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Research Activity Summary of FY2015

Patent Protection for a Food Product in Consideration of the Scope of a Patent Right for a Use Invention

   Under the current patent and utility model examination guidelines, a newly discovered property of a publicly known food product would not constitute any new use that could distinguish the product from other publicly known food products. As far as food products are concerned, novelty as a use invention cannot be recognized. However, some people highlighted that it is important to recognize novelty of a food product as a use invention and to give an incentive to early developers trying to find a new property in a food product in order to promote their research and development activities. Due to the commencement of a new labeling system for functional food products, the early developer would be unable to distinguish its product from other companies' products if they file an application (they can cite a paper written by the early developer) and start affixing functional food labels on their products. Under these circumstances, it has been noted that patent protection for a use of a food product has become especially important.

   The purpose of this research is to conduct research on patent protection for food products in consideration of the scope of a patent right for a use invention and to provide basic data for further examination as to whether or not the Examination Guidelines should be amended in order to recognize novelty in a food product as a use invention.

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Various Issues Concerning IP Litigation from the Perspective of the Legal System

  The Japanese IP litigation system has been highly regarded by many legal practitioners in terms of efficiency, predictability, cost-effectiveness, etc. However, some experts and practitioners have highlighted the difficulties in the evidence collection procedure and the insufficient amounts of damages determined in IP litigation, which have prevented right holders from receiving sufficient remedies.

  Recently, with the increasing awareness of the importance of the IP litigation system, "Enhancement of the IP dispute resolution system" was listed as one of the three major goals in the "Intellectual Property Strategic Program 2015." Further discussions are scheduled to be held in this fiscal year regarding the following points in particular: [i] measures to facilitate collection of evidence in IP litigation, [ii] measures to allow the amount of damages to reflect the reality of business, and [iii] measures to enhance the stability of IP rights all the way from the grant of IP rights to dispute resolution.

  In this research, we examined various issues concerning IP litigation from the perspective of the legal system in order to improve the usability of the IP litigation system and to promote smooth corporate activities. We also examined what measures should be taken to make the Japanese system more attractive than other countries' systems from the viewpoint of IP right holders who need to enforce their rights or resolve disputes.

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Concerning the Patent System and the Operations Thereof that Contribute to the Activation of the Intellectual Property Dispute Resolution System

   The necessity of examination toward optimizing collection of evidence and determination of damages used in relation to intellectual property disputes in Japan was stated in the "Intellectual Property Strategic Program 2015," which was approved by the Intellectual Property Strategy Headquarters on June 19, 2015. This examination requires an understanding of the international trend as well as the status of use of the procedures for collection of evidence and the system for presumption of damages in Japan. To this end, it is necessary to conduct a survey on collection of evidence and determination of damages in relation to intellectual property disputes in foreign countries as well as the status of use and evaluation thereof. Moreover, it is also necessary to gain an understanding of the relevant systems used in relation to intellectual property disputes in Japan that would not be clearly mentioned in the text of judgments, such as the collection of evidence prior to filing an action, preservation of evidence, obligation to clarify the specific conditions of infringement, order to produce documents, protective order and the provision for presumption of damages as well as the status of use and evaluation thereof.

   Therefore, the purpose of this research study is to carry out a survey on the national and international systems for collection of evidence and determination of damages as well as the status of use thereof, thereby preparing basic material which may be used in considering the activation of the intellectual property dispute resolution system.

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Handling of Product-by-Process Claims in Examination Procedures

   In the judgments of June 5, 2015 with respect to product-by-process claims, the Supreme Court of Japan reversed the Intellectual Property High Court’s judgments that had separated the construction of PBP claims by applying the product identity theory for "Authentic PBP claims" and the manufacturing process limitation theory for "Unauthentic PBP claims," and instead uniformly applied the "product identity theory" for “identification of the gist of the invention” and “determination of technical scope of the invention.” It held that "in cases where the relevant claim falls under the category of PBP claims (hereinafter referred to as the 'Case'), the invention will be found to comply with the requirements of clarity of inventions only if there are 'impossible or impractical circumstances (hereinafter referred to as the 'Circumstances')’ to directly specify the product by its structure or characteristics at the time of filing the application." The Japan Patent Office took these judgments into consideration in revising the Examination Guidelines and Examination Handbook and has stated its intention to enrich case examples for determination on the "Case" and "Circumstance" in the Examination Handbook. In this study, the situations of Japan and other countries (i.e., European Patent Office, the U.K., and Germany) were grasped by conducting surveys on public information, overseas questionnaire surveys, and considerations by experts, and thereby the basic materials were prepared to be used in considering specific case examples that would contribute to such determinations and whether or not to provide such specific case examples in the Examination Handbook.

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Role of Japan’s Intellectual Property System in its Economy

   Attempts are being made in various countries to empirically analyze the impact of intellectual property systems on the intellectual property and innovation activities of companies, etc. In particular, in recent years, demand for evidence-based policy-making has been growing worldwide, so intellectual property offices in the U.S.A. and Europe have responded by establishing chief economist positions and promoting scientific research into intellectual property systems. Amid this situation, in this study, we conducted six empirical analyses to examine the relationship of company performance to the contribution of intellectual property rights and licensing, the impact of changes in intellectual property policy on companies in the life sciences sector, the concordance between IPC and industrial classifications, the impact of intellectual property systems on the economy, and studies using data from surveys of intellectual property activities. In doing so, we made full use of such databases as the Patent Database, the Ministry of Economy, Trade and Industry Basic Survey of Japanese Business Structure and Activities, the Japan Patent Office Survey on Intellectual Property-Related Activities, and the Ministry of Internal Affairs and Communications Survey of Research and Development. Furthermore, we examined the organization of survey items in the Survey on Intellectual Property-Related Activities, which is the basis for empirical research.

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Drawing Lines: The Boundary of Patentability in Personalized-Medicine Diagnostics
Kevin Emerson COLLINS
Professor of Law, Washington University School of Law, St. Louis
(Invited Researcher, Institute of Intellectual Property)

  A correlation-based medical diagnostic is a diagnostic technology that is enabled by the discovery of a previously unknown correlation between an observable attribute of a patient (e.g., a genetic mutation) and a medically useful fact about, or diagnosis of, a patient (e.g., an inability to metabolize a drug). Correlation-based medical diagnostics are both commercially important and socially valuable because they are essential to the development of personalized or precision medicine.

  Patent protection for many correlation-based medical diagnostics is available today in Japan. However, the reasons why many correlation-based medical diagnostics are patentable have not been clearly articulated, and thus the precise line between patentable and unpatentable correlation-based medical diagnostics remains uncertain. This report offers a number of theories about what the limits on the patentability of correlation-based medical diagnostics might be and thus where the line between patentable and unpatentable correlation-based medical diagnostics might be drawn. More specifically, it focuses on the restrictions that the diagnostic-method exclusion of the industrial-applicability requirement and both the laws of nature and mental activities exclusions of the statutory-invention requirement place on the patentability of correlation-based medical diagnostics.

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FRAND Holdup and Its Solution
LI, Yang
Professor of Law, Shenzhen University Law School
(Invited Researcher, Institute of Intellectual Property)

   Although many approaches have been raised to determine and calculate the royalty of SEP with FRAND commitment, because of grossly exaggeration of the risks of patent holdup and overemphasizing limiting or eliminating the availability of injunction, in the absence of scientific and uniform standard of determining FRAND royalty, not only FRAND royalty of substantive justice is still far away, but also FRAND holdup has become a serious issue perplexing SEP holder. In order to mitigate, prevent and even eliminate FRAND holdup and to determine FRAND royalty at the meantime, FRAND-oriented towards procedural justice is perhaps a good choice. The core of FRAND-oriented towards procedural justice is to design a set of rule of Notice and Counter-Notice to stimulate SEP holder and SEP implementer to negotiate royalty in good faith and settle FRAND royalty through negotiation. In case of negotiation failure, the third independent party (court, arbitration organization) can also depend on rule of Notice and Counter-Notice to determine whether injunction is necessary and decide what’s FRAND royalty.

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A New Proxy for Strategic Patents and Its Application to Japanese and US Patent Data
Henri de BELSUNCE
Doctoral Research Fellow, Max Planck Institute for Innovation and Competition
(Invited Researcher, Institute of Intellectual Property)

  This paper develops a new proxy for the strategic patents of firms and applies it to the Japanese IIP patent dataset and the US NBER patent dataset. Specifically, we identify patent clustering à la Rivette and Kline (2000) in the data ex-post. Initial results - in line with previous findings in the literature – indicate that strategic patenting is an important problem in Japan, even more so than in the US. We acknowledge caveats to our analysis, in particular with respect to the controlling for patent portfolio sizes. These drawbacks are focal points for further research, but this paper already presents the potential of a fully-fledged proxy for strategic patenting that could be of great use for regulators and policy makers at the patent office.

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Trade Mark Use Doctrine in the European Union and Japan
Martin HUSOVEC
Doctoral Research Fellow, Max Planck Institute for Innovation and Competition
(Invited Researcher, Institute of Intellectual Property)

   The scope of the regulatory power of the trademark law in the market-place is constantly being tested against the new developments in technology. Today, the rights arising from the trademarks often cover many activities going beyond the mere misrepresentation of goods and services. Market transparency, is not anymore the sole goal of the trademark law. In this comparative study, we will contrast European and Japanese approach to the doctrine of trademark use, i.e. doctrine that decides whether the trademark laws extend rights to regulate a particular use of a sign prior to any considerations of confusion or unfair advantage. Evolution of the law in the two countries illustratively shows the gradual departure from origins of trademark protection, still persisting in Japan, to more advanced, but not necessarily better, systems of protection in the European Union.

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Compulsory Licensing of Patents- A Comparative Analysis of Japanese and Indian Practices
V.C. VIVEKANANDAN
MHRD IP Chair Professor, Nalsar University of Law, Hyderabad
(Invited Researcher, Institute of Intellectual Property)

   The TRIPS agreement has brought a basic universal common denominator on various Intellectual Property segments among the member states of World Trade Organization. Yet in practice there are considerable differences among the Nation States and standpoints between Developed Nations and rest of the world. One of the issues is that of award of compulsory licenses and its impact on patent system. In Asian context, Japan and India both have compulsory licensing provisions based on public interest in their respective statutes. India awarded the first compulsory license in 2012 in the field of drugs and it had a widespread support for CL among civil society groups and academia in India to use CL as an effective tool to counter the issue of prices and access to its population. In contrast Japan has not so far issued and has its interpretation for a pro-patent regime reflected in its 2013 “Japan Revitalization Strategy” and the Japanese Cabinet approved the “Basic Policy Concerning Intellectual Property Policy” where the emphasis is on global acquisition and effective use of IPR. This research aims to study the divergent approaches towards Compulsory licenses of these two Asian countries- and to disseminate the reasons and logic of such approaches.

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Comparative Analysis of Inventive Step/ Nonobviousness Standard and Case Study Thereof – from the Aspect of “the Problem to Be Solved”
CHOU, Chih-Hao
Patent Examiner, Taiwan Intellectual Property Office
(Invited Researcher, Institute of Intellectual Property)
 

  Although the concept of invention originated in the 16th century, there are still significant differences in the standards of inventive step for patentability among different countries because of policies, laws and regulations, assessment, etc. nowadays. This report studies and analyzes the standard for the inventive step of the European Patent Office (hereinafter referred to as “EPO”), United States Patent and Trademark Office (hereinafter referred to as “USPTO”), Japan Patent Office (hereinafter referred to as “JPO”) and Taiwan Intellectual Property Office (hereinafter referred to as “TIPO”). It will also discuss the similarities and differences between said offices step by step from the perspective of definitions of the inventive step and applicable laws, the scope of prior art, the level of a person skilled in the art, assessment of the inventive step, etc. Owing to the fact that, while assessing the inventive step, “the problem to be solved by the claimed invention” can usually provide objectively logical articulation concerning the rationale to combine the different teachings of prior art, this research will try to analyze the assessment of inventive step from the aspect of “the problem to be solved” and illustrates the differences among the above offices via some representative case studies.
   When determining the existence of the inventive step, for all the four IP Offices, it is necessary to conduct reasonable articulation on whether or not a claimed invention is obvious from the view point of a person skilled in the art based on the prior art and they also emphasize the importance of “the problem to be solved.” However, the approaches for assessment among different IP Offices are different and can be categorized into the “problem and solution approach,” which is adopted mainly by the EPO and combines different prior arts by an objective technical problem, and into the “general rationale articulation,” which is adopted mainly by the USPTO, JPO, TIPO, etc. and combine different prior arts by articulating rationales from various and broad points of view. In addition, from the aspect of using “the problem to be solved” to analyze the inventive step determination approaches adopted by the four IP Offices, there exists three major differences including “the way to define the problem”, “features taken into account for the solution of the problem”, “technical character of the problem and solution”, etc.; and these differences can be relevant to the “level of a person skilled in the art.” When trying to harmonize the standards of the inventive step from the aspect of “the problem to be solved”, these three differences, as well as the level of a person skilled in the art, should be taken into consideration and be harmonized gradually from the easiest to the most complicated in the hope that a more practical and objective inventive step standard can be obtained.

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A Study on the Status of Software Patent Protection in Japan – Comparison with Status in Korea
YOO, Ji-Hye
Jihye, Researcher/Lecturer, Kangwon National University, Korea
(Invited Researcher, Institute of Intellectual Property)
 

   Software patents have been preferred by inventors, in that patents can give a very powerful and desirable protection, so that the owner of patent may prevent any unauthorized person from making, using, or selling the patented software invention. Software patents, on the other side, also have negative respects, including that it is hard to grasp the scope of patented invention. Software inventions usually claimed in the form of means-plus-function because it is hard to be expressed by conventional ways such as structures, materials of invention. This way of claiming seems to make the scope of software patent more difficult to be understood, and the scope of claim could be overbroad than it should be. To solve these problems, each country has been tried to give some standards such as the way that the scope of protection is interpreted only to the extent that the persons ordinarily skilled in the art could work based on description concretely disclosed in the specification. This interpretation rule seems to be applied in a same way in Japan and Korea, however, the specific standards would be different, and this difference could affect the status of software patent protection in each country. In this respect, this research aims to analyze the status of software patent protection specifically in Japan and Korea, especially focusing on the scope of claim for software invention, in order to have a better understanding of the scope of software patent protection.

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Ownership Structure and Intellectual Property Strategy: Patent Analysis in China
Yuan YUAN
(Research Fellow, Institute of Intellectual Property)

   The purpose of this study is to analyze the impact of shareholder structure on the innovation activities of firms by using the patent database and industrial enterprises database of China. In particular, we focus on the role of state-owned shareholders. The main results are as follows.

   First, there is a tendency that the central state-owned firms and local state-owned companies produce new products. However, we only observed the tendency of patent application and registration for central state-owned firms.

   Second, regarding the effect of privatization on innovation, we find that firms that have been privatized to private firms (hereafter: PPF), reduce patent application or registration and tend to produce new product. However, we do not find any significant effect on firms that have been privatized to foreign companies (hereafter: PFF).

   Third, our analysis shows that firms with high competitive pressures from foreign companies, export firms, debtless firms, firms with large market shares, firms with large asset size and elder firms have a tendency of application, registration and new products.

   The results of this study suggest that in China, leading-edge innovation was driven by state-owned firms, particularly state-owned firms which have strong supports from government, while new products that respond to market needs are mostly developed by the private firms.

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Economic Analysis on Employee Invention System from the Viewpoint of R&D Incentive and Welfare Loss Arising from Lawsuit against for Remuneration for Invention
Akitoshi MURAMOTO
(Research Fellow, Institute of Intellectual Property)

  This paper studies the effect of employee invention systems on economic performance by economic model (especially, property right theory). Property rights theory discusses how property rights including patents affect incentive (e.g. incentive for R&D). The purpose of employee invention systems is to affect distribution of profit from invention between employers and employees and to promote R&D activity. We present a model that suggests that effects of employee inventions on distribution of profit from invention and incentive may differ depending on the difficulty in prediction of profit from invention and the size of loss caused by lawsuits. Furthermore, we study cases for an appropriate amount of remuneration and study how an appropriate amount of remuneration is calculated. We also show that the effect of employee invention systems may differ among industries by using the results from a theoretical analysis and case studies. Finally, we discuss what employee invention systems should be like.

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Early Clarification of Patent Rights and Innovation: An Empirical Study of Information Provisions and Post-Grant Oppositions
Kenta NAKAMURA
(Overseas Researcher, Institute of Intellectual Property)

   A probabilistic patent, namely a patent with a significant possibility of invalidation, can hamper the innovation-enhancing role of the patent system. For example, it may allow a patentee-licensor to command a disproportionately strong power over licensees. A probabilistic patent may also fail to effectively promote the investment by a patentee-manufacturer for developing the invention. A third party may be able to reduce the problems of probabilistic patents substantially through post-grant oppositions and thereby promote innovation. This study examines such possibilities, based on the experiences of the post-grant opposition system in Japan from 1996 to 2003. We find that patents subject to post-grant oppositions are less likely to be denied validity later in infringement-related cases, meaning that third party contributions in the early stage help grant stable patent rights. Moreover, the early clarification of patent rights through post-grant oppositions promotes innovation by the patentee (as well as third parties) when the patent survives as well as by third parties when the patent is overturned.

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The Enhancement of International Patent Technology Transfer in Relation to National Law, International Law and Related Policies - Examples from the Current Practice in the Fields of Telecommunication, Biology and Environment
Yuzuki NAGAKOSHI
(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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Study on the Unitary Patent Protection in the EU from a Viewpoint of Private International Law
Atsuko YAMAGUCHI
(Overseas Researcher, Institute of Intellectual Property)

   In order to establish unitary patent protection in Europe, preparations are presently in progress to establish a European patent with unitary effect (UP) and a Unified Patent Court (UPC) based on the so-called “patent package,” which was adopted in December 2012. These are available to Japanese companies and individuals and their use is related to private international laws in Europe as well as in Japan. However, the contents of private international law which the UPC shall apply are not adequately known in Japan, and also it is unclear how claims relating to UPs and UPC judgments should be dealt with under Japanese private international law. For this reason, this research examines some rules in the field of private international law under the forthcoming unitary patent protection: specifically, rules for international jurisdiction and competence of the UPC; laws applicable before the UPC; and Japanese private international law issues from a viewpoint of the UPs and the UPC, such as Japanese international jurisdiction over claims relating to the UPs, laws applicable to the claims, and recognition and enforcement of the UPC judgements in Japan.

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