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Research Activity Summary of FY2001

1. Study on International Harmonization for Objects of Protection or the like of Trademarks

   International harmonization of trademark systems has become more important due to the increased globalization of business. However, a few of differences still remain in the substantive aspect of the systems between Japan and the other major countries. This report investigates the systems and practices of 28 overseas countries as well as the user needs in Japan regarding the systems that are adopted overseas, but not in Japan, and discusses the need of introducing the following three systems.  
   First is the new types of trademarks, such as sounds and smells. The report examines the practical aspect of making such matters protectable under the trademark system, including the legal problems and problems in examination. Second is the consent system. The report studies the reasons for postponing the introduction of this system upon the 1996 amendment of the Trademark Law, and discusses the desirable system if it were to be introduced in Japan.Third is the disclaimer system. Japan also used to adopt the system in the Trademark Law of 1921, but it was abolished later. Thus, this report analyzes how the system came to be abolished, and examines the suitable disclaimer system in Japan.

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2.  Study on Protection of Image Designs Indicated on the Display Screens

   Amidst the progress of information technology (IT), the image designs shown on display screens, as represented by graphical user interfaces (GUIs), have gained independent status as interface designs or communication designs. Today, these designs are considered to be just as important as the equipment designs as a factor that improves the product usability (ease of viewing, using and understanding). This report investigates and analyses the possibility of protecting these image designs under the Japanese design law, patent law, copyright law and unfair competition prevention law (including the trademark law) and the status of their protection in Europe and the United States, based on the actual situation of creating designs. In addition, by referring to the opinions of users both in and outside Japan, it examines how such image designs should be protected in the future by laws, mainly the Design Law, by taking a legislative approach.

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3. Study on a Proper Scope of Protection under Intellectual property System

   The intellectual property (IP) laws comprise multiple protection systems corresponding to the different kinds and modes of information having property value, and they are expanding the scope of protection in response to various changes in society. This report analyses and examines the measures that should be taken under the current IP systems regarding the new kinds of intellectual property that are emerging by economic development and social changes, as well as the relations between the respective IP systems. Specifically, the matters examined in this report include the marginal scopes of IP protection faced by companies, coordination between the Trademark Law and the Unfair Competition Prevention Law when there is a conflict between a registered trademark and a well-known/famous trademark, amendment of the Design Law, and the respective relations of GUIs, the 3D trademark system and copyright with the other IP laws.

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4. Study on the Desirable Form of Protection under the Patent Law and Trademark Law in the Era of Information Technology

   Online business activities such as e-commerce are expanding in line with the diffusion of the Internet. Thus, in FY 2001, the JPO discussed increasing and improving the Patent Law provisions on indirect infringements and strengthening protection of trademarks used in online businesses with possible legal amendment in view, in order to respond to such economic and social changes and to extend securer protection for such information property as software. In the attempt to contribute to such discussions, this report analyses court decisions on indirect infringements of patents, while investigating and studying about such matters as the constitutions of western and other major countries that refer to intellectual property, the amounts of damages awarded in recent patent/utility model infringement cases, the requirements for constituting an indirect infringement, practices related to patent claim categories, practices related to divisional and continuing applications, practices related to trademarks on the Internet, and practices related to goods attaching service marks.

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5. Study on the Future Vision for Trial System and Intellectual Property Lawsuit

   As patent enforcement has increased its importance in recent years, there have been calls for improving the procedural aspect of enforcement. Although the dispute settling procedures have been amended several times so far from the viewpoint of "speeding up the trial proceedings," it is necessary to consider the issue from the viewpoint of "settling a dispute in a single procedure" in the future. It should be noted that in the Japanese Supreme Court decision on the Kilby patent case in April 2000, the court held that patent enforcement would be deemed as abuse of right when the court processing the patent infringement litigation found that the patent in question apparently included a reason for invalidation. This has given rise to the need to consider the relation between the conventional judgment of patent invalidation in the JPO's invalidation trial system and the judgment of invalidation in a patent lawsuit. Based on such a situation, this report extracts wide-ranging disputable points concerning the ideal future relation between the JPO's trial system and the IP lawsuits in courts and attempts to derive some applicable measures .

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6.  Study on the Desirable Form of the Unfair Competition Prevention Law for Protecting Intellectual Property in a New Era

   Almost ten years have passed since the Unfair Competition Prevention Law was fundamentally revised in 1993. As the economic and industrial structures have dramatically changed since then, it is necessary to review the law from a broad perspective regarding whether or not it is appropriately functioning as impartial competition rules among business operators. In addition, since the content of acts of unfair competition related to domain names were amended in 2001, there are calls for providing reference information on concrete cases of such acts. In light of this, this report extracts wide-ranging issues specific to today, and studies the desirable form of Unfair Competition Prevention Law, particularly in respect to the protection of trade secrets which must be further strengthened in the future. At the same time, it summarizes concrete disputes on domain names and publishes them as case examples to offer a guideline for future dispute settlement.

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7.   Study on the Desirable Form of Rights in the Pro-Patent Era

   It is difficult to understand how Japanese compulsory/mandatory license system for patents shall be applied to and utilized for, because various provisions regarding the system exist not only in the Japanese Patent Law and other laws, its implementing guidelines of the compulsory /mandatory license system, but also TRIPS Agreement, and Japan-US Agreement (concluded in 1994). Therefore, this report takes up "pharmaceutical inventions," "technical standards" (including the issues under the anti-monopoly law), and "correction of anti-competitive practices" as main examples and examines whether or not the compulsory/mandatory license system is applicable to them respectively. Furthermore, it reviews the structure of the compulsory/mandatory license system from the view point of consistency between Japanese legal systems and treaties and conventions regarding compulsory/mandatory license system (TRIPS Agreement and the Japan-US Agreement). Apart from whether or not domestic legislative measures should be required for the compliance with these treaties and conventions, the report also mentions how the system should be politically oriented from the perspectives of Japan's industrial promotion measures and external policy.

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8. Study on the Ways of Protection of Post-Genome Research Products

   In line with the recent progress of post-genomic research, new types of patent applications are being filed, and an examination guideline for these applications is desired to be promulgated at an early stage. This research and study first attempts to clarify the element technologies subject to patent by reviewing protein's 3-D structure analyses and bioinformatics, which are the core technologies in the post-genome research, while giving consideration to their application to drug discoveries and diagnostic methods. Subsequently, with an eye on the distinctive features of these technologies, which are "information" and "its processing methods," this research and study extracts and discusses the legal issues concerning the main claims (i.e. "reach-through claims," " function inferential type claims," "pharmacophore type claims," and "virtual screening type claims"). Consequently, it presents various problems, such as the enablement requirements and the degree of function analysis, clarity of claims, as well as the relation with the examination standards for computer software related inventions, and suggests their solutions.

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9. Study on Patent Claim Interpretation

   How patent claims are interpreted by courts is extremely important in delimiting the appropriate scope of a patented invention. Indeed, various important court decisions have been given in overseas countries in the past, and even in Japan, a Supreme Court decision recognized the doctrine of equivalence for the first time in 1998. Recently, new styles of describing patent claims are emerging with the technological innovation, so interpretation of such claims is also presenting a large issue. In order to examine how patent claims should be interpreted in Japan, this report investigates the current rules on patent claim interpretation and moves for amendment as well as the recent trend of court decisions in the United States, the United Kingdom and Germany. With regard to the trend of court decisions, the report particularly focuses on analyzing the trend of court decisions related to the doctrine of equivalence and court decisions related to interpretation of claims using functional expressions and product-by-process claims.

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10. Study on Various International Issues over Intellectual Property Disputes

   With the rapid diffusion of the Internet, new modes of intellectual property (IP) disputes across national borders are emerging and increasing, giving rise to demands for establishment of adequate settlement rules for international IP disputes. Particularly, practices related to cyberspace IP disputes on the Internet must be sufficiently studied referring to actual examples. Meanwhile, as the Hague Conference on Private International Law is currently drafting the Convention on International Jurisdiction and Foreign Judgments in Civil and Commercial Matters (Hague Draft Convention), it is an urgent task for Japan to consider and present the measures it should take. Based on such situations, this report gathers and examines the actual cases of cyberspace disputes, after which it investigates and analyzes rules for preventing and settling the new types of IP disputes occurring in cyberspace, while considering measures for the future Hague Convention at the same time.

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11. Study on Patent and Economy

   Today when the Japanese government is promoting a pro-patent policy for extending "broad" and "strong" protection for patents, it has become important to verify what significance and effects such a policy has from an economic viewpoint. With the aim of verifying the influence of the pro-patent policy, this report analyzes and examines the changes in the licensing fees and other licensing terms, the mechanism by which patents influence economic activities such as innovations, and the desirable form of IP policy for achieving a balance between protection of prior technologies and promotion of subsequent technologies. The report also examines the "statistical survey of IP activities" that would provide an index for future evaluation of IP policies, based on the questionnaire survey on 1,398 domestic companies and a survey on the economic impact of the U.S. pro-patent policy conducted by the author.

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12. Study on the Utilization of Intellectual Property Rights in a Business Group

   The 1997 amendment of the Anti-Monopoly Law has accelerated restructuring of business operations in the industrial world. Under this trend, more companies have come to split up their operations and form business groups consisting of a parent company (holding company) and operational subsidiaries that have independent judicial personalities. As a result, they have come to face the need to divide and transfer their shared intellectual property and to deal with various legal issues in utilizing such intellectual property. This report pays attention to where the IP management section is located in the business group and which of the companies has ownership of the intellectual property, and selects a centrally-managed/centrally-owned model and a centrally-managed/separately-owned model. Then, it investigates and analyzes the measures that could be taken under the current legal system and the improvements that could be made to the system with respect to the following points: (1) compensation for an employee's invention made in an operational subsidiary; (2) which company enforces the intellectual property rights, the method of enforcement, and the amount of damages to be claimed; (3) tax affairs related to transferring and licensing back IP rights within a business group.

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13. International Developments in Utility Model Protection:A Recommended Approach for Taiwan's Utility Model System Reform
Shieh Ming-Yan
Professor of Law, National Taiwan University

   Taiwan’s utility model system currently faces problems in examination quality due to an overburdened group of examiners. The Taiwan government is proposing a large-scale reform of its utility model system in order to reduce the examiners’ workloads so as to promote examination quality. This Article analyzes international developments in utility model protection, and their experiences in dealing with some of the same problems that Taiwan’s utility model system faces.

   Part I addresses problems with Taiwan’s current utility model system; Part Ⅱ examines international developments in the utility model systems, including the European Union, Germany, Japan, South Korea, and China; Part Ⅲ analyzes these developments with respect to Taiwan’s utility model system reform, and proposes various amendments to Taiwan’s laws; and Part Ⅳ concludes by arguing that the Japanese utility model system, despite its decline in importance in Japan, remains a valuable reference to Taiwan in its utility model system reform.

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14. The Patentability of Software Related Business Methods:Focus On Business Method Patent Under the Trilateral, USA, JP, EU and Countermeasure of China
Zhang Ping
Associate Professor, School of Law, Intellectual Property Society of Chinese University

   This Article analyzes the patent ability of software related business methods, special focus on the legal theory, economic policy, and technological strategy under the trilateral, USA, Japan and Europe on so call BMP. As this topic has been discussed very hot in the developed country of recent year, so I will give my opinions as a developing country viewpoint.

   It deals with the five parts: Ⅰ. To review the "War" among US, JP and EU; Ⅱ. Government action-enter the reification time; Ⅲ. Enterprise action-occupy the top of new; Ⅳ. The problem in infringement on BMP; Ⅴ. The Chinese situation and countermeasure on BMP.

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15. Comparative Study on Patent Interpretation
Huan Yi Lin
The George Washington University Law School, S.J.D. Candidate

   This Article covers literal interpretation, infringement under doctrine of equivalents, and some related procedural issues. The role of which different materials, ranging from claim language, specification, prosecution history dictionary to expert witness and so on, play in the construction of patent claims will be discussed. Comparison of conditions to apply doctrine of equivalents will be made. Moreover, it deals with the most controversial issue now in the US -prosecution history estoppel, which is heavily argued in the Festo case. The binding effect of court decisions on patent interpretation is also be briefly touched upon.

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16. Parallel Imports, the Exhaustion of Patents, and TRIPS
Florian Schmidt-Bogatzky
Doctoral Candidate, University of Goettingen

   This Article focuses on the latest international developments (Japan, European Union, and U.S.) with respect to the exhaustion of patent rights. It is argued that patent policy and international trade are intertwined and that the issue of (modified international) patent exhaustion can be used to foster the development of international trade without unduly reducing the scope of patent rights. The committed use of competition principles is proposed to counterbalance the possibly negative effects on all parties involved. The WTO is regarded as a suitable forum; its agenda should be extended accordingly.

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17. Criteria for Determination of Utility Requirement for Biotechnological Invention
Tatsuya Izukawa
Researcher, Institute of Intellectual Property

   Recently, remarkable technological developments have been achieved in the biotechnology, such as gene-related technology concerning genomic analysis. But the criteria for determining of the patentability of such biotechnological inventions have not been completely established, because biotechnology is on the most advanced technological fields. Among the patentability requirements, this Article especially focuses on the utility requirement and provides an analysis on various points with respect to the functions of the utility requirement in the U.S.

   It is beginning to outline the relationship between patent and the recent developments in biotechnology and review the patentability in connection with the utility requirement under the Patent Law. And then, it reviews the trend of the precedents concerning the utility requirement and the "Utility Examination Guidelines" published in January 2001 and the chapters addressing utility in the MPEP revised August 2001. Furthermore, in light of the precedents and the guidelines, it is studied an outline of the criteria for determining the utility requirement in the case of recent biotechnological inventions and the future trend concerning the utility requirement in the biotechnological field.

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18. Patentability of Software and Business Method-Related Inventions in Europe
Masashi Ohyama
Doctoral Candidate, University of Goettingen

   Under the EPC, though not explicitly mentioned, inventions must have "technical character" to be "patentable inventions"; therefore, the important point is how to determine whether inventions containing non-technical computer programs or business methods have this "technical character."

   This report reviews the decisions on computer programs and business method-related inventions that were delivered before the "pension benefits system decision (T931/95)", in which a physical entity suitable for performing or supporting an economic activity was deemed to be a patentable invention, to see how such inventions were acknowledged to have "technical character" and deemed to be patentable. It also reviews UK decisions on such inventions that were delivered after the pension benefits system decision to see what impact the decision had on later decisions.

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19. Relationship between the Refusal to Deal in Intellectual Property Right by a Single Firm and the Competition Law
Mio Tanahashi
Research Fellow, Institute of Intellectual Property

   Although there is a theoretical conflict over the legality of a refusal to deal in intellectual property right by a single firm, since there has been neither decisions nor case examples under Japanese law, specific cases (Magill case, IMS case, etc.) under the EU law are taken up as examination materials. On that basis, the writer reached the opinion that the illegality of a refusal to deal in intellectual property right by a single firm is determined based on the correlation among the following: (1) importance in terms of the high technical or creative value that an intellectual property inherently involves and the degree of investment, (2) importance which is created by external factors such as standardization, network effects and other social environments and (3) the importance and costs of materials and processing other than the intellectual property. Moreover, this report also examines the selection of enforcement (whether it is appropriate to entrust cases to an order for elimination measures by the Fair Trade Commission, an order for compulsory trade or a decision on a suit for compensation for damages by the court based on the institution of a suit by a private individual, or an arbitration decision by the Minister for Economy, Trade and Industry or the Commissioner of the Patent Office) when a refusal to deal by a single firm is considered to be illegal.

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20. Expansion of the Scope of Protection under Law of Business Symbols: Based on US Law concerning Dilution
Masaharu Miyawaki
Research Fellow, Institute of Intellectual Property

   This report focuses on the issue of "dilution" of business symbols, and studies the expanded protection under law of business symbols by referring to U.S. law. The regulation of dilution, which protects the association and the image derived from the symbol, is decisively different from the original regulation under law of business symbols (regulation of confusion), which is intended for protecting "good will." Therefore, sufficient consideration must be given to such distinctiveness in the institutional designing and implementation of the regulation of dilution. This report mainly reviews court decisions under the Federal Trademark Dilution Act in the United States, and identifies that the regulation of dilution and the regulation of confusion are not effectively distinguished in the United States. The same problem is becoming clear in the court decisions under the Unfair Competition Prevention Law in Japan. In the future, it will be necessary to conduct further in-depth discussions on the appropriate distinction between the regulation of confusion and the regulation of dilution, keeping the ideal form of regulation of dilution in mind.

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21. Study on Protection of Traditional Knowledge and Intellectual Property
- From an Era of Preservation to the Utilization of Genetic Resources and Traditional Knowledge -
Maiko Ozawa
Research Fellow, Institute of Intellectual Property

   Due to the trend of globalization, it has become increasingly necessary to study intellectual property issues from viewpoints that had never been taken into account in the past, such as environment, poverty and ethical issues. Protection of traditional knowledge is one such viewpoint that has not been sufficiently considered in Japan until now.

   Accordingly, this report attempts to clarify as much as possible the outline of the issues related to protection of traditional knowledge under the intellectual property system, with the aim of facilitating consideration of protection of traditional knowledge in the future.

   Firstly, Chapter I gives an overview of what traditional knowledge is and reviews the value of traditional knowledge as well as the need to protect it. Chapter II summarizes the scope of protection of traditional knowledge under the existing intellectual property system and its limits. The subsequent Chapter III outlines the new approaches currently being studied for protection of traditional knowledge, and examines those approaches. Chapter IV reconsiders the idea of traditional knowledge as the common heritage of mankind, and based on this, the conclusion presents the points that should be noted in future discussions.

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