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Research Activity Summary of FY2010

1. Desirable Effect of Patent Rights in Light of the Diversifying Forms of Exercising Rights

   The forms of exercising patent rights have been diversifying in response to the increasing interest in the value of patent rights as property rights. There is also an industrial method in which it is not the monopoly of technology but the use of common technology by many people that promotes the development of the entire industry. Given this situation, skepticism has arisen of the desirable effects of patent rights, in particular, of the exercise of the right to seek an injunction.

   Laws, regulations, and court precedents in other countries were studied with regard to the possibility of the right to seek an injunction being denied in consideration of certain circumstances despite infringement of a patent right being found. As a result, in the United States, many judgments have been found to restrict the right to seek an injunction, while there are a small number of such judgments in China. In the United Kingdom, the right can be restricted under the legal system; however, restrictions have been admitted only in special circumstances. In Germany, there is a judgment that held the possibility that the denial of granting a license will constitute an illegal act under specific circumstances; however, there is no judgment that has restricted the right to seek an injunction. For France, South Korea, and Taiwan, no judgment that restricted the right to seek an injunction was found. In this study, an interview survey was conducted on recognition in Japan, and a committee consisting of intellectuals from industrial and academic circles held discussions.

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2. Quality Management Methods for Trademark Examination Based on Evaluations by Applicants/Agents

   In addition to quality control in individual cases, comprehensive and systematic quality management is also important for promoting efforts to maintain and improve the quality of trademark examination. Therefore, we conducted this study to examine the desirable trademark examination from the standpoint of external users and quality methods to manage it, using surveys on the actual conditions of quality management at overseas intellectual property offices and through hearing and analysis of the opinions and requests of domestic users. We also conducted a questionnaire survey to evaluate the quality of the overall trademark examination, the quality of the trademark examination in individual cases, and quality management methods for trademark examination in Japan, targeting 1,000 applicants and agents in total. In order to understand the questionnaire in greater detail, we conducted an interview survey targeting 20 applicants and agents in total in Japan. According to the results of the survey, more than 80% of users feel that the “quality” of the recent trademark examination procedures by examiners is appropriate. However, we believe that it is necessary to make continued efforts to further improve quality based on the various opinions and requests from applicants and agents. In addition, there have been improvements in expediting the examination in relation to the first action pendency. Expediting reexamination of written opinions or written amendments and maintenance and improvement of the quality of the examination are considered to be tasks for the future.

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3. Protection of Trademarks for Geographical Indications and Geographic Terms

   Since international negotiations led to the conclusion of the TRIPS Agreement, the issue of protecting geographical indications has been a major theme over which Old World countries, mainly the EU, and New World countries, mainly the United States and Australia, disagree in the WTO negotiations. The issue has also been discussed in recent EPA/FTA negotiations.

   In addition, some Asian countries using Chinese characters have legislation that is different from that of Japan, the United States, and European countries, under which registration of a trademark is refused/rescinded if the trademark consists of a “well-known foreign geographic term” even if it is not recognized as indicating the place of origin of the goods. The Trademark System Subcommittee of the Industrial Structure Council is also supposed to consider the requirements for registration of trademarks that include “well-known domestic or foreign geographic terms.”

   In this study, in light of this background, we conducted a questionnaire survey targeting domestic users, an interview survey targeting domestic companies/intellectuals, etc., and questionnaire and interview surveys targeting foreign intellectual property offices with regard to the desirable protection of geographical indications based on the certification trademark system under the Trademark Act in Japan and the desirable protection of well-known domestic and foreign geographic terms under the Trademark Act, and carried out analysis and consideration in light of the survey results at a committee consisting of intellectuals in academic society/judicial circles/industrial circles.

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4. Utilization of Industrial Property Right System for Design-Centered Brand Building and Maintenance in Companies’ Business Strategies

   In a situation where Japan’s competitiveness is sharply falling, the Industrial Structure Vision 2010 was prepared in order to break through the deadlock of the Japanese economy. The Industrial Structure Vision 2010 raised awareness of the issue that the business model of Japanese companies should be converted to succeed in both technology and business. There is a growing recognition that utilization of designs is important in order to win in business.

   On the other hand, it has been pointed out that it is necessary to advance consideration on the strengthening of the protection of key concept designs and the effective application procedures in the case of promoting branding through a combination of multiple designs, in order to achieve design-based brand building and maintenance.

   Therefore, we conducted this study for the purpose of considering the design system, which is effective for design-centered brand building and maintenance in companies’ business strategies through comparison with other countries and other intellectual property right systems. We also aimed to compile the methods of strategically utilizing the design system, etc. and to prepare basic data to be used in considering measures.

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5. A Desirable Registered Search Organization System and Specified Registered Search Organization System

   A system was introduced in 1990 to outsource prior art document searches to designated search organizations (public interest corporations) that have been designated by the JPO Commissioner, and to use the search results for patent examination. However, there were growing concerns that the examination backlog would increase due to such factors as the shortening of the examination request period, an increase in the number of patent filings, and a rise in the examination request rate.

   At present, the bump of examination requests has been resolved. With a decrease in the number of patent filings and examination requests, the number of outsourced searches is shifting from a period of expansion to a period of convergence to a constant volume. Currently, the specified registered search organization system is not being used sufficiently.

   Thus, the author conducted interviews with registered search organizations, private search companies, overseas patent offices, etc. and made a study on desirable systems in the future.

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6. Promotion of Intellectual Property Strategies of Companies

   It has been pointed out that, Japanese companies still overemphasize acquisition of domestic IP rights rather than foreign IP rights compared to companies in major western countries, consequently reducing their international competitiveness through involuntary outflow of technical information overseas. One possible cause is the malfunctioning of Japanese companies' IP strategies. In particular, experts on IP-based business management have indicated that companies may not have been capable of formulating individual IP strategies suiting their own circumstances (internal/external environment) and that the IP division and other divisions within a company may not have been sufficiently coordinated in formulating and implementing IP strategies.

   In this study, with an aim to look into the progress status of promotion of Japanese companies' IP strategies, mainly the coordination between the IP division and other divisions, and to consider the desirable forms of the various measures implemented for further promoting IP strategies, questionnaire and interview surveys were conducted, and the results were deliberated and summarized by the committee established for this study.

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7. Patent Examination Practices Designed to Improve User Convenience

   With the advancement of economic globalization, it is increasingly important to establish a system to grant patents promptly and properly in order to encourage Japanese companies to pursue innovative activities and improve their international competitiveness. The JPO has been promoting international work sharing (Patent Prosecution Highway, etc.) and making various efforts to grant stable, strong patents. These are some of the patent examination practices that the JPO has adopted in order to improve user convenience.

  In this study, surveys were conducted on these patent examination practices with a focus on “the Quality of the JPO’s patent examination,” “the systems to support patent acquisition in foreign countries,” and “the patent examination practices to improve user convenience.” The survey results were analyzed and studied in order to grasp the ways users use various systems and the new needs users latently have and to further improve user convenience.

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8. Application Behavior,etc. of Companies toward Sustainable Economic Growth of Japan

   Intellectual activities have come to play an increasing role and to have more importance in the development of the industry and economy in recent years. Along with that, people have come to recognize the importance of knowledge and environmental improvement in industrializing intellectual property created through intellectual activities. It is very important, in considering future intellectual property policies and measures, to empirically analyze with what intent companies, etc. use the systems to protect intellectual property and what effects they achieve.

   In this study, we conducted eight kinds of empirical analysis in total, specifically, analysis of the influence of changes to the requirements for accelerated examination, analysis of the possession of unused patents, analysis of changes in patent filing strategies, analysis of the meaning of filing foreign applications, analysis of companies’ intellectual property strategies such as the utilization of the information provision system/objection/request for a trial against an examiner’s decision/request for a trial for invalidation, analysis of the trends of filing of patent applications by universities, analysis of the relationships between software companies and ownership of patents, and analysis of the development of panel data on the Survey on Intellectual Property Activities, taking advantage of the Survey on Intellectual Property Activities implemented by the JPO and database such as PATSTAT, while taking into account the study results that have been accumulated so far. In addition, we also considered the review of the design of the Survey on Intellectual Property Activities.

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9. The Enforcement of Patent Rights in Japan
Christoph Rademacher
Transatlantic Technology Law Forum, Stanford Law School, U.S.A.
(Invited Researcher, Institute of Intellectual Property)

   A patent confers on its holder (the patentee) the privilege to exclude a non-authorized party from using the technology protected by the patent. That said, a patent is only valuable if it is enforceable. Germany, Japan and the US have made substantial efforts to develop an efficient system of patent enforcement and are currently the most important and arguably the most advanced jurisdictions when it comes to patent right enforcement. In Japan, the importance of strong patent rights was most notably expressed by former Prime Minister Koizumi in February 2002, when he described Japan as an IP-based nation and initiated the enactment of the IP Basic Law in November 2002, leading, amongst other things, to the creation of the IP High Court in 2005. This report will provide an in-depth examination and analysis of the current state of enforcement-related measures and remedies available to patentees in Japan. It will focus on local and international jurisdiction rules as well as on the key elements of enforcement procedure including the evidence collection process, border measures, warning letters, preliminary injunction proceedings and declaratory judgment actions. Finally, my research will explain requirements for and scope of the remedies available for patent holders, i.e. injunctive relief as well as damages awards.

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10. Enforcement of Patents on the Internet - Challenges, Trends, and Approaches
Agnieszka Kupzok
PhD Candidate, International Max Planck Research School for Competition and Innovation (IMPRS-CI) at the Max Planck
(Invited Researcher, Institute of Intellectual Property)

   This research paper investigates how Japanese patent law responds to the challenges that globally operating companies face when asserting patent rights in Internet-based inventions. It is motivated by the observation of a twofold evolution of the globalized market. On the one hand the new means of communication, facilitated by the Internet, have the potential of dislocating patent infringement away from the national boundaries. On the other hand, the global market, globalized communication and cooperation in business make it more possible for infringers to cooperate across borders and devise ways of exploiting the inventions without falling into the ambit of the respective countries’ laws. Such developments pose challenges to law, and intellectual property law in particular, which is territorial in nature. This research paper aims to first, highlight the legal issues involved, second, discuss existing approaches within the Japanese legal framework, and third, consider potential options in order to provide companies with better, more innovation-conducive industrial policy.

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11. The Roles of the Research Judges of the Japanese Supreme Court in the Intellectual Property Cases
Chaiyos Oranonsiri
Research Justice of the Supreme Court, Thailand
(Invited Researcher, Institute of Intellectual Property)

   Today, the intellectual property cannot be utilized properly to encourage the growth of the Japanese economy. It is because the intellectual property has not yet been appropriately protected. Though the attempt to protect the intellectual property has been succeeded once by the harmonization of the intellectual property laws under TRIPS Agreement, it seems that the intellectual property still needs more protection.

   The harmonization of the law enforcement is expected to be the next step for the protection of the intellectual property. It is well accepted that the Research Judges of the Japanese Supreme Court can play their effective roles in the intellectual property cases to strengthen the intellectual property protection. Nevertheless, it remains a question whether or not their roles will result to the harmonization of the law enforcement in the intellectual property cases. To prove this doubt, the responsibilities of the Research Judges have been scrutinized with the tasks discovered in the current situation of the intellectual property and the jurisdiction of the intellectual property cases in Japan. It is likely that the Research Judges can play their roles to harmonize the law enforcement in the intellectual property cases. To reach this goal, however, some suggestions have been provided.

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12. A Comparative Study of Passing off among of the UK, Japan and China
Li Yan
Associate Professor, Northwest University of Political Science and Law of China
(Invited Researcher, Institute of Intellectual Property)

   Passing off is a tort that the goods of the defendant are falsely represented as the goods of the plaintiff, usually, by using the plaintiff’s indications as means of misrepresentation. Passing off prevention origins from the UK common law. However, in the statute countries such as Japan and China, there are the Unfair Competition Prevention Act in Japan and the Anti-Unfair Competition Act in China. In the two statutes, there are the provisions of passing off which are similar to the law of passing off in the UK. In this research, a comparative study about passing off is made among the UK, Japan and China. Principles of passing off in the three countries have something in common and also have differences. Passing off is regarded as one act of unfair competition in the three countries. By comparing the four aspects of the types of indications, the elements of passing off, legal liability, the relationship between passing off and trade mark law in the three countries, the conclusions have been drawn that the law of passing off in the UK and passing off provisions of the Unfair Competition Prevention Act in Japan are quite similar and satisfy changes of commercial situations. However, the passing off provisions of the Anti-Unfair Competition Act in China seem under development. Suggestions have been made to narrow the gap between the UK, Japan and China.

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13. Overcoming Problems with Use of Arbitration for Intellectual Property Disputes
Kazushige Ogawa
(Research Fellow, Institute of Intellectual Property)

   The purpose of this study is to inquire into what should be done to make arbitration more appealing to parties involved in disputes relating to industrial property as a means to solve their disputes, and promote their use of arbitration. The study also aims to clarify what kinds of capabilities are required of persons engaged in resolving industrial property disputes (e.g. parties' representatives, arbitrators, and arbitral institutions). This report reviews the measures to promote the use of arbitration that have been proposed thus far and identifies the problems with these measures. Through comparison and analysis of the current status and characteristics of the use of arbitration in the field of industrial property arbitration and various other fields, including international commercial arbitration, investment arbitration, and sports arbitration, as well as the results of the questionnaire surveys targeting arbitral institutions, the report further intends to explore and reveal the demands placed upon the dispute resolution system for industrial property disputes and find solutions for the issues that have been designated as the purpose of the study.

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14. Economic Analysis of Synergy Effect of Multilateral Protection by Different Industrial Property Rights
Toshihiro Tsuchihashi
(Research Fellow, Institute of Intellectual Property)

   Trademarks convey information about the quality and function of products to consumers. On the other hand, patents sometimes convey information about products and firms to consumers and the form of utilization of patents as a tool (signal) is actually observed. However, “patent signal” has not been made subject to analysis much in economics. In this study, we take up the situation where one product is protected multilaterally by different industrial property rights (trademark right and patent right), and analyze the effect of utilization of patent signals, in addition to trademarks, on the profits of firms from the perspective of economics. Different factors, such as the brand power of a firm established by a trademark, difference in the degree of a patented invention’s contribution to the quality of products, and difference in industry, are considered to be affecting the effect of multilateral protection of profits of firms. In this study, we classified these factors into three categories, “firm’s characteristics,” “product characteristics,” and “environmental characteristics,” and clarified the mechanism whereby each factor increases the profits of firms from patent signals.

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15. Handling of Software Patents and Trademarks in Open Source Software Licenses
Masayuki Hatta
(Research Fellow, Institute of Intellectual Property)

  Open source software, such as Linux, can be freely used, modified, and re-distributed under an open source license. Its use is becoming widespread in Japan. Software licenses are, in principle, based on a copyright, but in recent years, active movements are taking place toward incorporating clauses concerning patent retaliation and trademarks into them, thereby controlling industrial property rights other than copyrights by using copyrights as leverage. In addition, open source communities, which have tended to avoid software patents, are now aiming to utilize patents strategically by forming patent pools designed for open source and working on open patent licenses, so as to clearly assure free development. Based on the latest research trends and the hearing survey targeting specialists in this field, this study closely examines and compares the details of patent and trademark clauses included in open source licenses, which differ from license to license, and comprehensively reviews how those rights other than copyrights are treated in the context of open source in actual cases, with the objective of finding out how the concept of open source will affect the future software development.

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16. Panel Data Analysis of Patent Infringement Suits: Quantitative Analysis of Changes in the Finding of Infringement, Following the Enforcement of the Act for Establishment of the Intellectual Property High Court
Takahiro Yuzuki
(Research Fellow, Institute of Intellectual Property)

   The patent system operates across almost the entire world, under the respective national law of each country (e.g. in Japan, the Patent Act) and under an international treaty, the Paris Convention for the Protection of Industrial Property. Article 4bis of the Paris Convention sets forth the rule of independence of patents in different countries. This rule should be taken into consideration when conducting analysis because it brings about difference in terms of the conditions for patent lawsuits from country to country, and in particular, disclosure on the data of litigation costs between Japan and the United States. Lanjouw and Lerner (2001) and Lanjouw and Schankerman (2001, 2004) are the preceding empirical studies, focusing on the incentive for filing patent lawsuits in the United States. In these preceding studies, the variable for costs is set as a factor that is known to the parties to the suit beforehand. This is consistent with the litigation procedure in the United States, but it cannot be applied to analysis of the situation in Japan without adjustment. The present study takes note of the fact that the revision to the Patent Act in 2004 has drastically changed the form of proceedings in patent infringement suits. It attempts to make quantitative analysis, focusing particularly on the decision-making behavior of judges when rendering final judgments on patent infringement suits.

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17. Subjective Scope of the Right of Prior Use: Comparative Study of French and Law and Japanese Laws
Tsukasa Aso
(Industrial Property Right Expert Overseas Researcher)

   Today, no one doubts the importance of the system of the right of prior use. To date, the focus of attention has been placed on the issue of the objective scope of the right, leaving the issue of subjective scope unexamined. In Japan, due to its industrial structure, under which the practice of subcontracting is widespread, it is extremely important to determine whether the right of prior use arises for an order-placing party or an order-receiving party, i.e., subcontractor. Once the right of prior use arises, we will have to face the issue of how to interpret the subjective scope of the right. For example, we will have to determine whether an assistant and a subcontractor of the holder of a right of prior use should be included in the subjective scope of the right and whether a distributor who has purchased products from the holder of a right of prior use should be excluded from the scope. Without clarifying these issues, it would be impossible to promote the use of the system of the right of prior use. In this paper, we have examined French law, which is considered to be the origin of the Japanese system of the right of prior use, and made a comparison between the Japanese system and the French system. The insights gained from the French system were used to discuss possible interpretations of the subjective scope of the right of prior use under the Japanese system.

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18. Cross-border Injunctions to Preclude Defendants from Infringing Intellectual Property Rights
Asako Matoba
(Industrial Property Right Expert Overseas Researcher)

   International injunctions can be issued in a legitimate manner in intellectual property right infringement cases. However, there are quite many unsolved problems, such as the geographical scope of an injunction and enforcement thereof, in addition to the issue of international jurisdiction that generally becomes a problem in transnational intellectual property right infringement cases. Whether a court can grant a cross-border injunction is not only related to whether the court has international jurisdiction. However, discussion has been held on the issue of to what extent international jurisdiction is recognized, in determing a demand for a cross-border injunction, particularly in Europe, due to the existence of the Brussels I Regulation and the Lugano Convention, on the premise that judgments rendered by courts whose jurisdiction was based on the provisions set in said Regulation or Convention are relatively easily recognized/enforced in other countries. The situation in the United States is different from the situation in Europe. In this study, we first overviewed the cases in which a cross-border injunction could be sought, and then considered cross-border injunctions by focusing mainly on international jurisdiction and the ways of recognizing/enforcing foreign judgments.

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