Japan’s Experience in Establishing Legal and Institutional Frameworks

on Intellectual Property

Koichi Matsushita Director, International Cooperation Division Japan Patent Office (JPO)

1

1. Overview of JPO

2. Legal and Institutional Frameworks of

Japanese IP Policy

Agenda

2

1. Overview of JPO

特許庁

Japan Patent Office

Patent and Design Examination

Department

Policy Planning and Coordination

Department

Trademark and Customer

Relations Department

Patent Examination Department

(Mechanical Technology)

Patent Examination Department (Chemistry, Life Science and

Material Science)

Patent Examination Department

(Electronic Technology)

Trial and Appeals Department

1. Granting industrial property (IP) rights

2. Establishing initiatives on IP

3. Promoting international harmonization and

assistance to developing countries

4. Reviewing the IP rights system

5. Supporting SMEs and universities

6. Improving information services on IP

Roles of JPO

Small and Medium Enterprise Agency

Agency for Natural Resources and Energy

1.1 Organization and Role

3

1.2 Number of Patent Applications and Personnel

320,000 Patent Applications(CY2015)

Personnel

Total: 2,821 employees (FY 2016)

Number of Patent Applications

Source: “2016 Japan Patent Office Annual Report” (JPO)

Patent examiners; 1 702

Design examiners; 48

Trademark examiners; 137

Administrative Judges; 383

Office workers; 534

Including

approx.500

fixed-term examiners

0

50000

100000

150000

200000

250000

300000

350000

400000

2011 2012 2013 2014 2015

Patent Application (left axis)

4

2. Legal and Institutional

Frameworks of Japanese IP Policy

5

2000~

2.1 History of IP system in Japan

1884 Trademark Act enacted

1885 Patent Act enacted

1886 Original JPO

established

1888 Design Act enacted

1950~ 1900~ 1880~

1899 Accession to the

Paris Convention

1959 Trademark Law enacted

Patent Law enacted

Design Law enacted

1971 Patent Law amended (System of the 18

month early publication of Patent Application)

1978 Accession to the PCT

1990 First electronic applications

in the world are accepted

1999 Accession to the

Protocol Relating to the

Madrid Agreement

2003 Establishment of

Intellectual Property

Strategy Headquarters

2015 Accession to the

Hague Agreement

6

2.2 Growth of Patent Application & GDP

GDP of Japan Domestic Applications to JPO

0

100000

200000

300000

400000

500000

600000

0

50 000

100 000

150 000

200 000

250 000

300 000

350 000

400 000

450 000

500 000

1960 1970 1980 1990 2000 2010 2014

No. of Applications GDP(JPY billion)

7

• In the late 1990s, there was growing concern about the

decline in the international competitiveness of Japanese

industries

Sources: IMD “World Competitiveness Yearbook 2001”, etc

Note: Ranks after 1997 are based on the new ranking standards

2002

30

Competitiveness by country

2 2 3

6 6

18

12 12

19

16

19

26

2

1

24

18

3

10

16

13

25

15

23

12

0

5

10

15

20

25

30

91 92 93 94 95 96 97 98 99 00 2001

USA

Singapore

Germany

France

UK

Ranking

Hong Kong

Taiwan

Japan

1 1

2 1

2.3 Background

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“As one of our national goals, I will ensure that the results of

research activities and creative endeavors are translated into

intellectual properties that are strategically protected and

utilized so that we can enhance the international

competitiveness of Japanese industries.”

2.4 Policy Statement by then PM Koizumi (Feb. 2002)

“With that in mind, I will establish

the Strategic Council on

Intellectual Properties*, and

actively advance relevant and

necessary policies.”

* Strategic Council on Intellectual Property: formed February 2002 and consisted of

relevant ministers and senior figures from industry and academia

Then Prime Minister Koizumi

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2.5 Overview

Strategic Council on Intellectual Property

Intellectual Property Policy Outline

Intellectual Property Basic Act

Intellectual Property Strategy Headquarters

“Promotion of Creation, Protection & Utilization of IP”

Examples:

i. Prompt and Precise Patent Examination

ii. Establishment of Intellectual Property Court

iii. Strengthening measures against Counterfeiting and Piracy

(Feb. 2002)

(Jul. 2002)

(Dec. 2002)

(Mar. 2003)

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Intellectual Property Strategy Headquarters (Head by PM, involving all Ministers and experts, established in 2003)

2.6 National IP Strategy - formulation & implementation

PM Shinzo ABE delivering

address at a recent IP HQ

meeting (May 2016)

(Private Sector)

Companies,

Industrial

organizations,

Universities, etc.

Enforcement IP System Cooperation

・・・

JPO Agency for

Cultural Affairs

MEXT (Copyrights)

Ministry

of

Justice

MAFF (Breeder’s

Rights)

METI (Industrial Property Rights)

Ministry

of

Finance

Customs

Cabinet

Office National Public

Safety Commission

Police SME

Agency

Formulate and Follow

up annually

Implementation by all the concerned Ministries and Agencies

Intellectual Property Strategic Program

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Expedite Patent Examination

• Increase of patent examiners

(including 500 fixed-term examiners)

• Expansion of outsourced prior-art searches

Examples of achieved measures - 1

12

10.0

0

2

4

6

8

10

12

0

20

40

60

80

100

120

140

160

2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014

IP High Court • Established in April 2005

• Specialized in cases involving intellectual property

(cases) (months)

7.1

Number of New Civil Cases and Average Time needed from commencement to final decision

• Organizational structure (as of April 2015) Number of judges: 16

Number of judicial research officials: 11

Technical advisers: more than 200

Examples of achieved measures - 2

13

Examples of achieved measures - 3

Reinforcing measures against counterfeiting and piracy

METI

Cultural

Agency NPA

MOFA MOF

(Customs)

Anti-counterfeiting and piracy involves several ministries and agencies, so

it was not clear which one to contact when infringements occur…

JPO

August 2004 – Launch of Office for IPR Infringement (Manufacturing Industries Bureau, METI)

(Official Contact Point for Anti-Counterfeiting and Piracy)

Users

General Public

・・・

14

2.7 New Measures after 10 years since the IP Basic Act went into force

On June 7, 2013, the Cabinet adopted the “Basic Principles of

Intellectual Property Policy,” which includes the following four

pillars:

Pillar 1: Building up a global intellectual property system

for enhancing industrial competitiveness

Pillar 2: Supporting intellectual property management at

SMEs and venture companies

Pillar 3: Improving the framework for adjusting to the digital

network society

Pillar 4: Strengthening soft power focusing on the content industry

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Support quick acquisition of

the same scope of patent

rights in other countries

• Achieve the fastest and

highest quality examinations

• Promotion of Patent

Prosecution Highway (PPH)

Share JPO examination

practices

• Capacity building of examiners

in emerging countries

• Harmonization of patent

examination practices

• Promotion of Global Dossier

Support improvements to the

IP system in emerging

countries

• Technical assistance in

the field of IP

JPO’s Activities in relation to Pillar 1

Supporting Global IP Activities by Industries

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Public Research Institutes

Universities Companies

Universities

R&D Consortia

Innovative research results

Expert personnel who have experience in

business development and IP business in

private companies (IP Producers)

Sends IP Experts

Other Govt.

Offices

Institutes which provide research

funds

Research Funds

Lawyers, Patent

Attorneys, etc.

[Outline of the IP Producer Scheme]

JPO/INPIT

Strengthening IP Management of SMEs

• Sending IP experts to SMEs and universities

• Offering consultations and advice to SMEs at local offices

JPO’s Activities in relation to Pillar 2

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Source: Balance of Payments Statistics reported by Ministry of Finance

2.8 Technology Trade Balance in Japan

18

-5

0

5

10

15

20

25

30

35

40

2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014 2015

Billion dollars

CY

Amount of export

Amount of import

balance

Exchange Rate : 1 USD = 120.61 JPY

• A surplus of the technology trade balance in Japan has

increased and reached about 20 billion US dollars in 2015.

2.9 Intellectual Property Strategic Program 2016

1. Promotion of intellectual property-based innovation in the new IT development

2. Promotion of awareness on and activities related to intellectual property

3. Promotion of new development of content business

4. Development of infrastructure for intellectual property system

Four key features

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Thank you