IP Strategy Headquarters of Japan
- Treatment in Japan of
TPP/IP Dispute Resolution System AIPLA MWI
IP Practice in Japan Committee Pre-Meeting
Tuesday, January 26, 2016
Kei IIDA
Attorney at Law & Patent Attorney
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IP Strategy Headquarters & TPP
• The IP Strategy Headquarters has been established in
the Cabinet since 2003 under the IP Basic Act.
• The Director-General of the Headquarters is the Prime
Minister.
• The Headquarters annually develops, publishes and
promotes an IP Strategic Program, and takes charge of
other study and deliberation on important IP policies,
and promotion and comprehensive adjustment of
implementation of the policies.
• In November, 2015, the Headquarters developed and
published the “Policies on TPP in IP Field.”
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Prime Minister ABE’s Policy Speech
• In January, 2016, the Prime Minister Shinzo ABE
delivered his policy speech before the Diet based on
the “Policies on TPP in IP Field” as follows:
“ Through innovation, we generate new added value while ensuring sustained
growth. We must transition away from “ever cheaper” towards innovationoriented economic growth that takes on the challenge of making things “ever
better.” Cheap products made inappropriately, such as through counterfeits,
labor exploitation, or causing environmental damage should be cleared away
from the world market. The TPP Agreement is the first step of a great
challenge to disseminate economic rules suitable for the 21st century
throughout the world. … Under TPP, it is no more permitted to unreasonably
request forcible technology transfer. IP shall be protected. TPP is big chance
for small or medium sized or local companies having high technologies.”
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“Policies on TPP in IP Field”
General
1. To reform IP system of Japan necessary for
implementation of TPP.
I.
II.
III.
Patent.
Trademark.
Copyright.
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“Policies on TPP in IP Field”
General
2. To develop new markets through promotion of use
of TPP.
I.
To support JP companies for promotion of exploitation of IPs and
standards in member countries.
i.
ii.
iii.
II.
To comprehensively support overseas expansion of JP content.
i.
ii.
III.
To support small or medium sized local companies challenging overseas markets.
To support for international standardization activities.
To promote export of agricultural, forest and fishery products through
establishment of system for mutual protection of GIs.
To support overseas expansion of broadcast content.
To promote integral overseas expansion of content with products or services.
To support improvement of level of IP protection in member
countries.
i.
ii.
To support JP companies for protection of IPs in member countries.
To support member countries for improvement of IP system and practice.
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“Policies on TPP in IP Field”
General
3. To promote innovation and industrial vitalization
through TPP.
I.
II.
III.
To strengthen IP and standardization strategies by small or
medium sized local JP companies.
To enhance system of JPO for patent examination to lead
member countries.
To further vitalize IP system of Japan through TPP.
i.
ii.
To smoothen utilization of copyrighted works.
To comprehensively study IP dispute resolution system.
IV. To promote IP education in Japan for basis for future innovation.
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“Policies on TPP in IP Field”
Reform of Patent System
• Extension of term for exception to loss of novelty.
– Applicants has enjoyed exception to loss of novelty only for
6 months thereafter.
– Applicants shall be able to enjoy exception to loss of novelty
for 1 year thereafter.
• Improvement of system to adjust patent term on
unreasonable delay which occurred by issuance.
– Patent term may be extended under Article 67-2 of the
Patent Act.
– Patent term shall be extended on unreasonable delay which
occurred by issuance exceeding 5 years from application or
3 years from request for examination.
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“Policies on TPP in IP Field”
Reform of Trademark System
• Introduction of new way to calculate damages.
– In trademark infringement cases, mainly right holder’s lost
profit or lost (reasonable) royalty has been awarded under
Article 709 (tort) of the Civil Code with special provisions
under the Trademark Act for the way to calculate such
damages.
– Statutory damages or additional damages shall be
introduced especially in counterfeit cases.
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“Policies on TPP in IP Field”
Reform of Copyright System
• Introduction of new way to calculate damages.
– In copyright infringement cases, mainly right holder’s lost
profit or lost (reasonable) royalty has been awarded under
Article 709 (tort) of the Civil Code with special provisions
under the Copyright Act for the way to calculate such damages.
– Statutory damages or additional damages shall be introduced
especially in pirate cases.
• Extension of term of protection of copyright.
– Copyright has been protected in general for 50 years after the
death of the author.
– Copyright shall be protected in general for 70 years after the
death of the author.
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“Policies on TPP in IP Field”
Reform of Copyright System
• Partial severe punishment of criminal copyright
infringement.
– Criminal copyright infringement has not been prosecuted
without right holder’s complaint.
– Criminal copyright infringement, to the extent not to give
chilling effect to creation of derivative work, shall be able to
be prosecuted without right holder’s complaint.
• Expansion of protection of effective technological
measures to control utilization of copyrighted works.
– Protection of access control has been limited.
– More access control shall be protected with introduction of
exceptions not to harm right holders.
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IP Strategy Headquarters &
IP Dispute Resolution System
• In May, 2015, the IP Dispute Resolution Task Force in
the IP Strategy Headquarters developed and published
its report on IP dispute resolution system of Japan.
• Thereupon, in June, 2015, the Headquarters developed
and published the IP Strategic Program 2015, one of
three important issues in which is to vitalize IP dispute
resolution system of Japan as follows:
– To strengthen functions of IP dispute resolution system,
– To promote use of IP dispute resolution system, and
– To publish and introduce to foreign countries the information
on IP dispute resolutions.
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IP Strategy Headquarters &
IP Dispute Resolution System
• In November, 2015, the Headquarters further
developed and published the “Policies on TPP in IP
Field”, one of the policies in which is to
comprehensively study IP dispute resolution system of
Japan in order to promote innovation and industrial
vitalization through TPP.
• Now, the IP Dispute Resolution System Committee in
the Headquarters is studying on vitalization of IP
dispute resolution system of Japan according to the IP
Strategic Program 2015, the report of which is to be
published in March, 2016.
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IP Dispute Resolution System Committee
General
1. To strengthen functions of IP dispute resolution system.
I.
To improve evidence collection procedures to reduce right holder’s
burden of proof.
II. To improve stability of right through issuance up to dispute resolution.
III. To realize damages reflecting business reality, and
IV. To study restriction on injunction.
2. To promote use of IP dispute resolution system.
I.
II.
III.
IV.
To support small or medium sized or local companies for IP cases.
To strengthen IP consulting services.
To utilize IT for IP cases.
To support local access to IP specialists.
3. To publish and introduce to foreign countries the information
on IP dispute resolutions.
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IP Dispute Resolution System Committee
Injunction
• Whether to categorically restrict injunction in cases of SEPs
with FRAND declarations or enforcement by PAEs through
amendment of the Patent Act.
– So far, if valid patent is infringed, injunction is awarded unless
injunction is abuse of right under the Civil Code. Then, the IP High
Court in Apple v. Samsung case ruled that injunction under SEPs with
FRAND declarations is in general abuse of right.
– Inappropriate.
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IP Dispute Resolution System Committee
Stability of Right
• Whether to put statute of limitations on invalidation grounds or
to restrict invalidation grounds.
– Inappropriate.
• Whether to abolish invalidity defense or to restrict invalidation
grounds for invalidity defense in an infringement case.
– Inappropriate.
• Whether to introduce the “clearly invalid” requirement for
invalidity defense in an infringement case as double standard .
– Inappropriate.
• Whether to introduce the “clearly invalid” requirement for
invalidity grounds as assumption of validity after issuance.
– Considerable.
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IP Dispute Resolution System Committee
Stability of Right
• Whether to abolish the requirement (request for correction before
JPO) for counter-defense of correction against invalidity defense in
an infringement case.
– Considerable.
• Whether to further strengthen infringement court’s technological
expertise.
– Basically appropriate.
• Whether to strengthen cooperation between infringement courts
and JPO.
– Considerable.
• Whether to expand JPO’s review of (in)validity grounds such as
asked opinion in an infringement case or validity confirmation trial.
– Considerable.
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IP Dispute Resolution System Committee
Stability of Right
• Whether to relax other requirements for correction before JPO
as counter measures against invalidity defense in an
infringement case.
– Considerable.
• Whether to strengthen JPO’s system for examination and
quality control thereon.
– Appropriate.
• Whether to relax the requirements for amendment and
divisional application.
– Considerable.
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IP Dispute Resolution System Committee
Evidence Collection Procedures
• To strengthen alleged infringer’s obligation to clarify his/her
product or method.
– Whether to introduce alleged infringer’s obligation to submit evidence to
support his/her clarification.
• To vitalize court’s document production order for a patentee to
prove infringement.
– Whether to reduce the requirement for the order.
• To improve court’s secrecy order to protect alleged infringer’s
confidential information.
– Whether to allow “attorneys eyes only” like US.
– Whether to allow disclosure to third party technical advisors like US.
• Whether to introduce court’s order for technical specialist’
inspection on alleged infringer’s product or method like EU.
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IP Dispute Resolution System Committee
Damages
• To amend Article 102 of the Patent Act, special provision for
the way to calculate patentee’s lost profit or lost (reasonable)
royalty under Article 709 (tort) of the Civil Code.
– Whether to restrict disclosure of patentee’s profit to infringer.
– Whether to restrict to consider contribution rate.
– Whether to prepare database or guideline for reasonable royalty.
• Whether to introduce new way to calculate damages beyond
patentee’s lost profit or lost (reasonable) royalty.
• Whether to introduce the system to let the parties decide the
sum of damages after court’s decision for infringement like
Germany.
• Whether to put attorney fee on a loser in an infringement
action.
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THANK YOU!
Kei Iida
Attorney at Law & Patent Attorney
NAKAMURA & PARTNERS
Shin-Tokyo Bldg., 6F, 3-1,
Marunouchi 3-Chome, Chiyoda-ku,
Tokyo 100-8355 Japan
Tel: 81-3-3211-8741
Fax: 81-3-3214-6367
E-mail: k_iida@nakapat.gr.jp
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