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W.Herbert Sponsored Doing Business In Japan Presentation
 

W.Herbert Sponsored Doing Business In Japan Presentation

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Materials used for ABA Teleconference on Doing Business in Japan (Feb. 2010)

Materials used for ABA Teleconference on Doing Business in Japan (Feb. 2010)

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  • Japanese law offers protection to those who have rights in intellectual property, including the holders of rights in patents, copyrights, registered trademarks and service marks, andtrade secrets. Japanese law also offers protection to the holders of rights in lesser-known forms of intellectual property, such as registered utility models, registered designs, registered integrated semiconductor chip layouts, and new varieties of registered plant matter.
  • “highly advanced creations of technical ideas utilizing the laws of nature,” are patentable. Simple mathematical theories or formulae are not patentable, computer programs that express a sequence of processes or operations in a time sequence, so called “business method” patents, and products of genetic engineering are. Subject matter must be novel, involve an inventive step, and have industrial applicability to be patentable. Subject matter that is publicly known or used in Japan or abroad before the date the patent application claiming it is filed in Japan lacks novelty and thus is not patentable. However, inventors who have tested their invention or presented it in a printed publication or at a study meeting held by a scientific organization designated by the JPOmay maintain the novelty of their invention if they file their patent application within six months after the date of the testing or presentation. Subject matter that a person “ordinarily skilled in the art” of the purported invention would have been able to make easily, based on inventions that were already publicly known or worked anywhere in the world, or based on inventions that had been disclosed in a publication or otherwise been made publicly available anywhere in the world lacks an inventive step and thus is not patentable. Subject matter must have “industrial applicability.” A public disclosure at a trade show or a presentation at an academic seminar at which no duty of confidentially has been imposed on attendees would destroy the purported novelty of the invention.This six month grace period preserving invention novelty also applies in the case of inventors who make their inventions public in an exhibition held in a country whose government is a member of the Paris Convention country or of the World Trade Organization.In practice, inventions are very rarely rejected based on their lack of industrial applicability. However, biological inventions, genes, vectors, recombinant vectors, transformants, fused cells, recombinant proteins and monoclonal antibodies whose utility is not described or cannot be inferred from the patent specifications do not satisfy the industrial applicability requirement of the Patent Act.
  • Paris Convention Member may receive priority of filing in Japan if application isfiled in Japan within 12 months of filing in member country and copy of the original filing in member country is filed with JPO within 16 months of the original filing.Applicants who file an international patent application in a country that is a member of the Patent Cooperation Treaty, and who specify Japan as a designated country under the Treaty receive the benefit of the international application date for purposes of prosecuting their patent application with the JPO. Patent applications may initially be filed with the JPO in foreign languages specified by ministerial ordinance, but a Japanese translation must be submitted within fourteen months of the date of the filing. English is currently the only foreign language specified by the ordinance.
  • If patentable subject matter is jointly owned, then any patent application claiming it must be filed jointly by all the owners, or if only one of the owners files the application, all of the other owners must have assigned their interest in the subject matter to the co-owner who is filing the application. Although all joint patent owners are free to work the patented invention without the consent of the other owners, no joint owner may assign, pledge or grant a license to a patent that claims it without the consent of all of the other owners. This is in contrast to U.S. patent law, where absent agreement to the contrary, each of the joint inventors of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.“all intellectual property arising out of the collaboration shall be jointly owned”
  • Senyo jisshiken, often referred to in English as an “exclusive license,” mentioned in Article 77 of the Patent Act.Tsujyo jisshiken, often confusingly referred to in English as a “non-exclusive license,” is mentioned in Article 78 of the Patent Act.  Licenses Registered under Article 77. Licensees who register their licenses with the JPO under Article 77 enjoy certain rights under Japanese law which are unique in comparison to exclusive licensees who do not register their licenses under Article 77. Licensees who register their licenses under Article 77 “step into” the shoes of the patent owner. For example, to the extent the license so provides:Patent owners who grant licenses under Article 77 relinquish to the licensee their right to work the licensed patent to the extent the license so provides, so the license can be exclusive, even to the Licensor. Licensees who register their licenses under Article 77 may by themselves and in their own name exclude third parties from working the patent. Licensees who register their license under Article 77 may demand damages from third parties for infringement of the licensed patent, seek injunctions preventing infringement or likely infringement of the licensed patent by third parties, and demand that products which infringe the licensed patent be destroyed. But, licensees who register their licenses under Article 77 may not, without the consent of the patentee, pledge or assign their interest in their license or grant a non-exclusive license to a third party.   Licenses Registered under Article 78. Licensees who register their ordinary licenses with the JPO under Article 78 may continue to work the licensed patent even if the licensor subsequently grants a third party an exclusive license to the patent, assigns the patent to another party or otherwise disposes of the patent, or if the licensor is subsequently acquired by a third party.Effective April 1, 2009, both licenses under Art. 77 and Art. 78 may be registered at the Japan Patent Office based on a license agreement before an application is granted a patent. The new recordation system provides protection for the licensee of the pending patent application against any third party who subsequently acquires the right to the license to the pending patent application or granted patent with respect to either the provisional non-exclusive or provisional exclusive license. Therefore, even if the licensor (applicant or patentee) goes bankrupt, the bankruptcy trustee will not be permitted to terminate or change the license agreement once it is registered with the Patent Office. In order to preserve the confidentiality of the content of the agreement, the licensee’s name, the license’s scope of claims, and the name of the bankruptcy trustee will not be made public for non-exclusive licenses. Further, even if the applicant goes bankrupt, the bankruptcy trustee is not be permitted to cancel the recorded provisional exclusive or non-exclusive license based on Chapter 56 of the Bankruptcy Act.Despite the risks of failing to register, the nonexclusive patent license registration system has been sparingly used. For example, only 300agreements were registered in 2005. However, this is expected to change with the current trend in the electronics, semiconductor and IT fields toward comprehensive patent licensing practice involving packages of licenses and cross-licenses.
  • Compulsory licenses have not ever been awarded by the JPO. But, example of negotiating in the shadow of the law?Compare with US:General RuleNo compulsory licensing regime, per seExceptions28 U.S.C. 1498 Allows the U.S. to use an invention covered by a U.S. patent without licensePatent owner’s remedy is an action against the U.S. for recovery of reasonable compensationFederal Trade Commission Guidelines for Licensing of Intellectual Property Anti-trustMerger/Acquisition Certain U.S. laws (e.g., Clean Air Act)
  • The importance of a warning letter is diminished by the fact that Japanese patent law has no provision for treble damages resulting from willful infringement. However, warning letters are important if the patentee wishes todemand compensation for infringing activity during the period after the publication of the patent and prior to its registration, becauseArticle 65 Section 1 of the Patent Act states thatafter the patent application has been published, if the patent applicant has sent a warning letter, then the applicant may claim compensation against a person who received the warning and has worked the invention after receipt of the warning prior to the registration. However, the patent holder may not exercise the right to claim such compensation until the patent is registered.
  • “Productions in which thoughts or sentiments are expressed in a creative way and which fall within the literary, scientific, artistic or musical domain” are copyrightable. Copyrightable works include novels, plays, scripts, musical works, choreographic works and pantomimes, paintings, engraving and sculptures, architectural works, cinematographic and photographic works, and computer programs.  A work created by translating, arranging musically, transforming, dramatizing, cinematizing, or otherwise adapting a pre-existing copyrightable work is a derivative work, and thus is copyrightable. However, copyright of a derivative work does not affect authorship rights in the original work.  
  • Authorship of a work is attributed to the person who creates the work, except in cases in which an employee, in the course of his or her employment duties, makes a work on the initiative of a corporation or other legal person, in which case, unless stipulated otherwise in the employment contract, authorship is attributed to the legal person. Authorship of cinematographic works is attributed to those who have creatively contributed to the creation of the work as a whole by taking charge of producing, directing, filming, and/or artistically directing it.
  • Japan also recognizes "moral rights," which may include the right to be known as the author of the work (right of paternity), the right to prevent others from distorting the work (right of integrity), the right to control publication of the work (right of disclosure) and the right to withdraw, modify or disavow a work after it has been published (right of withdrawal). Moral rights protection reflects the view that the individual, not only the work, is to be protected. In most such jurisdictions, agreements to waive or transfer moral rights are not enforceable. In those countries where moral rights are protected, such rights may restrict the transferee of the software (such as the party who commissioned the work) from making changes to the software without the express consent of the original author. Who has moral rights, on what kinds of works, and how are they acquired?Visual Artists Rights Act of 1990 (VARA). VARA applies exclusively to visual art. Under VARA, moral rights automatically vest in the author of a "work of visual art." For the purposes of VARA, visual art includes paintings, drawings, prints, sculptures, and photographs, existing in a single copy or a limited edition of 200 signed and numbered copies or fewer. In order to be protected, a photograph must have been taken for exhibition purposes only. VARA only protects works of "recognized stature;" posters, maps, globes, motion pictures, electronic publications, and applied art are among the categories of visual works explicitly excluded from VARA protection.
  • Because copyright protection arises concurrently with the creation of the work, examination and registration with a governmental agency are not necessary for rights to vest. However, the copyright holder may register the date of first publication of the work, authors may have their name registered with respect to the work, and authors of copyrightable computer programs may have the date of the creation of the program registered with Japan’s Agency for Cultural Affairs. The transfer or limitation on the disposal of a copyright and the establishment or modification of a pledge on a copyright may not be enforced against third parties unless the transfer, limitation or pledge is registered with the Agency for Cultural Affairs. 
  • In the case of a work authored by a natural person, copyright expires fifty years after the death of the author; in the case of a jointly authored work, it expires fifty years after the death of the last surviving co-author. In the case of anonymous or pseudonymous works, copyright expires fifty years after the making of the work, unless the fifty-year period after the death of the author lapses before fifty years following the date the work was made public, in which case the copyright expires fifty years after the death of the author, if known. In the case of works whose authorship is attributed to a corporate body or other legal person, copyright expires fifty years after work was made public. Copyright of cinematographic works expires seventy years after the work has been made public, or if the work is not made public, seventy years after creation of the work.
  • Infringement of a copyright, author’s moral rights, or neighboring rights of performers and broadcasters includes: importing into Japan, for purposes of distribution, objects made by conduct that would have infringed the copyright if the conduct had occurred in Japan; distributing, or possessing for purposes of distributing, an object made by an infringing act; using on a computer a computer program reproduced by an infringing act; intentionally adding, removing, or modifying information which identifies the work, or the owners of the rights, or information regarding the manner of the authorized exploitation of the work; and exploiting a work prejudicial to the honor or reputation of the author. Importing, distributing, possessing for the purpose of distributing, or using or reproducing on a computer objects that are copyrighted also amounts to infringement. 
  • A party who infringes a copyright is liable for damages calculated at the copyright holder’s choice of (i) the number of objects sold or reproduced multiplied by the per unit profit that the copyright holder could have sold had there been no infringement; or (ii) the sum that would have been received by the copyright holder through the exercise of the rights. The profits, if any, received by the infringer as a result of the infringement are presumed to be the damages suffered by the copyright holder. Copyright holders may seek injunctions to stop infringement or to prevent threatened infringement, and also may demand that infringing articles or equipment used exclusively for infringement be destroyed.
  • Lack of distinctiveness:consisting solely of a marking indicating the common name of the goods or services; being customarily used in connection with the goods or services; in the case of goods, consisting solely of a mark indicating the place of origin, place of sale, quality, raw materials, efficacy, intended purpose, quantity, shape, price, method or time of production or use, or in the case of services, the consisting of the location of their provision, quality, articles to be used in their provision, efficacy, intended purpose, quantity, modes, price or method of time of their provision; consisting solely of a mark indicating a common surname or the name of a legal entity; (v) consisting solely of a simple and common mark; (vi) or being under which consumers are not able to recognize the goods or services as those pertaining a particular person’s business.An applicant may register a mark used in connection with goods or services for business purposes, unless the mark lacks distinctiveness. The application to register a mark must specify the goods or services for which the mark is intended. The application is examined by the JPO, and if no grounds for refusing the registration are found, then the registration is published in the official bulletin. At any time within two months from the date of publication in the bulletin, anyone may file an opposition to the registration. Common grounds for opposition to registration include: the opponent’s belief that the mark lacks distinctiveness; the opponent’s belief that the mark does not fulfill the requirements for registration; or that registration of the mark is otherwise prohibited under Japanese law. Once a mark is registered, it may be invalidated if the JPO erroneously granted the registration, if the registration violated a treaty to which Japan is a party, if the applicant did not have rights in the mark when it was registered, if the mark is identical or similar to a trademark that is already well known among consumers in Japan or abroad as indicating goods or services pertaining to a business of a person different from the registrant, if the mark is likely to cause confusion in connection with the goods of services pertaining to a business of another person, or if the mark as registered is used by the registrant for unfair purposes. For example, in one well known case, the Tokyo High Court held that although the publisher of the magazine “Computerworld” had not used the trademark in Japan, the mark was well known domestically because Japanese consumers had been exposed to it through Japanese computer related media outlets. Therefore, the defendant’s registration of konpyutaawaarudoin Japanese script was invalidated.  
  • Infringement of a registered mark includes: using a mark similar to the registered mark in connection with goods or services designated for the registered mark; using the registered mark or a mark similar to it in connection with goods or services similar to goods or services designated for the registered mark; possessing, for the purpose of assignment, transfer, or export, goods designated for the registered mark or goods similar to the designated goods or services, that bear the registered mark or a mark similar to the registered mark; possessing or importing articles that bear the registered mark or a mark similar to it that are used to provide designated services or services similar to the designated services for the purpose of providing the designated services through use of the articles; assigning, delivering, possessing or importing for the purpose of assigning or delivering articles that bear a registered mark or a mark similar to it, for the purpose of causing the provision of designated or similar services through use of the products; possessing products indicating the registered mark or a similar mark for the purpose of using the registered mark or the mark similar to it in connection with the designated goods or designated services, or similar goods or services; assigning, delivering, or possessing for the purpose of assigning or delivering articles bearing the registered mark or a mark similar to it for the purpose of causing the registered mark or a mark similar to it to be used in connection with the designated goods or designated services, or similar goods or services; manufacturing or importing products indicating the registered mark or a mark similar to it, for the purpose of using or causing to be used the registered trademark or a trademark similar to it in connection with the designated goods or designated services or similar goods or services; and manufacturing, assigning, delivering or importing products to be used exclusively for manufacturing products bearing the registered mark or a mark similar to it. Those who infringe a the rights of a holder of rights in a registered mark are presumed to be negligent when they commit the infringing act, even if they had no actual knowledge of the existence of the registered mark that they infringe.
  • Anyone who infringes a right holder’s rights in a registered mark is liable for damages calculated at the claimant’s choice of (i) the profit per unit of goods that would have been sold by the holder of rights to the registered mark had there been no infringement, multiplied by the number of infringing goods sold by the infringer; (ii) the profits earned by the infringer; or (iii) the consideration that the holder of rights to the registered mark would have been entitled to receive for the use of the mark. Holders of rights in registered marks may demand injunctions to stop or prevent infringement by anyone who infringes or threatens to infringe the right in the mark.Trademark licensees who register their exclusive right to use a mark under Article 33 of the Trademark Act enjoy rights that are similar to patent licensees who register their licenses under Article 77 of the Patent Act, including the right to demand damages and injunctions.
  • The Japanese Unfair Competition Prevention Act was revised in the early 1990’s to include provisions regarding trade secrets.
  • (1) 営業秘密性(秘密管理性)について本件顧客情報について不正競争防止法2条6項にいう営業秘密の要件としての秘密管理性が認められるためには,少なくとも,これに接した者が秘密として管理されていることを認識し得る程度に秘密として管理されている実体があることが必要である。しかし,本件では,被告が本件顧客情報の秘密管理性を争っているにもかかわらず,原告パシフィックウエーブは,本件顧客情報を施錠された書庫に保管していたことや,コンピュータで管理している情報についてはファイル名を複雑にして管理していたことを述べる同原告代表者の陳述書(甲100)を提出し,また,同原告代表者が当事者尋問において「私どもの会社におきまして,書庫に顧客名簿を入れ,かぎが掛かるようにして管理をしておりました」との供述を援用するにとどまり,これを裏付ける証拠を何ら提出しない。そして,他に上記陳述記載及び供述を裏付ける証拠は全くないから,これらの陳述記載等のみから,たやすくその内容を真実と認めることはできないというべきである。したがって,本件顧客情報が秘密として管理されていたとは認められないから,本件顧客情報は不正競争防止法2条6項にいう「営業秘密」に当たらない。
  • Legally impermissible unfair competition includes: acquiring trade secrets through theft, fraud, duress, or other wrongful means; using or disclosing trade secrets acquired through such wrongful means; acquiring trade secrets with knowledge that they had been acquired through wrongful means, or lacking knowledge of the wrongful acquisition only through gross negligence; using or disclosing trade secrets after becoming aware that they had been wrongfully acquired, or lacking awareness of the wrongful acquisition only through gross negligence; using or disclosing trade secrets for purposes of unfair business competition, illicit gain, or causing injury to their owner; acquiring a trade secret with the knowledge that it was acquired through improper disclosure, or lacking such knowledge only through gross negligence, or using or disclosing a trade secrete so acquired; using or disclosing an acquired trade secret after becoming aware that the trade secret had been improperly disclosed or if not becoming aware of the improper disclosure, lacking such awareness due to gross negligence.  
  • Parties whose business interests have been infringed or are likely to be infringed as a result of a third party misappropriating their trade secret may seek injunctions stopping or preventing infringement and the destruction of any articles that constitute infringement. A person who has intentionally or negligently injured the business reputation of another person by misappropriation of trade secret is liable to the owner of the trade secret for compensation for damages, presumed to be in cases in which the infringer sold or transferred infringing articles, the number of articles sold or transferred multiplied by the amount of profit per unit of the articles that the claimant could have sold but for the infringement. The claimant may also choose to claim damages for trade secret infringement calculated as the profits received by the infringing party through the act of infringement, or the consideration that reasonably should have been received for the infringer’s use of the trade secret. Finally, anyone who infringes a trade secret may also be ordered to restore the business reputation of the owner of the secret in lieu of or in addition to compensating the owner for damages.
  • Reasons offered:Much domestic contracting is relational contractingWell developed rules in form of Civil Code and Commercial Code as a backdrop regarding meaning of good faith in pre-contract negotiations, post formation performance, protection for reasonable expectation on renewing contracts, and good faith negotiations of contracts that prove difficult to perform according to their original terms.Lack of juries. New lay judge system hears only serious criminal matters. The new judicial system is intended to make criminal trials, long dominated by legal professionals, more reflective of public sentiment. Some 3,000 cases a year are expected to be tried under the lay judge system, in which six citizen judges and three professional judges oversee serious criminal cases, including murder, at district courts.Little question regarding choice of law, state courts and their interpretations of contract law.
  • The parties shall negotiate in good faith and agree separately regarding their ownership and share of rights in any results of the collaborative research which is a new invention, device, design copyrightable work, intellectual property rights (rights to receive rights in patent rights, utility model rights, design rights, trademark rights, and if registered rights arising after their registration, and also an copyrights).Evidence of continuing relationship, reliance on good faith of parties, less interest in making a final promise today. Practical? Flexible?本研究の研究成果(本研究により新たに得られた発明、考案、意匠、著作物等一切の成果をいう。以下同じ。)にかかる知的財産権(特許権、実用新案権、意匠権、商標の産業財産権を受ける権利およびそれらに係る登録後の権利ならびに著作権をいう。以下同じ。)及び、②本研究の研究成果であって①に該当しないもののうち、第3条の報告を通じ書面にて特定されたものの帰属については、甲乙協議のうえ別途定めるものとする。
  • If either party should incur some damage due to the failure of the other party to perform under this agreement, then the party so damaged may demand that the party failing to perform indemnify it.Lack of detail No baskets or caps, no carveouts, no procedure for demanding indemnification, no mention of insurance coverageEvidence of continued relationship?賠償責任甲または乙は、相手方の責に帰すべき本契約の不履行により、損害を受けたときは、相手方にその損害の賠償を請求することができる。
  • Have seen this in License Agreements, Confidential Disclosure Agreements, etc.Invitation to communicate and discuss in good faith? Desire to (規定外事項)本契約に定めのない事項または本契約の履行または解釈にあたって生じた疑義については、信義誠実の原則に従い、その都度甲乙協議のうえ処理するものとする。(規定外事項)本契約に定めのない事項または本契約の履行または解釈にあたって生じた疑義については、信義誠実の原則に従い、その都度甲乙協議のうえ処理するものとする。本契約に関する訴えは,東京地方裁判所を第一審の専属的合意管轄裁判所とする。

W.Herbert Sponsored Doing Business In Japan Presentation W.Herbert Sponsored Doing Business In Japan Presentation Presentation Transcript

  • Intellectual Property & Observations about Contracting in Japan
    William A. Herbert, Attorney at Law (admitted in Georgia, New York & Washington)
    william@wherbertlaw.com
    1
    © 2010 William Herbert (info@wherbertlaw.com)
  • Japanese Intellectual Property
    Patent Rights
    Copyrights
    Rights in Registered Trademarks/Service Marks
    • Trade Secret Rights
    Lesser known rights (Registered Utility Models, Registered Designs, Registered Integrated Semiconductor Chip Layouts, Registered Plant Matter)
    2
    © 2010 William Herbert (info@wherbertlaw.com)
  • Patent Rights
    Subject Matter (novelty, inventive step, industrial applicability)
    Priority Filing
    Ownership
    Licenses
    Registered under Art. 77 of the Patent Act
    Registered under Art. 78 of the Patent Act
    Compulsory Licenses
    • Infringement
    • Damages and Remedies
    3
    © 2010 William Herbert (info@wherbertlaw.com)
  • Patentable Subject Matter
    “Highly advanced creations of technical ideas utilizing the laws of nature”
    Subject matter must be novel, involve an inventive step, and have industrial applicability to be patentable. Patentable subject matter includes:
    Computer programs that express a sequence of processes or operations in a time sequence;
    So called “business methods”
    Products of genetic engineering (microorganisms)
    Subject matter is not patentable if publicly known or used in Japan or abroad before the date the patent application claiming it is filed in Japan (no novelty and thus is not patentable).
    But, inventors who have tested their invention or presented it in a printed publication or at a study meeting held by a scientific organization designated by the JPO may maintain novelty of if they file a patent application within six months after the date of the testing or presentation.
    4
    © 2010 William Herbert (info@wherbertlaw.com)
  • Priority Filing
    Japan is a “first to file country”
    Earliest filer in Japan has priority
    Japan is Paris Convention Member
    Japan is member of the PCT
    5
    © 2010 William Herbert (info@wherbertlaw.com)
  • Patent Ownership
    If patentable subject matter is jointly owned, then any patent application claiming it must be filed jointly by all owners, or if by only one co-owners, then all other owners must have assigned their interest to applicant to that owner.
    Joint patent owners may work a patented invention without the consent of the other owners, absent agreement otherwise to the contrary (Art. 73(1)); BUT
    Joint owner may not assign, pledge or grant a license (exclusive or non-exclusive) to a patent without the consent of all of the other owners. (Patent Act, Art. 73 (1)(3))
     Compare with U.S. patent law:
    Absent agreement to the contrary, each of the joint inventors of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners.
    6
    © 2010 William Herbert (info@wherbertlaw.com)
  • Licenses
    Registered under Art. 77 of the Patent Act (“sennyojisshiken”)
    Registered under Art. 78 of the Patent Act (“tsujyo jisshiken”)
    7
    © 2010 William Herbert (info@wherbertlaw.com)
  • Compulsory Licenses
    The JPO may award compulsory non-exclusive licenses to a party who would like such a license if, at least four years after the patent has issued, the patented invention has not been “sufficiently and continuously” worked for three or more years in Japan.
    If four or more years have passed since the patent was issued, and if the patented invention has not “sufficiently and continuously” worked for three or more years in Japan, then a party may ask the patentee to grant the party a non-exclusive license to the patent. If the parties are unable to agree on the granting of a non-exclusive license, then then party wishing to receive a non-exclusive license may petition the JPO to award it a non-exclusive license.
    The JPO may award the petitioner a royalty bearing non-exclusive license. (Patent Act, Art. 83, 84 and 85)
    8
    © 2010 William Herbert (info@wherbertlaw.com)
  • Infringement/Damages & Remedies
    Patent infringement includes, with respect to a product claimed in a patent.
    Producing;
    Using;
    assigning to a third party;
    offering to assign (“assigning” refers to transferring or leasing);
    importing, or possessing for the purpose of assigning or exporting; or
    employing a process that is claimed in a patent and producing, assigning to a third party, offering to assign, importing or exporting, a product to be used in a process claimed in a Japanese patent.
    Infringement of a patent right creates a presumption of negligence when committing the infringing act. Actual knowledge of patent not required. Patent owners need not send a warning letter to alleged infringers before bringing a claim.
    Damages and Remedies
    The patent right holder’s choice of:
    the profit per unit of product that would have been sold by the holder of the patent right had there been no infringement, multiplied by the number of infringing products sold by the infringer;
    the profits earned by the infringer; or
    the consideration that the holder of the patent right would have been entitled to receive for granting the infringer the right to work the patent.
    Patent owners and licensees who register their licenses under Article 77 may seek injunctions to stop ongoing infringement or to prevent threatened infringement, and demand disposal of infringing products and products produced by processes claimed in the patent.
    9
    © 2010 William Herbert (info@wherbertlaw.com)
  • Copyright
    Copyrightable Subject Matter
    Authorship
    Author’s Rights
    Registration
    Term
    Infringement
    Damages and Remedies
    10
    © 2010 William Herbert (info@wherbertlaw.com)
  • Copyrightable Subject Matter
    “Productions in which thoughts or sentiments are expressed in a creative way and which fall within the literary, scientific, artistic or musical domain” are copyrightable. This includes:
    novels, plays, scripts, musical works, choreographic works and pantomimes, paintings, engraving and sculptures, architectural works, cinematographic and photographic works, and computer programs.
    A work created by translating, arranging musically, transforming, dramatizing, cinematizing, or otherwise adapting a pre-existing copyrightable work is a derivative work, and thus is copyrightable. However, copyright of a derivative work does not affect authorship rights in the original work.
    11
    © 2010 William Herbert (info@wherbertlaw.com)
  • Authorship
    Authorship is attributed to the person who creates the work, except in cases in which an employee, in the course of employment duties, makes a work on the initiative of a corporation or other legal person. Then, unless stipulated in the employment contract, the work is attributed to the corporate entity.
    Authorship of cinematographic works is attributed to those who have creatively contributed to the creation of the work as a whole by taking charge of producing, directing, filming, and/or artistically directing it.
    12
    © 2010 William Herbert (info@wherbertlaw.com)
  • Author’s Rights
    Exclusive right to reproduce their work, to perform it publicly, make it public by screen presentation, publicly transmit it, and offer it to the public by transferring ownership of the original work or reproductions of it. Authors of literary works have the exclusive right to recite their works publicly, while authors of artistic works and unpublished photographic works have the exclusive right to exhibit them publicly. Japanese law also recognizes so called “moral rights” of authors and the “neighboring rights” of performers and broadcasters
    Right to publish their work, to determine whether or not authorship of the work is attributed to them, to maintain the integrity of the work and to prevent distortion, mutilation, or other modification of the work.
    Performers have the exclusive right to make sound or visual recordings of their performance, and to broadcast and to wire broadcast their performance. Broadcasting organizations which have obtained authorization from a person who has the right to broadcast a performance may make a sound or visual recording of the performance. Performers have the right to receive fees for the broadcast and the secondary use of commercial phonogram incorporating the sound recording of the performance. Absent agreement to the contrary, once a performer authorizes the broadcast of a performance, the performance may be broadcast in the future, with the broadcaster obligated to pay the performer a reasonable royalty.
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  • Registration
    Copyright arises concurrently with the creation of the work. There is no examination or registration with a governmental agency necessary for rights to vest.
    But:
    copyright holder may register the date of first publication of the work;
    authors may have their name registered with respect to the work; and
    authors of copyrightable computer programs may have the date of the creation of the program registered with Japan’s Agency for Cultural Affairs.
    The transfer or limitation on the disposal of a copyright and the establishment or modification of a pledge on a copyright may not be enforced against third parties unless the transfer, limitation or pledge is registered with the Agency for Cultural Affairs.
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  • Copyright Term
    For works authored by a natural person, copyright expires fifty years after the death of the author, or fifty years after the death of the last surviving author for a co-authored work.
    For anonymous or pseudonymous works, copyright expires fifty years after the making of the work, unless the fifty-year period after the death of the author lapses before fifty years following the date the work was made public, in which case the copyright expires fifty years after the death of the author, if known.
    In the case of works whose authorship is attributed to a corporate body or other legal person, copyright expires fifty years after work was made public.
    Copyright of cinematographic works expires seventy years after the work has been made public, or if the work is not made public, seventy years after creation of the work.
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  • Infringement
    Infringement includes:
    importing into Japan, for purposes of distribution, objects made by conduct that would have infringed the copyright if the conduct had occurred in Japan;
    distributing, or possessing for purposes of distributing, an object made by an infringing act;
    using on a computer program reproduced by an infringing act;
    intentionally adding, removing, or modifying information which identifies the work, or the owner of the rights, or information regarding the manner of the authorized exploitation of the work; and
    exploiting a work prejudicial to the honor or reputation of the author. Importing, distributing, possessing for the purpose of distributing, or using or reproducing on a computer objects that are copyrighted also amounts to infringement.
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  • Damages and Remedies
    Infringers are liable for damages calculated at the copyright holder’s choice of:
    the number of objects sold or reproduced multiplied by the per unit profit that the copyright holder could have sold had there been no infringement; or
    the sum that would have been received by the copyright holder through the exercise of the rights. The profits, if any, received by the infringer as a result of the infringement are presumed to be the damages suffered by the copyright holder.
    Copyright holders may seek injunctions to stop infringement or to prevent threatened infringement, and also may demand destruction of infringing articles or equipment used exclusively for infringement.
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  • Trademarks and Service Marks
    Marks and Registration
    Cooperative Associations
    Term
    Infringement
    Damages and Remedies
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  • Marks and Registration
    Trademarks and service marks, are “characters, figures, signs, or three dimensional shapes, any combination of them, or any combination of them with colors.”
    An applicant may register a mark used in connection with goods or services for business purposes, unless the mark lacks distinctiveness.
    The application to register a mark must specify the goods or services for which the mark is intended.
    The application is examined by the JPO, and if no grounds for refusing the registration are found, then the registration is published in the official bulletin.
    At any time within two months from the date of publication in the bulletin, anyone may file an opposition to the registration. Common grounds for opposition to registration include: the opponent’s belief that the mark lacks distinctiveness; the opponent’s belief that the mark does not fulfill the requirements for registration; or that registration of the mark is otherwise prohibited under Japanese law.
    Once a mark is registered, it may be invalidated if the JPO erroneously granted the registration, if the registration violated a treaty to which Japan is a party, if the applicant did not have rights in the mark when it was registered, if the mark is identical or similar to a trademark that is already well known among consumers in Japan or abroad as indicating goods or services pertaining to a business of a person different from the registrant, if the mark is likely to cause confusion in connection with the goods of services pertaining to a business of another person, or if the mark as registered is used by the registrant for unfair purposes.
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  • Cooperative Associations
    Cooperative associations may obtain a regionally based collective trademark to be used exclusively by their members in accordance with the policies of the association. Cooperative associations or foreign associations equivalent to cooperative associations in countries other than Japan may also register their marks in Japan.
    As of February 18, 2010, there were 447 registered regionally based collective marks. Only two of them were for foreign products – one was for ham produced by members of the Parma Ham Consortium, and one was for pork produced by members of Canada Pork International.
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  • Term
    Mark registration is valid for ten years from the registration date.
    Registrations may be renewed.
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  • Infringement
    Infringement includes:
    using a mark similar to the registered mark in connection with goods or services designated for the registered mark;
    using the registered mark or a mark similar to it in connection with goods or services similar to goods or services designated for the registered mark;
    possessing, for the purpose of assignment, transfer, or export, goods designated for the registered mark or goods similar to the designated goods or services, that bear the registered mark or a mark similar to the registered mark;
    possessing or importing articles that bear the registered mark or a mark similar to it that are used to provide designated services or services similar to the designated services for the purpose of providing the designated services through use of the articles;
    assigning, delivering, possessing or importing for the purpose of assigning or delivering articles that bear a registered mark or a mark similar to it, for the purpose of causing the provision of designated or similar services through use of the products;
    possessing products indicating the registered mark or a similar mark for the purpose of using the registered mark or the mark similar to it in connection with the designated goods or designated services, or similar goods or services;
    assigning, delivering, or possessing for the purpose of assigning or delivering articles bearing the registered mark or a mark similar to it for the purpose of causing the registered mark or a mark similar to it to be used in connection with the designated goods or designated services, or similar goods or services;
    manufacturing or importing products indicating the registered mark or a mark similar to it, for the purpose of using or causing to be used the registered trademark or a trademark similar to it in connection with the designated goods or designated services or similar goods or services; and
    manufacturing, assigning, delivering or importing products to be used exclusively for manufacturing products bearing the registered mark or a mark similar to it.
    Those who infringe a the rights of a holder of rights in a registered mark are presumed to be negligent when they commit the infringing act, even if they had no actual knowledge of the existence of the registered mark that they infringe.
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  • Damages and Remedies
    Infringers are liable for damages calculated at the claimant’s choice of:
    the profit per unit of goods that would have been sold by the holder of rights to the registered mark had there been no infringement, multiplied by the number of infringing goods sold by the infringer;
    the profits earned by the infringer; or
    the consideration that the holder of rights to the registered mark would have been entitled to receive for the use of the mark. Holders of rights in registered marks may demand injunctions to stop or prevent infringement by anyone who infringes or threatens to infringe the right in the mark.
    Trademark licensees who register their exclusive right to use a mark under Article 33 of the Trademark Act enjoy rights that are similar to patent licensees who register their licenses under Article 77 of the Patent Act, including the right to demand damages and injunctions.
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  • Trade Secret
    Definition
    Maintenance of Trade Secret Protection
    Misappropriation
    Remedies for Misappropriation
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  • Definition
    Trade secrets, defined as “technical or business information useful for commercial activities, such as manufacturing or marketing methods, that is kept secret and that is not publicly known” are intellectual property proprietary to their owner.
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  • Maintenance of Trade Secret Protection
    To establish that information is a trade secret, the holder of the information must implement and maintain procedures to preserve the secrecy of the information.
    Administrative agency regulations describe standards and procedures which, if taken by the owner of information purported to be a trade secret, increase the likelihood that the information will be deemed to have been maintaining as secret. These include:
    Marking the information as “Confidential”
    Placing limits on who may access the information.
    Informing in writing those who do access the information that they have an obligation not to disclose or use the information, and binding them to obligations of confidentiality.
    Additional actions that the corporate owner of a purported trade secret should implement include
    appointing a particular person within the organization to act as the manager of confidential information;
    training employees on the importance of maintaining trade secrets as confidential; and
    drafting specific in-house rules on the maintenance of secrecy.
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  • Misappropriation of Trade Secret
    Legally impermissible unfair competition includes:
    acquiring trade secrets through theft, fraud, duress, or other wrongful means;
    using or disclosing trade secrets acquired through such wrongful means;
    acquiring trade secrets with knowledge that they had been acquired through wrongful means, or lacking knowledge of the wrongful acquisition only through gross negligence;
    using or disclosing trade secrets after becoming aware that they had been wrongfully acquired, or lacking awareness of the wrongful acquisition only through gross negligence;
    using or disclosing trade secrets for purposes of unfair business competition, illicit gain, or causing injury to their owner;
    acquiring a trade secret with the knowledge that it was acquired through improper disclosure, or lacking such knowledge only through gross negligence, or using or disclosing a trade secrete so acquired;
    using or disclosing an acquired trade secret after becoming aware that the trade secret had been improperly disclosed or if not becoming aware of the improper disclosure, lacking such awareness due to gross negligence.
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  • Remedies for Misappropriation
    Those whose business interests have been infringed or are likely to be infringed as a result of a third party misappropriating their trade secret may seek:
    injunction stopping or preventing infringement; and
    the destruction of any articles that constitute infringement.
    • A person who has intentionally or negligently injured the business reputation of another person by misappropriation of trade secret is liable to the owner of the trade secret for compensation for damages, in cases in which the infringer sold or transferred infringing articles, presumed to be the number of articles sold or transferred multiplied by the amount of profit per unit of the articles that the claimant could have sold but for the infringement.
    • The claimant may also choose to claim damages for trade secret infringement calculated as the profits received by the infringing party through the act of infringement, or the consideration that reasonably should have been received for the infringer’s use of the trade secret. Finally, anyone who infringes a trade secret may also be ordered to restore the business reputation of the owner of the secret in lieu of or in addition to compensating the owner for damages.
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  • Japanese Attitudes toward Contracting
    Contracts are less detailed and physically shorter in length
    Contracts are often seen as beginning of relationship, rather than final promise on matter
    Contracts seen as one of many other agreements that have been made and will be made
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  • Clause for Ownership of Research Collaboration IP
    If any results of the collaborative research is a new invention, device, design copyrightable work, intellectual property rights (rights to receive rights in patent rights, utility model rights, design rights, trademark rights, and if registered rights arising after their registration, and also an copyrights), then the parties shall negotiate in good faith and agree separately regarding their ownership and share of rights regarding the results.
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  • Indemnification Clause
    If either party to this agreement should incur some damage due to the failure of the other party to perform under this agreement, then the party so damaged may demand that the party failing to perform indemnify it.
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  • Dispute ResolutionClause
    Should any doubt arise regarding a matter not dealt with in this Agreement, performance under this Agreement or the interpretation of this Agreement, then the Parties will negotiate with each other to deal with the matter in accordance with principles of good faith.
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  • Thank you for your attention.ご静聴ありがとうございました。
    William A. Herbert
    Attorney at Law
    (Admitted in Washington, New York and Georgia)
    ワシントン、ニューヨークー州、ジョージア州弁護士
    E-mail: william@wherbertlaw.com(日本語可)
    © 2010 William Herbert (info@wherbertlaw.com)
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