WINDS FROM JAPAN No.13
WINDS FROM JAPAN
Issue No. 13, January 2001
Licensing Executives Society Japan
NEW YEAR GREETINGS
By Kazunori Yamagami
I trust that you have all survived the year-end holiday season and have started the New Year with refreshed and renewed vigor.
As I look back upon my term as president of LES Japan I feel a sense of accomplishment as membership of LES Japan has continued to be among the strongest in LESI and our many members continue to cooperate to study, learn and teach. One of the highlights of my participation in this fine organization is the opportunity to maintain contact with old friends and constantly make new friends who share a common interest in the effective utilization of new technologies, whether in the private sector, the public sector, or as a matter of personal interest. While I was glad to hand over responsibility for leadership of LES Japan to the skilled and steady hand of Mr. Masataka Hashimoto, I wish to thank all members of LES Japan for their cooperation, dedicatopm and achievements during the past year.
I know that all members of LES Japan are looking forward to the LES 2002 Conference scheduled to open at the Osaka International Convention Center in cooperation with the Riga Royal Hotel on April 5, 2002. While much remains to be accompolished prior to the opening ceremonies, members of the organizing committees of both LES Japan and LESI have been hard at work for well over a year. During that time, LES Japan had the opportunity to meet with LESI leaders from around the world during their various trips to Japan and I feel confident that the 2002 conference will meet the standards of excellence which have been the hallmark of LES conferences every year.
Keep your schedule openForThe 2002 LESI Conference in Osaka April 7-10, 2002 On behalf of LES Japan and my many friends and colleagues who support the activities of LES Japan, I wish to welcome all members of LES organizations world-wide to visit Japan during April 5th through 10th, 2002 and in particular, to my hometown of Osaka. Those of you who have not visited Osaka for some time may be surprised at the number of newly-constructed buildings, underground shopping arcades and public works. At the same time, Osaka provides a convenient base for day-tripping to notable sites in the surrounding area such as the ancient capitals of Kyoto and Nara, the bustling port of Kobe, the stunning castle at Himeji and numerous other temples, castles and parks. Last, but not least, I would like to remind everyone that Osaka is famous throughout Japan for the quality and variety of its eating establishments. The residents of Osaka are well known to work very hard until about 7:00pm and then heading for their favorite eating or drinking establishment to talk about the day's events with families and friends. I invite each and every one of you to adopt this custom during your visit to Osaka and to use this chance get to know your fellow LES members!
In the meantime, I myself will continue to travel to as many LES meetings and conferences as my work schedule permits, and personally welcome all LES members who find themselves in Japan during the coming year.
Past President, LES Japan
Yamagami & Yamagami, Attoneys at law
First Attempt Successful
---Basic Training Course on Licensing---
By Akira Fukuda
Two full day programs for the basic training course on licensing were held by LESJ for the first time. All 59 attendees in Osaka and 69 in Tokyo expressed their deep appreciation to the Lecturer, Dr. Koh Kunieda, Kuni Management Consultant, by giving him a tremendous applause at the end of the respective courses.
Mr. Kunieda started his lecture by highlighting the significance of licensing from the viewpoints of both the national economy and individual enterprises. He pointed out the importance of the trade balance in the former case, and in the latter case the very close relationship between R&D management and international business operations. At individual enterprises it is quite reasonable to concentrate its resources and efforts in areas where it is strong, and to obtain a license as the most cost-effective way to catch up with its competitors.
What he emphasized in the Course were: 1) The lecture is based on his practical knowledge gained through his actual experiences, 2) "Agreement" documents are to be examined from a legal viewpoint. But the purpose of this lecture is not to provide "how-to" methods to the attendees, 3) The lecture is based on the philosophy that licensing is a principal means of putting intellectual properties to practical use, which is an important part of intellectual properties management, and 4) Case studies are introduced.
Most important and useful for those in charge of licensing is "The Guidelines of Antimonopoly Laws of Japan, the United States and European Union". Attention should be paid in drafting a license agreement whether or not it is in line with the Guidelines or not. Judgment of compliance thereto is listed as "Black", "Dark Gray", "Gray" and "White" respectively for 12 items. Dark Gray is defined only in the Japanese Guidelines. The list of the Guidelines is cited from the report of Antimonopoly Law working group of LES Japan headed by Mr. Kunieda.
Another important point is "Attitude when doing licensing business". What were recommended in the lecture were 1) Behave adhering to international principles and never advocate the egoism of the individual company, 2) Give due consideration to the position and interests of one's counterpart, and 3) "Licenses" should be fair, following international customs, common sense and courtesies.
Mr. Kunieda closed his lecture by stating, "License is an activity, which lays bare a person's total human character". Almost all participants wrote in the questionnaire sheet collected after the course "It was outstanding lecture. I was very much impressed". As a reference "Essence of drafting a License Agreement, by Koh Kunieda", was given to the students.
Vice President, LES Japan
LESJ SUPPORTS NEIGHBOR CHAPTERS
Starting on November 6, 2000, LES Korea sponsored a 3-day international conference in Seoul. The topic discussed was "Effective Management of Intellectual Assets in the New Millennium." We understand the conference was highly successful with the attendees of approximately 220, out of which 80 people were from other parts of the world.
LES Japan assisted the program by way of sending two speakers, Dr. Akira Mifune, former LESJ/LESI president, and Mr. Kensuke Norichika, vice president of LESJ. On the subject of joint R&D, Dr. Mifune elaborated on negotiation process for, components of and structure of joint R & D agreements. Taking into account recent changes in the business environment, Dr. Mifune discussed specific needs and merits of Joint R & D. Before entering into the detailed analysis of the negotiation process and the major components of the agreements, the speaker stressed the necessity and importance of feasibility studies, as well as scrutiy of the potential partner. Emphasizing the importance of dealing appropriately with intellectual property issues when engaged Joint R & D, Dr. Mifune emphasized the existing perception gaps between the process-oriented industries and the assembly industries on trade secret protection.
Mr. Norichika focused on the aspect of protecting trade secrets during the course of R&D. Mr. Norichika has started his presentation with emphasis on the importance of trade secrets when involved in joint R & D activities. Defining trade secrets as proprietary information which is valuable to competitors, he analyzed the confidentiality aspect for the protection of trade secrets. For safe safeguarding, the trade secrets management system should desirably cover not only technical & commercial information but also aspects relating to personnel, contracts and R&D. With emphasis on the role of R&D project managers, Mr. Norichika elaborated on practical aspects for protecting trade secrets from joint R&D partners and keeping balance between raising efficiency of R&D activities and safeguarding trade secrets.
LES Singapore held the "Licensing Asia 2000 Conference" on 18th and 19th September, 2000 at the Singapore International Convention & Exhibition Centre.
LESJ was asked to dispatch a representative as a guest speaker, and selected Y. Iwasaki, consultant. On September 19th, Mr. Iwasaki gave a presentation titled "Licensing, a Useful Tool to Expand Business", which was attended by 87 persons and followed by a very active question & answer period. A summary of Mr. Iwasaki's presentation will shortly be published shortly in les Nouvelles.
Editors, Winds from Japan
Recent IP News from Japan
By Shoichi Okuyama
1. New URL for the Japanese Patent Office
The Japanese Patent Office (JPO) now has a new Internet address . Most of its higher-level governmental agencies in Japan were reorganized as of January 6, 2001. The Ministry of International Trade and Industry (MITI), which oversees JPO, changed its name to the Ministry of Economy, Trade and Industry. Thus, it became inappropriate for JPO to use its old web address of www.jpo-miti.go.jp, since MITI no longer exists. The old URL cannot be used after March 30, 2001.
For the governmental reform, visit:
For JPO's new domain name, go to:
2. Heads of the Trilateral Patent Offices Meet on an Island in Japan
Between October 30 and November 3, 2000, heads of the European, U.S., and Japanese Patent Office met on an island called Awaji-shima near Kobe. For the U.S., Mr. Robert L. Stoll, Administrator, Office of Legislative and International Affairs, substituted for Director Dickinson. Discussions covered database protection, business model patents, and genetics-related inventions as well as possible steps toward a global patent system. It was agreed to set up a new working group for improving the current PCT system toward a possible worldwide patent system. As reported in the November 12, 2000 issue of Nihon Keizai Newspaper, Mr. Stephen Kunin, who is Deputy Assistant Commissioner for Patent Policy and Projects and also attended this meeting, pointed out that the U.S. Patent and Trademark Office has no intention of changing its position on patenting DNA sequences based on prophetic examples, and suggested that the European and Japanese Patent Offices should follow suit.
For a report adopted on biotech inventions, go to:
3. A Court Denies Preliminary Injunction Orders on a Business Method Patent
On December 12, 2000, Judge Iinuma of the Tokyo District Court rejected petitions for preliminary injunction orders filed by a Japanese startup company, International Scientific, against four web-based service providers. The petitions were filed on September 12 and 27, 2000. The patent in dispute is directed to a charge system for time-limited Internet use (corresponding to US Patent No. 5,956,697, go to http://www.delphion.com/details?&pn=US05956697__ ). The judge found that none of the five claimed features in the disputed patent were used in the systems operated by the defendants. These are apparently the first "business method patent" cases on which a Japanese court made a decision.
4. The First Domain Name Case Decided by a Japanese Court
On December 6, 2000, the Toyama District Court decided to injunct a Japanese company that owns the domain name of http://www.jaccs.co.jp from using such domain name and "JACCS" as an indication of its business. Jaccs Co. Ltd., a well-known Japanese corporation who provides credit card and loan services to consumers filed the present action against a small Japanese company that had obtained the jaccs.co.jp domain name. Jaccs Co. Ltd. has more than 6 million credit card members and currently uses http://www.jaccscard.co.jp as its domain name. The defendant asked for a monetary compensation for its jaccs domain name. The defendant has appealed this decision.
5. More People Pass the Patent Attorney Examination
On October 30, 2000, the result of the patent attorney examination was published. Two hundred fifty five (255) people passed the examination and became qualified to register as patent attorneys. This represents an increase of 44 from the 1999 result. When I passed the same exam in 1990, the number was only 110. The total number of registered patent attorneys now stands at 4,400.
6. JPO to Shorten the Pendency of Patent Applications for Small Businesses
December 2000, JPO announced that it plans to shorten time required for examining patent applications filed by small companies to less than one year in an effort to help small startup businesses compete more effectively with well-established competitors.
7. Use of the Madrid Protocol System Limited among Japanese Companies
In March 2000, the Madrid Protocol system became effective for Japan. After eight months, as of November 27, 2000, foreign applicants filed about 2000 trademark applications in Japan using the Madrid Protocol, while Japanese applicants filed only 130 International Applications designating about 1100 regions in total.
8. JPO Publishes its New Patent Examination Guidelines
On its very last working day of the twentieth century, December 28, 2000, the Japanese Patent Office published its new set of examination guidelines. These guidelines include revised set of guidelines for software- and chemistry-related inventions. Under the new guidelines, claims directed to computer software will be considered as claiming a product and will be allowed. Business method inventions are dealt within the framework of software inventions. Hardware elements are required for such inventions to be patented. Most of the new guidelines are effective immediately while those concerning software-related inventions are applicable to patent applications filed on or after January 10, 2001.
9. Banks File More Patent Applications
In the year ending September 2000, on the basis of published Japanese patent applications, nine major Japanese banks filed 158 patent application or 40 % more than the previous year, according to the November 11, 2000 issue of Nihon Keizai Newspaper.
10. The Commission for Judiciary Reform Issues its Interim Report
On November 20, 2000, the Commission for Judicial Reform issued its interim report. This report covers essentially all areas of the Japanese judicial system. Among many items, it proposes significant and rapid increases in the total number of active judges, public prosecutors, and attorneys at law as well as the establishment of law schools that are 3-year graduate level schools for practical legal training. More specifically, the number of those who pass the national bar examination is proposed to be increased to 3,000 from the current level of 1,000. This bar examination is a requirement also to become a judge or public prosecutor. Education at one of proposed law schools is to become a requirement for taking the bar exam. The final report will be issued in May 2001.
11. Patent & Licensing Exchange is in Japan As Well
A US company that specializes in intellectual property transactions, called Patent &Licensing Exchange Inc., or "pl-x" for short , now has a Japanese subsidiary in cooperation with a venture business financial company, Softbank Finance, Inc., a major trading house, Itochu, and a major accounting firm, Century Ota Showa & Co. The Chairman and President of the Japanese subsidiary are, respectively, Takashi Kiuchi, who used to be a managing director of Mitsubishi Electric, and Hideki Otsuyama, who has legal experience at Fuji Xerox and Nomura Research Institute.
PhD, Okuyama & Co., Patent Attorney
Summary from the Monthly Seminars
By Yoichiro Iwasaki
"How to avoid disputes when entering into License Agreements with US Companies" by David LUBITZ, Attorney at Law, Horgan & Hartson Law Office
"Trend of US court decisions on Misuse and Anti-trust issues in Licensing" by Tadayoshi HONMA, Commission member, Fair Trade Commission
"IT Technology and How to create Business Model patents thereon" by Hiroyuki MORIKAWA, Assistant Professor, University of Tokyo, Faculty of Electronic Information Engineering
"License Negotiations and their legal risks" Chikao FUKUDA, Attorney at Law, Fukuda & Kondo Law Office
"Activities of the Arbitration Center for IP" by Kazuko MATSUO, Attorney at Law, Nakamura Law Offices
"How to cope with Counterfeiting of IPs" by Michael O'Keefe, Kroll International
"Recent Important Court Decisions on Patent Issues" By The Kansai Study Group, Coordinator: Kazunori YAMAGAMI
"The Role of Licenses in forming Corporate Strategy" by Masatoshi HASHIMOTO, President, LESJ and Statutory Auditor of Nihon Ethanol Co. Ltd.
"How to Protect Trade Secrets in the IT Era" by Kenji YOSHITAKE, Attorney at Law, Patent Attorney, KYOWA Patent and Law Office, and Tadao KIMURA, IP Specialist, Licensing Business Dept. IP Center, Matsushita Electric Industrial Co. Ltd.
LES Japan Forms a Website Committee
By Toshihiko Kanayama
LES Japan has organized a Website Committee to develop an official website for LES Japan. The members of this Website Committee are:
Toshihiko Kanayama (Chair)
Shoichi Okuyama (Vice-Chair)
Naomichi Osaki (LES Japan Office) Yoshiko Hirono (Assistant)
The committee has selected for its new site the url: www.lesj.org, and has published temporary information pages as a review of the official site which is to opened on March 25th of this year.
The website will have both English and Japanese pages and it is hoped that the new site will serve as a vehicle for publishing timely information on the state of intellectual property licensing in Japan, and on the activities of LES Japan. LES Japan also intends to use the site to provide updates and information on the 2002 Osaka LESI Conference.
Feedback from site visitors will be solicited and incorporated in site design, as the Committee hopes to constantly enhance its contents and presentation to meet the needs and desires of LES members throughout the world. All LES members are encouraged to visit the new site and share any ideas they may have.
Yoshida, Kanayama, Ishida & Associates, Patent Attorney
In this issue, we have included a cover article on how we are preparing for the 2002 Osaka International Conference. We plan to continue carrying like-wise articles in future issues. They will cover a wide variety of tourist information including events, foods and places for the participants.
LES Japan has its own website. —ihttp://www.lesj.org—j which is open to anyone engaging in practice of IP and its licensing. Feel free to visit this interesting and informative website.