1481 File MOD6 SEC4 Intellectual Property Rights in Japan

8/19/2019 1481 File MOD6 SEC4 Intellectual Property Rights in Japan

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INTELLECTUAL PROPERTY RIGHTS IN JAPAN

INTERNATIONAL TREATIES

Japan is a signatory to most of the international treaties concerning intellectual

property rights. Accordingly, to the extent that the international treaties are relevant,

general schemes for protection and prosecution of intellectual property rights under the

intellectual property laws of Japan are similar to those of other signatory countries.

International treaties concerning intellectual property rights to which Japan is a

signatory include without limitation the following:

• Trade Related Aspects of Intellectual Property Rights !!"

• Paris #onvention for the Protection of Industrial Property $$%

• Patent #ooperation Treaty !&'

• (udapest Treaty on the International Recognition of the )eposit of

*icroorganisms for the Purposes of Patent Procedure !!&

• International #onvention for the Protection of +ew arieties of Plants !-

• ice Agreement #oncerning the International #lassi cation of /oods and 0ervices

for the Purposes of the Registration of *ar1s !!

• Trademar1 2aw Treaty !!"

• Protocol Relating to the *adrid Agreement #oncerning the International

Registration of *ar1s !$!

• (erne #onvention for the Protection of 2iterary and Artistic 3or1s 4Paris Act5

!&

• 6niversal #opyright #onvention !&

• Rome #onvention for the Protection of Performers, Producers of Phonograms and

(roadcasting 7rgani8ations !-

• /eneva #onvention for the Protection of Producers of Phonograms against

6nauthori8ed )uplication of Their Phonograms !&


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• 3IP7 #opyright Treaty !!-

• 3IP7 Performance and Phonograms Treaty !!-

•

#onvention 9sta lishing the 3orld Intellectual Property 7rgani8ation !-&

IPR in Japan

Intellectual property rights in Japan primarily consist of 4 5 patents, 4;5 utility model

rights, 4%5 design rights, 4"5 trademar1 rights, 4Patent 2aw>5 o?ers protection for >inventions>, which are

de ned in the Patent 2aw as highly creative technological ideas utili8ing laws of nature.

The scope of protection under the Patent 2aw extends to such elds as mechanical

engineering, chemical engineering, electronics, iotechnology, computer programs and

usiness methods.

In !!& JP7 issued @/uideline for 9xamination of 0oftware related InventionB, which

clari ed that a computer reada le data storage device incorporating software related

Invention may Cualify for patent even if it is not com ined with hardware. It was further

clari ed in the amended Patent 2aw which ecame e?ective as of 0eptem er , ;'';

that the invention of a computer program is included in the invention of product under

the new Article ; thereof. JP7 grants patent for a usiness method utili8ing computer

process if it meets the criteria prescri ed in the a ove mentioned guideline.

JP7 also granted patent for new variety of plant and microorganism and animals with

particular characteristics. JP7 recently amended its examination standard to grant

patent for medical procedures within a limited scope.


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Patentability

Patent is availa le only for such invention that 4a5 satis es the standards of 4i5 industrial

applica ility, 4ii5 novelty and 4iii5 inventive step, and 4 5 is not identical to any invention

descri ed in any application that had een led prior to the applications for the patentand disclosed in JP7Ds oEcial Patent /a8ette after the application for the patent.

The industrial applica ility standard reCuires that the invention must e utili8ed and

exploited in industrial activities. Any invention that may e utili8ed or exploited only in

experimental or scienti c activities does not Cualify for patent.

The novelty standard reCuires that the invention must have n ovelty at the time of ling

the patent application. An invention loses its novelty if it is 4i5 pu licly 1nown, 4ii5

pu licly used or 4iii5 disclosed in a printed pu lication or availa le through electroniccommunications lines. Fowever, if an invention loses its novelty ecause of 4i5

experiment, 4ii5 voluntary disclosure in a printed pu lication or through electronic

communications lines or at a study meeting for presentation y the person holding the

right to o tain the patent, 4iii5 any disclosure against the will of such person or 4iv5

international exhi ition recogni8ed under the Patent 2aw and the Paris #onvention, the

invention may Cualify for patent for - months after the occurrence of such event.

The inventive step standard denies patenta ility if, at the time of ling the patentapplication, the invention could have easily een invented from prior art y a person

having ordinary s1ill in the pertinent art. In this context, prior art mean inventions that

have lost novelty. 0ince the inventive step standard is relatively road y itself, it is

supplemented y num er of Gudgments and JP7Ds decisions and guidelines. It is

generally considered that the inventive step standard is not satis ed y any collection

or com ination of prior art, replacement of materials in prior art, or change or limitation

of num ers, conditions or shapes in prior art that does not have any unexpected e?ect.

Pr !ecuti n

The inventor or any person who acCuired the rights to patent the invention from the

inventor or their successor may le a patent application for the invention. The Patent

2aw explicitly allows employers to acCuire from their employees rights to patent the

inventions, which are within the scope of the employersD usinesses and have een

create d y the employees in relation to their duties to the employers, for reasona le

consideration under the wor1 rules or any other agreement with their employees. In


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many cases, accordingly, companies acCuire their employeesD rights to patent their

inventions and apply for a patent in the companyDs name.

The Japan Patent 7Ece 4@JP7B5 examines applications for patents on a rst to le asis.

If more than one person les a patent application for the same invention, only the rstto le applicant may patent the invention. #ompanies and individuals of a P#T

signatory country may apply for Japanese patent in accordance with the P#T procedure.

Hurther foreign companies or individuals that ha ve led a patent application in one or

more Paris #onvention signatory countries other than Japan may enGoy the ene t of

the rst ling date in any of the countries for ; months from the date with regard to

the application for Japanese patent.

All applications for Japanese patent are disclosed y JP7 in its oEcial Patent /a8ette $

months after the date of application, or earlier if reCuested y the applicant. 0uch

disclosure is called >laid open> 4 Kokai 5 and is made without su stantial examination of

the application. 7nce the application is disclosed, the a pplicant is entitled to

conditional right to claim compensation 4eCuivalent to the amount of ordinary license

royalty5 against a person who utili8ed the invention with regard to the utili8ation in the

period that commences when the person ecomes aware of the patent application and

ends when the patent is granted.

JP7 examines patenta ility of the invention claimed in an application only after a

reCuest for examination is led with JP7. The reCuest for examination may e led y

anyone within the period of % years 4& years with respect to applications led y the

end of 0eptem er ;'' 5 after the date of application. If the reCuest for examination is

not led within the period, the application is deemed withdrawn. 9xamination of

patenta ility usually ta1es to ; years 4;; months on the average in ;'' 5. If JP7

does not nd any reason to reGect patent application after the examination of

patenta ility, it ma1es a decision to grant a patent to the applicant. After the applicantpays the patent fee to JP7, the patent is registered with JP7 and e?ectively granted to

the applicant. If, on the other hand, JP7 ma1es a decision to reGect the application, the

applicant may le an appeal demanding a trial efore JP7 within %' days from the

receipt of the decision. The applicant may appeal to the To1yo Figh #ourt against an

unfavora le decision rendered y JP7 in such trial.

6pon registration of the patent, such registration is pu lished in JP7Ds oEcial Patent

/a8ette. 3ithin - months from the date of such pu lication, any person may le an

opposition with JP7 on such grounds as lac1 of novelty or inventive step and existence


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of prior application. If the opposition is successful, the patent is cancelled. Hurther, even

if the opposition is not successful, any person may le a motion for invalidation trial

with JP7 on any of the invalidation grounds that include 4i5 amendment or correction of

speci cation, claim or drawing of the application in violation of the Patent 2aw, 4ii5

application led y a foreigner who may not enGoy protection of Japanese patent 4i.e.

the applicantDs country does not o?er reciprocal protection of patent to Japanese5, 4iii5

lac1 of patenta ility, 4iv5 violation of pu lic policy 4v5 unilateral application for Gointly

owned invention 4vi5 existence of prior application claiming the same invention, 4vii5

violation of treaty, 4viii5 imperfect description in the claim or speci cation of the

application, 4ix5 matters in the speci cation, claim or drawing of the application are not

within the scope of the original application in the foreign language, 4x5 application led

y any person who is not the inventor and does not have the right to patent the

invention, 4xi5 occurrence of 4ii5 or 4vii5 after the registration of the pa tent. In the

invalidation trial, JP7 holds hearings and renders decision, which may e challenged y

an appeal to the To1yo Figh #ourt.

Ri"#t! un$er Patent

The term of a patent is generally ;' years from the date of application.

7wner of Japanese patent enGoys an exclusive right to commercially exploit thepatented invention in Japan. The Patent 2aw de nes the term @exploitB as 4i5 with

respect to invention of product 4including program, etc. 0ee .a. a ove5, to produce,

use, assign, etc. 4which means assignment and lease and also includes the provision of

services through electronic communication lines in the case of program, etc.5 or import

or to ma1e proposal for assigning, etc. the su Gect products 4ii5 with respect to

invention of process, @to utili8e the su Gect processB and 4iii5 with respect to invention

of process for manufacturing product, @to utili8e the su Gect process, or use, assign,

etc. or import or to ma1e a proposal for assigning, etc. a product manufactured yutili8ing the su Gect processB.

The exclusive right of patent owner is su Gect to limitations prescri ed in the Patent

2aw. Hor example, patent owner may not assert its right against use of patented

invention for the purposes of experiment or scienti c study. A person, who had

commenced a usiness utili8ing the patented invention or preparatory wor1s for the

usiness without any 1nowledge of the patent application at the time of ling the

application, is entitled to non exclusive license of the patent for the purpose of theusiness 4Prior 6se5. If an employee of a company patented an invention, which falls


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within the scope of the companyDs usiness and has een created y the employee in

relation to his duties to the company, the company is entitled to a non exclusive license

of the patent 40hop Rights5.

Patent owner may grant license to third parties. Patent license is generally classi edinto three categories. The rst category is non exclusive license 4 tsujou -jisshiken 5,

under which the licensee is entitled to contractual non exclusive right to exploit the

patented invention. A non exclusive license may e registered with JP7 for the purpose

of perfection. The second category is non registered exclusive license 4 dokusenteki-

tsujou-jisshiken 5, under which the licensee is entitled to contractual exclusive right to

exploit the patented invention. A non registered exclusive license may e registered

with JP7 as a non exclusive license for the purpose of perfection. The third category is

registered exclusive license 4 senyou -jisshiken 5, under which the licensee is entitled toa solute exclusive right to exploit the patented invention. Registered exclusive license

ecomes e?ective upon its registration with JP7. If the patent owner grants registered

exclusive license, it may not exploit the patented invention unless the holder of the

registered exclusive license grants ac1 a license to the patent owner. 9ither the patent

owner or the holder of registered exclusive license may ring a lawsuit against

infringement of the patent in its own name.

A right holder may assign and or pledge its patent and or registered exclusive licensey registering the assignment and or esta lishment of pledge with JP7, as the case

may e. 2icensees of non exclusive license and non registered exclusive license may

also assign and or pledge their license y execution of contracts with the counter

parties. Assignment of and esta lishment of pledge on non exclusive license and non

registered exclusive license may e registered with JP7 for the purpose of perfection.

In%rin"e&ent

If a person commercially exploits another personDs patent without the authori8ation of

the patent owner, the exploiting person is lia le for direct infringement of the patent.

In addition to direct infringement, the Patent 2aw provides for " types of acts that

constitute indirect infringement namely, 4i5 in the case of a patent for an invention of

product, acts of manufacturing, assigning, etc, importing or o?ering for assignment,

etc, in the course of trade, articles to e used exclusively for the manufacture of such

products 4ii5 in the case of a patent for an invention of product, acts of manufacturing,

assigning etc., importing or o?ering for assignment, etc ., in the course of trade,


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articles to e used for the manufacture of such product 4except for the articles widely

and generally distri uted in Japan5 which are essential for the solution facilitated y the

invention with the 1nowledge that the invention is patented and that such articles are

used for the practice of the invention 4iii5 in the case of a patent for an invention of a

process, acts of manufacturing, assigning, etc, importing or o?ering for assignment,

etc, in the course of trade, articles to e used exclusively for the wor1ing of such

process and 4iv5 in the case of a patent for an invention of a process, acts of

manufacturing, assigning, etc, importing or o?ering for assignment, etc, in the course

of trade, articles to e used for the wor1ing of such process 4except for articles widely

and generally distri uted in Japan5 which are essential for the solution facilitated y the

invention with the 1nowledge that the invention is patented and that such articles are

used for the practice of the invention. In determining the infringement, the Japanese

court applies @doctrine of eCuivalents B. The doctrine of eCuivalent is de ned y the

0upreme #ourt in Ball Spline Case 40upreme #ourt )ecision: He ruary ;", !!$5. The

0upreme #ourt ruled that even if the patented claim is di?erent from the allegedly

infringing product in certain portion, the product still infringes the patent if 4i5 the

portion is not an essential part of the patented invention, 4ii5 the purpose of the

invention may e achieved and the same function and results a re o tained even if the

portion is replaced y the corresponding element of the allegedly infringing product,

4iii5 the replacement would have een easily conceived y a person having ordinarys1ill in the pertinent art at the time that the allegedly infringing product is

manufactured 4iv5 the allegedly infringing product is not identical to any art pu lic

1nown at the time of ling for the patent and could not have easily een conceived y

a person having ordinary s1ill in the pertinent art at the time o f ling for the patent

and 4v5 there are no such special circumstances such as the allegedly infringing product

falling within the category that was intentionally excluded from the scope of the claim

in the course of prosecution. It is generally considered that the urden of proof with

respect to the a ove 4i5, 4ii5 and 4iii5 are on the patent owner and the rest are on theallegedly infringing party.

'e%en!e

Among various defenses availa le against a claim of patent infringement, patent

invalidity is the most fundamental defense in patent litigation.

As discussed in the section for prosecution, a defendant in a patent litigation may

assert invalidity of the su Gect patent ling the motion for invalidity trial with JP7. 6ntil


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the 0upreme #ourt rendered a Gudgement in Kilby Patent Case , it was generally

considered that the motion for invalidity trial was the only measure availa le for the

defendant to ma1e an assertion of patent invalidity ecause JP7 was exclusively

responsi le for determining patenta ility. Fowever, even if the motion is led, the court

does not necessarily suspend the litigation and, accordingly, motion for invalidity trial

cannot e a perfect measure to defense the claim of infringement in the patent

litigation. In April ;''' , the 0upreme #ourt ruled in Kilby Patent Case that if the patent

was apparently invalid any exercise of the patent would e an a use of right and not e

permissi le 40upreme #ourt )ecision: April , ;'''5. In the current practice, lower

courts follow the ruling and even more roadly permit defendants to raise patent

invalidity defenses in patent litigation.

Re&e$ie!

If a Japanese court nds patent infringement, the patent owner is entitled to 4i5

inGunctive relief, 4ii5 damages and or 4iii5 measures to restore the usiness reputation.

The amount of damages are generally determined y the greatest of 4i5 loss of pro ts

su?ered y the patent owner, 4ii5 the amount of pro ts that the infringing party

o tained from the infringing activities or 4iii5 the ordinary license royalty for the

infringing use of the patent.

Infringing party may e su Gect to criminal sanction under the Patent 2aw.

Utility M $el Ri"#t!

The 6tility *odel 2aw of Japan 4the >6tility *odel 2aw>5 o?ers protection for >devices>

which relate to the shape or construction of articles or a com ination of articles. A

>device> is de ned as a creation of a technical idea utili8ing a law of nature. 6nli1e

patents, the creation need not e highly advanced for utility models. Accordingly, if aninvention does not Cualify for patent ecause of its level of creativity, it could still

Cualify for utility model.

6tility model rights are granted to devices that have not een claimed in prior

application and satisfy 4i5 the industrial applica ility standard, 4ii5 novelty standard and

4iii5 the inventive step standard. 3hile the inventive step standard is more relaxed than

that of the patent, other reCuirements are similar to those of the patent.


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JP7 registers utility model right without examining the reCuirements in the preceding

paragraph. 7nce a utility model right is registered, anyone may le an invalidation

action with JP7 asserting that the su Gect device does not satisfy the reCuirements.

The term of a utility model right is - years from the date of application. 6tility modelright holder enGoys exclusive right to the device, which is su stantially similar to the

right under patent.

In order to exercise utility model right against infringement, the utility model right

holder must 4i5 o tain from JP7 a @utility model technological assessment reportB

opining that the su Gect device satis es the aforementioned reCuirements and 4ii5

provide the infringing party with a warning letter accompanied y the report. Remedies

for utility model rights infringement are similar to those for patent infringement.

'e!i"n Ri"#t!

6nder the )esign 2aw of Japan 4the > )esign 2aw>5, which was revised extensively in

!!!, a >design> is de ned as the shape, pattern, or coloring, or the com ination of

these, in any article that produces an aesthetic impression on a viewer of the article.

3hile such article includes a part of a product 4e.g. a handle of a cup5, it must e

tangi le and e capa le of mass production. A design must e speci ed y drawingsattached to the application.

In order to enGoy the protection under the )esign 2aw, a design must satisfy the

reCuirements of 4i5 industrial applica ility, 4ii5 novelty and 4iii5 creativity.

Prosecution procedures for a design registration are generally similar to those for a

patent registration, except that JP7 commences examination of an application without

a reCuest from the applicant and does not pu lish the application efore the

registration. An applicant may reCuest, under certain restrictions on its design rights,that JP7 will not pu lish the registered design up to % years from the registration.

A design right ecomes e?ective upon its registration. The term of a design right is <

years from the date of registration. The owner of a design right enGoys an exclusive

right to commercially exploit the registered design in Japan. It may prohi it others from

using the registered design as well as any design similar to it with regard to the su Gect

article and may claim damages agains t such use.


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C pyri"#t!

Subject Matter

The #opyright 2aw of Japan 4the >#opyright 2aw>5 extends its protection to @wor1B,which is de ned as a creative expression of thoughts or sentiment that falls within the

literary, scienti c, artistic or musical domains. The #opyright 2aw protects only

expression of a wor1 ut any idea underlying in the wor1. The #opyright 2aw

speci cally con rms that computer program and data ase are included in such @wor1B.

In order to Cualify for the protection under the #opyright 2aw, a wor1 must have

creativity however, it i s generally understood that the reCuired level of creativity is

higher than those levels reCuired in the 6.0. and most of 96 mem er states. The#opyright 2aw does not reCuire any formalities such as pu lication or registration of a

wor1 for the protection.

0ince Japan is a signatory to the (erne #onvention, wor1s created y nationals of any

(erne #onvention signatory countries and wor1s rst pu lished in such countries

Cualify for the same protection as a wor1 of Japanese national enGoys under the

#opyright 2aw .

C pyri"#t! (C &&ercial Ri"#t!)

#opyrights are granted to the author upon creation of the copyrighta le wor1s.

#opyrights consist of 4i5 the right to reproduce, 4ii5 right to perform, 4iii5 right to ma1e

presentation, 4iv5 right to pu licly transmit, 4v5 right to recite, 4vi5 right to exhi it, 4vii5

right to distri ute cinematographic wor1s, 4viii5 right to transfer wor1s 4other than

cinematographic wor1s5 or any reproductions 4other than those of cinematographic

wor1s5, 4ix5 right to lease, 4x5 right to translation, adapt, etc. 4right to prepare derivativewor1s including right to such derivative wor1 so prepared5. If a derivative wor1 is

created from an original wor1, oth of the author of the original wor1 and the author of

the derivative wor1 are entitled to the copyrights in the derivative wor1

(y virtue of the copyrights, copyright holders may enGoy exclusive right to commercially

exploit the copyrighta le wor1s. #opyright holders may assign, license and or pledge

their copyrights.


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Although the #opyright 2aw does not adopt a general fair use doctrine, copyrights are

su Gect to limitations with respect to certain types of fair uses prescri ed in the

#opyright 2aw, which include without limitation reproduction for private use,

reproduction in li raries, etc., Cuotation, reproduction in school text oo1s, etc.,

reproduction in (raille, etc., performance for non pro t ma1ing purposes, reporting of

current events, reproduction for Gudicial proceedings, etc., ephemeral recordings y

roadcasting organi8ations, etc., exhi ition of artistic wor1 y the owner of the original

and reproduction y the owner of a copy of computer program.

As a general rule, term of copyrights is for the life of the author plus


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The 6nfair #ompetition Prevention 2aw de nes trade secrets as technical or usiness

information useful in commercial activities, such as manufacturing or mar1eting

methods, which are 1ept secret and not pu licly 1nown, and designates trade secrets

misappropriation as @unfair competition B comprehensively under six 4-5 categories. In

many cases whether the su Gect information is@1ept secretB y the holder is at issue

and the court determines such issue ta1ing into consideration whether the holder

indicated secrecy of the information and e?ectively restricted access to the

information. If a person misappropriates trade secrets of another person, the

misappropriation constitutes an act of @unfair competition B and the owner of the trade

secrets may claim inGunctive relief and damages against the misappropriating person

under the 2aw. The amount of damages is generally determined y the greater of 4i5

the pro t that the misappropriating person o tains from the misappropriation or 4ii5 the

ordinary license fee that the misappropriating person should pay to the owner if the

misappropriating person used the trade secrets under a license from the owner.

In case law, while the Japanese court has determined cer tain customer lists and

technological information as trade secrets granted protection under the 6nfair

#ompetition Prevention 2aw, it often denies protection under the 2aw with regard to the

same categories of information on the ground that they were not 1ept secret y the

owner. Although we have no precedents with respect to protection of source code of

computer program that is widely distri uted in the form of inary code, such source

code could theoretically Cuali ed as a trade secret and e protected under the law.

/eneral tort provisions of the Japanese #ivil #ode also protect trade secrets from third

partyDs misappropriation. Trade secret misappropriation may constitute a tort under the

#ode and, in such case, the owner of the trade secret may claim damages against the

misappropriating person. InGunctive relie f is not availa le under the #ivil #ode.

Ot#er La+!

Japan has the Plant ariety Protection 2aw and the 2aw #oncerning the #ircuit 2ayout of

a 0emiconductor Integrated #ircuit.


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'i!pute Re! luti n

LITIGATION

3ith regard to the intellectual property rights discussed a ove, the right holder mayring two types of lawsuits, either independently or simultaneously: a primary suit

4honso ) see1ing oth permanent inGunction and damages and a petition for preliminary

inGunction (karishobun) see1ing preliminary inGunction only.

9xcept for the limited cases where the right holder evidences a present and immediate

danger of great losses or damages, the court usually examines preliminary inGunction

cases and the corresponding primary suit at the same hearings and, if it nds any

infringement, it usually grants preliminary inGunction su Gect to the right holderdepositing a ond for a certain amount and commences examination on the amount of

damages in the primary suit proceedings. +o Guries are involved in any stage of court

proceedings. The primary suit usually ta1es to ; years to come to a conclusion.

The Japanese #ourt has a strong tendency to rely upon written documentation

su mitted y the parties, while allowing parties to examine witnesses at hearings.

0ince the #ode of #ivil Procedure of Japan does not provide strong discovery measures

as in the 6nited 0tates, a party may have diEculties in causing other parties to produce

evidence in their possession for the court and in many cases can only produce evidence

in its pos session.

The lawsuit is usually rst rought efore a district court, especially the To1yo and

7sa1a )istrict #ourts which have special divisions for IP matters. If the decision

rendered in a primary suit efore the district court is not satisfactory, i t is possi le to

le an appeal efore a high court. The proceedings efore a high court are asically a

continuation of what has ta1en place efore at the district court. An appeal from the

high court lies with the 0upreme #ourt. Fowever, the grounds for which the 0upreme

#ourt will hear a case are strictly limited to such grounds as a violation of the

#onstitution or an inconsistency with the precedents of the 0upreme #ourt.

ARBITRATION

If the parties to a dispute concerning intellectual property rights agree, the dispute may

e rought efore any of Japan #ommercial Ar itration Association, International


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#ham er of #ommerce Japan or Japan Intellectual Property Ar itration #enter. 9ach of

them has its own ar itration rules and fee schedules.

OUTLINE OF THE REGULATION OF THE

TELECOMMUNICATIONS INDUSTRY

The *inistry of Pu lic *anagement, Fome A?airs, Posts and Telecommunications

4*PFPT5 regulates the Japanese telecommunications industry primarily under the

Telecommunications (usiness 2aw 4T(25. The T(2 authori8es the *PFPT to regulate two

types of telecommunications companies, Type I #arriers and Type II #arriers. Type I

#arriers provide telecommunications services y esta lishing their own

telecommunications circuit facilities. Type II #arriers are telecommunications carriers

other than Type I #arriers. Type II #arriers may engage in the usinesses of

telecommunications circuit resale and the provision of Internet services. Type II #arriers

provide telecommunications services to customers y using the telecommunications

facilities of Type I #arriers, typically +TT 9ast, +TT 3est or +TT #ommunications. Thus,

Type II #arriers can potentially e customers of Type I #arriers as well as their

competitors. Type II #arriers are su divided into 0pecial Type II #arriers and /eneral

Type II #arriers. 0pecial Type II #arriers are limited to Type II #arriers which provide

telecommunications facilities designed for communications etween Japan and foreignpoints or provide voice telecommunication services to numerous unspeci ed mem ers

of the pu lic through interconnections of pu lic switched networ1s and leased circuits

at each end. /eneral Type II #arriers are Type II #arriers other than 0pecial Type II

#arriers. In June ;'' , the T(2 was amended to allow Type I #arriers and 0pecial Type II

#arriers to engage in wholesale telecommunications services for other Type I #arriers

and Type II #arriers with prior noti cation to the *PFPT.

Ca!e!Hollowings are important cases and topics in the recent years that are not discussed in

the preceding sections.

Parallel I !"rtat#"n

The 0upreme #ourt of Japan rendered a Gudgement in BBS Case 40upreme #ourt

)ecision: July , !!$5 with respect to parallel importation of patented products. The

court held that when a holder of a Japanese patent assigned a product em odying the


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invention covered y that patent outside of Japan, the holder of that patent c an no

longer see1 inGunction and or damages, etc. ased on that patent with respect to that

product, except where 4i5 with regard to a direct assignee, the patent holder and the

assignee of that product agree to exclude Japan from the territory for resale or use of

the product or 4ii5 with regard to indirect assignee, in addition to the agreement

etween the patent holder and the direct assignee as stated in 4i5 a ove, that such

purport is clearly indicated on that product.

6nder the esta lished precedents for the Trademar1 2aw, parallel importation from a

foreign country to Japan of products earing a trademar1 registered in Japan does not

infringe the trademar1 rights in Japan if 4i5 the trademar1 has een aExed y the

trademar1 right holder in the foreign country or its licensee, 4ii5 the trademar1 right

holder in the foreign country and the trademar1 right holder in Japan are identical ormay e deemed the same entity in su stance, and 4iii5 the trademar1 right holder in

Japan may directly or indirectly control the Cuality of the parallel imported products and

therefore the Cuality is not di?erent in su stance from that of the products of the

trademar1 right holder in Japan.

The #opyright 2aw was amended in !!! to adopt @international exhaustion doctrineB

and clearly legali8e parallel importation of copyrighta le products.

6nfair restraint of parallel importation is considered as @unfair trade practiceB and

violates the Anti *onopoly 2aw.

D" a#n Na e

0ince April , ;'';, JP domain names and # 7.JP domain names are distri uted to the

applicants y Japan Registry 0ervice #o., 2td. 4JPR05. 3hile a foreign corporation may

o tain JP domain names if it has a postal address in Japan, #7.JP domain names are

availa le only for corporations incorporated under the laws of Japan. JP domain names

and #7.JP domain names are assigna le. Any dispute concerning JP domain name or

#7.JP domain name, typically so called @#y er 0CuattingB may e rought efore the

Japanese court and or Japan Intellectual Property Ar itration #enter.

ISP L#ab#l#t$ La%

The 2aw #oncerning 2imitation of )amages to Telecommunications 0ervice Provider

and )isclosure of 0ender InformationB 4the @I0P 2ia ility 2awB5 came into e?ect on *ay


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;&, ;'';. 6nder the I0P 2ia ility 2aw Inte rnet service providers are not generally lia le

for any damages caused y any infringement caused y transmission of information via

the Internet unless 4a54i5 it is aware of the infringement or 4ii5 it is aware of the

information and should have 1nown of the infringement and 4 5 it could technically

prevent the transmission of information. Any person whose right is allegedly infringed

y transmission of information in the Internet may reCuest under the I0P 2ia ility 2aw

that the Internet service provider disclose information to specify the person who

transmitted the information, if the right of the reCuesting person is o viously infringed

y the transmission and the reCuesting person has legitimate reason to e entitled to

the disclosure 4e.g. necessity of the disclosure for see1ing damages5.

RE*ERENCES,

. Japan Patent 7Ece http: www.Gpo.go.Gp index.htm

;. Japan Patent Attorneys Association http: www.Gpaa.or.Gp english index.html

%. Agency for #ultural A?airs http: www. un1a.go.Gp english 9nglish;'';


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Documents

1481 File MOD6 SEC4 Intellectual Property Rights in Japan