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Guidelines for Employee Inventions-Proposal - September 2015-
Toshifumi OnukiJapan Patent Attorneys Association
International Activities Center
AIPLA Annual Meeting 2015
IP Practice in Japan Pre-Meeting Seminar
Review of Employee Inventions2016 Revision
AIPLA Annual Pre-meeting 2015 2
Employee Inventions-Revised Law in 2016-
Employee Employer
If No Specific Contract
Reasonable Benefit
Not limited to monetary compensationGuidelines clarify the standards for
“Reasonable Benefit”
Right to Obtain a Patent
Right to Obtain a Patent
If Specific Contract
Non-exclusive License
AIPLA Annual Pre-meeting 2015 3
AIPLA Annual Pre-meeting 2015
Proposed Guidelines for Employee Inventions
Drafted by METI Industrial Structure Council’s Patent System Subcommittee
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AIPLA Annual Pre-meeting 2015
To clarify what employers and employees take
Employees have the right to receive “reasonable benefit”
“Benefit” given to employees should not be “unreasonable” (§35(5) )
If the “benefit” is considered “unreasonable,” the “reasonable benefit” may be determined (by the court) based on the profits that the employer will make and on the contribution made by the employee (§35(7))
Purpose of Guidelines
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AIPLA Annual Pre-meeting 2015
Entire procedure should be given much weight
The following factors should be specifically scrutinized:
1. How and to what degree discussions are made to decide upon the standards
2. How the decided standards are disclosed
3. How and to what degree hearings are held to determine a reasonable benefit
Outline of Guidelines
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Flowchart until Settlement on Reasonable Benefit
AIPLA Annual Pre-meeting 2015
Create Proposed Standards
Determine Reasonable Benefit
Discuss Proposed Standards
Decide Standards
Disclose Standards
Conduct Hearings
Settle on Reasonable Benefit
ST1
ST2
ST3
ST4
ST5
ST6
ST77
Standards
Not necessarily determined in advance
No specific form is required for standards
Can be based on contribution of both parties
Can be based on judicial precedents on Employee Inventions
Upper limit can be set in the standards
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Discussion Negotiations/discussions should be conducted between
the employee and the employer to determine the standards
No specific methodology is required
Discussions can be held with a representative of the employees
The fact of the parties failing to agree with each other does not automatically lead to a presumption of “unreasonability”
Negligence of employer in answering employee’s opinions may be presumed as “unreasonability”
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Disclosure
The decided standards should be made accessible to employees whenever necessary
No specific methodology is required
Circulation of documents by paper or email: OK
Uploading onto the company intranet: OK
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Meeting with Employee (Hearings) In order to hear from the employee who made the
Employee Invention so as to decide on its reasonable benefit
No specific methodology is required
Meeting in advance: OK
Meeting after a benefit is awarded: OK
Disclosing comments for a certain period: OK
Employers are required to be honest regarding such meetings
Market size, projected profit, contribution, turnover, license royalties, etc. can be discussed
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AIPLA Annual Pre-meeting 2015
1. Procedure when reasonable benefit is other than monetary compensation
2. Procedure when standards are to be revised
3. Procedure for newcomers
4. Procedure for retired employees
5. Procedure for small and middle size companies
6. Procedure for universities
7. Others
Research on Guidelines
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Time Table until Enforcement
September 16, 2015 Guidelines proposed
Until November 2015 Public comments are invited
January 2016 Guidelines will be officially settled AIPLA Mid-Winter Institute – Don’t miss it!
April 2016 New Employee Invention Guidelines will
come into forceAIPLA Annual Pre-meeting 2015 13
AIPLA Annual Pre-meeting 2015
TOSHIFUMI [email protected]
TMI Associates
Thank you for your attention
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