JCSM Shareware Collection 1993 November/JCSM Shareware Collection - 1993-11.iso/cl060/japanj.lzh/JAP21

Text File | 1992-10-28 | 17.8 KB | 303 lines

                 INTELLECTUAL PROPERTY PROTECTION

          If you are seeking to develop trade or to license your
          technology in Japan, you should take the steps necessary to
          obtain and protect your rights in patents, trademarks,
          copyrights, designs, trade secrets, and other intellectual
          property rights in Japan.  Failure to do so can limit your
          potential for success.

          Japan and the United States are signatories of the Paris
          Convention for the Protection of Industrial Property and
          other treaties governing the protection of industrial
          property rights.  These treaties, however, do not
          automatically protect patents or trademarks your business
          has acquired in the United States.  You will have to file
          applications for patents or for trademark registrations in
          Japan, but your U.S. rights can provide certain advantages
          if applications are filed promptly in Japan.  A U.S. patent
          or trademark attorney, as appropriate, can provide advice,
          but you will also need to hire a Japanese attorney,
          preferably one with which your U.S.  attorney has an
          established relationship, to prosecute the application for
          a patent or for registration of a trademark.

          Japan and the United States belong to the Berne Convention
          for the Protection of Literary and Artistic Works and to
          the Universal Copyright Convention.  These conventions
          provide automatic protection for copyrighted works,
          including computer programs, originating in either country
          or produced by authors of either country.  The owner of a
          U.S. copyright which is infringed in Japan would be able to
          sue the infringer in Japanese courts.  Registration for
          copyrighted works is not required.  Japan does provide for
          voluntary registration of computer programs and musical
          works, which simplifies the evidence that must be produced
          in court.

          U.S.-produced semiconductor chips are protected in Japan
          under the Japanese Law Concerning the Circuit Layout of a
          Semiconductor Integrated Circuit.  Under this law, foreign
          chip layout-designs should be entered in the registry
          maintained by the Industrial Property Cooperation Center.

          Obtaining and protecting intellectual property rights in
          Japan can be time-consuming and costly. While the cost or
          time involved in acquiring intellectual property rights
          might seem prohibitive, lack of such rights would permit
          competitors both in and outside of Japan to copy your
          product or production process which you want to market or
          license in Japan and to compete with your firm in the
          Japanese market.  Even when intellectual property rights
          have been acquired, pirating of technology and designs can
          occur in Japan, as it does in many countries, including the
          United States.  Each company in a trading or licensing
          agreement should understand clearly what its rights and
          obligations are with respect to the intellectual property
          rights owned or acquired by the other.  Such a clear
          understanding helps to create a good rapport based on
          mutual trust, thereby ensuring the success of the trading
          or licensing agreement.

          In 1989, 1990, and 1991, Japan was included on the "Watch
          List" under the so-called Special 301 provisions of the
          Omnibus Trade and Competitiveness Act of 1988, because of
          deficiencies in its intellectual property laws and problems
          of a practical nature involving protection of patents,
          copyrights, and trademarks.

          Patents:  Japan's patent law differs from U.S. patent law
          in several important ways.  First, under Japan's patent
          law, patents are granted to the first inventor to file an
          application claiming a particular invention, rather than to
          the first to invent as is done in the United States.  Under
          the Paris Convention, the date on which a U.S. applicant
          filed his U.S.  application will become the Japanese filing
          date so long as the corresponding application, in Japanese,
          is filed in Japan within one year of the U.S. filing date.
          Prompt filing in Japan is also important because printed
          publication of a description of the invention anywhere in
          the world, or knowledge or use of the invention in Japan,
          prior to the filing date of the Japanese application would
          preclude the grant of a patent on the application.  Second,
          unlike the United States, where examination of patent
          applications is automatic, an applicant must request
          examination of his patent application in Japan but has
          seven years in which to do so.  As is true in most
          countries of the world, but not in the United States, all
          patent applications are published in Japan 18 months after
          filing.  If, during the examination, the Japanese Patent
          Office (JPO) finds no impediment to the grant of a patent
          for a particular invention, it publishes the patent
          application a second time, including any changes that have
          been made during the examination.  Following this second
          publication of the application, any party may oppose the
          grant of a patent by demonstrating that the standards for
          patentability are not met by the invention.

          Japan and the United States are signatories to the Patent
          Cooperation Treaty (PCT), which is administered by the
          World Intellectual Property Organization.  Under the PCT,
          an applicant can file a single "international application"
          designating the PCT member countries in which a patent is
          sought.  The international application has the same effect
          as filing individual national applications in each of those
          countries.  U.S. nationals can file an international patent
          application with the U.S. Patent and Trademark Office of
          the U.S. Department of Commerce and designate Japan as one
          of the countries in which a patent is sought.  The
          international patent application under this program does
          not obviate the need to file a separate patent in Japan.
          However, it does provide the applicant with certain
          advantages regarding time limits and translations.

          It takes a long time to obtain a patent in Japan.  Like
          patent offices in other countries, the JPO does not begin
          examination until 18 months after a patent application is
          filed, even if examination is requested at the time of
          filing.  The shortage of patent examiners adds to the
          problem as does the number of patent applications filed by
          Japanese companies, causing a significant backlog of
          applications awaiting examination.  An applicant can
          request accelerated examination under certain
          circumstances, but this does not help reduce the period of
          examination in ordinary cases.  The JPO has added some
          examiners to its staff and has begun to hire subcontractors
          to perform initial searches of patent applications.  In
          December 1990, the JPO inaugurated the world's first
          electronic filing system for patent applications.  These
          measures, however, have yet to result in substantial
          reductions in the time required to examine a patent
          application and grant the patent.

          It must be emphasized that correct translation is necessary
          in the patent application process.  The JPO shows little
          sympathy towards translation mistakes or typos.  Companies
          should ensure that translations of their applications are
          perfect.

          The average time required to examine a patent application
          in Japan was 32 months in 1990.  That is in addition to the
          18 months prior to initial publication and the 2 months
          following publication for opposition, indicating that, on
          average, it took 52 months to obtain a patent in Japan
          (assuming there were no oppositions filed).  During the
          examination period, no effective legal protection will
          exist.  By comparison, the average period required for the
          U.S. Patent and Trademark Office to process a patent
          application is 18 months.  In the U.S.-Japan Structural
          Impediments Initiative (SII), the Government of Japan has
          agreed to reduce the period required for examination to 24
          months within 5 years.  If the application is uncontested
          in Japan and all requirements are met, the patent is
          granted and valid for 15 years from the date the
          application is published (but not more than 20 years from
          the date the application was submitted).

          Trademarks:  To provide for protection for the brand names
          of products, Japan enacted the Trademark Law of 1959.
          Under the law, the first person to file an application for
          a particular trademark is entitled to the registration of
          the mark in connection with the particular class of goods.
          Japan has just enacted a new law providing for the
          registration of service marks which comes into effect in
          April 1992.  Currently, service marks are protected only
          under Japan's Unfair Competition Law.  The trademark law
          permits the owner of a well-known foreign trademark or
          service mark to oppose the registration of a mark if it can
          demonstrate that the mark is confusingly similar to its
          own.  One common mistake to avoid is to trademark just your
          product.  You should also trademark the packaging and/or
          promotional materials that go along with your product.  A
          trademark registration is valid for ten years from the date
          of registration and can be renewed indefinitely for ten
          year periods so long as the trademark continues to be used.
          If a mark has not been used for a period of three years, it
          can be canceled.

          On February 20, 1990, Japan agreed to the Nice Agreement
          Concerning the International Classification of Goods and
          Services for the Purposes of the Registration of Marks.  As
          is the case with patent applications, a resident agent
          (usually a lawyer or patent agent) must prosecute the
          trademark application.  As with the processing of patent
          applications, Japan's trademark registration process is
          very slow.  It takes an average of 4 years to process a
          trademark registration in Japan, compared with an average
          of 13 months in the United States.  The only protection
          available for a trademark in Japan prior to registration is
          under the Unfair Competition Law.  Under this law, the
          owner of the mark must demonstrate that the mark is
          well-known in Japan and that consumers will be confused by
          the use of an identical or similar mark by the unauthorized
          user.

          Copyrights:  Japan's copyright law is administered by the
          Copyright Office of the Cultural Affairs Agency, Ministry
          of Education.  Under the Berne Convention for the
          Protection of Literary and Artistic Works and the Copyright
          Convention, Japan provides protection for copyrighted
          works, including computer programs, for nationals of member
          states of those conventions and/or works first published in
          member countries.  The protection lasts for the life of the
          author plus 50 years or 50 years from publication in the
          case of juridical entities.  Registration is not required.

          Japan amended its copyright law in April of 1991 to extend
          protection for sound recordings from 30 to 50 years, to
          provide a rental right for foreign phonogram producers, and
          to provide criminal penalties for copying previously
          unprotected U.S. and certain other foreign-produced sound
          recordings released from 1968 to 1978.  The one-year
          prohibition against rental starts to run from the date of
          first sale anywhere in the world, not from the date of
          first sale in Japan; there is no protection for foreign
          sound recordings produced before 1968.

          In 1988, Japan enacted legislation to facilitate the
          prosecution of suspected video pirates, although loopholes
          remain.  The law must be enforced more rigorously if it is
          to be effective in curbing abuses which have cost U.S.
          owners of rights in video recordings an estimated $200 to
          $250 million each year.

          Semiconductor Chip Layout and Design:  The layout-designs
          of U.S.-produced semiconductor chips are protected in Japan
          under the Japanese Law Concerning the Circuit Layout of a
          Semiconductor Integrated Circuit.  This law is administered
          by an independent registration agency, the Industrial
          Property Cooperation Center (IPCC).  Under the Japanese
          law, foreign chip layout-designs may be registered in the
          registry maintained by the IPCC.  The duration and the
          level of the protection is essentially the same as under
          the U.S. Semiconductor Chip Protection Act. Japanese
          layout-designs are eligible for protection in the United
          States under orders issued by the Assistant Secretary and
          Commissioner of Patents and Trademarks.

          Utility Model and Design Protection:  The Japanese utility
          model system parallels the patent system.  It serves as an
          incentive to individual inventors and small and
          medium-sized businesses (which lack large budgets for
          research and development) to invent.  While novelty remains
          an important requirement, the degree of inventiveness for a
          utility model is less than that required for a patent.
          Devices are protected as utility models, but not methods.
          Application procedures are similar to those for patents,
          but the period of protection is 10 years from the date of
          publication of the application and no more than 15 years
          from the date of application.

          Japan also protects registered designs under a system
          modeled on the British.  To be registered, a design must be
          industrially useful, novel, and creative.  The design right
          lasts 15 years from the date of registration.  The
          application for registration is similar to that for patent
          applications.

          Trade Secrets:  Japan enacted amendments to the Unfair
          Competition Law in 1990 which provide some measure of
          protection for theft of trade secrets such as know-how,
          customer lists, sales manuals, and experimental data.  The
          law provides for injunctions against wrongful use, but not
          against use by innocent third party transferees of trade
          secrets.

          If you are interested in protecting your product in Japan,
          you will need a Japanese lawyer (bengoshi) or patent agent
          (benrishi).  Consult with your attorney here in the United
          States, the Martindale-Hubbell Law Directory, or for a list
          of selected lawyers and patent attorneys, contact the Japan
          Export Information Center (JEIC) at [phone].  Other
          English-language intellectual property protection
          publications available include:

          "Patent Protection or Piracy - A CEO Views Japan," Harvard
          Business Review.  September/October 1990, pp 58-67.
          Reprint Product Information and Orders:  [phone].

          Patent Application Paperless System: Guide Book.  Japanese
          Patent Office (1990).

          Guideline for Accelerated Examination and Accelerated
          Appeal Examination System for Working-Related Patent (or
          Utility Model) Applications.  Japanese Patent Office (July
          1989).

          Effect of the Japanese Patent System on American Business:
          Subcommittee Hearing.  U.S. Government Printing Office
          (June 24, 1988).

          Guide to Industrial Property in Japan.  Japanese Patent
          Office (1988).

          Outline of Japanese Trademark System: An Introduction to
          Foreigners.  Japanese Patent Office (1986).

          Industrial Property Rights in Japan.  Japan External Trade
          Organization (Revised 1981).