〔研究ノート〕 弘前大学経済研究 第四号 November 1995

The relationship between parallel importations

and the patent law in Japan

佐藤 敏昭

Content

I . Introduction

II . The stance of Japanese courts regarding

parallel importations

Ill. Japanese scholars' critiques against th巴

stance of Japanes巴courts

N. Conclusion

I . Introduction

Recently, there appear important decisions

concerning parallel imp。rtation of patented

articles in succession, namely, tho叩 arethe

Tokyo district court decision concerning the

BBS case July 22, 19941 > and the Tokyo appeal

court decision March 23, 19952 > against the

case above. The district court decision above

adopted the different logical structure台om

early decisions on the theme like this, however,

in conclusion, it adapted to the same stance as

the e紅 lydecisions. Therefore, th巴 district

cゅurtdecision above ruled that the p也railel

importation of this case was illgal and the

patenter’s injunction against the importation

above was lawful. On the other hand the Tokyo

appeal court decision authorized reversely that

the said parallel importation was lawful,

moreover, to this case it adopted the

international (worldwide) exhaustion principle

1 ) The BBS Case, Tokyo District Court Decisio。， HanreiTaimuzu, No.854, pp.84 et seq.

2 )The BBS Case, Tokyo Appeal Court Decision, Hanrei Jihou, No.1524, p.3 et seq.

which have been controverted in the academic

field cocerned. Afterward this decision has

called up a deal of attention仕omthe academic

field concerned. Before begin凶ngwith this

commentary, I will introdu印 theword ‘paralle

importation’ which is explain巴d as the

following. In case that goods of foreign firms

are imported into Japan, there are tow kinds of

routes. one is a regular route which sudsidiaries

or general agencies of foreign ente中risesexport

their goods into Japan, other is an iπ・egular

route which without using these subsidiaries or

agencies they importe directly into Japan the

goods that these enterprises have sold in foreign

countries. The later is called as parall巴l

importation3>. The news-media reported that

the goverment authorities concerned have sent

rapidely their stuffs overseas to investigate

foreign circumstances about this problem

because of estimating the appeal court’s decision

serious. Although we shall have to wait the

final judgment of the supreme court to the

appeal court’s decision in order to solve this

confliction，釘nong scholars and experts

concerned with this question has been already

discussed very often, at the same time, they has

published m叩 ycomments and訂tidesconcerning

this problem, so it looks like that every

controversial points have been already

3）百iereare m担 ykinds of expla且ationas to parallel inlpoロ：ation,as a an understandable example，出isdescriptio岨 isdue to Pro. Tamura, Yoshiyuki of The Hokkaido University, Jurist, No.1064, pp.45 et seq.

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τbe relationship between parallel皿portations阻 d也epatent law i且Japan

published. On the other hand, about the relation

betw巴entrade mark and parallel importation

they already have reached theoretically and also

practically at the commen recognition that

parallel importation of gen凶nearticles does not

m剖ngethe仕ademark. The p凶ntiffof白isBBS

case already has raised an action because of the

invasion of his trade mark, but the Nagoya

district court dismissed his demand 1988.

τ'his time the plaintiff again raised the

action as the second round against the Tokyo

district court because of the in仕ingementto his

patent right, as a result he won the suit on the

case in spite of the same fact that he was

defeated on the first round of the trade mark

case. There is re田 ntlyanoth巴rcase that an

owner of copyright won a suit on a claim that

parallel importation of copy articles was

unlawful. We can point out many examples of

fact that the relation between parallel

importation and intellectual property brings on

many issues in diverse fields. In such social

circumstance Japan has important interests with

parallel importation of patented articles because

of having declared itself as an international

trade country. We know that they operate in

reality daily many kinds of car through parallel

importation in the car industry sectors.

Since we want to have an ideal institution

about intellectual property system that contains

also the patent right law, we have to preserve at

the same time the protection of creator rights

and public welfare in the society where they can

enjoy performance from intellectual properties.

We have to S巴archout a way of concrete

harmonization between the patent system and

the monopoly system. It is ne田 ssaryto make it

clear theoretically the border line of the legal

effect of the international exhaustion principle

that the Tokyo appeal court has adopted.

A certain scholar emphasizes that th巴

adoption of this principle aginst par叫！el

importation is unjustifiable. 百iereare still

theoretically diverse debates in the academic

field concerned. This essay has an intention of

commenting results of present approaches in

g巴ldlike this at the s包netime introducing these

何 ojudgments.

II . The st組問 ofJap血 esecourts reg訂 ding

parallel importation

First of all, I introduce the summaries of

three recent decisions about parallel importation

in Japan, the first one is the case of BBS that

the Tokyo district court ruled July 22, 1994.

百1巴 plaintiff(BBS) has the patent right

relating to the said wheels in Japan and

German, the defendant bought the products

licensed by BBC in German and imported them

into Japan. Therefore, BBS injuncted the

importation. The court judged that the parallel

import凶 onin the case is illegal on the ground

of the following r巴ason.It said, befor reaching

at the conclusion, that the principle of the

patent right’S independence means that the

invalidity of the patent right itself,

its’disapperance, its’duration so on has not any

effect on other nation’s patent right itself. And

the independence principle has not directly any

connection with the existance of patent right

itself. The principle does not provide for the

problem of the possibility exercising the patent

right to the circulating goods granted, besides

the territorial principle means that the

application and the ruling area of the domestic

law is limited to the said nation’s rulig space

only, therefor, even if the Japanese court,

according to the constructin of the Japanese

domestic law, limits the exercise of licenser’s

patent right in Japan in considerating of the fact

that the granted goods are circuiting legally in

勾／，i ，，A

foreign countries, tne court’sstance is not

contradictory to the t巴rritorialprinciple.

We can not recognize the interpretation

which the parallel importation does not in剖nge

the Japanese patent right on the ground of the

reason白紙 theparallel importation is granted

by the 2也 ofJapanese patent law4 > , besides,

the inte中retationlike that can not accepted as

the adaptation to the patent law’s goal and at

the sam巴timeit does not adapt for the common

consciousness of the international society in the

present day, accordingly, the p釘 allel

泊1portation should be recognized as the

in企ingementto the patent right that subjects to

the interpretation of the patent law, and as a

substantial reason we should take into consider

of the justification for existence of patent system

in contrast with difference of it in each cゅun仕y.

Those who have gotten patent rights in plural

countries by the same invention are authorized

to control importation in to eacli country and to

control the first assignment in each country

based on legal effects of filed patent right as the

compensation for con凶bution to technical

developments in each country. Moreover,

there exist still the following assumptions, in

other words, if we acc巴ptparallel importation,

your incentive to get the international license

would fall down and our licensee’s royalty would

amount to an enormous sum and big enterprises

who have capacity of paying such a sum would

become our licensees and big ente中市eswould

necessarily occupy the world market for a long

term and合omthe result of their monopoly the

development of the medium and small sized

ente中rises that have the intentions of

accelerating the selective market would be

4 ) Art. 2 provides the definitioo of“田vention”.par.3. no .1. provides也at,sequent to出edefinition of “praはice of invention”， pracu田 consists of manufac加ring,us泊g,assigning, showing for assign and rent，国lpO口ing出every product.

obstructed to reach there. There are not

enough of records and materials to confirm the

short and long teπn of influences for Japanese

industrial society in回 seof admitting parallel

importation, accordingly on the present stage

we cannot authorize that parallel importation

adopts for the purpose of the patent law in

Japan.

The next summa巧Fthat I will introduce is

about the Tokyo appeal court decision that

canceled the above Tokyo dis出ctcourt decision

because of consumption of the plaintiffs patent

right. At the Tokyo appeal court the appellant

stated that there existed generally a commercial

custom that patentors do not exercise their

domestic patent right against genuine parallel

importation goods being licensed, adding this

reason to his demand at the original court. On

the other hand the appellee claimed that it was

necessary for him to injunct .an importation like

this in order to avoid imperfect after-services

and to keep the quality of selling goods

imported by the appellant.

The Tokyo appeal court canceled the

original judgement and dismissed the appellee

demand by the following reasons. The appeal

court stated five reasons in the decision，自rstly

it stated that this issue was about the relation

between genuine parallel imported goods and

the principle of independence of patentor right

or the principle of territorialism.

In the case that we should decide the

teπitory that a patent right can joy its legal

validity, it belongs to absolutely an

inte中retativeproblem of the Japanese patent

law if it can be admitted or not to consid巴rthe

fact that these imported goods were circulating

legally in foreign countries, therefore our

interpretation like this does not come into

conflict with these principles even if we should

resp巴ctthese principles. Secondly about the

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τ'he relationship between parallel i皿portatio出血dthe patent law in Japan

domestic exhaustion principle, this decision

stated that through the fact that licensor has

already distributed and circulated legally his

licensed goods the said lic巴nserelating to the

product should disappear because of having

reached at its goal. If we ac田 ptthat the license

would keep its validity for the said licensed

goods even after they have been legally

circulated, we should have to get the licensor’s

agreement about the said goods on each stage of

transitions. From the result of those proced町 es,

the circumstance like this would scare the

transaction’s security of the licensed goods.

Moreover, the circumstance would prevent

the said product仕omcirculating and as a result

it would obstruct industrial development.τbe

licensor伺 n,at the beginning of distribution of

his licensed product, add a compensation for

publishing his patent to the selling price of

product, there does not exist any reasonable

reason to secure the opportunities of double

returns for the licensor in the pro叩 ssof his

circulating the product. Thirdly, from the view

point of the international exhaustion of patent

right, through giving security of only one

opportunity for compensation to the said

licensor who has published openly his patent,

we would try to harmonize the licenser’s

position with the development of industry. We

believe that the principle of domestic exhaustion

is based on the theory like this. Accordingly, as

far as we accept substantively this stance, We

could not discriminate among these distributions

according to the fact that the distribution was

carried on in for巴igncounties or domestic

country. 刻化 couldnot白ndout any reasonable

ground to give them double opportu凶tiesof

compensation for publishing his patent on the

basis of the only phenomenon that his product

licensed has passed over the foreign frontier.

百出 stancehas a more reasonable ground in

consideration of the substantive circumstance

也atJap釦岱eα:ono回cむ祖国.ctions紅einvolved on

a large scale with international markets.

τbe plaintiff has at present the same patent

right in Japan that he has the patent right on the

said invention in German, he has already

circulated and distributed legally the said

product in German, and he has gotten already

one opportunity legally secured to procure the

compensation for publishing his filed invention.

On the stage of the distribution there was not

any fact that he was restricted legally to gain the

opportu凶tyof compensation for the publication

of his invention. Therefore we recognize that

the plain討ff'spatent right con田 mingto the said

product has been exhausted at present.

we believe that the inte中retationand the

adaption of the patent law still controlled by the

social and common recognition at the age of

original legislation can’t have the rationality so

far as ignoring -the fluctuation of the social and

economic conditions at the time.

Fourthly, on the principle of international

exhaustion, there isn’t any evidenc怠 forus to

confirm that the respond巴ntwas forced to

accept any unexp巴ctedprejudi田 throughthe

p紅 allelimportation of each products in the

case, even if we would limit to each products in

the case the target of the examination ．τbe

question which they deiennine if they would

introduce the technic of the invention patented

仕omthe licensor basically depends on the

technical valuation of the said invention

patented, the existence of the substitute, the

developing conditions of the technology in the

competitive relations, the production costs in

the case of introduction and so on the other

hand, the parallel importation of the g巴nuine

products licensed is the importation of products

which have been already circulated legally by

the licenser the in the foreign country,

- 119ー

therefore, in consideration of the fact that the

price and the volume are expressly controlled by

themselves, we could never ever authorize that

the acceptance of the parallel impoロationof the

genuin巴 productsgranted would weaken the

incentive of getting the license and then the

acceptance like that would bring a major cause

which interferes with the appearance of a great

variety of technic. Moreover, in Japan it is the

fact in public that the parallel importation of the

gen凶neproducts granted has been carried on in

the pretty wide sector of products for a long

time, under the circumstance like this, there

doesn’t exist any evidence of accepting the fact

that the parallel importation like this invites the

barriers against the introductions of technology

into Japan and the facts that the parallel

importation like this brought on the barriers

against the appearanc芯 oftechnic台omvarious

fields. Accordingly, we can not authorize the

respondent’s demand which depends on the

abstract opinions without any material proof.

Fifthly, the economic conditions of each

∞凹町 differfrom白eirhistorical釦 deconomic

circumstances and from the degree of their

technical talents. Although the legal position

against parallel importation of each country in

the world has its prop巴r aspects without

common policies each other, and there does not

exist still any international accord about this

point. We confirm that Japanese patent policy

and the interpretation of the patent law should

not be influenced by other country’s positions,

therefore the said parallel importation does not

in企ingethe right of the plaintiff

The third decision that I will summarize

from now is the following case of bowling pin.

This case is a leading case about the relation

between parallel importation and the patent law

in the field of Japanese case laws.

τb.e Osaka district court ruled it June 9, 1969.

τb.e plaintiff had a patent right relating to an

equipment of standing bowling pins, and he

filed it in Japan, U・S and Australia5> .

The eq凶pmentimported into Japan was a

used product that the plaintiff had made and

sold it already in German, the defendant

(buyer) bought there and imported it into

Japan. The plaintiff demanded to destroy that

product to the defendant.

τb.e decision stated that the said parallel

importation was illegal because of the following

reasons, firstly a patentor’s right his in domestic

nation is independent unconditionally from his

same right in foreign countries, so an incident

that has been occurred in回 rtaincoun釘ydoes

not have any legal effect to the circumstance of

his same right in foreign countries. Secondly

the patentor could get his gaol through

accomplishment that his patented product was

sold legally.

Due to this accomplishment he exhausted his

patent right about the said product, so he

cannot purs凶tan戸norethe said product due to

his paten right. It is said that a legal effect like

this will occur in spite of whether a patentor

himself has distributed the said product or not.

Thirdly the principle of international

exhaustion of patent right does not have any

connection with凶spatent right itself of the said

product. To put it shortly, the exhaustion is in

principle to the said product only. However

filed patent rights in each coun町 aresubject to

the territorial limitation. These rights are

independent each other. Therefore the adoption

of the exhaustion principle should be limited to

the territory where the said patent right is

authorized, due to consideration like this, even

if an incident would exhaust a patentor’s right in

certain country, th er巴isno reason that the said

5 ) Prof. Doi, Teruo of the Waseda University co=en阻

in detail in Jurist, No.460, pp.141 et seq.

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The relationship between p紅 allelimpo口ations姐 dthe patent law in Japan

incident exhaust necessarily a patentor’s right

that has no connection with it.

ill .Scholar’s critiques ag.必nstthe decisions above

First of all, I will introduce here academic

c。mmen ts 合om scholars against the Osaka

district court decision. As the first one,

according to Professor Surnita Masayoshi of the

Kokushikan University6> , he says that this

decision authorized clearly that the patent right

of the said patent article would exhaust in the

case that the patent article above has been put in

circulation with legal validity, moreover this is

the only decision that ruled that the patent right

exhaustion was subjeは to the territorial

principle like a case of trad泡 mark7 > . He says

also there is not any positively negative

comment against this decision. Regarding to

patent articles which a licensor or a licensee has

legally circulated, they generally acc泡ptthat the

use or the distribution of the said patent article

does not infringe the said patent right after the

cir℃ulation has begun. Although the adoption

of territorial principle to the patent right is done

similarly as to other intellectual properties, they

are trying to amend this condition to白twith the

demand of safety of trading and of the free

cir℃ulation of products in the international

market. He says there is not any established

principle con田凶ng the theological ground

about the viewpoint that they do not in合ingethe

said patent right in the case that the purchaser

sales and uses the patent article put in the legal

circulation as his business. According to him

6) Prof. Sumita, Masayoshi of The Kokushikan Uni~ersity comme日ts国 Jurist,special number 鉛， pp.172 et seq.

7）百四reare a number of回 sesconcerning“relatio也shipbetween parallel importation and trade mark”. as也eremarkable 明日“theParker Case”， Osaka District Court Deαsion, Feb 27, 1970. Prof. Monya, Saburou of the Seikei University comments in Jurist, special number. 87, pp.172 et seq.

this decision applies severely the territorial

principle to the case, moreover authorizes that

the foreign exhaustion of the patent right does

not consume the domestic patent right and

points out clearly that this relation differs from

cases of trade mark becaus巴 ofthe diversity

among its substance and object. He comments

it is very difficult to adopt the policy of adjusting

the territorial principle in japan because of th巴

absence of the same policy of harmonizing the

market as EU market. Secondly, Professor Doi

Teruo of the Waseda University also sustains

the conclusion of this decision. He explains that

the exhaustion principle giving a reason of

consummation of the patent right to the said

genuine imported product and the implied

license theory are limited to the territory of

country that they has authorized that patent

right as the decision points out.

Accordingly these two scholars above do

not accept the principle of international

exhaustion against the patent right.

Professor Nakayama Nobuhiro of the

Tokyo U凶versitycomments on this decision

from his negative viewpoint, according to his

opi凶onthis decision refused the principle of

international exhaustion of patent right because

of its stanc巴 forthe principle of patent right

independence 8 > (Paris convention 9 > ) , We明II

8) Prof. Nakayama, Shiniti of the Tokyo University supports positively the pri且ciple of 包tematio且ale油austionfrom the st組問ofopposing over protection of inventor. See his text“Industrial property law”， first volume pp.332 et seq. 1995.

9 )Art.2. pra.1 provides出epri且cipleof equal protection without exceptions, according to the original text泊

Fre日ch，“Lesressortissants de chacun des pays de L’Union jouiront dans les autres pays de L'Union, en ce qui en白 mela protection de la propriete industrielle, des ava日tages que les lo四 respective actuellement ou accorderont p釘 lasuite aux nationaux, le tout sans prejudice des droits specialemeロtpre刊 SP紅 lapresente Convenuon. En consequence, iJs auront la me皿eprotection que伺 uux一口 etle me皿erecou四 legaltoute atteinte po口ee a leurs droits, sous, reserve de l'accomplissement des conditio日set formalites imposees aux nation aux.”

，，A ヲ，a，i

recognize that the principle of independence is

certainly valid for all of us, and so a

consummation of patent right in a certain

country does not any influence with

circumstances of patent right in other country,

but we could not recog凶ze that the

consummation of the concrete patent right

attaching to each product manufactured on basis

of its patent would not lead into the s創ne

circumstance.

In short the principle of independence

means only that a patent right of a・ certain

country is independent企omthat of other

country, so the former does not any effect on

the latter. τberefore this principle does not

ref us巴thatwe will reseach circumstances which

have occurred in foreign countries until then on

the time of estimating the valid of patent right in

our domestic country.

Accordingly, the possibility of accepting

the principle of the international exhaustion

should be recongnized as an inte叩retative

problem of the Japanse patent law, so the

int巴中rtationof this law do巴snot have any

relation with the principle of independence of

Paris Convetion. He also says that the stance of

the scholar who refuses the principle of

international exhaustion because of the

territorial principle is not accurate.

There are still a number of scholar and

expert’s comments about this decision except for

these critics. Professor. Tuturni Tatuya of the

Koube Gakuin U凶versity introduces the

following description of legal grounds of these

debat巴S making a distinction between

supporting opinions and opposing opinions

about it10> . We will begin羽thsupporting

opinions of them.

10) Prof. Tutumi, Tatuya of the koube Gakuin University analyzes debates concerning this questi叩 inHanrei jihou, No.1518. pp.217 et seq.

(a) The principle of patent independence and

the territorial principle due to The Paris

Convention, these principles of the present

international patent system are utilized to

establish the legal source for supporting

opiruons.

(b）百iereason that the patent law gives an

exclusive and monopoly right to an inventor is

that he is charged with ope凶nghis invention for

industrial development as the compensation for

his getting patent right.

Accordingly, it is reasonable that the limitation

of the free competition rule should be basically

re co伊ized. The patent law differs from the

trade law in objection and substance between

them, it especially differs from the trade mark

law which gives priority to protecting of users,

and so it need not necessarily to consider

protection of public加portationcountries.

(c) A business plan of firm that aims at the

international market could be accomplished

without any hindrance only in case that the

monopoly of distribution of imported products

unconditionally is acceptable through the

perfect support of th巴 territorialprinciple on

patent right.

( d) In order to establish successfully rules of

market economic order or fair competitive

economy, it is necessary at the same time to

reach at the first stage of goal as to technical and

economical development. Moreover for

accomplishment of the goal it is indispensable to

protect the investment of patentor or licensees

without・ any danger of suffering losses in other

nat10n.

On the other hand, from the stance of

opposing opinions they describ巴 thefollowing

reasons. (a) As Professor. Nakayama already

has pointed out in his above explanation, the

international exhaustion has not any relationship

with the principle of patent right independence

刊ノ．

刊ノ，，A

The relationship between p訂allelimportatioロsaロdthe patent law皿Jap臼

and the territorial principle, whether or not the

international exhaustion is recognized depends

on the interpretation of Japanese patent law.

(b）百ieparallel patent, although it absolutely is

independent from other patent in foreign

countries in the field of juristic competent,

actually it belongs to the same inventor who has

the original patent right. In order to protect

企eecirculation of pat巴nt紅ticles,internationalizing

the patent right through alleviation of it’s

independence does not mean necessarily to

devastate the inventer’s interest, and the

territorial principle also will bring out unsound

practi民 S like commercial custom barriers

ag出nstthe international business trade. ( c) It is

natural to secぽ ea monopoly and exclusive right

as to his utilization in favor of the inventor.

However, from the view point of the antitrust

law, in the case that his interest conflicts with

general consumer’s interest and restricts free

transactions it is undeniable that they should

restrict such a utilization on the ground of the

purpose or the function of the patent law. ( d)

From the viewpoint of the remuneration

principle or the compensation principle, it

means an overprotection of the patentor that he

will receive profit several times by the same

product which he has licensed once. The

patentor should be contented with having

received once profit by the said patent in the

world market and plan the best patent strategy

to maximize profit by his patent right. (e) After

the authorization of a patent right in a certain

nation, the same parallel patent afterward

would not add any innovative item to the

technical level, therefore, the positive

e筒ciencyof authorizing a patent right which

may contribute the promotion of technical

development does not substantially hav巴 any

geographical limitation.

As his conclusion as to schalors and

experts’comments against this decision,

comparing theirs comments, we will understand

that their theoretical d巴velopmentmainly is

influenced by how to construct the pu中oseof

aロ4出 ofthe Paris Convention11l and how to

re co gr廿ze the substance and pぽ pose and

function of patent right in consideration of

difference of their political and value estimation

as to patent right.

Professor. Tutumi , after having

categorized Japanese scholar’s debates between

parallel importation and patent right, reviews

this decision as the followings. He states clearly

that this decision does not refuses the principle

of patent right dependence and the territorial

principle provided by the Paris Convention and

it demonstrates its support for the theory of

international exhaustion recognized positively

by major comments concerning this theme,

moreover, he states that合eecirculation of

patent articles will advance more steadily due to

the clear stance of the decision about this point.

He analyses the possibility of acceptan四 of

the international exhaustion relevant to

japanese patent law, this theme is subject to the

legislative purpose of Japanes巴 patentlaw and

the coordination with th巴 int巴rpretationof the

law, moreover, it is very important to examine

definite properness of this theme as requisition

of examining. He puts roughly the content of

these debates about the theme in order as the

following，①How and which should be

protected inventer's benefit or public benefit ?

②Which of them contributes to industrial

development and technical innovation between

positive stance and the negative one ? This

ll)Article 4-2 provides the Territorial Principle, accord田gto出eorigin叫 textin French，“Les brevets demandes daロsles differents pays de L'Union par des ressortissa目白

deL'Unio日seroロtindependants des brevets obtenus pour la meme invention dans Jes autres pays, adherents ou non a L"Union.”

2J

今

4，i

decision precisely examined as to that point,

and as the result of examining it dismissed the

defendant’s claim on the ground that they could

not recognize the principle of international

exhaustion under the active patent law. He

states that he will support this conclusion in

spite of remaining a few of questions as to the

court’s logical process.

Professor. Tamura of the Hokkaido

University also denies, as like as Mr.

Nakayama, the relation between the principle

of patent right independence and the territorial

principle provided by the Paris Convention and

the principle of international exhaustion,

however he opposes to utilize the principle of

international exhaustion as a legal basis for

pen凶ssionof parallel importation, h巴 points

out that this theory has not any legal ground

under the active patent law, and he has the

stance that we should decide the legal basis for

permission of parallel importation according to

the very inte中retationof pぼposeof Japanese

patent law.

He proposes that we should come up with

other theory rather than the principle of

international exhaustion to form a theoretical

basis for the authorization of parallel

importation, at the same time he states as a

main reason that the authorization of the

principle of international exhaustion will bring

about a restriction on the exclusiv巴 useof the

patent right in the world market and it will

diminish the inventor incentive for application.

On the other hand, although he does not accept

the principle of international exhaustion, he

opposes that all of parallel importation are

refused on a basis of patent right, and then he

advocates that we should admit parallel

importation only if there occur any incident of

abuse of patent right or invasion to the

monopoly law, for example any inventor uses

his patent right in order to manage the price

variance between domestic and overseas

markets, in this case, he recognizes that it is

very di伍c叫tto make distinction between abuse

of patent right and exclusive use with relation to

the monopoly law, he ac回 ptsthe fair trade

commission’s intervention in the case that the

blockade against p釘 allelimportation is equal to

invasion to the monopoly law. In a case of such

intervention, the 23白 articleof the monopoly

law will give出 ahard question12> , however,

this provision itself secures only monopoly of

the patent technique, it does not secure

monopoly of the market itself. On the other

hand, there will appear possibility that

acceptation of a monopoly of technology leads

instantly up to a monopoly of market. If there

appear such a situation from the acceptation,

they should control such monopoly through the

monopoly law because of an unfair trade by his

stance.

H巴retofore, I have introduced major

critiques with regard to the above decision of

the Tokyo district court. On the other hand,

Tokyo appeal court canceled the conclusion of

the Tokyo district court as already showed. I

may expect ther巴willappear many controversial

critiques about the former in juristic field

related. Some critiques already demonstrated

are as follows. First of all, Professor. Koizumi

who supported the Tokyo district court

analyzes13> , as follows, that the appear court

has showed pretty much a definite stance for

economic effect of parallel importation as a

remarkable point of this decision.

12) Article 23 provides出atthe articles of this law shall not be adopted for perfor皿anceswhich are consider as the exercises of righ臼 belongingto白eCopy Right Law, the Patent Law, the Utility Model Law, the Design Law or the Trade Mark Law.

13) Sub, Prof. Koizumi Naoki of白eKoube University ぽiticizesthe above Tokyo district couロdecision皿NBLNo.563, pp.13 et seq.

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τbe relationship between parallel i皿portations阻 d也epatent law in Jap姐

Speaking shortly, the biggest merit of the

appeal court decision is that it recogniz沼d

町 aightlythe principle of international e油 austion.

According to the appeal court, it seems to adopt

the principle as a kind of factor on the

interpretation of the 29出 articleof the patent

Jaw14' , and the basis of such interpretation of it

do巴snot permit to get double profit from the

patent article which once has been distributed

by the same patentor even if the article were

distributed overseas or in domestic market.

τbe appeal court also refuses such

discrimination in order to realize development

of global economic transactions what is called

universalism. Mor巴over,it urges that there

would be no 問 asonof discriminating patent

right from trade mark which its parallel

importation is already accepted worldwide and

that the acceptation of parallel importation has

no danger of suffering the incentive to such

importation. However, Professor. Koizumi

Naoki of the Koube U凶versitycriticizes as

follows15> . This decision, as the ground of

recognizing the principle of international

exhaustion, points out following principles that

we require safety of the transaction in the

process of circulation of the said patent article

and that we give one chan田 tothe inventor and

the like as the compensation for his publishing

patent right. However, in this case, we need to

recognize that the right holder is uncοnditionally

the same one overseas and in domestic market

and the distribution is overseas and in domestic

market done by the same right holder and as a

result there will happen any trouble nowhere.

Accordingly, this theory supporting the decision

is always not useful and adaptable for all the

14) Art.29 provides the requirements of paten, as fo叫D岬 s,those wh油田ventssomething usable for出eindustries can be authorized to get a patent of his也ventionexcept the following泊四日I旧日s.

15) Mr. Koizumi comments the Tokyo appeal count decision again in NBL No.567, pp.31 et seq.

facts related like this, in that meaning the

effectual range of this decision could be rather

limitary. Professor. Ishiguro, Kazunori of the

Tokyo University estimates very highly this

appeal court decision because of his private

complaint that the above district decision does

not catch up the present circumstance in

Japants> .

That circumstance of the world economic

conditions is changing drastically, therefore, he

is all for this appeal decision which has straightly

authorized the principle of international

exhaustion.

IV. Conclusion

Now I will reach my conclusion of this

article integrating the above decisions and

scholar’s comments. As the Tokyo district

deision has already described it, the recog凶tion

of parallel importation is not concerned with the

principle of patent right independence and the

territorial principle provided by the Paris

Convention with regard to intellectual

properties in 1883. According to standard

doctrines as to this thesis in Japan, after all the

recognition of parallel importation is subject to

the very interpretation of the relevant articles of

the Japanese patent law. In the process of

interpreting them we actually refer to

cirumstances already occurred in foreign

countries for estimating of validity of patent

right. Such a reference is acceptable due to

universal character of patent right, for example,

in case of estimating novelty of an invention

白ledfor by someone as a requirement to

application, we know that there is worldwide a

common and juristic custom as the following.

16) Prof. Ishiguro, Kazu且oriof出eTokyo Uロiversityestimates highly出isdecision血 “Tradeand Custom" Vol.43, No.6, pp.52 et seq.

c、d

今ノv，

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We may refer to foreign affairs that the very

invention has been published and opened there.

As a. result the patent will be refused to be filed

for be cause of non novelty.

From the stanc巴 ofrecognition of parallel

importation du巴 tothe interpretation of the

Japanese patent law, it is no problem to confirm

that parallel importation is legal on the ground

of the fact that the patentor has lost already his

patent right against the very imported ar;ticle.

τ五is conception is due to the principle of

international exhaustion. However, it does not

mean that parallel importation is always and

unconditionally acc叩 tablein Oぽ society,it is

why patent right belongs to the civil law and is

subject to the rule of social welfare. So we have

the responsibility for respecting equally and

haロnonizinga private property right of the civil

law and social welfare. Moreover, we should

make an interpretative criterion of judging in

which cases we could control parallel

importation or in which cases we could not it.

For examples, in cases.that a control of parallel

importation by the patentor may lead to an

abuse of his patent right or lead to an invasion

to the monopoly law, may control his using

patent right.

As prerequisite for the theoretic

development, we should respond to the

following question.

How degree should we realize social welfare in

contrast with the protection of the inventors in

searching for social needs in the cas巴 ofthe

decision of national economic policy ? On the

other hand we should admit that the patentor

can injunct the very parallel importation under

the foll'owing condition, or, if we admit the

parallel importation, it would invade the

patentor’s right and it would expressly neglect

the purpose of the patent law.

For examples there ar巴 a case of forc巴d

publication of patent without the patentor’s

volunt紅yand a case of the pri回 decisionforced

by the government17l .

Moreover we will advance more deeply to

these points. From the stance of recognition of

parallel importation they will accept th巴

principle of international exhaustion of patent

right as the Tokyo appeal court did. This

conception is based on the following r巴ason as

we mentioned early.

τbe patentor’s right would lose effect at the

time when he could get profits by using his

patent right for the very imported article

anywhere, therefore the nation should not

permit that the s創nepatentor would use again

his right in foreign countries in order to gain

double profits. It is why patent right belong to

prope口yright of the civil law, once he has used

it, his hight would absolutely disappear.

Whether or not his usage of patent right will

exhaust it depends on the juridic policy of the

country, and whether or not th巴legaleffects of

exhaustion crossover the frontier depends on

the s創n巴 policy. At the present, there is no

evident regulation about this theme except but

the administrative g凶danceas to trade mark18l .

After all it is a right solution to trust the

17) Mr. Ishiguro explains these ∞日ditions血

Custom" Vol.43, No.8, pp.44 et seq. 18) The fa江町組saction committee （τh JapaロeseI且dependentAdrni且istrative臼 rnrnittee)has an且ouncedthe guide line concerning吐1erelationship between parallel importations姐 dtrade mark, as follows, March 11, 1991. 呂田de-ti且e.In the case which they perform a general agent contract concerning i皿po口edproduc臼， the也irdp訂tyw出

happen to import出eproducts the item of the said con官act出rough出eo出erirnpo口ationroute from出eimpo口ationroute between出eparti田 whocomposed the said contract (hereafter, we will call it as p紅allelimpo口ationon出econdition that they w出 import也egenu凹eproducts“soc志lied” without阻 yin企ingernentof the trade mark right). p町 allelimportation has generally the in且uencepromoting也epri田 competition,therefore, the question then arises as to the monopoly law on白econdition which they will obstruct the competition to keep price, hereafter abbr.

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τbe relationship between parallel importations組 d白epatent law in Jap組

disposition to the courts that have the legal

capacities to solve as to unsolved problems.

From the stan田 likethat the Tokyo appeal

court decision would be supported.

Tuer巴 isone more problem to examine as

to the usage of patent right. As Mr. Tamura

states in his article, if an inventor use his patent

right in order to manage th巴 pricevariance

betw巴endomestic market and overseas market,

and in order to divide international markets, as

a result he could prevent the circulation of

products and he could get the maximum profits.

It is evident that his performance will be an

injure to economic interest of consumers.

When they prove the existence of this fact to be

true, th巴ycan refus巴 thepatentor to use his

patent right in order to prevent the very parallel

importation. Moreover, after a trade mark

holder has tried to prevent the parallel

importation because of invasion to his trade

mark and he has been defeated, if he again try

to prevent the same parallel importation by

using his patent right as a bypass, he would be

treated as an abuse user of his patent right.

In this case, it is necessary to prove that his

real intention is not to protect the patent right.

It is also said that recognition of parallel

importation has possibility of impeding a

patentee’s inc右ntiv巴 for introducing of the

patent technology. As a result, it will damage

economic int巴restof consumers. However this

opinion seems to b巴 tooabstract itself. It is

very difficult to prove concretely the reality by

adopting any materials.

On the contrary it is a common rule that

enterprise's acts are controlled by contrasting

loss with bene白tfrom their performances. This

is a basic principle of our capitalistic society.

Therefore the theory that parallel importation

would become necessarily a factor of impeding

firm’s acts can not have any strongly supported

foundation. We should not limitedly consider

this subj民 tonly within the field of patent law,

we should develop and solve this subject in

confirming how the parallel importation

contributes to public consumers and how public

people recognize such a thing. The approach

like this has been adopted in US where they give

priority to protection of public economical

advantage in international transactions. It is

also the same in EU19l .

τbey say that the Paris Convention does

not touch this problem at all. After all it means

that the disposition or the solution of this

problem is trusted to legislative policy of each

nation. Th巴redoes not exist yet any global

standard, and so we may expect that there will

emerge many studies about this qu巴stionin

future.

19) As materials of田町oduci且gforeig且 systemsconcerrung parallel importa厄on, bむ Kamiya, Mit凶江o，“出edevelopment of problems ∞ロcem皿gparallel impoロation也EuMarket", NBL No564, pp. 59 et seq. Mr. Kuwata, Saburou，“recent foreign jurisprud回目con田m旧gparallel importation”m Toyosaki, Mitue Memorial essays, pp. 561, et seq.

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