WINDS FROM JAPAN No.11
WINDS FROM JAPAN
Issue No. 11, May 2000
Licensing Executives Society Japan
Message from the New President
By Masataka Hashimoto
First of all, let me express my deep appreciation to the former President, Mr. Yamagami, who impacted LES Japan for the last two years with his firm leadership. Mr. Yamagami emphasized fairness, transparency and continuity of the Society's activity, presented new ideas in carrying out various measures, and advanced interactions with outside agencies, such as the Fair Trade Commission and the JPO. Thanks to his efforts, the Society has successfully established a system proper for its size, and has heightened its presence.
In general, we have seen an increase in the activity of the Society, and a steady increase of the membership, with a total of 10 committees, 10 working groups and 2 study groups. This year, I would like to further advance the networking between the members and the studies on practice and strategies relating to licensing, in order to achieve a more steady-going activity of the Society on a higher level.
In this process, however, several issues should be kept in mind. Analysis shows an imbalance between the membership increase and the increase of active participants. The Society's membership expansion and increased activities rely heavily on members working as volunteers and on the Secretariat, which also affect the financial status.
Having stated that, I would like to propose the following points to be considered in planning for our Society's future activities.
1. Selection of attractive subjects
Traditionally, the activity of our Society started from subjects with in which individual members were interested, and continuous efforts are currently exerted to find new subjects. The current difficult economic situation has certainly had serious impact as can be seen from the fact that participants are not increasing despite such efforts.
However, in view of the 21st century and the current rapidly changing environment, I would like to have the Planning Committee review and select new attractive subjects and carry out new programs. Related current activities include a survey on the merits of introducing a new Basic Training Course on Licensing and the Monthly Seminars. Discussions regarding the survey results are underway in the Education Committee in Kanto and Kasai area. Although slightly concerned with the survey's answer rate, members are encouraged to make suggestions or proposals, not limited to this inquiry.
2. Efficient activity
We are fully aware that members of the Society are kept busy with their work, and that there is a conspicuous tendency that participation in the Society's activity, especially among the members from the business field is decreased. This is caused mainly by the so-called restructuring within individual companies. Workload in the Secretariat has also increased, making it difficult to avoid working overtime. Therefore, I feel it is important to achieve efficiency in the activity itself, together with a more efficient coordination of the work, in order to continue our Society's activity at an optimal level. Developments in the field of Information Technology has given us a variety of means that can be utilized to increase efficiency, specifically the widespread electronic mail system which could certainly be used to increase efficiency. Suggestions from members relating to the overall system of our Society are welcome. As for the activity of the Trustee's Meeting and the Planning Committee, several ideas to increase efficiency have already been implemented. Also in the decision-making process, I feel we should introduce a process to enable preliminary implementation of a tentative plan but subject to later review and adjustments at a later date if necessary, as opposed to spending much time in consensus building before deciding on a final plan. These may sound like relatively small points, but I expect that member's active cooperation in implementation of these points should lead to a major success.
3. A healthy financial status
We reviewed various measures to improve the Society's last fiscal year's deficit status, implemented several measures, and as a result, we have been able to achieve a balanced budget this year. We will continue monitoring it.
4. 2002 LESI Conference in Osaka
Another important subject for this year is the preparation for the coming 2002 LES International Conference 2002 in Osaka. The LES Annual Conference will once again be held in Asia, and I strongly hope to gather all our Society's efforts in its preparation to make this Conference successful. It has already been two years since the establishment of the Organizing Committee for LES International Conference 2002, and this year, in Amsterdam, the site of the Conference and of the accommodations will be decided. The Amsterdam Conference will also be the start point of publicity for the LES International Conference 2002, beginning with the distribution of preliminary announcements. In order to decide on major subjects relating to the LES International Conference 2002 within this year, we have strengthened the Organizing Committee. The key to success for the coming LES International Conference 2002 is the large number of participants as well as their satisfaction. Members in our Society are encouraged to conduct publicity activities on an individual basis, which will hopefully result in a large and active participation from both Japan and other chapter societies. In this regard, the LES International Conference 2002 will definitely be a meaningful event, whereby the future activities of neighboring chapters in Asia will be strongly promoted.
President of LES Japan
President of Dia Research Martech Inc.
First Memorial Anniversary of the Late Mrs. Ariga
By Akira Mifune
About one year has very quickly passed by since our Mrs. Michiko Ariga passed away on April 22, 1999. On April 14, 2000, the first anniversary of her death was held at Tokai University Club, Kasumigaseki Bldg., with 113 attendants who had friendly and close contacts with Michiko personally and/or on business, including her daughters and son. Her warm memories are still vivid and all attendants prayed her calm and peace and expressed many thanks for her wonderful contribution to all of relevant societies.
Although they could not join us, Des Ryan and Ken Payne sent heartwarming and thoughtful memorial messages to this first memorial anniversary. Those were published in her memorial book together with about 70 other tributes. Des and Ken were both past president of LESI, who most closely collaborated with her when she was very active in LESI, as a member of the executive Committee Meeting, including as President. Their tributes were attached to this issue with the permission of authors and Mrs. Ariga relatives.
In addition, Heinz Goddar, 2000 President, LES International also sent his heartfelt message to Mr. Hashimoto, President of LES Japan, which was introduced by Dr. Mifune in his address, as follows; "On behalf of LES International, in memorial of late Mrs. Ariga, I would like to let LES Japan in general and you in person know once again how much we all have admired and loved Mrs. Ariga's wonderful personality. She has been one of the greatest individuals in the not so long history of LES International, and certainly will be kept in the hearts of all of us forever. I wish, and I am sure, that LES Japan will cerebrate the first anniversary of her death with all dignity."
The ceremony started with the opening address of Mr.Goto, a former commissioner of JFTC, reminding her wonderful life and contribution to establishing Japanese antitrust policy and administration. After offering toast for blessing her memory by Mr. Suzuki, Vice President of the Commercial Law Center, Inc., we held a banquet with exchanging talks about her sweet memories. In the course of the party, several persons who had close cooperation with her, including Dr. Mifune, Past President of LESI & LESJ, gave addresses on their unforgettable personal impression respectively.
All of attendants were able to confirm their fortune to have known this lovely lady, who inspired their lives to become so much more fruitful and worthy. I finally pray again her rest in peace.
Past President of LES I & LESJ
TRIBUTES TO MICHIKO ARIGA
By Desmond J Ryan, Past President (1988), LES International
One of the greatest privileges of my term as a member of the Executive, and as International President of LESI (Licensing Executives Society International), was that I got to know and work with Michiko Ariga. During her term of office as President of LESI, I had the opportunity to cooperate with her in much of the important work which was done for the development of LES internationally, and in Asia particularly.
Michiko Ariga had a long and distinguished career in the field of competition policy and administration, and in technology transfer. She brought to LES her vast experience and knowledge in that area. My abiding memory of her is of a woman of great dignity, charm and sensitivity. To that she added not only her great intellectual capacity, but also a sense of youth and enthusiasm and physical stamina which would have been remarkable even in a person of much younger years. Her passion for golf, which she took up in her 70's, was but one example of this.
Of all the fond memories which I have of time spent with Michiko Ariga, the one which stands out is of a visit to China with an LES delegation in 1984. That was early in the time of China's reopening to the world and adoption of modern technology and economic reform. Reform of China's intellectual property of technology transfer laws was part of that process, but there was much to be learnt on both sides about how the process was to proceed, and many cultural and diplomatic sensitivities to be observed. It was Michiko who guided us at that time. In the ancient city of Xian with great dignity and scholastic expression, she explained to us the role of the ancient Chinese scholars and teachers in the formation of the cultural and technological development of her own, and other countries.
Michiko's contribution to that delegation was, I believe, a significant factor in the formation of LES China and its admission to LES International in 1987.
Michiko's great contributions in the service of her country and in the service of LES have been recognized by both, in high awards made to her. In 1989, she received LES' highest award, the Gold Medal. Her acceptance speech on that occasion once again demonstrated her dignity and humility on the receipt of an honour which she so much deserved.
Michiko Ariga has left behind a legacy of her great spirit and high achievement, which will endure amongst those who knew her, and provide great example and benefit to those who follow her.
memorial of Mrs. Michiko Ariga
By Kenneth Payne, Past President (1989), LES International
My memories of Michiko Ariga are tempered by the sadness of knowing that she is no longer physically with us. Fortunately, that sadness is pushed aside by a warm smile-like feeling when I think of my many meetings with her over the years and the overwhelming respect I have for her and her wonderful and inspiring achievements. Clearly her spirit is alive and pleasantly invades those of us who had the privilege and honor to know her.
I first met Michiko in the late 1970's and had the opportunity to be with her on many occasions each year during the 1980's. While our meetings in the 1990's became less frequent as those years passed, I tried to maintain contact directly with her or through her many friends in Japan.
During these decades, she and I were very active in the Licensing Executive Society (LES), both its international organization and our respective chapters. She served as president of both LES Japan and LES International. I, as well as others, was inspired and motivated by the exceptional efforts of Michiko on behalf of LES. I often was amazed to find her sitting in a hotel lobby on the opposite side of the world where night was day on her internal clock, yet again supporting the efforts of LES.
While she might be resting her eyes, she would always feel a presence and look up with a smile of welcome. This amazement grew, as I became more aware of her busy schedule in Japan and the governmental positions she occupied, as well as the respect she had earned from her countrymen and others in the Far East and elsewhere in the world. She clearly sacrificed her time and herself to demonstrate her strong commitment to international technology transfer and LES. I also smile when I recall her great love of golf.
A few years ago, in 1992, she and I were in the opening foursome at the LES Japan tournament near Nagasaki. While I drove the ball further on the first hole. It was Michiko's ball, not mine, that ended up in the fairway. Both she and a gallery other countrymen greatly enjoyed that difference. In fact, so did I.
In 1989, I had the honor or presenting LES's highest award, the LES Gold Medal, to Michiko at the meeting in Hawaii. In preparation for that award I learned even more about her life and her many achievements as a woman, a mother, and a governmental official. I and others were truly struck with awe that she had withstood so many difficulties and emerged so victorious in her life. We will always remember, with love and affection, this great lady.
Recent IP News from Japan
By Shoichi Okuyama
1. Machine Translations of JP Publications Available
Starting March 30, 2000, the Japanese Patent Office began providing machine translations of Japanese Kokai (18-months) publications at its web site (http://www.jpo-miti.go.jp). The service is available free of charge. After having the English abstract of a desired JP-A publication displayed on screen from the PAJ (Patent Abstracts of Japan) page, click "DETAIL" button at the upper right corner. It takes some time and may not work well initially, but you will be able to see the JP publication machine translated. The quality of translation? Please judge for yourself. See JPO announcement: <http://www.jpo-miti.go.jp/infoe/paj_15.htm>
2. Japan Joins the Madrid Protocol
Starting March 14, 2000, it is possible to use the Madrid Protocol system for the international registration of trademarks for Japan. The Japanese Patent Office examines International Trademark Applications and is required to notify the applicant of any grounds for refusal within 18 months from the date, on which the International Bureau notified the international registration to the Japanese Patent Office.
3. The On-line Filing of Trademark and Design Applications Begins
January 2000, the Japanese Patent Office started the on-line filing system for trademark and design applications. The on-line filing for patent applications has been in operation since December 1990.
4. Supreme Court Renders Three Decisions on IP Issues
A mark on a component that is invisible from outside may constitute a trademark infringement.
On February 24, 2000, in a criminal trademark infringement case, the Supreme Court affirmed an Osaka High Court decision, stating that the possession for sale of IC chips showing the infringing mark and the sale of machines having such IC chips on their mother board constitute a trademark infringement even though the infringing mark is visible only on the internal mother board and invisible from the outside of the machines.
A non-genetically engineered crossbreeding method of a plant variety is confirmed patentable.
On February 29, 2000, the Supreme Court affirmed a lower court decision that relates to a method for breeding a new plant variety using a conventional sexual hybridization method. Two agricultural associations had asked for the invalidation of a patent, and both the Japanese Patent Office and the Tokyo High Court refused it. The Supreme Court stated in its decision that: "and the probability of achieving the identical results does not have to be high. This is because once a new variety can be bred, it can be reproduced by conventional reproduction methods. Even if the said probability is low, so long as the breeding of a new plant variety is possible, the objective technical results of the invention can be achieved."
The infringement court can find a patent invalid.
On April 11, 2000, the Supreme Court reversed its own precedents in the Kilby patent case between Fujitsu and Texas Instruments (TI) (Case No. 1998 (o) 364). Initially, Fujitsu sought a declaratory judgement against TI. The Supreme Court agreed with the Tokyo High Court that the divisional application that resulted in the patent in dispute was illegal and therefore the patent cannot be enforced. The Supreme Court affirmed the Tokyo High Court decision. In doing so, it changed its own precedents and found it possible for courts that are considering infringement disputes to find patents invalid. The Japanese Patent Law provides that the Japanese Patent Office has the right to invalidate patents, and it was believed to mean that it was not possible for the infringement court to find a patent invalid prior to the Japanese Patent Office's decision on that issue.
5. Japanese "Yellow Pages" Are Subject to Copyright Protection
On March 17, 2000, in a copyright infringement case between NTT, which monopolizes local wired telephone service in Japan, and K.K. Daikei, a small publisher of telephone directories, the Tokyo High Court found that occupational telephone directories called "Town Page" are a "work of database" under the Copyright Law, and therefore subject to copyright protection. This is a landmark decision for the protection of databases under the Copyright Law.
6. New Patent Attorney Law
The new Patent Attorney (Benrishi) Law was published on April 26, 2000. The new law stipulates that: (1) Japanese patent attorneys will be officially able to do licensing-related work, take steps before the Customs Office against importation of illegal products, and represent clients before certain arbitration organizations in connection with IP disputes and their settlement, all for fees; (2) it will become possible to incorporate patent firms; and (3) the national qualification examination will require only 5 subjects compared to current 8. The number of those who pass the examination is expected to increase considerably from the last year's level of 220. A number of relevant issues are now under heated discussions within the larger framework of a judicial reform. Also, law schools, much like those in the States, may be established in Japan as early as in 2003.
7. Business Methods Are Patentable in Japan
People have asked whether business methods are patentable in Japan. The simple answer is a yes. Without invoking fear of oversimplification, one can say that business methods can be patented as long as claims cite "computers" or other hardware elements, peppered with some clever claim drafting techniques. Methods of putting golf balls, however, may not be patented in Japan, although they have been patented in the States. For JPO announcement on BM patents, see
http://www.jpo-miti.go.jp/infoe/treatment.htm
8. Copyright Law Amendment Passes Diet and Another One Is Coming
A Copyright Law amendment bill passed Diet on April 27, 2000. The amendment will take effect on January 1, 2001. Much tougher criminal penalties will be applicable against copyright infringements, and document production orders may be facilitated during court proceedings. This amendment follows last year's amendment. Another Copyright Law amendment is now under consideration for the probable introduction of a bill next year. Use of copyrighted materials by schools on the Internet is likely to become exempted from copyright infringement.
9. The Second Decision to Find Doctrine of Equivalents Infringement
In a decision rendered on March 23, 2000 (Case No. 1998(wa)11453) the Tokyo District Court found patent infringement applying the doctrine of equivalents in line with the criteria set forth by the Supreme Court in its decision of February 1998. This is the second decision in which the doctrine of equivalents is used to find an infringement after the Osaka District Court decision of May 27, 1999 (Case No. 1996(wa)12220). The case relates to a patent on an apparatus for removing foreign objects from seaweed for further processing. The plaintiff sought and obtained injunctive relief.
10. Japan Will Propose Not To Patent Mere Sequences
At the Second Informal Meeting of the Heads of Patent Offices in Certain Developed Nations (Patent G7) to be held May 9 and 10, 2000 in England, the Japanese Patent Office will reportedly propose not to patent DNA fragments without specific utility.
Japanese bioindustry's position on DNA fragments:
http://www.jba.or.jp/katudou/topics/news990419e.html
Details on the first meeting:
http://www.jpo-miti.go.jp/saikine/kaigoue.htm
Current JPO examination practice:
http://www.jpo-miti.go.jp/infoe/dnas.htm
PhD, Okuyama & Co., Patent Attorney
Summary Report from Monthly Seminars
By Yoichiro Iwasaki
TOKYO SESSIONS]
January (1/19)
"Amendments to the Patent Law, focusing on the amount of Damages to be awarded" by Yoshiyuki TAMURA, Professor, Law Faculty, Hokkaido University
The Amendment of 1998 has allowed the Patentee, whose patent was infringed, to demand larger damages, by allowing the lost profits of the Patentee to be the basis of the calculation. Also by removing the condition that the Patentee to actually practice his invention in order to seek damages. Moreover the burden of proof has been shifted to the alleged infringer, which has made the prosecution of infringement easier. Punitive damages were not allowed, as they are in conflict with the philosophy of the Japanese Civil Code.
The Speaker cited many examples of patent and copyright infringement cases to illustrate the changes wrought by the rapid advance in technology.
February (2/17)
"Review of Court Decisions on IP Issues by Osamu TAKURA, Attorney at Law, Takura Law Office (summary omitted here: See Sections "Recent IP News from Japan" in past WINDS)
March (3/21)
"Governing Law and Jurisdiction of Foreign Publications" by Ryuji YAMAMOTO, Attorney at Law, in Japan and NY (summary omitted here)
April (4/18)
"Recent Decisions related to Unfair Competition" by Ms. Yuriko INOUE, Assistant Professor, Tsukuba University
The Speaker focused on two cases to illustrate the courts' thinking on this important issue. One was the Race Horse Publicity case, where the name of a famous racehorse was used in software for computer games, without all of the horse' owners' consent. This was the first case where publicity was recognized for a non-human.
The second was the case where a Japanese computer maker made and sold an Apple i-Mac look-alike. Since the Japanese maker withdrew his product from the market, after being sued by Apple, and settled out-of court, no court decision was rendered. The Speaker tended to sympathize with the Japanese maker stating that 1) the maker had registered his design in Japan while Apple did not do so in Japan (it had in USA) and 2) the purchasers of PCs were sophisticated buyers who were not easily swayed by design alone. However, some in the audience disagreed pointing out that the design of i-Mac had become world famous by the time the look-alike appeared on the market and that PCs are now bought by housewives, who are may be influenced by the design.
[Osaka Cession]
November (11/17/99)
"Patent Protection of Software - Present and the Future" by Hideyoshi Matsukura, Patent Attorney, Shuwa Patent Attorneys Office
In 1991, a decision by the US Supreme court allowing a patent right to "State Street" the validity of business model patents became official. In Japan also, we see an increasing number of patents being filed related to networking. Since the nature of Internet is borderless, Japanese must always be conscious of what is happening in the USA.
1. Copyright and Patent: Recently we see the scope of copyrights contracting to its traditional role, while that of patent rights on the expansion.
2. The influence of the Pro-Patent Policy: In a pro-patent environment, the value of a patent can be said to be determined by the market, rather than by the governmental authorities. The emergence of the law of equivalents and reverse equivalents are off-shoots of the pro-patent policies.
3. Controversy on business models: The definition of "Business Model" is not clear. People tend to confuse it with "business methods." When considering business model patents, one should distinguish and treat accordingly whether said model is (1) in the theoretical conceptual stage, (2) is a system to support a model or (3) embodied in a hardware. Owners of business model patents tend to interpret their claims broadly but whether such broad interpretations will be allowed by the courts still remain to be seen.
4. Japan's Patent Law makes the utilization of natural law and indispensable requirement of patentability. But recent decisions tend to allow more flexibility.
Consultant
LES JAPAN to hold its SUMMER SYMPOSIUM
By Toshihiko Kanayama
LES Japan will have its 23rd Summer Symposium at the Yamaha Resort, Tsumagoi, in Kakegawa City, Shizuoka Prefecture on July 7th and 8th, 2000. The area around Kakegawa is renowned for the excellent green tea it produces, and is located on the southern slopes of beautiful Mt. Fuji.
The basic theme of this year's Symposium is "Looking towards the 21st Century". The Symposium will kick off with a gala opening ceremony. On the second day, the Symposium will be honored the following three distinguished speakers, who will share with us their outlook into the new Century.
"The IT revolution Era, and how the Intellectual Property System will transform Itself" by Professor Kenji Naemura of Keio University
"Marine Biotechnology--Present and Future" by Dr. Yoshikazu Shizuri, Director of Marine Biotechnology Institute
"Reliability of Forecasting Changes In the Terrestrial Environment--Its Feedback Effect on the Biosphere" by Professor Yoshimi Suzuki of Shizuoka University
We hope to have an enlightening and enjoyable time. All who are interested, are most welcome to participate.
Partner; Yoshida, Kanayama, Ishida & Associates
Editors' Notes
It is our honor that this issue includes heartfelt messages from.Mr. Desmond Ryan and Mr. Kenneth Payne in memory of the late Mrs. Ariga. Their tributes witness our sentiments expressed in the cover article by Mr. Mifune in WINDS #9. We really lost a "great treasure."
LES Japan has speeded up the preparation for the LESI Conference in Osaka 2002. LESJ has prepared a pre-announcement of the Osaka Conference. A copy is available at the International Conference in Amsterdam.
Questions regarding any of the articles in issue should be directed to the Editor-in-chief: //jfujino@ngb.co.jp//
