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Research Activity Summary of FY2014

1. Actual Conditions of Graphic Design Development Methods

   In recent years, due to rapid progress in IT introduction and digitization as well as media diversification, the importance of graphic designs has grown dramatically higher than ever.. Under such circumstances, graphic design development methods are likely to have changed drastically. In January, 2014, the Design System Subcommittee, Intellectual Property Committee, Industrial Structure Council pointed out, as review of the development of operational infrastructure that supports the design system, the need to indicate the examination standards on graphic designs more clearly and the need for the Japan Patent Office (JPO) to provide necessary information for enabling business operators to determine whether or not clearance searches must be conducted. In particular, since determination of creative difficulty is carried out on the basis of a person ordinarily skilled in the art of the design, it is necessary to reveal the actual conditions of graphic design development in order to make clearer the standard for determining the creative difficulty of graphic designs in the Design Examination Standards. Based on the above, this research was conducted to investigate the latest graphic design development methods or the like and to collect basic information so as to study how the Design Examination Standards can be revised to make them clearer and better suited to the latest conditions of design development.

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2. System of Publication of Application

   While more than 40 years have passed since the introduction of the system for laying open of application into Japan in 1970, the circumstances surrounding Japan over intellectual property system have been changing such as the significantly shortened period after the request for examination of an application until the first action (FA) and the rise of developing countries in the field of intellectual property along with the globalization of markets. Whereas some Japanese companies select their competitiveness maintaining strategy with keeping secret their developed technologies, such concerns are also pointed out that technical information is diffused via patent publications, resulting into imitations or the like. Given such circumstances, it becomes necessary to reconsider the significance of the system of publication of application from the perspective of what role this system should play in the context of the Patent Act, the purpose of which is to contribute to the development of industry, so that Japan will be able to maintain its industrial competitiveness even though Japanese companies or the like are facing with severe competition. Therefore, this research was conducted aiming to prepare materials for reconsidering the significance of the existing system of publication of application in Japan through survey of the systems of publication of application and related systems in Japan and other counties as well as discussions with experts.

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3. Actual State of Awards Programs for Promoting Innovation

   In order to promote innovation in Japan, it is necessary to increase the motivation of engineers and researchers, and to this end, as one of incentives, programs and schemes for giving them awards play an important role. While, in Japan, various awards programs are operated under the sponsorship of the national or local governments, incorporated foundations or associations, mass media, and other entities (hereinafter referred to as “hosts”) and companies, there is a call for a review of various awards programs from the viewpoints of securing incentives for engineers or the like, and, at the same time, enhancing companies’ innovations. Under such background, this research was conducted, aiming to compile basic materials for consideration of desirable awards programs for the future, by surveying the actual state of awards programs operated by hosts and enterprises, and carrying out interviews with experts based on survey results.

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4. The System for Registration of Extension of the Duration of Patent Rights of Pharmaceuticals or the like and the Appropriate Operation Thereof

   In Japan, there is the system to register for an extension of the duration of a patent right, in which the duration of a patent right may be extended by an application for the registration of extension and according to the Examination Guidelines for Patent and Utility Model in Japan, the examinations of applications for the registration of extension have been carried out. However, on May 30, 2014, the Grand Panel of the Intellectual Property High Court rendered the opinion with respect to the interpretation in the current Examination Guidelines. While this judgment has not become final and binding, the current operation of the system to register for an extension of the duration of a patent right is called into question. The state of approvals and licenses based on the provisions of laws enacted for the purpose of securing safety or the like, which is the ground of the extension, is affected by the globalization of businesses and the complications and advancements of technology. Considering the intensified race to develop novel pharmaceuticals with expanding development of new forms or new dosages and means of administration, and emerging of regenerative medical products, this research was conducted aiming to prepare such basic materials that contribute in studying the system to register an extension of the duration and the appropriate operation thereof in the future, such as the Japanese users' evaluation on the current system and the operation thereof as well as the survey of similar systems in foreign countries and the status and actual circumstances of the operation thereof.

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5. Dispute Resolution Practices Concerning Patent Rights or the like

   Regarding the practice of solving disputes over patent rights, utility model rights, and design rights (the “patent right or the like") in Japan, there is data indicating that the number of intellectual property related lawsuits including patent infringement lawsuits in Japan is significantly lower than the number of such lawsuits in other countries and that the win rate of the patentees in patent infringement lawsuits is low in Japan in comparison with other countries. Some people have pointed out that these circumstances make the Japanese intellectual property systems difficult to use. There are various views regarding how Japanese companies solve disputes over patent rights or the like. However, no one has necessarily captured the overall picture of cases where the parties concerned solved the dispute without filing a lawsuit or where the parties concerned reached a settlement during a lawsuit. This research was conducted aiming to prepare basic materials for consideration of desirable ways of dispute resolution of patent right or the like for the future, by surveying the overall flow of actions taken by Japanese companies or the like starting from the time of occurrence of a dispute concerning a patent right or the like until the time of resolution thereof and thereby clarifying actual state of how such disputes have been resolved.

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6. Use of Standards Development Documents in Patent Examinations

  In the process of formulating a technical standard, in addition to already formulated standards, various technical documents are submitted, such as draft standards subject to adoption and standard proposal documents (contributions) submitted by participants in standards development (hereinafter collectively referred to as “standards development documents”). Appropriate use of these documents as prior art documents in patent examinations is considered to contribute to maintaining and improving the quality of patent examinations. However, for many of standards development documents, it is not easy to determine the nature of prior art whether it is publicly known prior art or known to the public through publication. Therefore, the purpose of this research is to obtain suggestions concerning the use of standards development documents in patent examinations, and guidelines concerning the future policy for organizing such documents as examination materials, and more specifically to collect information about the document management policies of standards developing/setting organizations in Japan and abroad and the handling of standards development documents at overseas intellectual property offices and thereby deliberating about the use of standards development documents in patent examinations through discussions at a committee of experts.

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7. An Empirical Study of Pharmaceutical Patent Harmonization
Benjamin Piwei LIU
Assistant Professor, The John Marshall Law School
(Invited Researcher, Institute of Intellectual Property)

  How harmonized is patent protection today? Despite the long history of the harmonization process and the central role of pharmaceutical patent protection within the debate, we currently face a paucity of empirical studies measuring the degree of convergence or divergence among the actual patents issued by major patent offices and nothing on the subject of pharmaceutical patents. This empirical study begins filling this gap by comparing the patents issued by the United States Patent and Trademark Office (USPTO), the Japanese Patent Office (JPO), and the State Intellectual Property Office of China (SIPO) to the same pharmaceutical invention. Thus this is the first study that examines the de facto level of harmonization among the three countries that boast the three largest pharmaceutical markets as well as the three largest patent offices. Surprisingly, considerable differences exist between the USPTO and JPO despite ongoing harmonization efforts. In contrast, the JPO grants slightly more patents and claim than SIPO but the results are generally comparable in the absence of extensive harmonization effort. This suggests that the current harmonization effort may have overestimated the extent of difference in some instances while overlooking conditions that contribute to significant divergence in other instances.

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8. Three Dimensional Shapes: Issues of IP and Competition Policy - Comparative Comments on the Japanese System of Trademark Protection
Apostolos CHRONOPOULOS
Research Assistant and Teaching Associate, Centre for Commercial Law Studies – Queen Mary University of London
(Invited Researcher, Institute of Intellectual Property)

   The recognition of three-dimensional signs as a subject matter eligible for trademark protection gave rise to a large array of legal problems.
   Some of these legal problems may be addressed by adjusting the threshold of protection. Tightening the requirements for protection would serve the purpose of ensuring that the grant of an exclusive right in a product shape would yield substantial pre-competitive benefits by allowing consumers to ascertain a product’s commercial source on the basis of its design. Lowering the threshold of protection would make sense as it potentially provides traders with protection for business strategies based on three-dimensional trademarks. Consumers may also be better off with the latter option if such an expansion of trademark rights generates benefits that are associated with more dynamic forms of competition with differentiated products.
   However, trademark laws rely primarily on the doctrine of functionality to address the concerns regarding the anticompetitive potential of trademark protection.
   With regard to the functionality doctrine, the ultimate objective is to identify the cases where trademark protection for product shapes has to be denied categorically because it runs contrary to the policy considerations underpinning the grant of utility/design patents or because it adversely affects competition.

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9. A Study on Joint Infringement of Network-related Patent – Focused on the Comparisons of the Cases and Theory in Korea, Japan and United States
JEON, SeongTae
Associate Research Fellow, Korea Institute of Intellectual Property
(Invited Researcher, Institute of Intellectual Property)

   Patent infringement is established only if a single entity is subjected to any component of the claim. However since the patent infringement by multiple entities is caused by the carrying out of some elements of the claims by multiple entities, there arises a problem which were the directly infringed cannot be specified. Therefore patent infringement by multiple entities has the limitation that indirect infringement or general tort liability on existing patent law is hard to regulate. Also, recently patent infringement cases are caused by multiple entities especially in Japan and the US. Neglecting patent infringement through divided implementation by multiple entities could weaken patent protection and reduce the meaning of the Patent Law. In other words, a patentee will obtain the unenforceable and useless right though acquired a patent. Therefore, in order to investigate the recognition methodology for patent infringement by multiple entities, the recent cases and theory in Japan and the US were compared and weighed in this report. Through this, analytics and methodology which can recognize the infringement by multiple entities were found. Especially it was drawn that indirect copyright infringement related jurisprudence (control/management and benefit) is appropriate to be applied in patent law.

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10. After Myriad: The Comparative Study on Biotechnology Patent Practice
WU, Chia-Ying
Senior Patent Examiner & Section Chief, Taiwan Intellectual Property Office
(Invited Researcher, Institute of Intellectual Property)

   The substance of the patent system is to protect innovation and facilitate the development of industries. Since the start of the Human Genome Project, Patent Offices in the U.S., Japan, and Europe have held many discussions concerning the patentability of DNA sequences. Most Patent Offices have adopted similar standards for judging the examination of practices related to DNA. In 2013, the U.S Supreme Court rendered a decision in the Myriad Case that DNA isolated from nature is a product of nature and thus unpatentable subject matter. This caused a significant change in patent practices. The USPTO revised examination standards twice in March and December 2014 and the amendment drafts caused a great deal of discussion throughout the world. This report discusses the impact of the Myriad Case in the U.S. on examination practices for claims for substances, analyzes the criteria for patent eligibility in Europe, Japan, and Taiwan, and proposes a substitute structure that can be established in order to balance the patent system and public health.

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11. Comparative Study on Judgment Rules of Patent Infringement in China and Japan
ZHANG, Xiaojin
Chief Judge, Beijing Intellectual Property Court, Trial Division No.2
(Invited Researcher, Institute of Intellectual Property)

   The Supreme Court of P.R.C issued the Judicial Interpretation on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases in 2009, which is the important guidance for Chinese judges in patent cases hearing, but arguments of patent infringement judgment still exist, especially in specific cases. Japanese judicial system is similar to that of China, which belongs to continental legal system. Japan has set up the Intellectual Property High Court of Tokyo since 2005, while China has just established the three IP Courts in November and December of 2014.Through comparative study on judgment rules concerning patent infringement and some running system in IP Courts in China and Japan, the report first gets the whole picture of the judgment rules, relevant judicial precedents and special running system of IP Courts in the two countries. Then the similarities and differences between those of the two judicial systems will be analyzed. Based on above basic study, the advantages and disadvantages of different judgment rules will be analyzed, including the doctrine of literal infringement, the doctrine of equivalents, indirect infringement, the theory of dedication, prosecution history estoppel, etc. In the end, the report will discuss the possibility of borrowing Japanese experience in Chinese judicial practice, the possibility of borrowing relevant running system in IP Courts in China, in order to keep the balance of protecting the rights of patentees and the interests of the public.

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12. Desirable IP Litigation in Japan - from the Viewpoint of Expert Testimony about Foreign Law
Yuko KUSAMA
(Research Fellow, Institute of Intellectual Property)

   When an international IP dispute occurs in Japan, foreign law is established to solve the dispute in some cases, although it is difficult to conduct research on foreign law. Due to the lack of an effective foreign law research method on the part of the court, a litigant needs to prove the content of foreign law. Such judicial practice could cause a bias to the content of foreign law, which should be established as a norm. This practice adopted by the Japanese courts handling international litigation is one of the factors that have contributed to creating the situation where Japanese companies that hold IP rights have to be prepared for the risk of having to initiate litigation in foreign countries.
   In this study, in order to find a solution to improve the current situation, I examined the possibility for Japanese courts to use the expert testimony system to establish foreign law from the viewpoint of private international law and evaluated the possible effects of the foreign law expert testimony systems in other countries on the Japanese courts' way of solving international IP disputes. The ultimate purpose of this study is to promote Japanese companies' active use of Japanese courts from a long-term perspective.

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13. A Study on Strategic Use of the Patent System and Its Effects on R&D
Takamasa SUZUKI
(Research Fellow, Institute of Intellectual Property)

   The purpose of the patent system is to encourage invention by promoting the protection and utilization of inventions, thereby contributing to the development of industry as a whole. Consequently, when designing a patent system, it is vital to avoid negative impacts that could arise due to strategic use of the system by companies seeking to maximize profits (for example, impeding incentives for competing companies to undertake research and development, rather than increasing its own incentives to undertake research and development). The objective of this study is to analyze decision-making mechanisms in companies’ strategic intellectual property protection activities (such as decisions on whether to patent or conceal an invention) and conduct a theoretical analysis of the relationship between such strategic activities by companies and the innovation performance generated in the market as a result, in order to identify issues concerning approaches to a patent system that will contribute to industrial development.

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14. Did Modifications of the Japanese Patent System Lead to a Reduction in Price Competition and the Promotion of R&D Activities? : The Impacts of Some Modifications between 1998 and 2013 on the Japanese Automobile Industry
Miyuki TANIGUCHI
(Research Fellow, Institute of Intellectual Property)

   This study tests the hypotheses that modifications of the Japanese patent system between 1998 and 2013 led to reduced price competition and the promotion of R&D activities in the Japanese automobile industry using econometric methods. First, this study focuses on the modifications to the Japanese patent system which have the possibility of influencing R&D activities. It is found that the modifications in 1998, 1999, and 2003 have the possibility of promoting R&D activities. Then, this study examines whether these modifications have promoted R&D activities in the Japanese automobile industry, by comparing these R&D activities with R&D activities in the German automobile industry. It is expected that the German automobile industry has not been greatly influenced by modification of the German patent system because there has been little change in the German patent system in the last fifteen years. The results of the econometric analysis show that the modification of the Japanese patent system in 2003 influenced the quality of the technologies to which patents have been applied for. The number of forward citations per patent application has fallen considerably since 2003. On the other hand, the number of forward citations per patent application has not changed in the German automobile industry. The results of the econometric analysis also show that the profits per patent application have increased since 2003. One possible reason for this is that the constant modifications to strengthen patent protection rights have increased profits since 2003. Finally, this study examines whether price competition has been reduced in the Japanese automobile market since 2003. The results of the econometric analysis confirm that price competition has tended to be reduced.

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15. International Jurisdiction of the Unified Patent Court
Atsuko YAMAGUCHI
(Research Fellow, Institute of Intellectual Property)

  The EU is now carrying forward preparation for the creation of a unitary patent protection (European patent with unitary effect and Unified Patent Court (UPC)) based on the "patent package." According to the Agreement on the Unified Patent Court (UPCA; one of the pieces of the patent package), the UPC shall exclusively deal with actions concerning European patents with unitary effect and European patents, and Japanese companies and individuals will be also able to use the UPC. On that basis, this report first clarifies the rules for the international jurisdiction of the UPC which have yet to attract attention in Japan.

   Next, this report considers the recognition and enforcement of judgments rendered by the UPC in Japan. For example, when the UPC renders a judgment ordering a Japanese company to pay compensation for damages based on infringement of a European patent with unitary effect and a court of Japan is requested to enforce the judgment, will the judgment be able to be enforced? In this regard, it is not clear at present how the requirements for the recognition and enforcement of a foreign judgment stipulated by Japanese law should be interpreted because a court of Japan has never been requested to enforce a judgment rendered by a court similar to the UPC. Therefore, the aforementioned point is considered.

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16. A Comparative Law Study on the Patent Eligibility -Focus on the Method Invention-
Etsuko YOSHIDA
(Research Fellow, Institute of Intellectual Property)

   Inventions have shown variation in association with industrial development and progress in science and technology. Examples of such inventions are those of business methods that utilize computer technology based on informatization and medical-related inventions such as gene screening methods accompanying the development of biotechnology. As a result, in the U.S., the issue of patent eligibility of business method inventions has led to the increase in the number of litigations over patent eligibility and vigorous discussions have been conducted. Similarly, in Europe, the way to conduct harmonization has been sought by using various methods including the referral made by the President of the European Patent Office ("EPO") with respect to the issue of patent eligibility of computer-software-related inventions due to the difference between the EPO and member states in terms of the determination method for such issue.

   In this research study, a comparative study will be made on the requirements for determining whether or not an invention is statutory (patent eligibility) used in Japan, the U.S. and Europe based on the issue of patent eligibility in the U.S. as well as the transition in the trial and court decisions and the discussions that have traditionally been developed in the U.S. and Europe,. In particular, with respect to process invention, the issue of patent eligibility is prominent in the fields of computer software and business methods and thus such field have mainly been dealt with. First, the trends in the U.S. court decisions that have been rendered in large numbers over the last few years and that have become a major topic of debate will be examined. Specifically, the transition in the determination method used in the U.S. will be studied by focusing on the relationship between the three categories for non-statutory subject matter that have been used in determining patent eligibility and excluded from patent protection, i.e. (i) laws of nature, (ii) natural phenomenon and (iii) abstract ideas, and past court decisions. Transitions in the past trial and court decisions as well as discussions relevant thereto will be studied with respect to the EPO, Germany, the U.K. and Japan. This research study aims to be of some help to the efforts made for international systemic harmonization by considering the functions of the requirement for patent eligibility from the viewpoint of comparative law based on the abovementioned set of studies.

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17. FTA policy- Making in the EU and its Effects : Policies on Geographic Indicators and Medicines/Medical Equipment
Momoko NISHIMURA
(Overseas Researcher, Institute of Intellectual Property)

   Recently, the European Union has shifted external trade policy priority from multilateral negotiations to bilateral talks, growing aggressive about concluding bilateral or regional free trade or economic partnership agreements. The EU's recent FTAs concluded amid the shift have growingly included new protection provisions on intellectual property rights that are tougher than TRIPs (Trade-Related Aspects of Intellectual Property Rights) Agreement standards, attracting attention along with U.S. FTAs. Generally, the EU's policy shift has been discussed only from the viewpoint of stalled trade liberalization talks at the World Trade Organization. In contrast, this study discerns how political relations within the EU have influenced the EU's FTA policy including the IPR protection policy. Specifically, it focuses on two topics: access to drugs and geographical indications -- and analyzes how EU healthcare and agricultural policy changes over the past more than 10 years have led to new IPR protection provisions in EU FTAs.

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18. The Effect of Harmonization of Intellectual Property Rights on the Activities of MNCs in Developing Countries
Koichiro ONISHI
(Overseas Researcher, Institute of Intellectual Property)

   In trade negotiations such as WTO and TPP, the enhancement of IP rights is one of the high-priority issues that developed countries have been requesting developing countries to tackle. However, it has not been sufficiently clarified whether the strength of the IP rights in those countries would benefit the companies in developed countries. This paper estimates the production functions of overseas subsidiaries of Japanese companies and thereby empirically analyzes whether the strength of the IP rights in developing countries increase Japanese companies' productivity. The results show that the enhancement of the patent rights in developing countries excluding China has the effect of reducing the counterfeit damage that Japanese companies suffer in those countries and that, especially in the electric machinery industry in developing countries, the enhancement of patent rights and an increase in the number of patent applications applied by Japanese companies contribute to increasing the productivity of their overseas subsidiaries. These results suggest that the developed countries' policy of requesting developing countries to enhance their IP rights has been fully achieving its goal.

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