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Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: a Comparative Analysis

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Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: a Comparative Analysis Fordham Intellectual Property, Media and Entertainment Law Journal Volume 4 Volume IV Number 3 Volume IV Book 3 Article 5 1994 Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: A Comparative Analysis Mark S. Cohen Cooper & Dunham Follow this and additional works at: https://ir.lawnet.fordham.edu/iplj Part of the Entertainment, Arts, and Sports Law Commons, and the Intellectual Property Law Commons Recommended Citation Mark S. Cohen, Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: A Comparative Analysis, 4 Fordham Intell. Prop. Media & Ent. L.J. 847 (1994). Available at: https://ir.lawnet.fordham.edu/iplj/vol4/iss3/5 This Article is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and History. It has been accepted for inclusion in Fordham Intellectual Property, Media and Entertainment Law Journal by an authorized editor of FLASH: The Fordham Law Archive of Scholarship and History. For more information, please contact [email protected]. Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: A Comparative Analysis Cover Page Footnote The author is grateful for the guidance and support of William T. Fryer, III, Professor of Law, University of Baltimore School of Law, Baltimore, Md. The author also wishes to acknowledge Yoichiro Yamaguchi, Esq., Beveridge, DeGrandi, Weilacher & Young, Washington, D.C., for his comments on this Article. This article is available in Fordham Intellectual Property, Media and Entertainment Law Journal: https://ir.lawnet.fordham.edu/iplj/vol4/iss3/5 ARTICLE Japanese Patent Law and the WIPO Patent Law Harmonization Treaty: A Comparative Analysis Mark S. Cohen* A country without a patent office and good patent laws is just a crab, and couldn't travel any way but sideways or backwards.' INTRODUCTION A patent is a grant of privilege or authority by a government to one or more individuals which precludes others from manufactur- ing, using, or' selling the patentee's invention without a license.2 The granting of a patent can provide the impetus and incentive for an individual or company to invest substantial sums of capital in the technology.3 In Japan, as in the United States, patents are not only central to the advancement of science but they are also pivotal * Associate, Cooper & Dunham, New York, NY; Rutgers College, B.A. Biochemistry 1989; New York University, M.S. Biology 1991; University of Baltimore, J.D. 1993. The author is grateful for the guidance and support of William T. Fryer, III, Professor of Law, University of Baltimore School of Law, Baltimore, Md. The author also wishes to ac- knowledge Yoichiro Yamaguchi, Esq., Beveridge, DeGrandi, Weilacher & Young, Wash- ington, D.C., for his comments on this Article. The opinions reflected herein are solely those of the author and do not represent those of Cooper & Dunham or its clients. 1. MARK TWAIN, A CONNECTICUT YANKEE IN KING ARTHUR'S COURT 118 (Bernard L. Stein ed., Univ. of Cal. Press 1979) (1889). 2. See BLACK'S LAW DICTIONARY 1125 (6th ed. 1990). 3. Friedrich-Karl Beier & Joseph Straus, Patents in a Time of Rapid Scientific and Technological Change: Inventions in Biotechnology, in BIOTECHNOLOGY AND PATENT PROTECTION 15, 17 (Organization for Economic Cooperation and Development [OECD] 1985). 848 FORDHAM INTELL. PROP., MEDIA & ENT. L.J. [Vol. 4:847 to the development of technology.4 Generally, three parties are involved in the granting of any patent: the private inventor, the government, and industry.5 The degree of each party's involvement varies, depending upon the philosophy of the particular patent system involved.6 Japan and the United States diverge in the philosophies underlying their patent law systems and the manner in which each system attains the goal of promoting scientific progress. Japanese patent law emphasizes the industry-government relationship whereas American patent law emphasizes the inventor-government relationship. Although this Article does not focus on U.S. patent law, a brief summary of the American approach provides a background against which Japanese patent law can be better understood. The United States patent system encourages individual innova- tion and the advancement of technology by rewarding and protect- ing individual entrepreneurs. When the first patent laws of the United States were enacted in 1790,9 a quid pro quo between the government and the individual inventor was established. This quid pro quo requires that an individual disclose his or her invention to the public in exchange for a governmental grant of a limited mo- nopoly, which includes the right to exclude others from making, using or selling the invention.1" Thus, in the United States, a con- tract is established between the government and the individual. Conversely, Japanese patent law encourages the creation of "inventions by promoting their protection and utilization so as to 4. See Donald S. Chisum, Introduction: The Harmonization of International Patent Law, 26 J. MARSHALL L. REV. 437, 450 (1993). 5. See Samson Helfgott, Cultural Differences Between the U.S. and Japanese Patent Systems, 72 J. PAT. OFF. Soc'Y 231, 235 (1990). 6. Id. at 236. 7. Id. at 234. 8. See Chisum, supra note 4, at 447. 9. Patent Act of 1790, §§ 1-7, 1 Stat. 109-12 (1790) (repealed 1793). The grant of power for the United States patent laws is based on the Constitution. It states that "Congress shall have Power ...[t]o promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." U.S. CONST. art. I, § 8, cl. 8. 10. See, e.g., Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 255 (1945). 1994] JAPANESE PATENT LAW AND PATENT HARMONIZATION 849 contribute to the development of industry."'" In Japan, the granting of a patent is not viewed in a contractual sense with obligations flowing between the parties involved. Rather, patents are granted under a "rights confirming" doctrine, wherein an applicant (i.e., industry) requests a patent and the government confirms that the applicant has the exclusive right to exclude others. During the evolution of Japan's economy from a developmental stage into a highly sophisticated economy, the patent laws paral- leled the level of change in the economic structure so as to contrib- ute to the nation's progress.' 2 The Japanese patent system is "sys- tematic" and "fully interwoven" into the economic and cultural fabric of the country. 13 As Zenji Kumagai, former Commissioner of the Japanese Patent Office ("JPO"), pointed out: [T]he significance of the patent system for the development of the Japanese economy is obvious, when one considers 11. TOKKYOHO (Patent Law), Law No. 121 of 1959, § 1, translated in JAPANESE LAWS RELATING TO INDUSTRIAL PROPERTY (AIPPI Japan 1992) [hereinafter Japanese Patent Law]. An "invention" is defined under Japanese patent law as "the highly ad- vanced creation of technical ideas by which a law of nature is utilized." Id. § 2(1). A technical idea is [n]ot strictly applied, it is different from a scientific idea. It is enough for a scientific idea to be established academically, but a technical idea must be safely operable in the industrial field. The subject invention is insufficiently de- scribed in the Patent specification in that the means for avoiding accidents and securing its safety is not concretely disclosed. Therefore, the disclosure lacks sufficient detail for operating the generator safely in the industrial field. ac- cordingly it should be regarded as an incomplete technique. Judgment of Jan. 28, 1969 (Commissaire a l'Engerie Atomique v. Patent Office (Atomic Energy Generator Case)), Saik6sai [Supreme Court], 23 Minshil 52. 12. See Duane W. Layton, Note, Japan and the Introduction of Foreign Technology: A Blueprint for Less Developed Countries?, 18 STAN. J. INT'L L. 171 (1982). For a discussion of the history and development of Japan's patent laws, see Guntram Rahn, The Role of Industrial Property in Economic Development: The Japanese Experience, 14 INT'L REV. INDUS. PROP. & COPYRIGHT L. [I.I.C.] 449 (1983); see also Japanese Group, Introduction of New and Harmonization of the Existing Utility Model Protection Systems, in V AIPPI ANNUAL 62-65 (1993); Chen Ruifang, The Utility Model System and Its Bene- fits for China-Some DeliberationsBased on German and Japanese Legislation, 14 I.I.C. 493 (1983); Carter Mackley, Note, The Role of the Patent System in Technology Transfer: The Japanese Experience, 26 COLUM. J. TRANSNAT'L L. 131 (1987). 13. ARTHUR WINEBURG, INTELLECTUAL PROPERTY PROTECTION IN ASIA § 2.01, at 2-2 (1991). 850 FORDHAM INTELL. PROP., MEDIA & ENT. L.J. [Vol. 4:847 that 60 percent of Japan's economic growth after the end of [World War II] is considered to be attributable directly to technological progress, and that most of the technology that 14 Japan introduced from abroad was patented. In addition, the JPO, indicating the importance of technology trans- fer, 5 stated that: The patent system exercises great influence on technologi- cal innovation. To establish the basis for a technology state, it is necessary to protect the results of our own tech- nological development internationally, and also to accumu- late bargaining power, i.e. technological negotiating power. Thus the qualitative improvement of patent management [and] the strategic implementation of the patent system, 16 become increasingly important. The Japanese patent system may give Japanese firms, active in technological development (e.g., biotechnology), "a long competi- 17 tive edge" over other countries, such as the United States. Japanese patent law has been termed the "non-tariff' barrier to foreign businesses due to its restrictive patent practices.'" Ameri- 14. Rahn, supra note 12, at 490. 15. "Technology transfer" is the application of knowledge necessary for the produc- tive functioning of an enterprise via engineering, management, and marketing techniques.
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