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Research Activity Summary of FY2009

1. Intellectual Property Rights System Contributing to Creation of Innovation

   This study is designed to produce basic materials for considering a patent system that is the most effective for creating innovation. As the patent system entails a large number of problems, this study takes up and considers three challenges that are thought to require urgent solutions. Regarding “problems regarding universities as new patent system players,” the introduction of the easier requirements for patent application filing dates to be accorded in line with Article 5 of the Patent Law Treaty and the extension of the grace period between the disclosure of research achievements and relevant patent filings are expected to help protect inventions at universities appropriately, and contribute to promoting innovation. Regarding “problems related to technology standards,” some organized mechanism is proposed to restrict the exercise of patent rights incorporated into technology standards that have a certain or higher level of public nature. As for “problems regarding research tool patents,” this study reached a conclusion that the present guideline-based approach has produced some results, while whether to restrict the effect of research tool patents must be considered further.

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2. Various Issues Regarding the Information on Advanced Technology Stored in a Web Archive Such as “Publicly Known”

   The JPO plans to create a searchable Web archive, “Advanced Technology Information Archive,” as an in-house database. The archive system will collect online information by crawling through websites. While Web archive services similar to this Advanced Technology Information Archive have already been provided by some private organizations, it is needed to discuss various issues in a comprehensive manner in anticipation of the creation of the Advanced Technology Information Archive. Such issues would include how patent examiners would use the Archive, whether the archived information is “publicly known,” and how to prove that the archived information has not been falsified.

   In this study, research was conducted on the use of Web archive services by intellectual property offices in other countries, and also on the patent offices’ trial decisions and court judgments regarding the reliability of information stored in Web archives. Furthermore, domestic surveys were conducted with regard to the usability, necessity, and problems of the information stored in a Web archive from the perspective of patent examination. Based on the results of the surveys, relevant issues and points of concern have been addressed in this paper.

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3. Optimal Design Examinations Based on Evaluations by Applicants

   For the purpose of preparing basic data for promoting efforts to maintain and improve the quality of design examinations and for considering developing the relevant quality management arrangements, I conducted (1) a survey on overseas design examination quality management, (2) a domestic trial questionnaire survey, (3) an interview survey, and (4) an expert panel’s discussions, focusing on external evaluations (evaluations of design examinations by applicants/agents).

   There was a 54.6% response collection rate for the domestic trial questionnaire survey. About 90% of respondents viewed examiners’ overall procedures in the past year as appropriate. About 85% saw notices of reasons for refusal of design registration applications as appropriate. In free description columns, respondents provided many specific opinions or information on appropriate and inappropriate examinations. Based on the trial survey results, I tested methods for evaluations of design examinations by applicants and the like, and considered optimal design examinations based on the evaluation results.

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4. Utilization of Intellectual Property Rights in New Business Environment

   This is a research study on utilization of intellectual property rights, surveying present situation and needs for the utilization. Since it is very difficult to measure activities of utilizing intellectual properties, there are no specific indicators illustrating intellectual property rights “utilization” activities, such as number of applications or registrations for intellectual property rights “obtaining” activities. Accordingly, measures of Japan Patent Office (JPO) do not properly reflect the needs of intellectual property right users. Instead, JPO has given priority to promoting utilization of “unused intellectual property rights” based on their annual statistical survey criteria of “used and unused intellectual proprietary rights”.

   Since intellectual property users, such as companies or universities utilize their rights in various ways depending on their industrial categories or company sizes, etc. it is difficult to measure their activity of utilization by the simple criteria of “used” or ”unused”. Therefore, in considering future policies for their utilization, it is very important to properly understand the present situation and needs for the utilization.

   The research study includes a questionnaire survey and hearings with companies and universities in Japan and foreign countries. The questionnaire survey was conducted for about 3,000 samples and focused on typical activities of utilizing intellectual property rights,– enforcement of rights (direct utilization), defending proprietary products (indirect utilization), utilization of rights as technology benchmarks, and utilization of rights for introduction of outside technologies – and analyzed the activities by technology area and company size.

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5. Method of the Design System to Promote Diversifying Design Creation Activities

   The use of design is said to be an important element for strengthening a company’s competitiveness. The Japan Patent Office has been facilitating a review of the design system as needed in order to promote design creation activities and to protect them appropriately, and is also continuously exchanging opinions with industry and designers, etc. This research study was conducted to create the base materials to review the method of a design system that protects and promotes the increasing diversity of design creation activities.

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6. Fee System Methods for Industrial Property Rights based on the Economic Situation, etc. in Japan

   Under the strict economic situation in Japan, there is a need to revise the fee system for small- and medium sized companies, etc., which have a limited intellectual property related budget. On the other hand, there are indications that even if fees for requesting examinations and annual fees for patents are reduced, small- and medium-sized research and development type companies, etc. cannot enjoy those effects sufficiently due to the complexity and difficulty of the request procedures.

   The content required for the procedures and the fee system related to existing industrial property rights has changed along with promoting a revision of the patent system from the perspective of promoting innovations, and the revision of the trademark system in order to improve its convenience for business operators to facilitate improvements of brand strength. Therefore, the need to investigate overall procedures concerning industrial property rights has arisen.

   This research study is an investigation, and an economic analysis, into “the way to find an appropriate fee system based on the revenue curve of the products that use patents” and “the transition of the fee system and its impact.” In addition, as to “the method of the reduction or exemption system,” “the method of basic fees and charges for claims” and “the payment method of trademark fees by installment,” a questionnaire survey of system users and oral interviews were conducted and investigated based on their results.

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7. Desirable System Concerning Licenses and Right to Obtain a Patent

   In recent years, it has become essential to effectively exploit intellectual property, including patents, in order to promote innovation and strengthen the industrial competitiveness of Japan. In such circumstances, a Fiscal 2008 JPO Study Report on the Issues of the Industrial Property System, titled “Further Exploitation of Intellectual Properties,” put into shape a direction recognizing that it is reasonable to introduce the system of automatic perfection as a perfection system for licenses, to establish a new monopolistic license system, and to permit the establishment of a pledge on the right to obtain a patent, from the perspective of protection of licensees and increasing needs for early exploitation from the stage of filing a patent application.

  In this research and study, we conducted questionnaire and interview surveys in Japan as well as overseas surveys (the United States, Germany, the United Kingdom, France, China, and South Korea) on these matters. We thereby conducted surveys and analysis on needs in Japan as well as from the perspective of harmonization of systems with other countries.

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8. Procedures for Proceedings in Inter Partes Trials

   Based on the provisions of Article 104-3 of the Patent Act, which was introduced in April 2005, the defense of patent invalidation has been judged in patent infringement suits. In response to this situation, the Japan Patent Office has included trial cases that are filed while the infringement suit is pending into the subjects that are to be judged at an early stage, contributing to the prompt solution of conflicts.

   On the other hand, key measures of the “2009 Plan for the Promotion of Intellectual Property” stipulated to “examine in order to obtain a definitive conclusion within fiscal year 2010 with respect to countermeasures for issues pertaining to the ‘double track’.” In discussing on this issue, it is necessary to research and review more prompt and accurate procedures for proceedings in inter partes trials.

   Based on this context, for this research and study, oral interviews were conducted with companies and their agents, statistics and analyses pertaining to relationship between inter partes trials and lawsuits were gathered, and research was done into prompt and accurate procedures for proceedings in inter partes trials that improve the degree of satisfaction of the system’s users, in order to identify their needs in inter partes trials (trials for invalidation).

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9. Application Behavior, etc. of Companies, etc. for Sustainable Economic Growth in Japan

   It is extremely important for realizing sustainable economic growth in Japan to establish an intellectual property system in which the research and development results of a company, etc. are protected and used effectively as intellectual properties, thereby promoting technological innovation and stimulating economic activities. For that reason, it is essential for planning measures concerning Japanese intellectual properties to share a common awareness based on statistical data analysis and to deepen discussions of the intellectual property system.

   Based on these circumstances, the following six empirical analyses were conducted in this research: (1) effects of law amendments on the employee invention system; (2) patterns related to the application behavior of companies, etc. in the high-tech sectors; (3) whether the application behavior of companies, etc. is changing from quantity to quality; (4) the impact of system change on software patents; (5) the determining factor of patent trials and filing objections; and (6) the relationship between company secrets (know-how) and profitability or the sustainable competitive advantage of companies. Revisions of the Survey of Intellectual Property-Related Activities are also reviewed.

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10. Towards a Unified System of Jurisdiction in the Field of Intellectual Property between Japan and Europe
Aurelio Lopez-Tarruella Martinez
Assistant Professor of Private International Law, University of Alicante, Spain
(Invited Researcher, Institute of Intellectual Property)

   At present, markets have become global. As a consequence, enterprises need to protect their intangible assets in several countries. There are several international conventions that facilitate the registration of IPR abroad. However, things are not facilitated at all when IPR are infringed and right holders have to claim their rights in courts. With the exception of the European Union, international jurisdiction is established according to national laws. Therefore, it is very difficult for right holders to know where they can claim the protection of their rights. In addition, it is very usual that they will have to face parallel proceeding in several States. This situation increases the costs of international commerce activities and undermines the effective protection of IP right.

   To overcome this situation, an international convention to unify the rules on jurisdiction, recognition and enforcement of judgements in the field of IP is needed. It is the purpose of this work to compare the systems of the EU and Japan with the aim of identifying points in common and points of disagreement in their rules of jurisdiction. In particular, first part of the work will compare the rules on jurisdiction related to actions concerning validity, registration, infringement of IPR and provisional measures. Second part will focus in the regulation of parallel proceedings.

   Thanks to this analysis it would be possible to determine which elements should be present in an international convention is this field so that the EU and Japan would ratify it.

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11. Tools for Lowering Commercialization Barriers for Innovations in Universities and Industry in Japan and Europe : a Comparative Approach of Knowledge Transfer Activities with Some Novel Viable Solutions
Luca Escoffier
Visiting Lecturer, University of Washington School of Law, United States of America
(Invited Researcher, Institute of Intellectual Property)

   The innovative features of the present research, far from being a mere report on the status of current activities, lie in the fact that after a thorough comparison between the European, and Japanese systems, and an analysis of the tools that have been used so far to facilitate and enhance knowledge transfer activities, some conclusions will be drawn together with a proposal for the adoption of alternative tools for lowering commercialization barriers, and achieve a borderless exchange of knowledge. The study will explore the possibility to opt for novel possible ways to create linkages at all levels of research, especially between European and Japanese entities and researchers, that will constitute potentially viable routes for a sustainable and effective development and exploitation of knowledge. 

   The study is divided in two parts. First, a thorough examination of the two systems will be carried out. Second, a real-world proposal will be suggested to:

   1. overcome the common barriers to the commercialization of innovations through novel partnering techniques and web-based tools for a quick, inexpensive, reliable and neutral exchange of data;

   2. create novel communication tools allowing fast and effective interaction between Japanese and European public research organizations and companies like web-based applications and databases.

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12. International Harmonization of National Laws and Policies for Effective Prevention and Suppression of Intellectual Property Violation
Santanee Ditsayabut
Public Prosecutor of Office of the Attorney General of Thailand
(Invited Researcher, Institute of Intellectual Property)

   The present interconnected global economy not only benefits legitimate businesses but also fosters the problem of intellectual property infringement to become a global phenomenon of the 21st century. Due to the pervasiveness of intellectual property violation, which greatly damages economic prosperity and increasingly harms public security, a conception of intellectual property rights has shifted from economic and civil matter to criminal paradigm in the view of law enforcement. In the last decade, many countries have improved their intellectual property legislations to provide for greater civil remedies as well as stiffer penalties. Nevertheless, statistical data shows that the trend of intellectual property infringement is still on the rise. Therefore, it is a pivotal time to consider more on strategies towards the effective intellectual property enforcement.

   This report intends to offer a practical aspect rather than a legislative review. Fighting the threat of intellectual property crime requires concerted action from all countries. Appropriated legislation has to be in place and in line with international standard and practice. Consistent policy in enforcing the laws is vital to effective implementation. The objective of the report is to reveal all serious consequences of intellectual property crime and its link with organized crimes and terrorism and then explore innovative solutions to strengthen the intellectual property enforcement regime. To achieve this goal, the report begins by revealing all facts in support of the argument that intellectual property crime is not a victimless crime. It further examines the relationship between intellectual property crime and other criminal activities, especially organized criminal groups. An analysis of factors that make intellectual property crime an attractive illegal business, and any root causes that undermine the effectiveness of law enforcement are included. At the end, the report recommends a variety of measures to strengthen existing enforcement tools and practices, as well as proposes alternative instruments for the better enforcement of intellectual property.

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13. Abbreviated Approval Pathway for Biosimilars and Patent Policy: Balancing the Incentives of Innovation and Price Competition
Dong Tao
Assistant Professor, The Research Center of SIPO (State Intellectual Property Office), China
(Invited Researcher, Institute of Intellectual Property)

   Recently, there is a rallying cry for applying the ANDA to the biosimilars. Biologics are distinguishable in major technical ways from conventional drugs, which makes the provisions of the Hatch-Waxman legislation governing drugs simply cannot be incorporated into a regulatory scheme simply allowing for approval of follow-on protein products. IP is a critical intangible asset for biotech and pharmaceutical firms. But the distinction between biologics and small molecule drugs lead to substantive differences in how patent system operates in the condition of abbreviated approval pathway to provide market exclusivity for innovator biological products. To determine what kind of patent protection infrastructure is appropriate for regulating these “follow-on biologics”, a thorough patent policy assessment, from the viewpoint of biotechnology environment, is necessary. With these points in mind, this research focuses on the legal and policy issues of patents in implementing an abbreviated approval pathway for follow-on biologics from different perspectives. At last, this research gives some recommended suggestions to these patent issues from the author’s opinion.

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14. Analysis of Behavior to Carry Out R&D and Patent Filing under Evolutionary Game Theory
Ryosuke Ishii
(Research Fellow, Institute of Intellectual Property)

   This study focuses on the trade-off between the incentive for R&D and the adverse effects of monopoly resulting from the granting of a patent right, and analyzes a model of economic theory that explicitly takes account of the influence of these factors on social welfare. While integrating into the model the negative effects on the economic growth rate arising from the "strength of a patent right” and "the very existence of a patent right,” which have not been clearly defined in previous theoretical studies, this study introduces factors of evolutionary game theory into the process of deciding the volume of R&D investment, and considers an endogenous decision on R&D investment to be made by firms. In this study, exogenous parameters, such as the strength of a patent right and the strictness of the criteria for the granting of a patent right, are interpreted as policy variables, with a view to finding out the qualitative nature of the policy variables that can maximize social welfare that is the economic growth rate applied as an indicator. In addition, consideration is also made as to how a policy decision affects economic growth in the context of determining an optimal duration of a patent right when regulations are eased so as to allow different durations of a patent for different sectors.

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15. Environmental Regulation and Firms’ Innovation Activities - An Econometric Study Using Patent Data -
Kazuma Edamura
(Research Fellow, Institute of Intellectual Property)

   It is generally said that Japanese environmental technology is superior to that of other countries. In this study, we assume that environmental regulation is a factor that may have encouraged Japanese firms to pursue innovation activities in environmental technology, and conduct an empirical analysis to study the relationship between the two. In conducting this analysis, we propose a hypothesis that the greater the impact of the enforcement and/or strengthening of environmental regulation, the higher the incentive for firms to pursue innovation in environmental technology.

   There is a hypothesis which claims that environmental regulation encourages innovation activities by firms (Porter hypothesis). Several empirical studies in support of this hypothesis have been conducted but they left unresolved many issues due to limitations of data etc.

   In this study, the relationship between firms’ innovation activities in environmental technology and environmental regulation is statistically analyzed, using patent data, financial data, and environmental administration-related data. In performing the study, we assume that the impact which environmental regulation may have on firms varies depending on the firm size and industry type. By controlling these factors, we statistically identify the impact which environmental regulation may have on firms’ innovation activities.

   From the results of the analysis, we draw a conclusion that the hypothesis of this study cannot be rejected, which suggests that there is a possibility that the Porter hypothesis may be true in Japan.

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16. Use as a Trademark - The Interpretation in an Infringement Lawsuit, and its Problems -
Kumiko Kim
(Research Fellow, Institute of Intellectual Property)

   A trademark holder may demand an injunction and damages if a third party uses a mark (Article 2, paragraph (3) of the Trademark Act) that is identical or similar to the registered trademark for any goods or services that are identical or similar to the designated goods or services. However, Japanese courts have adopted the interpretation that the use of a mark that technically falls under Article 2, paragraph (3) of said Act would not constitute a trademark infringement as long as the use does not constitute “use as a trademark.” The concept “use as a trademark” has been interpreted as the “use of a mark in such a way that it exercises the function to distinguish the goods of the trademark holder from those of other parties or the function to indicate the source of the goods to which the mark is applied.” While this concept is not explicitly specified in the Trademark Act, this is a requirement for a trademark infringement.

   In view of the facts that new ways of using a mark are expected to evolve and that protection of famous trademarks needs to be improved, it would be meaningful to discuss what “use as a trademark” means and whether the current interpretation thereof is appropriate.

   If “use as a trademark” is a requirement for an infringement, the burden of proving it must be shouldered either by the plaintiff or the defendant. Although this issue is closely related to the utilization of the concept “use as a trademark” in trials and also to the provisions concerning the limitations on the effect of trademarks (Article 26 of the Trademark Act, etc.), research from these perspectives has shown little progress.

   The purpose of this study is to identify and discuss the actual meaning of the concept “use as a trademark” by addressing such issues as the theories based on which this concept was established, the situations in Europe, the burden of allegation and proof, and the utilization of this concept as a requirement for an infringement.

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17. Trademark Protection on the Internet - with a Focus on a Comparison between Japan and China -
Chen Siqin
(Research Fellow, Institute of Intellectual Property)

   With the continuing development of Internet technology, new types of trademark protection have become necessary for trademarks used in cyberspace. For example, the service widely known as “search advertising” has stirred up disputes about possible trademark infringement by search keywords. Users of this service who have registered other parties’ trademarks or any part thereof as search keywords have been sued by the trademark holders for alleged trademark infringement. It should be noted that the trademark holders have held liable not only the parties that have allegedly committed a direct infringement of their trademarks in the course of using the service but also the Internet Service Providers (ISPs) as contributory infringers for providing for such service. In China, there has been a series of such lawsuits against Google (China) and Baidu, which is the largest search engine in China. Due to the lack of statutory provisions, court judgments vary from one to another. This is problematic from the perspective of legal stability and predictability, making it difficult to protect trademarks and prevent disputes. Some academic papers suggest that the same problem exists in Japan. However, detailed study has not been sufficiently conducted.

   The abovementioned new types of cases represent disputes over trademark protection on the Internet. In this research, a comparative study was conducted on the current laws of Japan and China with a focus on the liability of both direct infringers and ISPs as contributory infringers.

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18. International Jurisdiction to Grant an Interlocutory Injunction to Preclude Defendants from Infringing Intellectual Property Rights
Asako Matoba
(Research Fellow, Institute of Intellectual Property)

   An Interlocutory injunction is one type of provisional including protective measures. Since it is a provisional measure, the essence of the provisional disposition is considered to take prompt and effective measures. For example, by “Brussels I Regulation: Council regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters,”broader jurisdiction to grant provisional measures is provided than jurisdiction over an action on merits. Here, it is convenient for a rights holder to take provisional measures promptly. However, in international conflicts related to intellectual property rights, if broad jurisdiction to grant interlocutory injunction to preclude defendants from infringing IP rights is allowed, a question arises. Clarifying various characters of the measures by comparing interlocutory injunction to preclude defendants from infringing IP rights with a judgment on merits and other kinds of provisional measures, this study examines the appropriate rules of international jurisdiction to grant interlocutory injunction to preclude defendants from infringing IP rights.

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19. International Jurisdiction and Governing Law for International Conflicts over Employee Inventions and Works Made for Hire
Ai Murakami
(Research Fellow, Institute of Intellectual Property)

   The report of this study reviews the treatment of international conflicts over employee inventions and works made for hire under new rules concerning international jurisdiction and governing laws. Currently, there are no provisions under statutory laws concerning international jurisdiction in Japan. The international jurisdiction legislation has been reviewed by the legislative council of the Ministry of Justice since October 2008 under the need to develop provisions on international jurisdiction. In February 2010, an Outline on Development of the International Jurisdiction Act was announced. With regard to the governing law, the Act on General Rules for the Application of Laws came into effect on January 1, 2007 in lieu of the former Horei (Act on application of law (Act No.10 of 1898)). Neither the Outline on Development of the International Jurisdiction Act nor the Act on General Rules for the Application of Laws have stipulated special rules for employee inventions and works made for hire. Therefore, these issues are left to be construed as in the past. However, it is necessary to consider whether conventional understandings apply directly under the new rules, because both the Outline on Development of the International Jurisdiction Act and the Act on General Rules for the Application of Laws have adopted special provisions concerning labor relationships so that they may have an impact on the treatment of conflicts over employee inventions and works made for hire that arise between parties who are in a labor relationship or who were in a similar relationship. In the report of this study, past settlements are reviewed in order, starting with employee inventions and works made for hire and are compared with settlements under new rules. I would thereby like to clarify what changes the Outline on Development of the International Jurisdiction Act and the Act on General Rules for the Application of Laws will bring to the treatment of international conflicts over employee inventions and works made for hire.

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