Japan Patent Q & A

Ryuka Answers Japan Patent Questions

Whether to Conduct Trademark Search

Dear Mr. Ryuka:
I have a client who would like to register a mark in Japan. He does not know if the mark is available for use in Japan. Would you recommend a search first, or just file the Japanese application? Could you pls advise as to cost/fee estimates? As you might have guessed, the client would like to know today b/c he wants to proceed quickly.
Thank you.

Best regards,

Dear Dr. *****
Thank you for your e-mail.

If the client can wait using the mark until receiving the allowance, and if the mark is well distinct, it is a considerable option to just file the mark for reducing the anticipated amount of the total expense.

Please note, however, that if the mark is not very distinct or the mark is similar to a common word, then there is a higher chance of receiving the rejection for the similarities with the other mark. For such trademarks, the anticipated amount of the total expenses are reduced by the search.

Please let us know what the mark is to allow us suggesting you whether to conduct the search.

Our fees are as shown below. I understand that the client wants to proceed quickly. We will do our best to satisfy your speed requirements.

*******

Should you have any other question, please do not hesitate to contact us again. Thank you for your inquiry.

Aki Ryuka

Dear Mr. Ryuka:
I think your strategy to submit references to the JPO is excellent, although in my experience, it is not a typical practice in Japan.
Other Japanese attorneys state that it is not possible to submit references to the JPO, and they have even refused to do it. If my clients’ Japanese patents may enjoy certain benefits or presumptions as a result of your reference submission practices, I want to provide that opportunity for them.
Any comments will be greatly appreciated.
Sincerely,

Thank you for the below e-mail of today.
Many Japanese patent firms believe it is not suggested to submit prior arts to JPO.
This is different from our opinion, and we have been submitting prior arts for both domestic and foreign clients, who may enforce or at least seriously negotiate licensing patents. Although this is not a typical practice in Japan, it has been possible.
Please note, however, that the prior arts do not have to be submitted, if the purpose for filing patent applications is solely to obtain patents.
Some corporations obtain patents for advertisements or investor’s relationships and for the markings on products. Sometimes, our clients obtain patents knowing that they are totally invalid, expecting that JPO does not have the prior arts and competitors voluntary avoid making the same. In such circumstances, prior arts do not have to be submitted.
Please also note that there is no fraud issue in submitting prior arts in Japan.
It is, therefore, a considerable option to submit ONLY prior arts that must be found by a counter party, such as citations of corresponding foreign patent applications.
Upon completing the submission, we will send you the copies of submitted documents as well as their translation. Please feel free to provide the same to your Japanese colleagues. We are also happy to answer their questions, if you instruct us.

Should you have any questions, please let me know.

Aki Ryuka

Dear Mr. Ryuka:
I was surprised to see the enormous patent awards given to inventors.
Should we adopt any standard procedures for the inventor’s corporation?

Dear Dr. *****
I refer to your e-mail of ***, 2005 concerning Japanese inventor’s award.
Japanese employee has a right to receive a compensation for the profit made by his employer with his patent. If the compensation amount was not agreed between the inventor and his employer, the inventor can sue the employer based on his compensation right, even though some compensation has been made.
The point is whether the compensation amount was agreed and paid.
The compensation defined in the agreement can be a lump sum payment before or after the filing, promised running royalty, or their combination.
The internally-published award program helps establishing the fact that the award was known to the inventor, thus helps creating laches bar, although the publication is never enough for proving any agreement or consensus.
Please also note that introducing the award program into a corporate rule is still not sufficient for proving the agreement. The court said that “If the employer can define the compensation amount by itself, the compensation right is not be secured.”

Thus:

1. The written agreement must mention compensation amount for the assignment.
2. The employer must have an opportunity to refuse the assignment.
3. The compensation amount must be considered.

Those are the minimum requirements and many of large Japanese corporations have adopted the procedures for the above.
Should you have any other question, please feel free to contact me.

What is required to the inventors or joint applicants?

Dear Dr. *****
Thank you for your e-mail of ****.

In Japan, only the inventor(s) has(have) the original rights to file patent application. When the invention was jointly made by more than one inventors, the invention is commonly owned. The ownership can be assigned to other, such as his/their employer only with the permission of other owners.

When the invention is commonly owned either by inventors or corporations, the application must be filed by all owners, or the patent is found invalid.

In details,

1. Each owner of the invention/application/patent can independently conduct the followings without the permission of other(s).
   Use the patented invention
   Sell the patented products
   Injunct infringers
   Amend the filed patent application
2. Each owner can NOT independently conduct the followings without the permission of other(s).
   File Patent Application
   Assign or sell his portion of the invention/pending application/registered patent
   License his portion of the invention/pending application/registered patent
   File request for abandoning the filed patent application

I wish the above answers your question.

If you have any other question, please do not hesitate to contact me again.

Very truly yours,

Aki Ryuka

Does the remuneration right of the Japanese inventor extends to the US patents?

**-san
Thank you for your e-mail of ****.

The remuneration under article 35 is extends to the patents of all over the world, if the jurisdiction over the employment exists in Japan.

There are two cases, in re Hitachi and in re Ajinomoto, that admitted the remuneration for the foreign patents.

1. In Re Hitachi (January 29, 2004, Tokyo High, Case # H14(ne)#6551)

In re Hitachi said that “Although the article 35 is a part of the patent law, the article balances the interests of the employer and employee, and therefore has the meaning of labor law. …. The remuneration should be decided under the laws of the country where the employer and employee belong, but not of the country where the patent is registered.”

It also said that “Even if the assignment of the invention had been made under the law of a foreign country, the law of the country that is most related to the employment should be applied to the remuneration.”

2. In Re Ajinomoto (February 24, 2004, Tokyo District, Case # H14(wa)#20521)

In re Ajinomoto said that “the remuneration should be decided under the law of the country, where the employment law applies.”

In accordance with the above two decisions, the remuneration for US patents would be admitted even when a Japanese patent is not filed, as far as the jurisdiction over the employment exists in Japan.

Should you have any other question, please let us know.
It is our pleasure to be of your assist.

Aki Ryuka

What kind of actions are considered as contributory infringement in Japan?

Dear *****,

Hi, here is the summarized translation of the article 101 of the patent law, that defines the actions deemed infringement. Article 101 The following actions are deemed infringement of the patent or the exclusive license of the patent.

1. As a business, to make, sell, import or offer to sell a product that is used only for making the patented article.
2. As a business, to make, sell, import or offer to sell a product that is used for making the patented article and that is essential for achieving the object of the patented invention, knowing that the patent and further knowing that the product is used for making patented article.
3. As a business, to make, sell, import, or offer to sell a product that is used only for the patented method.
4. As a business, to make, sell, import or offer to sell a product that is used for practicing the patented method and that is essential for achieving the object of the patented invention, knowing the patent and further knowing that the product is used for practicing the patented method.

Should you have any other question, please do not hesitate to contact me.

Aki Ryuka