IP IN JAPAN
• New types of trademarks, such as for colours and sounds, will become registrable.
T e revived post-grant opposition procedure will be document-based, without hearings and witness testimony, and the opponent will be able to intervene during the procedure aſt er fi ling an opposition brief only if claims are amended. T e period for fi ling an opposition will be six months from the date of publication of a patent. As for ‘new’ trademarks, smells and scents will not yet be registrable.
Amicus briefs in Japan?
On January 23, 2014, the IP High Court, headed by Chief Judge Toshiaki Iimura, announced that three pending appeal cases, including an appeal from the fair, reasonable, and non- discriminatory (FRAND) decision rendered in one of many cases between Apple and Samsung Electronics in Japan, would be reviewed by the Grand Panel of the Court, which consists of the four heads of all the four divisions and another judge. Samsung Electronics fi led two preliminary injunction actions and, in response, Apple fi led an action for the confi rmation of non-existence of liability.
Also, it was announced that it was possible for the public to send comments to any of the law fi rms handling these cases, including the Tokyo offi ce of Morrison & Foerster (Ito & Mitomi), by March 24, 2014. Public comments received by the two fi rms would be submitted to the IP High Court as evidence. T e IP High Court has announced that it received a total of 58 briefs including ten from overseas.
T is is the fi rst time any Japanese court has solicited public comments in a civil case. As the US-style amicus brief system does not exist in Japan, the public comments will be collected by the law fi rms and then submitted to the court as part of documentary evidence.
Changes to the employee invention scheme
Since around December 2012, discussions about revising the Patent Law to change the current employee invention scheme have been gaining momentum, and a bill to amend the Patent Law may be submitted to the Diet, with a high likelihood of passage, by the end of this year. Currently, when an employee-inventor makes an invention, the employee-inventor has the right to obtain a patent. Article 35 of the Patent Law stipulates that an employer can acquire that right from the employee-inventor by virtue of corporate rules or a contract with the employee. In return, the employer must give ‘reasonable value’ to the inventor.
www.worldipreview.com
Balance of payments for IP rights 1.0 Trillion yen (about $10 billion)
0.8 0.6
0.4 0.2 0
-0.2 -0.4
96 (FY) 2000
“A GREAT VARIETY OF OPINIONS HAS BEEN PRESENTED, AND IT REMAINS TO BE SEEN WHAT THE FINAL LANDSCAPE WILL BE FOR EMPLOYEE INVENTIONS IN JAPAN.”
Source: Nikkei, March 1, 2014 04 08 13
A decision handed down by the Supreme Court of Japan on April 22, 2003, in the Olympus case (Minshu, vol. 57, issue 4, page 477) made it clear that a court has authority to make its own calculation of
this ‘value’ based on licensing
royalties and profi ts of the employer. In 2004, the Tokyo District Court awarded 20 billion yen ($194 million) to Dr Shuji Nakamura, inventor of a method of producing blue LEDs and blue laser diodes while working as a researcher at Nichia Corporation. Although this decision subsequently ended with a settlement before the Tokyo High Court of 840 million yen ($8.1 million) including interest, these decisions led to an outcry among corporate managers asking for reform.
In 2004, the Patent Law was amended to give more weight to procedures that are taken within a company to decide on specifi c rules for employee inventions. If
the procedures are followed
properly, it would be diffi cult for an inventor to ask for more compensation than that provided by such rules.
Currently, corporate managers of large companies, as represented by the Keidanren and the Japan Intellectual Property Association, are making concerted eff orts to change the original or inherent ownership of an employee invention to the employer, not the employee-inventor, and to separate remuneration from the value of the patented invention. A great variety of opinions has been presented, and it remains to be seen what the fi nal landscape will be for employee inventions in Japan.
Balance of payments for IP rights
While the overall current account balance for Japan is deteriorating, due in part to a weak yen and the increasing cost and volumes of imported
fossil fuels, the balance of payments for IP rights, including patents, trademarks, and copyright, are continuously increasing, as shown in the graph below, in which the fi gures for the fi scal year 2013 are those up to January 2014.
It will exceed one trillion yen in the 2013 fi scal year, which ended in March 2014. If we look at the balance of technology trade, the picture is even better. T e corresponding fi gure is 2.3 trillion yen for the 2012 fi scal year, and is also increasing.
Shoichi Okuyama is a co-principal at Okuyama & Sasajima. He can be reached at:
okuyama@quon-ip.jp
Shoichi Okuyama, PhD, is a Japanese patent attorney. He has received a number of awards including an Award of Merit from Linn Inn Alliance in 2013. He is a former president of the Japan Patent Attorneys Association.
World Intellectual Property Review Annual 2014
99
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112 |
Page 113 |
Page 114 |
Page 115 |
Page 116 |
Page 117 |
Page 118 |
Page 119 |
Page 120 |
Page 121 |
Page 122 |
Page 123 |
Page 124 |
Page 125 |
Page 126 |
Page 127 |
Page 128 |
Page 129 |
Page 130 |
Page 131 |
Page 132 |
Page 133 |
Page 134 |
Page 135 |
Page 136 |
Page 137 |
Page 138 |
Page 139 |
Page 140 |
Page 141 |
Page 142 |
Page 143 |
Page 144 |
Page 145 |
Page 146 |
Page 147 |
Page 148 |
Page 149 |
Page 150 |
Page 151 |
Page 152 |
Page 153 |
Page 154 |
Page 155 |
Page 156 |
Page 157 |
Page 158 |
Page 159 |
Page 160 |
Page 161 |
Page 162 |
Page 163 |
Page 164 |
Page 165 |
Page 166 |
Page 167 |
Page 168 |
Page 169 |
Page 170 |
Page 171 |
Page 172