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Research Activity Summary of FY2013

1. Desirable fee system and description requirement for claims

   With the globalization of economy, there has been an increase in the number of cases where an inventor files patent applications for the same invention in many countries. However, since the description requirement varies from one country to another, the users are considered to be required to prepare claims in accordance with the requirements of each country. Furthermore, since each country has a different fee system for claims, the number of claims acceptable to users, cost-wise, could differ from one country to another. Consequently, it is quite likely that the global patent acquisition procedure has become increasingly complicated and expensive.

    This research project was carried out in order to analyze the users' needs for international harmonization of the description requirement and fee system for claims and to collect information on the systems in other countries in order to provide a basis for discussions as to how to promote international harmonization. As a part of this research project, we conducted a questionnaire survey and an interview survey on domestic companies, universities, patent firms, etc. and also an interview survey on foreign IP Offices and foreign companies, etc. in other countries. We established a committee for this research and had the committee members discuss the findings of these surveys.

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2. Issues faced by companies, etc. with regard to the operation of the system specified in Article 35 of the Patent Act and possible solutions thereto

   When Article 35 of the Patent Act was revised in 2004, the employee invention system was established for the purpose of raising the predictability of the amount of consideration that the employer has to pay and increasing the level of the employees' satisfaction with the fairness of the evaluation of their inventions.

   However, even after this legal revision, some people request re-revision of Article 35 of the Patent Act, saying that the employees' right to receive "reasonable consideration" remains a managerial risk factor. On the other hand, due to the absence of relevant court precedents after the legal revision, some people consider it unnecessary to review the employee invention system, saying that it is necessary to observe the situation for the time being. In this way, opinions are divided over the necessity of further revision.

  Against this backdrop, we carried out this research by having our overseas information centers gather information and conducting a questionnaire survey on companies, and revealed how the employee invention systems in and outside Japan have actually been operated. Furthermore, we established a committee and had it examine the information collected through these activities and had each committee member give us various comments and referential information from the perspectives of the intellectual property laws, labor laws, the Civil Code, corporate IP activities, and the treatment and awareness of researchers, which we found very useful for further discussion on the roles of the employee invention system.

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3. Effect of Patent Rights in Light of the Diversification of the Manner of Exercising Rights

   Amidst the recent rapidly changing environment surrounding patents such as the development of open innovation, diversification of the types of patentees and globalization of the economy, some people say that restrictions should be imposed on the exercise of the right to seek an injunction, if necessary, in order to preventobstacles to the promotion of innovation. For example, they argue that such restrictions should be imposed on a patentee's right to seek an injunction if the patentee is a patent troll, or if the patent that the patentee holds is a standard-essential patent or a patent that is insignificant in terms of the contribution ratio for the product. In recent years, since the judgment for the eBay case was handed down, there has been an increase in the number of judgments where the court dismisses a claim for an injunction in the U.S. In Japan, a court handed down a judgment for a case where a claim for an injunction was made based on a standard-essential patent. In this way, both in and outside Japan, courts have been handing down judgments for cases involving the issue of the right to seek an injunction.

   In this research, we collected the latest information in Japan and studied the situations in other countries that have deep relationships with Japan from the perspective of the legal systems and court decisions related to the right to seek an injunction and also from the perspective of international discussions on this issue. The purpose of this research is to provide a basis for further discussions on how to restrict the right to seek an injunction.

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4. Desirable Amendment and Other Procedures and Systems under the Patent Registration Order

   Patent rights are an exclusive right of control, and their change, etc. is publicly notified through adoption of a registration system in order to prevent the change, etc. from causing unanticipated damages to a third party. The Patent Registration Order that provides for registration has not been drastically revised since its enactment, and includes no provisions on amendment of procedures. In this regard, some users request introduction of an amendment system. In addition, an amendment system is available for some procedures under the Real Property Registration Act that was used as a reference when enacting said Order.

   Furthermore, in Japan, discussions have been carried forward with a view to accession to the Patent Law Treaty (PLT). The Regulations under the Patent Law Treaty requires that the Office of a Contracting Party accept correction of a mistake in some of the application procedures for a certain period of time.

  Therefore, this research study was conducted to prepare basic material to be used in considering introduction of an amendment system in the Patent Registration Order by figuring out problems with the impossibility of making an amendment under the current Japanese industrial property right registration system, the actual conditions thereof, and related user needs, as well as by studying and analyzing amendment and other procedures under the Real Property Registration Act and under other countries’ industrial property right registration systems.

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5. Desirable Monopolistic License System

   In relation to patent rights and other industrial property rights under the current law, exclusive licenses (exclusive right to use) and monopolistic non-exclusive licenses (monopolistic non-exclusive right to use) are available as forms of monopolistic licenses that limit licensees to a single actor. Of these, registration is required for the coming into force of a statutory exclusive license (exclusive right to use). However, the amount of consideration for an exclusive license and other items were deleted from the matters to be registered through the 2008 legal revision.

   However, the utilization ratio of the registration system is low, and the number of such exclusive licenses for patent registered annually remains around 300. In addition, although the system whereby a non-exclusive license can be asserted against a third party without registration was introduced in relation to non-exclusive licenses through the 2011 legal revision, the system is inconvenient in that, in relation to a monopolistic non-exclusive license (monopolistic non-exclusive right to use), the licensee can neither assert the monopolistic exploitation of the relevant patent right against a third party nor directly request an infringer who works the patented invention without authority suspend the infringement.

   Therefore, this research study was conducted in order to prepare basic materials to be used in considering the necessity of establishing a new system that eliminates the problems of the monopolistic license-related systems under the current law.

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6. Establishment and Operation of a Patent System Conducive to Patent Stability in Infringement Lawsuits

   The Cabinet decision "Basic Principles Concerning the IP Policy" was adopted on October 7, 2013. In this document, the government declared its determination to examine whether the IP dispute settlement system is working properly as a whole and to take measures to further enhance the system in terms of its patent dispute settlement function in order to strengthen Japanese industrial competitiveness. In order to create one of the world's most sophisticated IP systems, it is necessary to improve the system from the perspective of broadening the spectrum of users (special support for Small-and-Medium-sized Businesses (SMBs) and venture companies), promoting innovation (strategic support to turn technologies and R&D capabilities into assets), and supporting global business activities (grant of stable rights that are effective in and outside Japan).

   On the other hand, Japan’s numbers are lower than Western countries’ in terms of patent infringement lawsuits and the patentee's win rate in infringement lawsuits. It has been pointed out that one of the reasons for this difference is that, since the rendering of the Supreme Court judgment for the Kilby case, the defense of invalidity has been permitted to be raised in an infringement lawsuit under Article 104-3 of the Patent Act (enforced on and from April 1, 2005), which has increased the burdens on the patentee in an infringement lawsuit. Consequently, this has prevented patentees from fully exercising their rights. This situation might be discouraging companies from filing patent applications and hindering the promotion of innovation.

   In this research, we identified specific needs of Japanese users with regard to the establishment and operation of a patent system conducive to patent stability in infringement lawsuits, etc. and also analyzed similar systems in other countries. Based on the findings, we discussed how to improve the patent stability evaluation system for patent infringement lawsuits in Japan.

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7. Application Behavior for Industrial Property Rights toward Acceleration of Techno logical Innovation in Japan

  The intellectual property system is one of the most important institutional infrastructures that support innovation activities. There is thus a request for consistent efforts to improve the system for the purpose of promoting innovation. In addition, data on intellect ual property activities, such as patent data, are indispensable in analyzing the research and developm ent and innovation activi ties of companies, etc.

   In this research, six kinds of empirical analyses w ere conducted by taking advantage of patent databases and the “Survey on Intellectual Property-Related Activi ties,” etc. implemented by the JPO based on previous studies. Specifically, these analyses concern the effects of a change to the unity of invention requirement in Japan, the effects of the provisions on exceptions to lack of nove lty in Japan, the relationship between an increase in the grant rate of patent applications and reasons for refu sal in Japan, the complementary relationship between the design system and the trademark system, the condition of distribution of patent documents in major countries by technical field, and trial-related information in the East Asian Region. Furthermore, the sampling method that is used in the Survey on Intellectual Property-Related Activities, which serves as the basis for the empirical analyses, was examined, and a trend survey was conduc ted on the empirical analyses of intellectual property systems overseas.

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8. Commitments to License on Fair, Reasonable, and Nondiscriminatory Terms: Comparing the Japanese Approach to Technology Standards with Emerging Trends around the World
Carol Mullins HAYES
Research Associate, Univer sity of Illinois College of Law
(Invited Researcher, Institute of Intellectual Property)

   Standard Setting Organizations (SSOs) often req uire members to commit to licensing patented technologies on fair, reasonable, and nondiscriminato ry (FRAND) terms. FRAND commitments may be viewed as contracts. However, enforcing the commitment in fa vor of a standard implementer will generally require recognizing the implementer as a third party beneficiary under the contract, and many countries may be hesitant to give third party beneficiaries full rights to enforce a contract. Attemp ting to evade a FRAND commitment may be viewed as anticompetitive, but juri sdictions differ as to when such behavio r is sufficiently anticompetitive to be actionable. The public benefit of standards and the possibility that this benefit could be harmed by patent holdout also raises the issue of how to det ermine if a patent right is being abused.

   My research examines these questions from an internat ional perspective because of the global nature of technology standards, with additional attention given to th e application of the law of Japan. To gain a variety of perspectives on this topic, I also conducted interviews wi th several industry professionals in Tokyo to obtain the perspective of those who practice in relevant fields in Japan.

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9. The Positive Impact of Intellectual Property Harmonization on Diversity of National Regulations of International Private Law
Judge, District Court in Usit nad Labem, Czech Republic
(Invited Researcher, Institute of Intellectual Property)

   Intellectual property is a legal area, which is regulated by a number international treaties. One of most important international treaties is TRIPS. According to this treaty each member shall award the nationals of other member states treatment which is no less favorable than the treatment offered to its own nationals.

   Currently, patent infringements with certain international aspects are rapidly increasing. Cases, dubbed “patent wars” are becoming more and more common all around the world. The law governing these disputes is usually either elected by the parties or determined in compliance with the EU Regulations known as Rome I and Rome II.

   The aim of this research is to compare patent cases with international aspects in Japan, EPO countries and the European Union (with the focus what is possible direct to preparing Unitary Patent Court). The research will focus on the analysis of law enforcement with an international aspect. The choice of law rules which may have an important impact on the result of IP cases with international aspects will be analyzed. Also the most frequently cited Japanese IP cases will be analyzed. One part of the research will focus on the issue of exhaustion of rights with international element in Japan and compare this issue with cases and theory in the European Union. This research should point out that the harmonization of intellectual property law will have a positive impact on the diversity of national private international law regulations to Hague Conference Project for a Global Convention on Jurisdiction, Recognition and Enforcement in Civil and Commercial Matters – An update including specific proposals for new legislation.

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10. Bioinformatics Materials and Issue of Patentability
Ramesh Bikram KARKY
Postdoctoral Fellow, University of Western Ontario, Canada
(Invited Researcher, Institute of Intellectual Property)

   Bioinformatics is an important field of biotechnology. With the advancement of bioinformatics, the conventional laboratory-based biotechnology has been transformed into a computer-based science. Bioinformatics is able to bring new inventions which are far beyond the scope of conventional laboratory based biotechnology. Bioinformatics has brought various significant advancements in biotechnology field. It is an important area of invention which directly effects human health and other areas of human life. This research addresses the issue related to the patentability of bioinformatics materials. On this issue, different jurisdictions have different approach. Many jurisdictions have not even touched this subject matter. Further research, investment, and development in bioinformatics field will depend on its ability to obtain patent protection. This research critically examines the patentable aspects of bioinformatics materials, i. e., biological sequences, sequences database, and software. It surveys related patent laws and practices of Japan, the US, Europe, Canada and Australia, and it analyzes whether bioinformatics innovations are protected by patent in these jurisdictions; similarity and contradictions of patentability aspects of bioinformatics materials between different jurisdictions; its interrelationship with the open source policy; and the issues of harmonization of this subject matter.

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12. Reconsidering International Jurisdiction in Intellectual Property Rights Litigation
- Ensuring Predictability Under New Interpretations of Judicial Precedents -
(Research Fellow, Institute of Intellectual Property)

   This study uses the analysis of precedents to examine the issue of international jurisdiction – that is whether Japanese courts can hear the increasingly diverse lawsuits concerning the infringement of intellectual property rights and in particular litigation in Japan concerning the infringement of corresponding foreign patent rights. Regarding the analysis of judicial precedents, this study first points out that trends in both intellectual property rights litigation and litigation concerning other forms of property, and then examines the reasons for this. Second, it considers how the application of foreign law affects legal predictability for parties involved in dispute resolution using approaches from comparative law and focusing on the relationship between judgments on international jurisdiction and the applicable law,. Moreover, regarding the application of foreign law, it also investigates systems for conducting foreign legal research in Japan, the design of institutional arrangements in other countries and the techniques used by courts when conducting foreign legal research.

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13. A Study of the Handling of Intellectual Property Licenses in International Insolvency Proceedings
Ikumi SATO
(Research Fellow, Institute of Intellectual Property)

   A system of automatic perfection for non-exclusive licenses was introduced in Japan in the 2011 revision of the Patent Act. This system put in place greater protection for licensees in situations involving the assignment of patents or the insolvency of patent rights holders, thereby laying stable foundations for economic activities conducted on the basis of license agreements. It is hoped that this will also provide a firm footing for the accelerated development of open innovation. However, existing intellectual property legislation is based on the territorial principle. Accordingly, in cases with a foreign element – for example, situations in which a foreign patent is among the patents covered by the license, or in which one of the parties to the agreement is a foreign company – a question arises as to the ambit of the automatic perfection system. In other words, the protection offered by patent licenses is determined by such factors as the applicable law of the agreement, the patents covered by it, and the nationality of the parties, so the conclusion can differ according to the combination thereof. Based on this awareness of the issue, this study clarifies the forms and extent of protection offered by non-exclusive licenses, focusing on situations involving international insolvency, and examines the potential impact of this protection.

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14. A Quantitative Analysis of the Economic Effects of Patents on Industry: The Case of Japanese Automobile Industry
(Research Fellow, Institute of Intellectual Property)

   This study represents an economic analysis of an argument that Japanese firms’ patents are failing to contribute to their profits. Particularly, this study focused on patents for eco-friendly technologies used for hybrid vehicles to verify the economic effects of patents on the automobile industry. Automobiles cover so many elemental technologies that it is unlikely that any single firm will own all of the patents covering one vehicle. Because the patent royalties are spread out across many different patent owners, profitability for patents of automobile technologies is assumed to be low. However, almost all eco-friendly technology patents are monopolized by a few Japanese firms, so this subcategory of patents might make more of a contribution to the profits of Japanese firms than patents generally. This study found that international applications for patents on electric motor technologies can hold down vehicle production costs, but that they do not contribute to the profits of the automobile industry due to the insufficient diffusion of vehicles powered by electric motors. It also found that patents on hybrid vehicle control technologies have failed to contribute to boosting car manufactures’ new passenger car sales. This lack of an effect may be due to hybrid vehicles’ limited market share even in countries with strict vehicle emissions standards, such as Japan and Germany.

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15. Industrial Property Rights and Treaty Revisions in Modern Japan - Diplomacy and Domestic Affairs -
(Research Fellow, Institute of Intellectual Property)

   In 1899, Japan acceded to the Paris Conventions and the Berne Conventions. Details of the process that led up to this have begun to emerge in recent years, primarily focusing on the diplomatic aspects.

   However, little information has emerged so far about domestic affairs, in terms of what kind of domestic problems Japan and Western countries faced in relation to industrial property rights in this process.

   Accordingly, this study examines industrial property rights in modern Japan in terms of diplomacy and domestic affairs to clarify what kind of problems concerning industrial property rights emerged between Japan and Western countries – above all, the UK and Germany, which played a leading role in the treaty revision negotiations – in the process leading up to Japan’s accession to these conventions in 1899.

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16. IP System and Corporate R&D Activities - Empirical Analysis of the Effect of Worker Mobility on Innovation -
(Research Fellow, Institute of Intellectual Property)

   The purpose of this research is to study worker mobility and gain policy implications to create an IP system that can effectively prevent technology leakage caused by worker mobility. Specifically, focusing on the workers who moved from Japanese companies to companies in emerging countries, an analysis was conducted as to what types of researchers tend to move to non-Japanese Asian companies such as Korean companies and Chinese companies from the perspective of career, research field, network index, etc. Furthermore, in order to analyze what types of researchers, among those who moved from Japanese companies to non-Japanese Asian companies, have contributed to innovative activities of non-Japanese Asian companies, an analysis was conducted using panel data. The analysis results have revealed that the Japanese researchers who moved to non-Japanese Asian companies tend to be more competent than those who did not and tend to be in positions where information accumulates. It has also been revealed that, after moving to non-Japanese Asian companies, young researchers with research experience in a specific field have contributed to innovative activities quantitatively, while older researchers with experiences in a wide range of technical fields have contributed to innovative activities qualitatively.

   Based on these findings, it may be presumed that among companies in emerging countries such as South Korea and Taiwan that have been strategically recruiting former workers of Japanese companies who can fill those companies' needs, large companies expect these Japanese workers to bring their accumulated information with them, whereas small and midsize companies expect them to bring technology and know-how with them. From the perspective of protecting important technologies owned by Japanese companies, in order to prevent leakage of competent workers, it is necessary to devise measures and systems such as a remuneration system to provide inventors with more incentives. Regarding an IP strategy, since not only the option of seeking patents for R&D results but also the option of keeping their secrecy as know-how will become increasingly important for companies, the policy to protect trade secrets, etc. should be enhanced. Introduction Since the burst of the bubble economy at the beginning of the 1990s, the Japanese economy has been sluggish for more than 20 years. In particular, the slowdown of the electronics industry has been obvious. Since the 1990s, the Japanese electronics industry has lost its global competitiveness and seen the rise of new companies in emerging countries such as South Korea and Taiwan. One of the reasons why the Japanese electronics industry has lost its industrial competitiveness may be the failure to have its R&D activities create new business and increase profits. So far, Japan has been making profits by taking advantage of its technical superiority and exporting sophisticated products mostly to developed countries. However, developed countries, which have been experiencing the rapid aging of population and decline in the birth rate, have recently been replaced by emerging countries in terms of the importance as a market. For this reason, companies in many countries have been focusing on manufacturing

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17. Laws Applicable to Transfer and Licensing Contracts of Industrial Property Rights
(Research Fellow, Institute of Intellectual Property)

   Conflict of laws rules for juridical acts as specified in Article 7 and later provisions of the Act on General Rules for Application of Laws (hereinafter referred to as the "General Rules Act") are applied to contracts concerned with transfer and licensing of industrial property rights (limited to contractual issues). Rulings and discussions have not sufficiently been accumulated concerning how conflict of laws rules in the absence of choice of law, especially Article 8(2) of the General Rules Act based on the theory of characteristic performance, should be interpreted for industrial property right contracts. The interpretation thus has yet to be clarified. For this reason, I would like to clarify the interpretation of the abovementioned rules in a bid to secure the safety of international transactions. I first analyze related arguments under the Rome Convention and the Rome I Regulation: both of these, as well as the General Rules Act include conflict of laws rules for contracts based on the theory of characteristic performance. With a view to legislative considerations, additionally, I also compare and analyze private international law principles and legislative proposals on intellectual property rights as prepared by four research groups. Based on these analyses, I give my personal view on the abovementioned conflict of laws rules of Japan.

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18. An Empirical Study of Inventive Step in Japanese IP High Court Cases and Reconstruction of Its Test from a Functional View
Takeshi MAEDA
(Overseas Researcher, Institute of Intellectual Property)

   The inventive step requirement is one of the most important requirements for patentability. This study firstly clarifies the functions of the inventive step requirement, which have not previously been fully studied in Japan, and then sets out a theoretical reorganization of the standards used in practice. According to the analysis in this study, the inventive step requirement, which evaluates the level of technical difficulty in creating the invention, functions as a means of sifting out inventions with low development costs but high protection costs, thereby ensuring that only inventions requiring an incentive for their creation are protected. The standards used in practice when judging the inventive step can be classified into two questions, which are whether it was sufficiently plausible to attempt to create the invention from prior arts and whether there was a reasonable expectation of success. Furthermore, this study includes a statistical analysis of recent Intellectual Property High Court cases and its comparisons with the US. It shows that the threshold of the inventive step requirement has changed dramatically in recent years, and that one reason for this change is that the reasoning in judging the inventive step has become more detailed than before. These changes demonstrate an interesting symmetry with recent changes after KSR in the US.

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19. FTA Policy-Making in the EU and Its Effects :Policies toward Intellectual Properties
(Overseas Researcher, Institute of Intellectual Property)

   Each country has recently begun to shift the priority in external trade negotiations to bilateral or regional free trade or economic partnership agreements as multilateral trade liberalization talks have stagnated at the World Trade Organization. Even the European Union, which had given priority to multilateral systems, has become proactive concerning free trade agreement negotiations since the second half of the 2000s, negotiating FTAs with not only growing Asian markets such as South Korea and Singapore, but also major industrial countries like Canada, the United States and Japan. At the same time, the EU has toughened provisions on intellectual property rights protection in FTAs. The EU had adapted IPR protection provisions according to FTA partners’ respective degrees of development in earlier FTAs, but has begun to expand the scope of protection for geographical indications, increase items subject to protection, extend protection periods for submitted drug data and enhance enforcement in a manner to go beyond protection standards under the TRIPs (Trade-Related Aspects of Intellectual Property Rights) Agreement. Why has the EU proactively enhanced international IPR protection through FTAs with industrial countries? The study analyzes changes in the EU’s IPR protection policy in FTAs and political factors behind the changes.

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