitrust law to acts in violation of such patent policy by taking hints from cases observed in the United States, and also examines alternative measures for preventing opportunistic acts.

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25. The Choice of Forms in Licensing Agreements: Case Study of the Petrochemical Industry
Tomoyuki Shimbo
Research Fellow, Institute of Intellectual Property

   When a company enters a market, it is necessary to acquire manufacturing technology. When importing manufacturing technology, sometimes the joint venture form is selected, as well as simply license agreements. In actuality, many JVs between licensor and licensee have been established in the petrochemical industry.

   From the perspectives of JV functions, knowledge-based theory considers that a JV possesses organizing principles that codify knowledge and mechanisms to promote knowledge transfers, while transaction-cost theory considers that a JV includes mechanisms to control the opportunistic behavior of partners. Consequently, this research focuses upon the petrochemical industry and examines factors that influence the choice of form of a licensing agreement by performing a case study and quantitative analyses, and explains why a JV is selected. The results being, that a JV is selected, not to promote knowledge transfers between partners, but to control the opportunistic behavior of licensor and licensee.

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26. Necessity of Giving Special Consideration to Research at Universities, etc. in the Patent Law System
Kyoko Takada
Research Fellow, Institute of Intellectual Property

   The research environment and forms of research at universities and public research institutes (hereinafter referred to as “universities, etc.”) have been rapidly changing. Universities, etc. have become deeply committed to the industry as a result of their exploitation of research achievements as intellectual property rights and strong promotion of returning research achievements and research functions to society through industry-academia collaboration. Consequently, it is impossible to deny the possibility that universities, etc. will become subject to claims of patent rights.

   Therefore, this research examines the necessity of giving special consideration in the patent law system in terms of performance of research and education at universities, etc. Specifically, actual condition surveys were conducted with regard to changes in the relationships between universities, etc. and the industry, the relationships between universities, etc. and researchers at universities, etc., and universities as entities exercising rights, in light of the public interest nature of research at universities, etc. and requests of society for such research, as well as changes in the industrial structure and increasing social importance of intellectual property, and the survey results were analyzed. The results of the analysis and examination revealed the necessity of giving special consideration to research at universities, etc. in the patent law system.

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27.  Generic Drug Entry and Coordination among Legal Systems:
Drug Regulation, Intellectual Property Law, and Antitrust Policy
Akihiko Nakagawa
Research Fellow, Institute of Intellectual Property

   Market entry of generic drugs assumes an important role as part of medical cost reductions, and raises issues that should be addressed by the three legal policy systems governing the structure of the pharmaceutical industry: drug regulations, intellectual property law, and antitrut policy. As material for comparative law, this analysis reviews the situation in the U.S. where legal systems of generic drug entry are the most developed and with the greatest number of precedent cases. Using a manner of cross-system analysis, it considers the various issues related to generic drug entry from the perspective of coordination among these three legal systems governing entry of generic drugs, rather than a direct analysis of the purpose for each individual legal system. Specific issues reviewed are: drug data exclusivity period for new drug applications, exemption from infringement for experimental use of patented drugs prior to patent expiration, legal commencement of marketing prior to patent expiration (including exhaustion), infringement litigation that abused procedures for listing patents in the U.S. FDA’s Orange Book, and settlement of infringement litigation accompanied by agreements of reverse payments and delayed market entry.

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28.  Analysis of the Political Processes for the Formation of the TRIPs Agreement
-With the Focus on the Pharmaceutical Industry and the Computer Industry in Japan, Europe, and the United States-
Momoko Nishimura
Research Fellow, Institute of Intellectual Property

   The purpose of this paper is to review from the perspective of international politics the developments that led to the establishment of the TRIPs Agreement at the Uruguay Round of GATT. While many earlier studies pointed out the influence of multinational companies on the conclusion of the TRIPs Agreement, only a few of them examined the political process of concluding the Agreement in detail. Most of those studies that examined the political process at all covered only the moves of the United States. This paper illustrated the corporate-government relationships in Japan, Europe, etc., since the 1970s and analyzed how the political process and the progress thereof influenced the formation of the Agreement. By shedding light on the collaboration among Japanese, European, and U.S. companies to prepare and submit a draft to the Uruguay Round, this paper revealed that this political process for the creation of the Agreement was very different from the conventional corporate strategy of increasing pressure on their respective governments. This paper focuses on the pharmaceutical industry and the computer industry in order to describe how such issues as pharmaceutical patents, protection for application data submitted to governments, and the scope of protection for computer programs were addressed in the company-to-government, company-to-company, and government-to-government negotiations.

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