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Research Activity Summary of FY2002

1. Dispute Resolution Systems for Industrial Property in Japan and Foreign Countries

  The importance of prompt and reasonable settlement of industrial property disputes has been made obvious not only among the parties to the disputes, but also to the related organizations.
   This report focuses on the reforms of the JPO's appeal/trial system and other systems that have been required in the Intellectual Property Policy Outline. Specifically, in order to provide foundation material for the 2003 amendment of the Patent Law, the legal systems of various other countries were studied and compared with those systems under the current Japanese law, with respect to the following two issues: (1) issues concerning the opposition system and the invalidation trial system; and (2) issues pertaining to post-grant corrections. Foreign countries' practices have been reviewed regarding the eligibility for a demandant of a trial, examination of evidence ex officio, attack/defense opportunities, and prevention of rehashing of disputes as the issues relating to (1) above. While those issues reviewed relating to (2) include the outline of the correction system, provisions on suspending pending disputes, and practices in infringement litigation. Study has been also conducted on the design and trademark systems from the same viewpoints.
   Furthermore, a questionnaire survey was conducted to those who have actually used the JPO's Hantei system (advisory opinion on the technical scope of a patented invention), in order to analyze the present-day significance of that system.

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2. Trademark System in the 21st Century

   Although the current Japanese Trademark Law has been amended several times since its promulgation in 1959, these amendments have mostly been technical revisions of provisions to enable additional necessary requirements. Currently there are calls for a fundamental amendment to the law.
   In this study, problems have been reviewed and analyzed for the following eight major issues that need to be examined for fundamentally amending the current Trademark Law, with strategic utilization of brands as one of the key perspectives: (1) the addition of "distinctiveness" to the definition of a "trademark"; (2) the protection of trademarks consisting of sounds, colors, and scents; (3) whether or not to allow "electricity" as goods under the Trademark Law; (4) whether or not to allow "retailing" as services under the Trademark Law; (5) introduction of a comprehensive definition for "use"; (6) whether or not use by sound should be considered as the "use with respect to mark" in Section 2(3) of the Trademark Law; (7) introduction of a consent system; and (8) review of the defense mark system.

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3. Desirable Way of Employees' Inventions System

  The Tokyo High Court decision of May 22, 2001 indicated an interpretation that a "reasonable remuneration" stipulated in Section 35 of the Japan Patent Law may not be unilaterally provided by an employer in the "service regulation or other stipulation," and an employee may claim any deficient amount from the employer. This has prompted a rapid growth of public attention to desirable way of employees' inventions system, attribution of rights, and "reasonable remuneration" to be paid to an inventor.
   With regard to employees' inventions, it is an important task to be achieved for strengthening Japan's industrial competitiveness to reduce intellectual property management costs of companies by preventing labor-management conflicts, while promoting more original and creative inventions.
   In this study, basic research was carried out to provide useful information for considering desirable way of employees' inventions system, which has been sought in the Intellectual Property Policy Outline. Specifically, the actual conditions of the employees' inventions systems of Japan, the U.S. and Europe were researched and considered from the viewpoints of patent law, civil code, labor law, and economics. The issue of inventorship was also studied.

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4. Ways of Protecting New Technology Related Inventions in the Life Science Field

   The technologies newly emerging in the life science field are characteristic in the following respects: (1) a shift from micro to macro; (2) an increased role of research tools; and (3) digitization of the findings. In order to appropriately protect inventions relating to such new technologies, it is not only necessary to consider measures for the individual technologies, but it is also important to adjust our basic method of reasoning with respect to issues such as the limits of the scope of protection under the Patent Law and the balance between the scope of protection and disclosure.

   In this report, the characteristics of the newly emerging technologies were confirmed and problems that arise with respect to patent protection were highlighted. Then, the gap between the inventors' awareness and the current law were analyzed from the perspectives of description requirements and usefulness. At the same time, the patentability of inventions relating to new technologies were studied in detail to investigate the limits of the scope of protection under the Patent Law and to indicate various problems and methods for solving them. Furthermore, the way in which findings that cannot be protected under the Patent Law could be protected in light of general tort law was also examined.

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5. Overseas Fee Systems and Finance Policy regarding Industrial Property Rights

   The forms of fee systems adopted for industrial property rights are an important issue both for users who pay the fees and for the JPO, which must pay for the necessary costs from the collected fees. However, the current fee systems have many challenges to be tackled, including: (1) international harmonization of various differences with overseas practices, such as gaps in fee level and the different fee-setting methods; and (2) how the policy objectives, such as encouragement of invention and filing, implementation of prompt and precise examination, and relief of the financially weak, should be reflected in the fee systems.
   In this report, the fee systems for US, UK, German, and French industrial property rights and the fee system for the European patent application under the EPC were studied, and the current situation of the balance of fees paid before and after the issuance of patents as well as the graduated rates of patent maintenance fees were analyzed. A questionnaire survey was also conducted to the national authorities of the respective countries and EPO to find their respective approaches to fee systems. In addition, such aspects as discount system, reimbursement system, methods of fee revisions and financial management of the respective authorities were analyzed.

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6. Legal Issues Concerning Use of Intellectual Property Rights as Trusts

   Presently, when intellectual property rights are managed and utilized within a corporate group, or when universities transfer technologies to the private sector, the rights are managed in a centralized manner by way of transferring or entrusting the rights. However, centralized management through these methods involves various potential managerial risks.
   On the other hand, centralized management by use of the rights as trusts, which is a method located in-between the transfer method and the entrustment method, is a potential method for enjoying the merits of both systems.
   This report particularly focused on the rights to obtain patents among the intellectual property rights, and based on an assumption to conduct centralized management of those rights by the trust method, analyzed the possibility of deeming them as trust property, the problems under the trust law such as the relationship between the truster and trustee, the treatment of taxes and accounting related to the trusts, and the significance of the trust method. At the same time, the trends of use of the trust system in Europe and the United States were investigated.

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7.   Patent Claim Interpretation (II)

   In Japan, the doctrine of equivalents has become established as one of the basic principles in claim interpretation. On the other hand, functional claims and product-by-process claims are thought to be interpreted by comprehensively considering the individual case-specific factors based on the principles of general claim interpretation.
   In this report, recent court decisions have been analyzed and studied with respect to the interpretation of the doctrine of equivalents, functional claims, and product-by-process claims in Japan, as an extension of last year's Report on Patent Claim Interpretation. With regard to the doctrine of equivalents, the relevant lower court decisions after the Supreme Court decision in the ball spline case in 1998 were collected, and then analyzed and grouped as to the status of application of the five requirements for establishment of equivalence. Furthermore, they were compared with the US, UK, and German court decisions that had been analyzed in last year's report so as to examine their respective interpretations in detail.

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8. Trends of Licensing Agreements in the Industrial Sector and Subsequent Economic Problems

   With the current serious economic conditions surrounding Japanese companies, intellectual property strategy including licensing activities has become, and will continue to be one of the important business strategies for such companies.

   In this report, the actual conditions and the certain problems of companies' licensing activities were investigated and studied, while taking a look at the background of and the problems in the strengthened Japanese patent system, the licensing regulations, and the relationship between the patent system and licensing agreements.

   Specifically, licenses in life science, biotechnological, and pharmaceutical industries as well as the electric and electronic industries and the research of actual patent pool system and problems for such system were analyzed.

   In addition to the above, the necessity for economic analysis, such as the evaluation and study of technological innovations and spread of the technology based on patent data, and the expected patent data for performing such purpose, were also examined.

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9. Desirable Form of Unfair Competition Prevention for the Reinforcement of IP Protection

   The Intellectual Property Policy Outline urges stronger protection of trade secrets under the Unfair Competition Prevention Law, both in civil and criminal respects.
   In order to address these challenges, this report analyzed ideal provisions for facilitating proof of the presence of an act of infringement and the amount of damages in litigation under the Unfair Competition Prevention Law, and the conceptual provisions appropriate for the present networked society.
   In addition, the problems that would arise if criminal penalty provisions for strengthening protection of trade secrets were established in the Unfair Competition Prevention Law and problems related to the protection of trade secrets in litigation were studied.
   An analysis was also made as to the trade secret management guidelines that would be helpful for companies to formulate strategic programs for improving their management of trade secrets.

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10. Strategic Drafting of Applications for US Patents by Japanese Companies from an Enforcement Perspective

   It has become more and more important for Japanese companies to obtain patents in Europe and the United States, in order to keep competitive in the world. In the United States in particular, the validity and the scope of the right of a patent is judged by a court, so in order to make use of a patent right, one must not only register the right with the USPTO, but also be able to fully claim the right in court.
   In this report, about 100 US patents owned by Japanese companies were analyzed to study whether or not the descriptions of their patent claims and specifications would be sufficient for claiming due rights in court, and the points that should be noted upon filing were indicated.
   As a result, various problems came to light, including the fact that the specifications had not been drafted with consideration to the recent trend of the Court of Appeals for the Federal Circuit (CAFC) to interpret patent claims narrowly based on the descriptions of the specification, as well as the lack of effort to make the specification easy to understand technology for the jury and judges.
   With the aim of remedying such problems, guidelines of the matters that should be described in the respective parts of US patent specification, and a checklist for drafting an application for a US patent based on a Japanese original specification were created.

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11. Reference Guidelines for Strategic Acquisition and Management of Intellectual Property by Companies

   In the global market environment of recent years, a company is required to recognize intellectual property in its business strategy as a source of its competitiveness and incorporate it into its business activities. By conducting business under such policy, the company would be able to strengthen its competitiveness and maximize profitability and corporate value. However, in Japan, there are concerns that few companies have top management that is formulating business strategy, R&D strategy and intellectual property strategy as a triune unity and strategically acquiring and managing intellectual property.
   In this study, in accordance with the direction of the Intellectual Property Policy Outline, in order to obtain basic information applicable in developing "reference guidelines" that a company may refer to in designing a program for global strategic acquisition and management of intellectual property, we conducted a comparison of patent registrations in the United States by Japanese, American and European companies and a quantitative analysis of the relation between the number of Japanese patent registrations and the profitability of Japanese companies. Based on such actual data, we made an analysis and study about how strategic acquisition and management of intellectual property should be designed and implemented.

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12.  Ideal Future Structure of the Patent Microorganism Depository System

   When filing a patent application for an invention relating to a microorganism, the applicant is obligated by law to deposit the relevant microorganism at an organization specified by the JPO Commissioner, in principle, in order for the specification to meet the disclosure requirement, and for ensuring third parties' access to samples of the microorganism. With the recent development of the biotechnological industry, however, the patent microorganism depository system has been criticized as a system that has not completely responded to the changes in the circumstances of the times, and requires improvement, both in terms of the system and its operation.
   In this report, domestic companies using the microorganism depository system were interviewed and a questionnaire survey was conducted to international depository authorities, then based on analysis of user needs for the depository system, and the differences of the Japanese depository system with the systems in Europe and the United States, an investigation was carried out into the future ideal structure of the patent microorganism depository system in Japan.

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13. Stretching the Trademark Protection System
Frank Gotzen
Director Centre for Intellectual Property Rights (CIR)
Brussels and Leuven, Belgium

   The European trademark protection system, which is based on the Trademark Directive and the Community Trademark Regulation, offers a broad scope of protection in two respects. First, in that it allows for trademark protection without stern demands. This can be seen from the liberal approach of case law regarding the conditions for securing registration and assessing the validity of the trademark, such as the capacity to distinguish. It can also be seen from the large possibilities left to protect shapes, colours, sounds and even scents. Second, in that the scope of infringement can extend over uses of a mark for dissimilar goods or services.

   In our research paper we present an overview of recent case law on these questions by the European Court of Justice and by the Court of First Instance of the European Communities, against the background of Japanese trademark law. The comparison shows that the European system seems to be the more liberal one. We can see that in the growing tendency in Europe to accept, at least in principle, non-traditional marks and in the readiness to extend the protection scope of marks into the field of dissimilar goods and services.

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14. Protection of Shapes as Trademarks
Sigrid Asschenfeldt
Lawyer, Doctoral Candidate, Max-Planck Institute for Intellectual Property, Competition and Tax Law, Munich,
and the Fern Universitat Hagen

   The registration of "shapes of goods and packaging" in the list of signs capable to become trademarks, so called "three-dimensional marks," had the potential to change the traditional perception of trademarks as names or logos. 6 years after the amendment of the Trademark Law in Japan and 12 years after the first European Trademark Harmonization Directive lead to amendments of the Trademark Laws in most European countries, followed by the introduction of the European Community Trademark System in 1995, the article sets out to compare the practice concerning marks comprised of the configuration of goods or packaging. It discusses problems resulting from the dual nature of shapes, which can embody functional features or aesthetic embellishments and identify a products' origin at the same time. It juxtaposes the Japanese Patent Office' s practice regarding the prerequisites for registration and the approach of the European Community Courts and the Office for Harmonization in the Internal Market (OHIM). Emphasis lies on the tests for inherent distinctiveness and non-functionality, the latter illustrated by the differing approaches of the European Court of Justice and the German Federal Supreme Court. While the system is still in the process of being carved out, it can be said that European practice takes a generous view toward the registration of (parts of) product configurations and packaging, in particular the shape of bottles.

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15. Selected Aspects of Enforcement of Intellectual Property Rights in Japan and Vietnam -A comparative study with respect to TRIPS standards of enforcement -
Viet D. Phan
Doctoral Candidate Technology University of Dresden

   "The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is not only the first one to combine intellectual property with trade issues. With its more or less detailed enforcement provisions, TRIPS also created a new level of international treaties concerning intellectual property. The presentation will focus on the standards of enforcement of intellectual property rights as provided for by TRIPS (principles of enforcement, civil and administrative procedures, preliminary injunctions, border measures and criminal sanctions), including their current situation, problems and issues. As examples, the system of enforcement of intellectual property rights in Japan and Vietnam will be analyzed with focus on their compliance with the TRIPS provisions. As intellectual property right enforcement was one of the most debated issues between developed and developing countries during the Uruguay Round negotiations, the impact of raising standards of enforcement of intellectual property rights on development and welfare of developing countries, as in the case of Vietnam, will also be discussed. The presentation will end with the conclusion that there is a substantial change in the situation for developing countries in the post-TRIPS era. Today's question for those countries is no longer whether to enforce intellectual property rights or not, but to find out ways to apply the TRIPS standards that best fits to their development needs."

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16. Comparative Study on the Judicial Protection of Intellectual Property: From the Viewpoint of the Trial of Intellectual Property Cases between China and Japan
Luo Dongchuan
Deputy Chief Judge, Third Civil Tribunal, The Supreme People's Court

   Following its entry into the WTO, China is facing the new challenge of how to strengthen judicial protection for the intellectual property. In recent years, China has put forward the strategy of building the country by strengthening science and education while advocating judicial system reform. Meanwhile, Japan also is implementing its judicial system reform. Japan put forward the "Intellectual Property Policy Outline" and drew up the "Basic Law on Intellectual Property" in 2002. Under the new circumstances, China and Japan have attached unprecedented importance to the judicial system and intellectual property protection. This is the new background of intellectual property protection. Under this historical situation, it is of special importance to make a comparative study on judicial protection for intellectual property between China and Japan because both countries can learn from each other in judicial protection for intellectual property and judicial system reform. This article, from the perspective of how to improve the law enforcement and judicial system in order to adapt to the new needs in the new century in terms of intellectual property protection, makes a comparative study of the judicial systems and judicial remedies for intellectual property between China and Japan.

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17. Interpretation of Functional Claims in the United States
Takashi Ohno

   The way in which the patent claim should be interpreted for determining the scope of protection of a patent right is an important subject. Functional claims, which are patent claims described using functional expressions, are convenient and are frequently used for inventions that are characterized by their functions or inventions in technical fields where there are no established terms to express the means for performing the functions. On the other hand, it has been indicated that functional claims make the scope of protection ambiguous and excessively broad since they literally cover all means for performing the function. In the United States, 35 USC §112, ¶6 stipulates that a claim can be described by a combination of functions, but that the scope of protection of such a claim should be narrowly interpreted. Thus, the question of how functional claims should be interpreted has been examined in many court decisions.
   In this report, recent court decisions involving interpretation of functional claims, in particular, their scope of protection, were analyzed based on the historical background of interpretation of functional claims in the United States, and a comparative study was conducted on a small scale, with the situation of protection in Japan.

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18. Desirable Intellectual Property Rights System for Promoting Sound Development of E-Commerce, etc. via the Internet
Takashi Kimura

  The rapidly developing Internet has been showing its significant progress also in the field of e-commerce in recent years. One of archetypal examples is a system where on-line purchasers submit their credit card information via the Internet at the point of ordering books or concert tickets, and have them (tangible goods) delivered to their home at a later date, or enable to directly and immediately download digital contents such as e-books, music in digitized form or application software for personal computers, onto their personal computers via the Internet.
   This report reviews the problems on trademarks, copyrights, and acts of unfair competition that occur in the field of e-commerce under such circumstances, and discusses whether they can be dealt with under the current legal system and which kind of legal system should be adopted/established if they could not be appropriately resolved under the current legal system.

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19. Progressive Development of Protection Framework for Pharmaceutical Invention under the TRIPS Agreement-Focusing on Patent Rights
Akiko Kato
Research Fellow

  This study examines the international protection framework that the TRIPS Agreement of the WTO is forming in respect of the protection of pharmaceutical inventions by patent rights, from the standpoint of the interpretation of international law. The TRIPS Agreement constitutes an annex of the WTO Agreement, and it is interpreted by applying customary rules of the interpretation of public international law. Therefore, this study initially clarifies the rules of interpretation that are applicable to the TRIPS Agreement. It then sorts out the relevant provisions for the protection of pharmaceutical inventions by patent rights and the interpretation of these provisions, and attempts to gain dynamic understanding thereof by considering different cases. The interpretation of the TRIPS Agreement is in the process of progressive development in the sense that it is clarified as a result of inter-state disputes set forth to the WTO dispute settlement procedure and discussions at the TRIPS Council, especially discussions on developing countries that have difficulty accessing pharmaceutical products. Through consideration of the issue, this study clarifies the fact that the WTO Members are proceeding with finding a balance between the protection of pharmaceutical inventions by patent rights and the social need to use inventions on the international plane, as well as the necessity of such viewpoint.

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20. Intellectual Property Litigation and Foreign Sovereign Immunity: International Law Limit to Jurisdiction over the Infringement of Intellectual Property
Akihiro Matsui
Research Fellow

  Foreign sovereign immunity is the international law rule that foreign states are entitled to immunity from the jurisdiction of municipal courts. Entities other than foreign states, such as state enterprises, are also entitled to immunity. The majority view now seems to be that immunity need not extend to "commercial" transactions, but it is not clear whether immunity extends to infringements of intellectual property. Infringements of intellectual property are not always caused by breaches of contract, although breaches of license agreement may be regarded as commercial.
   This report reviews court decisions in several states and points out that immunity may extend to an infringement of intellectual property where immunity is determined based on whether the infringing act is commercial. And, this report analyses the provisions of treaties and municipal laws which deny immunity in intellectual property litigation. In addition, this report examines how foreign sovereign immunity is related to the issue of jurisdiction over international infringements of intellectual property.

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21. Disclosure of Technology - based intangible assets

  This report aimed at providing basic materials for formulating the guidelines concerning disclosure of information on technology - based intangible assets, which has been sought in the Intellectual Property Policy Outline, through studying the items that should be disclosed and investigating and analyzing the best practices in the United States and Japan. In addition, a pilot model of technology - based intangible assets report was created; this report recommends autonomous disclosure of information on technology - based intangible assets, secures the formulation of management strategy by companies, and serves as one type of reference material for determining investment in the market.
   Through such disclosure of information, investors would be able to predict the future performances of a company without depending solely on its past performances, thereby achieving a more legitimate stock price.

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