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Research Activity Summary of FY2011

 
1. The Exercise of Essential Patents for Standards

   If the holder of a patent that is essential for a standard (“essential patent”) seeks an injunction on the grounds that the patent was infringed, it would make it practically impossible for the companies that have been conducting business in compliance with the standard to continue their business despite the capital investment that they have made so far. The exercise of such right would place those companies in a highly disadvantageous position against the patent holder, negatively affecting the future company management and the diffusion of the standard itself in some cases. In the field of telecommunications, in particular, there have been some pending lawsuits over the issue of whether the holder of an essential patent should be permitted to seek an injunction. In this technical field, there is an urgent need for determining the approach to these cases over essential patents.

   Some people started arguing that the exercise of the right to seek an injunction should be limited in certain cases. Previous research has shown that opinions have been divided over whether such limitations should be imposed or not. In order to explain the current situation in Japan, I will (1) present the results of a study on domestic cases and the results of a domestic questionnaire survey and a domestic interview survey, (2) identify the issues that could arise when the holder of an essential patent seeks an injunction in the field of telecommunications, etc., (3) examine the relationships between patent rights and the competition law (antimonopoly law) in the field of telecommunications, etc., and (4) analyze various issues pertaining to the management of standards bodies.

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2. Desirable Design System toward Accession to the Hague Agreement for the International Registration of Industrial Designs

   With the globalization of the economy, industrial designs created in Japan are actively filed in countries around the world. However, procedures for obtaining a design right cause a heavy burden due to differences in the design systems of countries, and Japanese companies desire the simplification of the procedures and the reduction of expenses.

   With such background, the Japan Patent Office (JPO) is considering acceding to the Geneva Act of the Hague Agreement. Under the Agreement, it is possible to obtain the same effect as that obtained by filing applications with multiple contracting parties by submitting one application to the International Bureau. However, development of the legal system and review of operations are necessary for Japan's accession thereto.

   Given this factor, we conducted this study with the aim of preparing basic materials to be used in considering a desirable design system of Japan in light of the Japan's accession to the Geneva Act of the Hague Agreement, the way by which Japanese applicants can effectively use the international application system in the case where Japan accedes to the Geneva Act of the Hague Agreement, the relationships with the domestic legal system, and effects on the JPO's operations.

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3. Desirable Design System toward Accession to the Locarno Agreement for the International Registration of Industrial Designs

   With the globalization of the economy, Japanese companies have been filing an increasing number of design applications in many countries around the world. Since the design system differs from one country to another, it is very burdensome for applicants to obtain design rights. Japanese companies are hoping for simpler application procedures and lower application costs.

   Against this background, the Japan Patent Office (JPO) is considering the possibility of accession to the Geneva Act of the Hague Agreement. The JPO also needs to consider the possibility of accession to the Locarno Agreement concerning an international design classification system that has been adopted by many countries. If prior design searches are conducted by use of the international design classification instead of the Japanese design classification, searches would become more burdensome because it would not be possible to accurately narrow down search results due to the lack of a detailed classification scheme.

   The purpose of this research is to discuss the pros and cons of Japan’s accession to the Locarno Agreement. Furthermore, in preparation of Japan’s official adoption of the international design classification, this research determines what means, method, etc., of classification implementation should be taken in order to enable Japanese users and JPO design examiners to use the classification in an effective manner. This research also aims to propose the measures that Japan should take upon and after its accession to the Locarno Agreement.

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4. Amendment that Changes a Special Technical Feature of an Invention and Requirements of Unity of Invention

   The Act for Partial Revision of the Design Act, etc. was put into force on April 1, 2007. Thereby, Article 17-2(4) of the Patent Act has come to prohibit applicants from making an amendment that changes the invention mentioned in the claims which has been examined into an invention that technically differs from said invention after receiving a notice of reasons for refusal.

   In addition, the Examination Guidelines for Patent and Utility Model were revised in March 2007 in order to respond to the revised Act of 2006.

   However, users point out that the practice concerning "amendment that changes a special technical feature of an invention" and the "requirements of unity of invention" is excessively rigid. In addition, there are requests for consideration of revision of the Examination Guidelines from the perspective of international harmonization.

   Given this factor, we conducted this study with the aim of preparing basic materials to be used in considering revision of the Examination Guidelines concerning amendment that changes a special technical feature of an invention and the requirements of unity of invention as well as the practice thereof by studying and analyzing the past practice of the Examination Guidelines concerning "amendment that changes a special technical feature of an invention" and the "requirements of unity of invention," and similar examination standards and the practice thereof in major countries.

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5. Desirable Operations of Patent Microorganism Depositary Institutions

  Where a person files a patent application for an invention pertaining to a microorganism in Japan, he/she must deposit the microorganism in a depositary institution except when the microorganism is easily obtainable.

   Thus, the Budapest Treaty imposes the obligation of secrecy on international depositary authorities (IDAs) in order to protect the secrets of inventions of microorganisms as claimed in patent applications. On the other hand, institutions engaging in deposit operations are required to improve the efficiency of the operations with the aim of continuing stable operations and enhancing convenience for system users.

  Given this factor, we conducted surveys on the status of securing the fulfillment of the obligation of secrecy at microorganism culture collections in Japan and abroad, specific methods for concurrent engagement in different operations and sharing of equipment, backup and safety management of deposited microorganisms, methods of furnishing operations, etc., and examined desirable implementation of operations to run patent microorganism depositary institutions in a stable and efficient manner.

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6. Design System Corresponding to Design Protection in the Digital Society

  The functions of individual products have become uniform in specific fields in recent years, and it has become more difficult to differentiate products based only on the technologies of the products. Consequently, it has become increasingly important to differentiate products based on sophisticated designs and user-friendly GUIs.

   In addition, it has been pointed out that applicants suffer a procedural and cost burden for obtaining rights as it is necessary to file applications and obtain rights for individual articles in order to enjoy protection under the current Design Act. In particular, for electronic devices, there is an increasing number of cases where a common GUI has been adopted for electronic devices of different kinds in order to enhance user convenience. Therefore, it is necessary to consider the propriety of introducing a protection mechanism whereby the right obtained by filing one application extends to multiple articles.

   Given this factor, we conducted this study with the aim of studying and analyzing changes in the actual conditions of development of designs, mainly screen designs, and the need for design protection in light of the perspective of international harmonization and international competitiveness, to prepare the basic materials to be used in considering the design system to protect and promote design creation activities in the digital society.

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7. The Protection of Certification Marks under the Trademark Act

  In this research, I examined the certification and verification business practices of certification bodies, the use of certification marks or verification marks that are affixed to goods, etc., certified or verified by certification bodies (hereinafter referred to as the “certification marks”, and the protection of certification marks under the current Trademark Act. I conducted a domestic questionnaire survey on certification bodies and organizations, member companies of the Japan Intellectual Property Association, and patent firms. I also conducted a domestic interview survey on certification bodies and organizations, companies, and persons with relevant knowledge and experience. Furthermore, I conducted a domestic and overseas literature study in order to collect information on other countries’ systems. At a committee consisting of certification bodies, companies, and persons with relevant knowledge and experience, presentations were made on the following topics: the results of the questionnaire survey, the interview survey, and the domestic and overseas literature study, the use of certification marks, the certification methods, etc., and the certification and verification business practices. Based on the information presented at the meeting, I identified legal issues pertaining to the protection of certification marks that would arise upon introduction of a certification trademark system.

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8. “Actual State of Transactions” that are Taken into Consideration in Litigation Annulling of JPO Trial Decision on Trademark

   A judgment of trademark similarity or dissimilarity is made in a general and comprehensive manner by taking “actual state of transactions” and other factors into consideration in addition to the conventional three factors, i.e., appearance, pronunciation, and concept of the trademark.

   In some cases, however, a JPO trial decision was revoked by a court due to a discrepancy in the result of proceedings between a JPO trial and a court trial (a lawsuit to seek revocation of a JPO trial decision). Such discrepancy is attributable to the differences in the way “actual state of transactions” are taken into consideration. Consequently, demandants of a trial are concerned that the predictability of a JPO trial decision has decreased.

   Against this background, we conducted research on the following four points: (1) the current way of taking “actual state of transactions” into consideration in the process of making a JPO trial decision or a court judgment (research on JPO trial decisions and court judgments), (2) the way of taking “actual state of transactions” into consideration in the course of proceedings and the future approach, etc. (domestic interview survey on experts), (3) the way of taking various factors into consideration, such as the manners of transactions, traders, and consumers (interview survey on industry groups), and (4) the way in which overseas IP offices or courts take “actual state of transactions” and other factors into consideration (overseas survey). The results of this research are examined from the following three perspectives: (1) the actual state of transactions that are currently taken into consideration in the process of making JPO trial decisions and court judgments, (2) the difference between industries in terms of the manners of transactions, etc. and (3) the future approach to “actual state of transactions” that should be taken into consideration in the process of assessing trademark similarity or dissimilarity, etc.

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9. Licensing of Intellectual Property Rights and Trade Secret Management in Connection with Japanese Companies’ Expansion to Emerging Countries

   To enhance Japan’s international competitiveness, it is vital to bring emerging countries’ growing markets into the Japanese economic bloc. To that end, it is essential for Japanese companies to expand their presence in such emerging countries with a sufficient understanding of the legal systems and commercial practices therein. Particularly, in emerging countries, intellectual property systems and their operation are undeveloped in comparison to Japan. Accordingly, issues remain, such that information on the actual conditions of the operation of intellectual property license agreements and trade secret protection, which is essential for business expansion, is unclear, and there are concerns about institutional and practical restrictions. Yet, the present situation does not allow for the easy obtaining of sufficient and accurate information. Taking this situation into account, in this research study, the actual conditions of and developments in the regulations on the intellectual property license agreements and trade secret protection in emerging countries as well as the matters to be noted in relation thereto were researched, organized and analyzed, and further studies were made to find the appropriate response in practice. Specifically, domestic questionnaire surveys, domestic interview surveys, overseas interview surveys, as well as domestic and overseas surveys on literature including judicial precedents were performed and studies were made by a committee based on the results thereof.

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10. The Protection of Unregistered Technologies and Brands

   <1> Japanese companies are expected to actively export infrastructures such as stable electricity grids and high speed railway networks. To ensure their competitiveness in such exports, it has become increasingly important for them to keep their own technologies confidential and prevent local companies from copying them, and to protect and enhance the unique technologies which are based on Japanese identities and cannot be copied by local companies. Against this background, studies were made on major countries with respect to systems for keeping unregistered technologies a trade secret.

   <2> The provisions of the Paris Convention refuse the registration and prohibit the use, as trademarks, of official signs and hallmarks, etc. indicating control and warranty which are adopted by the countries of the Union and have been notified to the World Intellectual Property Organization (WIPO). However, there are issues regarding this notification, such that information on domestic needs, operations in foreign countries, and provisions of protection of foreign countries remain disorganized. Accordingly, research, organization and analysis were made on the actual conditions of the domestic needs and the system of protection in foreign countries for official signs and hallmarks, etc.

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11. Quality Control (Management) of Operations Peripheral to Formality Examination and Other Operations

  With the advancing globalization of corporate activities, it has become necessary to obtain and exploit intellectual property rights in many countries in recent years. Along with this, diversified right protection systems have been established on a global basis. Consequently, the competitive age has begun in which system users choose intellectual property offices in the world in consideration of services provided and quality.

   Some intellectual property offices in other countries, including Europe and the United States, are promoting improvement of services, for example, by obtaining a qualification for an international-standard quality management system (ISO9001) and making active efforts to maintain and improve the quality of the overall procedures, including substantive examination.

  On the other hand, the Japan Patent Office (JPO) has just started efforts for the quality control (management) of operations, and there is a high need for further quality improvement.

  Against such backdrop, we gained an understanding of the need for quality control (management) on the user side, conducted broad surveys on systems, rules, implementation frameworks, status of efforts, etc. concerning quality control (management) of formality and substantive examinations at major intellectual property offices in other countries, and conducted study through analysis and examination of the survey results.

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12. FY2011 Analysis of Trends in Applications for Industrial Property Rights Aimed at Achieving New Growth in the Japanese Economy

   Attention is increasingly being paid to the role that intellectual creation activities can play in achieving new economic growth in Japan, and expectations regarding this role are growing. Accordingly, research and discussions concerning an intellectual property system that will elicit this new economic growth are flourishing. Amidst this situation, in considering future policies and measures relating to intellectual property, it is extremely important to empirically analyze the intentions of companies and other organizations both within Japan and overseas when using systems for the protection of intellectual property, as well as examining the effects that are being obtained from this.

   This study incorporated the research outcomes accumulated to date, while also making use of the Survey on Intellectual Property-Related Activities conducted by the Japan Patent Office and databases such as PATSTAT and a Chinese patent database. A total of seven empirical analyses were carried out: “Statistical Analysis of Patent Applications by Japanese Applicants”; “Statistical Analysis of Design Registration Applications by Japanese Applicants”; “An Analysis of the Intellectual Property Strategies of Start-up Companies”; “Mechanisms that Cause Backlogs in Patent Examination and Determinants of Examination Efficiency”; “A Statistical Analysis of Patent Applications in the East Asia Region (Excluding Japan)”; “A Statistical Analysis of Unused Patents and Company Profitability”; and “An Empirical Analysis of the Ownership Structure of the Research Output of Universities and Small and Medium-sized Enterprises”. Moreover, deliberations were conducted regarding the revision of the survey design of the Survey on Intellectual Property-Related Activities.

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13. Multi-Licensing Model (Open and Closed Source) and Software Protection: Revisiting the Proposed Sui Generis Software Protection Models
Vikrant Narayan Vasudeva
Doctoral Scholar, Indian Law Institute, India
(Invited Researcher, Institute of Intellectual Property)
 

   There has been extensive discussion on the mode of intellectual property protection for software – copyright, patent, or sui generis. The sui generis approach essentially emphasize on attaining a balance between the rights granted by copyright and patent. Eventually, computer programs per se are protected by copyright, whereas technical applications of computer software are protected by patent law. The open source software licensing structure has emerged as a novel outlook towards copyright and patent law. The multi-licensing scheme utilized by certain corporate entities involving licensing of software under two structures- one of which is open source and the other “closed” source/“proprietary” has developed relatively recently. Studying the manner in which this multi-licensing scheme is applied reveals similarity to the suggestions made by the various sui generis models for software protection. Perhaps this is an indication of and validation that the software industry has evolved to such an extent that there needs to be a rethink of the current methods of software protection and how a better model could be developed.

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14. Computer-Implemented Inventions as Patentable Subject Matter
Pessi Juho Antti Honkasalo
PhD student, Faculty of Law University of Surrey, UK
(Invited Researcher, Institute of Intellectual Property)
 

   In the past fifty odd years, software development has shown steady growth. It is now generally accepted that computer programs can attract patent protection, but examination of software inventions is difficult. Questions lacking a simple answer include, but are not limited to, when a contrivance that is implemented on the computer constitutes a patentable invention, when such subject matter can be deemed to be novel, what can be regarded as an inventive step in case of software and what is the eventual scope of the protection conferred by patent claims that are realised by a computer program.

   This research addresses issues mentioned above by reviewing laws, examination guidelines and judicial precedents in the light of technically literate commentary. The territorial scope of the research encompasses the patent laws of Japan and Europe, both of which have been subject to international harmonisation in the form of multilateral agreements and treaties. Through the methods of doctrinal and comparative research, this study contemplates Japanese and European practices in this field and endeavours to analyse whether there are lessons to be learnt from the other jurisdiction. The Report concludes with a list of intra- and extra-systemic implications that need to be discussed or solved in the future.

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15. Judicial Protection of Intellectual Property Rights Rendered in Foreign Forum: A Japanese Perspective
Natthapol Chullakesa
Presiding Judge, The Central Intellectual Property and International Trade Court, Bangkok, Thailand
(Invited Researcher, Institute of Intellectual Property)
 

  The application of the rules of conflict of laws on the stage of recognition and enforcement of foreign judgments to international civil litigation has dramatically increased than ever before. Some recommendations have been made to the need for legislation in any particular area such as a uniform law of judgments dealing with foreign intellectual property rights as one of the most frequently issues for those right owners is whether their rights obtained by the court in one forum can be recognized or enforced in another forum where the judgment debtor has assets. In Japan, foreign judgments can be recognized and enforced under domestic statutory provisions which do not create special rules for judgments related to foreign intellectual property rights. The recognition and enforcement of foreign judgments in Japan has also been limited to a judgment rendered by the court in the state where a mutual guarantee exists with Japan. This research will examine the policies underlying the principles of recognition and enforcement at common law which is widely applied in many countries then examine the mechanisms for foreign judgments to be recognized and enforced in Japan. The research has demonstrated that the restriction on recognition and enforcement of non-reciprocity judgments in Japan need to be considerably reviewed in order to achieve the objective of recognition and enforcement and to make an effective international protection of intellectual property rights.

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16. The “Novelty” Requirements for Gene and Genetically-Modified Organisms Inventions and the Potential Benefits of a Peer-to-Patent System
Thomas Margoni
Post-Doctoral Fellow, Assistant professor, Faculty of Law, University of Western Ontario, Canada
(Invited Researcher, Institute of Intellectual Property)
 

   The paper focuses on the patentability requirements applicable to the case of biotechnological inventions (gene patents and other genetically modified organisms). The paper takes a comparative standpoint and analyzes North-american, European, and Japanese landscapes. Attention will be also paid to the internal guidelines followed by the relevant Patent Offices, and their examiners. Particular attention will be paid to the “novelty” requirement, and it will be analyzed also under the more pragmatic aspect of the prior art searches that relies on public and community participation. The Peer-to-Patent system will be presented in its fundamental traits in order to identify its potentially beneficial outcomes in terms of quality and efficiency of the patent granting system.

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17. Trademark Act and Consumer Protection with a Focus on a Comparative Study of the Sign Systems in Japan, China, and South Korea
Risa Ide
(Research Fellow, Institute of Intellectual Property)

   Trademarks are designed to convey information on the source, quality, characteristics, etc., of goods or services (hereinafter referred to as “Goods, etc.”) provided by companies. Other signs indicating the quality and characteristics of Goods, etc., such as the place of origin, ingredients, etc., have been established based on systems and legal provisions that are independent and different from those for trademarks. If both a sign and trademark are affixed to the same goods, or when a sign is incorporated into a trademark as a component, it could cause information asymmetry. We need to start with conducting studies and research on these situations. The issue that requires urgent attention is that the lack of coordination among the current sign systems including the Trademark Act in conveying similar information makes it difficult to meet the needs of companies and consumers. A similar issue exists not only in Japan but also in China and South Korea. In particular, the difference between the trademark system and other sign systems in terms of the theoretical grounds for granting rights has made the trademark system vulnerable. In this research, various cases are analyzed based on the results of an international comparative study. Based on the analysis results, the author proposes a new approach (the theory on the function of dynamic factors from the perspective of information incompleteness on the side of consumers) and tries to give suggestions as to how the Japanese sign systems should be revised, while taking note of the universality of the issue addressed in this report.

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18. The Impact of Revisions of the Patent System on Innovation in the Pharmaceutical Industry
Kenta Kosaka
(Research Fellow, Institute of Intellectual Property)

   In the pharmaceutical industry, the development of new drugs not only requires a great deal of time and money, but also has a low success rate. At the same time, it does not cost as much to copy a new drug as to develop one. Consequently, the patent system is extremely important in securing incentives for the development of new drugs in the pharmaceutical industry. The objective of this study is to examine in empirical terms the impact that revisions of the patent system have on innovation by companies in the pharmaceutical industry, in which the patent system is so exceedingly important. More specifically, using corporate financial data and patent data, this paper quantitatively evaluates whether the introduction of substance patent system in Japan in 1976 increased research and development expenditure and invention activities leading to the acquisition of substance patents at Japanese pharmaceutical companies. From the investigation of this topic, it emerged that there has been an increase in both research and development expenditure and the number of substance patents at Japanese pharmaceutical companies as a result of the introduction of the substance patent system in Japan in 1976. Accordingly, one can say that the strengthening of patent rights in the form of the introduction of substance patent system has encouraged innovation in the pharmaceutical industry.

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19. Comparative Study on the Basis of the Prior User Right (Focusing on Common Law)
Takeo Masashi
(Research Fellow, Institute of Intellectual Property)

   Suppose A had filed a patent application for an invention, but, prior to A’s filing, the other B had made the same invention independently and has been making and selling a product embodying such invention. In this case, could A be granted a patent? Or, would A’s patent be found invalid? If A is to be granted a valid patent, would B be allowed to continue making and selling the product even after a patent has been granted to A? The Japanese Patent Act [JPA] provides the following solutions to this question: (i) in cases where A’s invention lacks novelty due to B’s making and selling (Article 29 paragraph (1) of JPA), A cannot be granted a patent, and B will be able to continue making and selling the product, (ii) in cases where A’s invention is still new, A will be granted a patent, but, nevertheless, B will be allowed to continue making and selling pursuant to and to the extent of prior user right (Article 79 of JPA). But these solutions are, from a historical and comparative perspective, not exclusive ones. For example, the “classical” UK Patent Law prior to 1977 and US Patent Law prior to reform in 2011 have provided different solutions from those of Japan. The purpose of this study is to investigate why they have adopted different solutions in adjusting the conflict between patentee and prior user and, thereby, to clarify the characteristic of the prior user right of JPA.

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20. Relationship between the Law Applicable to Infringements of Intellectual Property Rights and the Law Applicable to Torts
Yusuke Tanemura
(Research Fellow, Institute of Intellectual Property)

   When an infringement of an intellectual property right is characterized as a tort, it shall be governed by the law applicable to torts. The Act on General Rules for Application of Laws of Japan determines the law applicable to torts flexibly, though characterization of legal relationships and flexible connecting factor. Thus, what should we take into consideration when applying such a rule on the choice of the law in tort under said Act? In particular, how should we deal with this issue in relation to the principle of territoriality, which is said to be dominant over intellectual property rights in general, as well as the influence of this principle on the rule of conflict of laws? From this standpoint, this study examines how the flexible choice of the law applicable to torts changes the treatment of infringements of intellectual property rights, while focusing on the developments in arguments in common law countries, especially in England.

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21. Article 103 of the Patent Act and Duty of Care under Liability Law-Review of Provisions on Presumption of Negligence under Industrial Property Right Law-
Miyuki Tsuyuki
(Research Fellow, Institute of Intellectual Property)

   The purpose of this study is to discover problems included in Article 103 of the Patent Act in modern society and the ideal obligation of patent search through study of the legislative history, the meaning of legislation, and actual operation of the provisions on presumption of negligence in Article 103 of the Patent Act. This study is unique in the following three points. First, this study found that the source book on which Article 103 of the Patent Act is based is Section 59, subsection (1) of the Patents Act 1949 of the United Kingdom, and drew a conclusion that the content of negligence required under Article 103 of the Patent Act is the obligation to avoid damages as the objective duty of care, that is, "having exercised due care so as not to work another person's patented invention," and that Article 103 of the Patent Act also has the effect of playing a role as a code of conduct on avoidance of damages for persons who work an invention. Secondly, based on discussions at the Industrial Property Right System Reform Study Council and the opinions of persons who were involved in the legislation of Article 103 of the Patent Act, this study found that Article 103 of the Patent Act was intended to design a system in which expert opinions, bulletins, and Article 103 of the Patent Act operate as a trinity, and drew a conclusion that bulletins and expert opinions play an important role in the proof of negligence in actual lawsuits. Thirdly, this study saw the closeness of the role of experts' views (expert opinion) concerning negligence in the United States, Germany and Japan through comparison of court precedents and theories in the three countries, which have different systems for remedy for patent infringement, and found certain suggestions concerning the use of expert opinions in patent search practice.

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22. Industrial Property Rights Policy in Modern Japan: An Analysis of the Political Process Involving Japan, the UK and the USA in Relation to Membership of the Paris Convention
Satoshi Tsuruoka
(Research Fellow, Institute of Intellectual Property)

   It has been said that after the process of Westernization began during the Meiji period, Japan aimed to swiftly achieve modernization, and its proactive introduction of superior Western science and technology promoted domestic industrial development. However, little attention has been paid to how Japan subsequently sought to promote domestic industrial development and establish business overseas. In particular, with its accession to the Paris Convention in 1899, Japan began to participate in international competition in earnest, but for the most part, the detailed sequence of events leading up to this has still not been clarified. Accordingly, through the political process surrounding Japan's accession to the Paris Convention, this study seeks to clarify how modern Japan sought to promote domestic industrial development and the establishment of business overseas, amidst an international community in which intense competition was unfolding, thereby providing a model case for reference when formulating industrial property rights systems in the future. In this research, there will be a particular focus on diplomatic negotiations between Japan and the UK, and diplomatic correspondence from the UK will be used as an additional reference for the first time.

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23. Extension of the Concept of Confusion under US Trademark Law
Takahiro Kojima
(Industrial Property Right Expert Overseas Researcher)

   Along with the recent growth in property value attached to trademarks, as well as the advancement in Internet technology, trademarks are now being used in ways never seen before. Due to such changes, the traditional framework of trademark law—preventing confusion at the time of purchase of goods by protecting trademarks' function to identify the source of origin of goods—is being shaken. One example of this trend is the emergence of a view that trademark infringement should be found on the grounds of confusion that is created among consumers or the general public before or after the time of purchase of goods. This study first reviews the history of the extension of the traditional concept of “likelihood of confusion,” and then analyzes in detail the issue of time-related extension of the concept of confusion, which now includes “post-sale confusion” and “initial interest confusion.” In this analysis, reference is made to the US trademark law, under which this issue has already been discussed by courts and scholars. In the end, the study concludes that although the extension of the concept of confusion should be approved in some cases, it is impermissible to extend the concept and ultimately extend the scope of protection to a level that cannot be justified in light of the purpose and role of trademark law.

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