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  Publication of the PATENT STUDIES No.21-No.30

 Publication of the PATENT STUDIES No.30

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A scientific journalPATENT STUDIES No.30,edited by the Research Planning Committee for Industrial Property of Japanese Patent Office has been publised from Japanese Institute of Invention and Innovation.
This is to promote public understanding on the importance of the industrial property system and to stimulate basic studies on this subject.
The journal is biannualy published in only Japanese.

The contents & Abstracts are as followings.

A Layman with Patent


Stimulating the Realization Inventions
-----the System for Licensing of Rihgt-----

Dr.Nobuo MONYA

Throughout the latter half of the twentieth century ,the centralization of capital and the continued development of the capitalist economy has given rise to a tendency toward separation between inventors and the entities which sffect the realization of their inventions.
It is very important,especially in such an era,to try to encourage the realization of patented inventions,not only for the benefit of the holder of the patent right,but also for industry and for the general public who stand to benefit from patented inventions.
Accordingly,this article proposes,throuth a comparative law analysis of encourage the realization of patented inventions be instituted in Japan,with the Patent Office acting as an intermediary.

Conflicts and Interactions between Technical Standards and Intellectual Property Rights


Technical standardization activities are getting more and more entangled with patents, copyrights and other intellectual property rights.Their relations should be viewed not simply as conflicts but as positive interactions in order that practical solutions could be found within the framework of international harmonization.

Business Method Patent Impact against Didital Network Society

Kazuko OTANI

After State Street case, to protect business methods by patent attracts great deal of attention. It appears, up to now, that there is no indication of reducing competition. Pro-competitive management by antitrust legislation will be crucial to promote further innovation. Government shall be required to take effective measures for resolving the lack of examination materials and patent attorneys.

Patentability for a new Variety of Plants


This patented invention is the method of cultivating a new variety of plants by asexually reproduction,and belongs to the category of patents for plants.This is the first decision of Supreme Court concerning patentability for patents for plants.

The latest and future development of the Patent Cooperation Treaty (PCT)

Takao KATO

This paper outlines the recent amendments of the PCT regulations including relating to the PLT and the electronic filing, and gives an overview of the future development of the PCT system from the viewpoint of the linkage with the PLT and of an electronic filing system and so forth, and also of a global patent system as a final goal.

Latest Developments related to Protection of Well-known Marks in the Cyberspace of Internet Domain Names after ICANN Yokohama Meetings

Tsugizo KUBO

The recommendations of the WIPO Final Report of Internet Domain Name Process issued on April 30, 1999 includes that an exclusion mechanism should be established, the effect of which would be to prohibit any person other than the owner of the famous or well-known mark from registering a qualifying mark as a domain name.
At the ICANN Yokohama Meetings held in July 2000, the ICANN Board of Directors approved the introduction of new gTLDs, but no consensus has been reached to adopt a specified and appropriate measure relating to an exclusion mechanism protecting famous or well-known marks.
This is reflecting the DNSO Names Council Statement of May 2000, which recognizes that there does not appear to be the need for the creation of a universally famous marks list at this point in time.
The author has a rough guess that any pre-exclusion mechanism for famous or well-known marks would not be realized in the initial phases of introduction of new gTLDs, but instead, the Daybreak Proposal made by IPC of ICANN would be positively considered, in which during a 30 or 60-day "Daybreak" period, at least trademark owners would, exclusively, be allowed to register their marks as domain names on a first-come-first served basis.

Posthumous Works of Korekiyo TAKAHASHI(3)
-----Questions to Mr.Verbeck,an american-----
Research Office, Industrial Property Training Institute, JPO


Record of the Special Council Committee of the House of Diet for Revising the Industrial Property Laws in 1921 [13]
Research Office, Industrial Property Training Institute, JPO

Yoshikaz INAVA

 PATENT STUDIES No.29__2000.3

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WIPO Agenda As National Agenda

__Shozo UEMURA

"Infringements of Intellectual Property Rights via Telecommunication Networks and International Jurisdiction in Civil Matters"

__Kazunori ISHIGURO

__International jurisdiction in civil matters with regard to infringements of intellectual property rights via telecommunication networks should be determined by the Japanese rules on international civil procedure law. Harmonization by treaty route will not solve major conflicts among nations.

Functional Claim Interpretation and the Doctrine of Equivalents


__When the accused devices were known at the time the patent was issued, so called "the doctrine of equivalents" is substantially claim interpretation followed similar procedure to 35 U.S.C.§112 paragraph 6. On the other hand, when the equivalence issue involves later-developed technologies, the scope of patent protection can be enlarged beyond literal reach of claims according to the purpose of the law. Therefore, there are two type of doctrine of equivalents of which legal ground are different.

General History of Japanese Patent System (6)
-Main Revision of Japanese Patent System after 1959-

__Ken-ichi KUMAGAI

__ This paper discuss the background and content of the revisions of Japanese Patent and Utility Model System after 1959, and study about the meaning of the each revision of Japanese Patent and Utility Model System.

Two Different District Court Decisions About Same Cases Related to Used Game Softwares

__Shigeo OHIE

__Japanese Copyright Law Article 26 states "The author of a cinematographic work shall have the exclusive right to distribute copies of his work." Two different court divisions were found on the sale of used video game software. The question is whether video game software is categorized as a cinematographic work. Tokyo District Court decided on May 27, 1999, that the video game software is not a cinematographic work and that the sale of used video game software does not infringe copyright. Osaka District Court, on the other hand, concluded on October 7, 1999, that the video game software is a cinematographic work, and accordingly, the author of the software has the right to distribute copies. The court ruled that the sale of the used video game software cannot be traded without the permission of the author. The author of this paper agrees to the decision of Tokyo District Court

Current Issues on Patent Breadth of Biotechnological Inventions

Akiteru TAMURA

__Japan has currently started granting Wide-Ranging patents on the purpose of promoting frontrunners' creative R & D. While reporting the situation of patent protection in the field of biotechnology in the United States that has been pursuing Pro-Patent policies since the 1980s, I would like to furnish some materials for researchers to consider what Japanese patent system and its practices should be like towards the 21st century.

Posthumous Works of Korekiyo TAKAHASHI Related to Patent System
- Contents -

Research Office,Industrial Property Training Institute,JPO

Record of the Special Council Committee of the House of Diet forRevising the Industrial Property Laws in 1921 [12]

Research Office,Industrial Property Training Institute,JPO
Yoshikazu INAVA

 PATENT STUDIES No.28__1999.9

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World Patent Right as a Historical Necessity
- Realism and Functionalism,and an invitation to Politicization -

__Tadayoshi HOMMA

Significance of Revision of Design Law under One Hundred and Ten Years of Design Laws History

__Kazuko MATSUO

__The revised Design Law confirmed that the purpose of the Law is to protect "higher level of creative design work" and revised the law to protect such work more broadly and efficiently. Further effort should be made not to oppress such purpose by heavy weight of 110 years of design law history, and to effectively enforce the right.

Finding of Fact in Patent Appeal and Trial Procedures

__Minoru TAKEDA

__In patent appeal and trial procedures, the patentability requirement used as the proof in the examination includes both a patent "generating" requirement and a patent "obstacle" requirement. To determine the existence of such requirements,finding of fact is utilized as a premise in the decision. In many cases, such fact finding is related to specialized technical matters in a given technical field.
__Some cases, however,require finding of fact of a general social nature. Examples of this are the finding of fact regarding a public matter as regulated in Patent Law Section 29(1)(ii), the finding of fact regarding a publicly known publication as regulated in Section 29(1)(iii) and(29), and the finding of fact regarding a misappropriated application. According to a recent judgments had been awarded for reason of error in the finding of fact in cases where later factual findings were proven.
__This article clarifies the empirical rules and logical laws required for finding of fact from such a viewpoint. It also examines specific applications which confirm that errors in fact finding occurred in judgments on actions opposing appeal and trial decisions due to inappropriate application of these empirical rules and logical laws.
__The author's personal opinions are also given regarding what kind of indirect facts are required for finding direct facts to be used as proof and how the weight of written evidence and testimony should be dealt with.

Technology Transfer from Universities in the United States

__Howard W.BREMER

__The history of university technology transfer from universities in the United States is traced from its earliest days in the 1920s at the University of Wisconsin,through a time in the 1960s where the government, in policies by its agencies, took ownership of all inventions made at universities with government funds, to the passage of the Bayh-Dole Act (Public Law 96-517) in 1980 which changed the presumption of title to inventions made at universities with government funds from the government to the universities.
__The terms and provisions of the Bayh-Dole Act were derived from experience and hands-on practice and represent thoughtfully considered and reasonable protection mechanisms against abusive practices by university licensors and their licensees as well as against arbitrary decisions by government, while also being fully considerate of the national interest. It has accomplished its objectives beyond expectations because it has carefully balanced the interests of the parties affected by it: namely,the universities as well as other non-profit institutions and small business the private, commercial sector and the government.
__The progeny and heritage of the Bayh-Dole Act, to which the university sector has universally responded, has enabled the United States to enhance its competitiveness on a global scale and in a global economy and has demonstrated and verified the importance of the technology transfer in maintaining that competitiveness.

Calculation of Lost Profits in Patent Infringement

__Koichi TSUJII

__ This Decision found that the profit ratio of plaintiff's products is 15% by deducting, in addition to direct expenses of 45%, general administrative expenses of 40% calculated based upon the view similar to the incremental income approach from the average sales price of plaintiff's products. Previously, in calculating infringer's profits some court decisions adopted the incremental income approach.
__This Decision is of significance in actually applying it the first time for the calculation of lost profits.

Trends of International Protections of Industrial Designs
- New Regime of International Protection of Industrial Design given by the New Act of the Hague Agreement -

Planning Office of Design Registration System

__1999 Geneva Act was adopted as the 3rd Act of the Hague Agreement in "Diplomatic Conference for the Adoption of a New Act of the Hague Agreement concerning the International Registration of Industrial Designs."
__With making a survey of trends concerning International Protections of Industrial Designs, this article reports New Regime of International Protection of Industrial Design made by the New Act of the Hague Agreement.

About Posthumous Works of Korekiyo TAKAHASHI, the First Commissioner of JPO

__Teiichi NAGAMURA

Posthumous Works of Korekiyo TAKAHASHI(2)
- Talk record "Memory of Japanese Patent Office" -

Research Office,Industrial Property Training Institute,JPO

Record of the Special Council Committee of the House of Diet forRevising the Industrial Property Laws in 1921 [11]

Research Office,Industrial Property Training Institute,JPO

 PATENT STUDIES No.27__1999.3

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The Way to Pro-patent Policy

__Hisamitsu ARAI

Innovation Process and Patents

__Akira GOTO

__This paper discusses the role that patents play in the process of innovation,and,using the results of a questionnaire survey,explores how patents affect innovation in Japan.

General History of Japanese Patent System (5)
- The Keynote of Japanese Patent System - The Structural Feature of the Patent Law of 1959 -

__Yoshinobu SOMENO

__The amendment of the Patent Law, which originally aimed the ideal of the patent system under the view point of the new idea and inter- nationalization, should have altered the patent Law of 1921 entirely. However,when the concrete working of amendment began,such purpose mixed with the long standing practice in the Patent Office, which brought the law of 1959 complicated feature.

Clinical tests for data required to apply for marketing authorization and the experimental use defence

__Kazufumi DOHI

__More than twenty years have passed since the patent system for chemical substance was established and patents for pharmaceutical substances recognized soon after the system was established are expiring. This raises a question about experimental use or patent infringement; Namely,can generic drug manufactures conduct clinical tests for data required to apply for marketing authorization prior to the expiry of paten? This article deals with this problem.

Recent Development of New Regimes for Global Protection of Trademarks


__GATT Ministerial Meeting concluded the TRIPS Agreement in April 1994, and WIPO Diplomatic Conferences adopted the Trademark Law Treaty in October 1994 and the Madrid Protocol in June 1989. These multilateral agreements will provide a firm basis for global protection of trademarks. Supplementary works are developing in EU,ASEANand APEC to build regional systems and/or promote regional cooperation toward swift and full implementation of the multilateral agreements.

Posthumous Works of Korekiyo TAKAHASHI(1)

__- Lecture on the Origin of Japanese Patent System -

Research Office,Industrial Property Training Institute,JPO

Official documents showing the attitude of Japanese Government toward a refusal of a patent application by an English person in 1889

Research Office,Industrial Property Training Institute,JPO

Record of the Special Council Committee of the House of Diet for Revising the Industrial Property Laws in 1921 [10]

Research Office,Industrial Property Training Institute,JPO

 PATENT STUDIES No.26__1998.9

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Japan's Integration into World Economy and the Adaptation of its Industrial Property System

Shigeaki MITSUDA

Frontier of Intellectual Property Study toward the 21st Century

- Challenge at RCAST,Univ.of Tokyo -

Katsuya TAMAI

What will be strongly required in the field of intellectual property study in the 21st century are:

  1. cultivation of researchers who have thorough knowledges of both law and technology;
  2. contribution to solving issues which have a global extent; and
  3. comprehensive study of decision-making with respect to intellectual property.

In light of the above points,attempts at RCAST,Univ.of Tokyo have been begun.

"First-To-File" Principle Under the U.S. Patent System

__Toshiko TAKENAKA

__Japanese patent experts tend to believe that the U.S. patent system is very much differentfrom its Japanese counterpart because the former follows the"first-to-invent" principlein contrast to the fact that the latter follows the "first-to-file" principle. However, U.S. courts emphasize the policy of early disclosure through a patent application, which policy is consistent with the first-to-file principle. They often give more priority to that policy than to the policy of giving inventors an opportunity to obtain sufficient information on their inventions, which policy is unique to the first-to-invent principle. U.S. case law indicates that the priority rule under the U.S. patent system does not particularly favor individual inventors or small and medium size companies. This paper will discuss the fact that in reality the U.S patent system follows the first-to-file principle where most of applications areexamined under the first-to-file principle.

Genaral History of Japanese Patent System (4)

- Around the revision of Patent Law in 1921 -

__Fumio SATO

__Under the influence of the Taisho Democracy in 1910s, a plan was made for amelioration of a procedure of obtaining patents in order to strengthen the protection of inventor's right and to assure the fairness of its procedure. Thus the amendment of Patent Law was realized in 1921. This was exceptional in those days for the administrative process which was considered as quasi-judicial. However after the World War II, Japanese Patent Office failed to cope with an increase of application and tried to improve dealing ability by strengthening examiner's discretion. During this period, the concept of due process was lost and it was stated that a patent system is a system of reward for inducing disclosure and publicity of invention.

Requirements concerning the Doctrine of Equivalents.

__Toshiaki MAKINO

__This judgment is the utmost important judgment in the field of the patent Law, which is the first judgment where the Supreme Court of Japanexpressly indicated that it is a principle of law by which the doctrine of equivalents is applied to the determination of the scope of a patented invention, and it concretely adjudicated the requirements for the application of the doctrine of equivalents, and what is adjudicated by the judgment is considered to be affecting not only the doctrine of equivalents but also the question in general of the determination of scope of the patented invention.

European Patent and New Developments

__Kenji UCHIDA

__With the European monetary unit"euro" coming into existence, some European habits are doomed to change. As the cost,earning and performancefor a service in different European countries can be compared easily, transborder movements of personnel,products and servicemay be accelerated. In the same line of movement, The European Commissionpublished a greenpaper aiming at reviving the Community Patent system and harmonising or simplifying some European practices. The important point is the translation of granted patents. This problem hovers over the present European Patent system as well as the future Community Patent system. Translation of granted patents apart, the European Patent Office requires the complete translation of priority documents,incontrast with Japan and US Patent Offices. This European practice should also be called into question.

Record of the Special Council Committee of the House of Diet for

Revising the Industrial Property Laws in 1921[9]

Research Office,Industrial Property Training Institute, JPO

 PATENT STUDIES No.25__1998.3

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For the New Japan-Korea Partnership


Electronic Commerce and Intellectual Property Rights

__Zentarao KITAGAWA

This paper introduces "Copymart" as a market model for copyright transactions and suggests its applicability to an intergrated patent- related technology,law and buisiness information system.

Cumulative Innovation and the Role of Intellectual Property RightsCumulative Innovation and the Role of Intellectual Property Rights
- What does recent theoretical development imply? -


__In promoting cumulative innovation there exists inherent tradeoff between protecting an early invention and protecting a secondary invention based upon that. Whether the secondary invention is subservient to the early invention should not be decided solely based upon the relative stand- alone commercial values of inventions. Evaluation of their inventive steps might do a better job under some circumstances. Whether wider scope of patent protection is more efficient or not depends upon the feasibility of licensing too. If ex–ante and ex-post licensing of an early invention can be efficiently provided for promoting secondary reseach and development, wider scope of protection of the early invention becomes preferable. Cartel does not provide an effective solution for promoting cumulative innovation. Wider scope of protection promotes early disclosure too, although it does not automatically guarantee its efficient exploitation.

Genaral History of Japanese Patent System (3)

apanese Affiliation with the Paris Convention in 1899 and adjustement of legal system


__Considering under what circumstances Japan joined the Paris Convention in 1899,we examin the Patent Law of 1899 which was revised prior to it. Then we look the contents and back ground of newly enacted Utility ModelLaw of 1905 and revised Patent Law of 1909. From these view points,we look how Japanese industrial property system was fixed in accordance with social situation in later half of Meiji period.

Similarity between Trademark "KOZO" and "KOZOZUSHI"
__Used on SUSHIetc.

__Haruo GOTO

1. The present decision holds as follows.

__Trademark "KOZOSUSHI" is a famous abbreviation indicating the business entity of the "KOZOSUSHI" Headquarters of chain stores as a group. There is produced there from the pronunciation of "KOZOSUSHI" constituting an inseparable unit as a whole. It is recognized to represent goods dealt in by "KOZOSUSHI Chain" stores belonging to the aforementioned business entity, It is not the trademark similar to "KOZO". It is held that trademark "KOZOSUSHI" is the trademark, being derived from the name of business group combined under the franchise agreement, constituting an inseparable unit as a whole and is not similar to Trademark"KOZO".Such holding is proper.

Note: "Sushi" is boiled rice and other food flavored with vinegar.

2. Claim for Damages under Non-used Trademark Right

__With regard to the application of the Trademark Law Article 38, par 2,the Supreme Court decision holds as follows. "Article 38, par 2 of the Trademark Law is the provision designed, together with the same article, par 1,to mitigate the burden of allegation and proof carried by the injured party for claiming damages sustained due to tort. It is indeed beyond the framework of tort law to admit,even in case where no damage is clearly caused,that the injurerbe liable for the compensation for damages .Such admission shall not be accepted as the interpretation of the said article,par2.
__The injurer may be immune from his liability for compensation for damages, by arguing and proving , by way of affirmative defense, that no damage can be possibble".
__In view of the purpose of article 1 of the Trademark Law,there is no reason that the non-used trademark right should be protected. In case, however,where a trademark exists validiy, the above decision might have been a proper interpretasion,considering the fact that it may be doubtful to directly deny the existence of such trademark right.

History of Design Examination


__Extract from "Essential Points of Design examination" made in early Showa period for the understanding of design examination in Japanese Patent Office. They explain the definition of design,documents for examination,requirements for registration,novelty and similarity of design.

Record of the Special Council Committee of the House of Diet for

__Revising the Industrial Property Laws in 1921[8]

Research Offic,Industrial Property Training Institute, JPO

 PATENT STUDIES No.24__1997.9

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Science and Technology in Japan

__Teruo KISHI

Rethinking the Subject Matter Requirement: From the

__point of view of a study of Biotechnology Patents.

__Akimitsu HIRAI

__Through a study of Japan and U.S.case law and the Product of Nature Doctrine, discovery and invention should be understood as continuous concepts. It is important whether "a good ground for a patent" is found in a intellectual work. The Subject Matter Requirement means: A result of a substantial amount of intellectual work and investment that is valuable from the point of view of the industrial policy can be covered by Patent Law.

General History of Japanese Patent System(2)


__Patent Monopoly Ordinance(1885)and Patent Ordinance(1888)were legislated and enforced by two principal aimes to establish patent examination and not to admit foreigners application in circumstances of establishing administrative structure of Meiji-Government and of revising unequal treaties with foreign countries. This article refers to the process of establishing Practical legislated system for Japanese patent legislation until affiliation of Paris Convention in 1899

The Requirement of Identity between a published design and an

__applied design under the Section 4(2)of the Design Act

__Shigeki CHAEN

__The identity between a published design and an applied design under the Section 4(2) of the Design Act is approved when they are accepted as an identical design expression in a common view, even if there is a difference between their appearances

What changes make WIPO need its new challenge ?

__Yoshiyuki TAKAGI

__The rapid and on-going changes in the area of intellectual property are discussed suggesting seven key factors to dictate the trends and approaches in outstanding issues. The role of International Registration activities and other new initiatives by WIPO are also discussed in the context of the key factors.
__(The views expressed in this article are the author's personal opinion and they do not necessarily reflect the views of the International Bureau of WIPO.)

History of Design Examination(1)


__From the records on design examination prior to the Design Act 1921 which are presently becoming less available, those records of the period dating back from the Design Act 1921 to the Design Ordinance are introduced with an analysis of the examination practices of that period.

Record of the Special Council Committi of the House of Diet for

__Revising the Industrial Property Laws in 1921[7]

__Research Office, Industrial Property Training Institute
Yoshikazu INAVA

 PATENT STUDIES No.23__1997.3

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Learning from the Chinese Philosophy of Medicine

__Fumikatsu TOKIWA

Patent Protection for Computer Software

__- Recent Development -

__Hidetaka AIZAWA

__Patent Protection for Computer Software was in chaos. Now, new policy is coming for further development of computer technology.

Industrial Property Rights as Collateral to Finance Entrepreneurial

__Business in Japan


__After the collapse of the "bubble economy" , Japan has been in a stagnant economic condition. The policy to create and nurture entrepreneurial business is regarded as one of the major vehicles to overcome this situation. Since venture capital firms play limited roles in terms of supplying funds to start-up & early-goroeth-stage companies in Japan, the companies inevitably rely on banks as sources of funds. While banks are interested in making loans to such companies, it is very difficult to secure the bank's loans by conventional collateral such as real estate. A loan program with industrial property rights as collateral is a new attempt carried out by some public & private financial institutions to materialize potential economic value of intangible assets held by entrepreneurial companies. This paper overviews the underlying concepts, the method to evaluate economic value of the rights and the obstacles to promoting this challenge.

Consideration for Interpretation with respect to the Technical Scope of a

__Patented Invention etc.(HANTEI)

__Yasujiro YUKINAGA

__In recent years, requests concerning mterpretation with respect to the technical scope of a patented invention etc.(HANTEI) have rapidly decreased in number. This article intends to analyze the reason from various view points and to consider how to promote the use of it's system through the investigation of the court decisions concerning interpretation.

General History of Japanese Patent System(1)

__Toshio TAMURA

__Patent System has been developed by economic competition to other lands. As Japan was not generally above mentioned environment before the begining of international trade in 1857, it is said that Japan had not a so called patent system till that time. Then Japan introduced a patent system from America and Europe as a national power increasing policy.
__New invention privilege in Edo era was permitted so long as it was useful to well preserve the closed feudal communities. This privilege corresponds to the privilege in EIizabeth I era. Provisinal patent law in 1871 was written briefly on the base of the general knowledge about patent system at that time. But as it caused some problem in practice, it was repealed in order to investigate a new patent system.

A case that rejected protection under the Law against Unfair

__Competition by denying the distinctiveness of the shape and

__colour of a cosmetic packaging

__Tatsuki SHIBUYA

__A court held that, for the shape and colour of a cosmetic packaging to be protected under the Law against Unfair Competition, the absolute novelty or originality in feature should not be demanded. The court said relatively different appearance from that of the competitors' packagings is enough. The court's opinion is supportable.

Record of the Special Council Committi of the House of Diet for

__Revising the Industrial Property Laws in 1921[6]

__Research Office, Industrial Property Training Institute
Yoshikazu INAVA

 PATENT STUDIES No.22__1996.9

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A Dream of Beautiful Aging


Consideration for Patent Invalidity in Patent Infringement Suits(2)

__Yoshiyuki TAMURA

__In Japan it is said to be that the Patent Office has exclusive original jurisdiction on the validity of patents, and that the defendant in an infringement suit cannot challeng the validity of the patent in question. Although this view is almost unanimously supported by scholars, a close scrutiny of the cases concerned will reveal that is not the case. This article intends to construct the legitimate theory for the japanese case law which admits consideration for some types of invalidity cause, such as lack of novelty or lack of adequate disclosure, in the patent infringement suits.

Das Leasing von Karaoke-Wiedergabegeräten und die Theorie der

__mittelbaren Urheberrechtsverletzung

__Masayoshi SUMIDA

__Die Entscheidung "Karaoke-Gerate" stellt die Haftung des Leasinggebers von Karaoke-Garäten fest. Der Aufsatz behandelt das Verhaltnis zwischen der Entscheidung und der Theorie der mittelbaren Urheberrechtverletzung.

The Basic Science and Technology Promotion Law and the Patent System

__Chuji MASUI

__The Basic Science and Technology Promotion Law aims to Positively promote R&D activities by improving the conventional system, operation and budget so as to maximize creation of intellectual properties, as well as the acomplishments of basic science.
__The Promotion Plan can be a new born giant venture toward the 21th century.

The Aim of the Asia-Pacific Industrial Property Center

__Shingo TSUJI

__In the "Asia-Pacific Industrial Property Center" newly established this April, it is planned to invite about 1,000 participants(800 among this private sector persons)in Training Program on the Industrial Property, from developing countries in the Asia-Pacific region in the next 4 years.
__The outline and background of this scheme is mentioned here.

Eine Genrekombinationserfindung und die Äquivalenz

__Tomoko TAKII

__Die Entscheidung erkennt die Äquivalenz der patentierten Genrekombinatioserfindung t-PA unter den folgenden Voraussetzungen an: die Aminosäure der Aminosäuresequenz der Erfindung ist durch die fragliche Aminosäure der Verletzungsform ersetzbar, diese Ersetzbarkeit ist für einen Fachmann leicht erkennbar, und es gibt keinen Verzicht des Patentanmelders auf die Verletzungsform.

Record of the Special Council Committi of the House of Diet for

__Revising the Industrial Property Laws in 1921[5]

__Research Office, Industrial Property Training Institute
Yoshikazu INAVA

 PATENT STUDIES No.21__1996.3

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Parent and Superior


Consideration for Patent Invalidity in Patent Infringement Suits(1)

__Yoshiyuki TAMURA

__In Japan it is said to be that the Patent Office has exclusive original jurisdiction on the validity of patents, and that the defendant in an infringement suit cannot challenge the validity of the patent in question. Although this view is almost unanimously supported by scholars, a close scrutiny of the cases concerned will reveal that is not the case. This article intends to construct the legitimate theory for the japanese case law which admits consideration for some types of invalidity cause, such as lack of novelty or lack of adequate disclosure, in the patent infringement suits.

A case study about the appeal examiners of the Patent Office should notify to

__the applicant the reasons for refusal.


__When the appeal examiners of the Patent Office find other reasons for refusal than the reason of the examiner's final decision they should notify to the applicant these reasons, even if the examiner or the appeal examiners have already served the applicant a copy of the statement of opposition in which these reasons were stated.

__Practical problems in parallel import of patented products

__Kazuo MASUI

__The international exhaustion theory to exclude double recovery of a patentee adopted by the Tokyo High Court in the BBS aluminum wheels case does not give consistent and reasonable results when there are differences in patent rights or patentees between exporting country and importing country. Further, there are unsolved problems in determining how to treat the position of licensees in importing country under the exhaustion theory.

Movement of Goods and the legal Structure of Intellectual Property Rights

__Naohiko TATSUMI

__Through the analysis of the legal structure of the patent right, it can be concluded that the patent right is an exclusive right which ensures the patent rightholder to gain a monopolistic interest so far as he or she puts a patented product into circulation of the market of the territory in which the patent right is afforded. On the other hand, it is not the right which allows the rightholder to control the movement of the patent product which is put into circulation through his or her free intention. The problem of the permissibility of the parallel import of patented products as well as the traditional patent practice should be reconsidered from this perspective.

Patentrechtliches Miteigentum und notwendige Streitgenossenschaft

__Katsuya TAMAI

__Eine neue Entscheidung des Japanischen Obersten Gerichtshofs hat seinen bisherigen Standpunkt bestätigt, daß bei dem patentrechtlichen Miteigentum die Anfechtungsklage gegen patentamtlichen Beschlüße nur von allen Miteigentümern gemeinsam erbracht werden kann. Dagegen sind in den Literaturen die Gegenmeinunge überwiegend. Dieser Aufsatz zeigt, daß die herrschende Meinung nicht zutreffend ist, und daß der Standpunkt der Rechtsprechung als Ergebnis vernünftig und vertretbar.

Record of the Special Council Committi of the House of Diet for

__Revising the Industrial Property Laws in 1921[4]

__Research Office, Industrial Property Training Institute

[Last updated 10 April 2002]


Research Office, Industrial Property Training Institute,

Fax :+81-3-3595-2792