Japanese New Patent Law: Lessons for China

doi:10.4236/blr.2012.33018

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Beijing Law Review, 2012, 3, 133-136

http://dx.doi.org/10.4236/blr.2012.33018 Published Online September 2012 (http://www.SciRP.org/journal/blr)

Japanese New Patent Law: Lessons for China

Meirong Guo

Department of Social Engineering, Graduate School of Decision Science and Technology, Tokyo Institute of Technology, Tokyo, Japan.

Email: guo_mei_r[email protected]

Received June 27th, 2012; revised July 29th, accepted August 10th, 2012

ABSTRACT

In this paper, I systematically analyze the new Japanese Patent Law and make a comparative study on Chinese and

Japanese Patent Law to shed a new light on the improvement of the legal system of intellectual property in China. To

begin with, I review the historical development of Japanese Patent Law and the modern patent legal system in Japan.

Next, the aim and contents of the latest revision of Japanese Patent Law are described. I also pay close attention to the

issues remaining unresolved. Regarding the problems faced by Chinese Patent Law, I identify the lessons that China

could learn from Japanese New Patent Law. Finally, I suggest that there are still some unresolved issues in Chinese

Patent Law even after learning from the new Japanese Patent Law.

Keywords: Japanese Patent Law; Chinese Patent Law; Comparative Study

1. Introduction

Globalization has proceeded at an unprecedented pace in

the late twentieth and twenty-first centuries. The advent

of an international economic order has fundamentally

changed the nature of the global economy, affecting

governments as well as firms and individuals in every

nation and region [1]. The development of global econ-

omy could be promoted by an effective system of intel-

lectual property, which plays significant role in encour-

aging innovation, product development and technical

change. The patent law in the intellectual property right

(IPR) system is closely related to domestic industrial

development and external economic competitiveness.

China has made great achievements in its economic

development since it became a member of World Trade

Organization (WTO) in 2001 [2]. The overall economic

scale of China is keeping up with that of developed

countries. However, the legal system of intellectual

property in China has fallen behind the industrialization

with continuous high-speed growth. Specifically, Chi-

nese Patent Law is quite behind the counterparts in de-

veloped countries. For instance, Japan is known to have

greatly benefited from intellectual property generated in

other developed countries. In Japan, the patent protection

has been designed for th e ultimate objective of industrial

development [3]. It has several features that have helped

the absorption of spillovers of foreign inventive activity

by domestic enterprises. As we all know, Japan is an

important trading partner of China. Therefore, it would

be beneficial for China to have a clear understanding of

Japanese Patent Law in order to improve its legal system

of intellectual property with respects of the rapid eco-

nomic growth between China and Japan. It is also crucial

to pay attention to the development of Japanese Patent

Law because it has been revised frequently. There are a

lot of differences between Chinese Patent Law and the

Japanese one. For instance, there are three kinds of pro-

tection (patent for invention, utility model, and d esign) in

Chinese Patent Law, whereas a patent refers to only an

invention in Japanese Patent Law. The protections of

utility model and design are the task of Utility Mode l Act

and Design Act, respectively.

The present Chinese Patent Law was enacted in 1984.

There are still some unresolved issues in Chinese Patent

Law, although it has been improved through frequent

revisions, most recently in 2008 [4]. For example, some

provisions were not involved in Chinese Patent Law,

such as the legal protection of inv entors in joint research,

the rule intended to remedy infringed patent rights. In

contrast, Japan often revises the Patent Law to meet the

needs of industrial development. The latest version of

Japanese Patent Law was revised in 2011, which gives

some lessons to China, as I argue below. Notwithstand-

ing its significant implications on the possibilities of

Chinese Patent Law few efforts have been made in China

to analyze and assess the new Japanese Patent Law.

In this paper, I try to systematically analyze the new

Japanese Patent Law and to make a comparative study on

Chinese and Japanese Patent Law to shed a new light on

the improvement of the legal system of intellectual pro-

perty in China. To begin with, I review the historical

Japanese New Patent Law: Lessons for China

134

development of Japanese Patent Law and the modern

patent legal system in Japan. Next, the aim and contents

of the latest revision of Japanese Patent Law is described.

In this description, I pay close attention to the issues re-

maining unresolved. Regarding the problems faced by

Chinese Patent Law, I identify the lessons that China

could learn from Japanese New Patent Law. Finally, I

suggest that there are still some unresolved issues in

Chinese Patent Law even after learning from the new

Japanese Patent Law.

2. The Historical Development of Japanese

Patent Law

I begin with overviewing the historical development of

Japanese Patent Law to understand the background of the

latest revision of Japanese Patent Law. The purpose of

Japanese Patent Law is to meet the needs of industrial

development. The law is formulated in order to system-

atically protect the rights of inventors and promote in-

dustry development by means of inventions. The patent

system is one of policies intended for the development of

industries. The patent law could be a well-balanced leg-

islation to implement such a policy.

In order to promote industry development, Yukichi

Fukuzawa introduced the patent system of European and

American to Japan for the first time in Meiji era. By his

advocacy, Japanese society began to introduce and ex-

pand the western patent system. Eventually, Japanese

government decided that the patent legal system should

be implemented in Japan as soon as possible. As the first

Patent Law in Japan, the Rule of Monopoly was promul-

gated in 1871, although it was abolished one year later

without being enforced. Until then, advanced patent ideas

had been introduced into Japanese society [5]. Thus, it

laid the foundation of the patent system in Japan. The

patent system of Japan, Patent Monopoly Act, was en-

acted in 1885. It was revised as Patent Act in 1888 and

the patent system was still continuous. The Japanese

government officially renamed “Patent Act” as “Patent

Law” in 1899. Up to now, the term of “Patent Law” is

still be used. Later, after many revisions made in 1909,

1921 and later at many times, the modern patent system

of Japan was fully established [6].

Japanese patent law was established on the basis of

domestic law of related areas and was incompatible with

the rapidly developing international patent system. In

1959, the Japanese government thoroughly revised the

patent law, referring to a large number of legislations in

Western countries. In this sense, the present Japanese

Patent Law admittedly began from the patent law in 1959.

After the fresh start, Japanese Patent Law has been

greatly developed.

The current Japanese Patent Law is still based on the

patent law in 1959. Since 1989, the major revisions were

made in 1994, 1 996, 1998, 199 9, 2002, 2003, 2 004, 2006,

2007, 2008 and 2011. The latest revision of Japanese

Patent Law in 2011 will be described at length in the next

section [7].

3. The Latest Revision of Japanese Patent

Law

In recent years, with the development of innovation, an

increasing number of companies in Japan have taken full

advantage of the technologies outside their own and ap-

plied them into research and development (R&D) in or-

der to realize the commercialization of new products [8].

Accompanied by the above changes, Japanese Patent

Law was revised on June 8, 2011 to protect the inventors

in joint research and strengthen the protection of license

agreement. For the purpose of broadening the range of

innovation and solving intellectual property disputes

quickly and efficiently, it is thought to be essential to

improve the convenience of users by revising trial system

[9].

The major changes involved in the new Japanese Pat-

ent Law are as follows. First, the new Japanese Patent

Law stipulates that a non-exclusive license shall have

effect on the person who subsequently acquires the pat-

entee or the exclusive licensee, or the exclusive license

on the patent right even if it is not registered. Before the

law was revised, a non-exclusive license did not have

any effect on any person unless it was registered [10].

There were only a small number of cases in which

non-exclusive license was registered because of the high

cost and complex procedures of registration. Since there

is a potential risk for a holder of non-exclusive registered

right to work holder of non-exclusive registered right to

work to exercise the rights of a patent from the patentee,

the registration system of non-exclusive license was

concealed. Suppose that A is the holder of patent, and S

the license holder of the patent. Further suppose that A

transfers the patent to B (a new holder of the patent)

when there is the license agreement between A and S. In

this situation, the transfer of the non-exclusive license

from A to S shall have effect even if it is not registered

when B wants to seek injunction against S.

Second, the new Japanese Patent Law provides that the

person having the right to obtain a patent (the true hold er

of the patent right) can apply for the transfer of the rights

of a patent in the following two cases. The first is the

situation in which the patent is obtained by some of co-

inventors in a joint research or a joint development; in

this case, the objective of the revision is to strengthen the

protection of the real inventors of a patent. The second

case is that the application of a patent is applied b y so me-

one, who is not inventor (usurped application) or who

disobeys the rule of joint application (breach of joint ap-

plication). Before the law was revised, in the cases of

Japanese New Patent Law: Lessons for China 135

usurped application and breach of joint application, the

true inventor was able to request a trial for invalidation

but unable to request the return of the rights in explicit

terms. Let us A be an inventor, B neither an inventor nor

someone who has the right to obtain a patent and S a

third party. B applies a patent and becomes the holder of

the patent when A does not know. S files a request for a

trial for patent invalidation because B is not the true

holder of patent right. According to the new law, A has

the right to transfer the patent from B to others. However,

before the law was revised, A had the righ t of litigating a

trial for invalidation but was not entitled to the patent

right.

Third, there are two revisions in the new Japanese Pat-

ent Law for the purpose of improving the convenience of

users. The law improves their conveniences by extending

the period of reducing or discharging of patent fee. While

this period varied from one to three years before the law

was revised, the period is from one to ten years after the

revision. Moreover, the users are benefited from the new

law that broadens the objects applied to the exceptions

for lack of novelty. Before the law was revised, these

were considered as the case in which the novelty of in-

vention has lost (e.g., the explanation for funding re-

search and development to investors, or an oral presenta-

tion at a seminar on research and development consor-

tium). The new Japanese Patent Law revised the provi-

sion that objects applied to the exceptions for lack of

novelty from the viewpoint of the diversity of means for

the laying open of patent application. For example, when

the inventor presented his work in an academic confer-

ence, the inventor can apply for the patent and the inven-

tion would not be regarded as losing the novelty no mat-

ter how the inventor made public his work.

Finally, to resolve the disputes qu ickly and efficiently,

the new Japanese Patent Law prohibits the request for a

trial for correction after the litigation rescinding the trial

decision. In the case of a trial for invalidation, if the prior

notice of an appeal is given and the corresponding pro-

cedures to request correction are implemented, it is im-

possible to request a trial for correction after the litiga-

tion rescinding the trial decision. The reason for this re-

vision is to resolve th e “Catch-ball Effect” and to prevent

extensions and useless deliberations. The “Catch-ball Ef-

fect” is a term that describes how a case can go back and

forth from the Japan Patent Office (JPO) to court, such as

the procedure from Trial for Invalidation (JPO), Suit

against Appeal Trial Decision (Court) to Correction Trial,

then return to Trial for Invalidation (JPO), Suit against

Appeal Trial Decision (Court). Thus, after the revision,

the system begins from “Trial for Invalidation (JPO) to

Suit against Appeal Trial Decision (Court) and returns to

Trial for Invalidation (JPO)”. All ends at the “Trial for

Invalidation (JPO)” [11].

4. Lessons for Chinese Patent Law

After joining the World Trade Organization (WTO) in

2001, China has strengthened its legal framework and

amended its IPR and related laws and regulations to

comply with the WTO Agreement on Trade-Related As-

pect of Intellectual Property Rights (TRIPs). Chinese

Patent Law was enacted in 1984 and revised in 1992,

2000 and 2008. Th e aim of the th ird r evision in 2 008 wa s

to improve the quality of patents, the protection of na-

tional and local p ublic interests, and the balance between

patent protection and these public interests. Patents are

considered as a measure of technology prowess and in-

novation. Moreover, patent filing is considered as an

indicator of technology innovation in the country. By

2011, the number of new patent applications in China

had surpassed those of the United States and Japan so

that China is now in a leading po sition in patent filing all

over the world. Although Chinese Patent Law has played

primary role in increasing the number of patent filing,

such criticisms are often raised that the quality of Chi-

nese patent is not high an d that most of patent filling s are

applications for utility model and design but not for in-

vention.

Only when Chinese Patent Law continues to be im-

proved, can the goal of building the so-called innovation

country be achieved. Chinese Patent Law is very similar

to European and U.S. counterparts, with a few exception s.

One of the problems that China is facing now is how to

enforce and implement its patent law and policy effec-

tively. Besides, there are three problems that may still

exist in Chinese Patent Law. The first problem concerns

service invention, which means inv entions by e mployees.

Three issues are of great importance and significance.

First, how should we define the right of an inventor?

Second, how can we accurately distinguish a service in-

vention and a non-service invention? Third, how should

the right of a patent be transferred? Moreover, there are

still some questions unresolved by the current Chinese

Patent Law. For example, who is the patent applicant of

service invention? How pay incentive compensation to

an inventor?

The second problem is about the system of patent

agent. A patent agency, as a professional service agen t in

the patent system, plays a key role in providing a

pre-legal inventor with statutory rights. For the goal of

innovation country, the new Chinese Patent Law should

protect both the interest of the invention and that of the

patent agency. Since China currently makes use of the

market economy, it is essential to build a sound system

of patent agency consistent with international conven-

tions by revising Chinese patent law. Particularly, the

market access of patent agent and the acknowledgement

of patent attorney as a market agent should be clarified in

Japanese New Patent Law: Lessons for China

136

the patent law in order to enhance the predictability of

actions that is essential for the development of free mar-

ket economy.

The third problem is about administrative and judicial

“double protection”. Currently, there are two primary

ways to resolve patent disputes in China: the administra-

tive route and the judicial one. Because the infringements

of patent right are judged in the administrative and judi-

cial processes independently, the resources of govern-

ment are wasted. In addition, civil disputes in other areas

than intellectual property are also decided in some of

intellectual property courts. On the other hand, the cases

of the infringements of patent right are trialed by the lo-

cal patent administrative agencies; some of these admin-

istrative issues are resorted to administrative pleading

proceedings again and thus overburden the government.

Although the new Chinese Patent Law has added new

articles to improve the current situation, the problem is

not yet resolved.

The new Chinese Patent Law was revised in 2008,

while the new Japanese Patent Law in 2011. There is a

common objective to revise the patent law between

China and Japan, which is to improve social innovation.

The new Japanese Patent Law established the system of

transfer request to adequately p rotect the inventor in joint

research or joint development. As noted above, the prob-

lem of service invention is not yet resolved in the curren t

Chinese Patent Law. Regarding the problem of the tran s-

fer of patent right, the system of transfer request in the

new Japanese Patent Law can be a reference for China.

Moreover, the new Japanese Patent Law revised the arti-

cle that has enlarged the years of reducing patent fee for

small company to reduce the burden on business and to

encourage more enterprises to apply patents. These new

devices give us some insights on how to supply more

convenience for u sers.

5. Conclusion

The new Japanese Patent Law was promulgated in June

2011 and will be enforced in April 2012. As I described

before, the related articles were amended to strengthen

the protection of license contracts and the real inventor

(or patent right holder), to improve fairness of dispute

resolution and to forbid the request for a trial for correc-

tion after the litigation rescinding the trial decision.

These will work together for the three goals: meeting the

aims to open innovation, making dispute resolution faster

and fairer and improving users’ convenience. However,

there are still some issues unresolved by the new Japa-

nese Patent Law. First, the revision indeed made it possi-

ble to oppose the third party, even without the registra-

tion with the JPO. However, it does not limit the righ t of

injunction. Thus, there should be different stipulations

ntended for different industrial areas. Second, the right

of transfer is valid in a usurped application , regardless of

whether the applicant is a true in ventor. Generally speak-

ing, the patentee who obtains a patent right should meet

two conditions of invention and patent filing. Therefore,

the revision should make it clear whether the applicant is

the true inventor. In contrast, in Chinese Patent law, the

non-exclusive license holder must register with the Pat-

ent Office in order to oppose a third party. Thus, the

situation in China is the similar to the situation in Japan

before the law was revised. Moreover, in Chinese Patent

Law, it is still not possible to return the rights to th e true

inventor. Therefore, inventors must be cautious of usurped

applications and br eaches of joint applications. It follows

from these all that we can learn valuable lessons from the

new Japanese Patent Law.

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