This lecture aims to elaborate how to think about patent law from a perspective of role divisions between several institutions such as market, patent office, judiciary and so on. To exemplify this approach, some of the recent developments of Japanese Patent Law will be touched upon, including revival of the opposition procedures, the doctrine of equivalents, and denial of injunctions.
Opposition procedures after the grant in Japan was abolished in 2003 but revived in 2015. Why is there again a need for opposition procedures? The lecture will look through the status quo of the oppositions and identify one important function of the procedures as to acquire the necessary information from the public to discern the socially-bad patents from the meritorious ones in the hay of patent applications or granted patents. The doctrine of equivalents was not squarely considered by Japan‘s courts until mid-1990s. Even after the doctrine was acknowledged by the Supreme Court in 1998, there exists a criticism which points out that it could have been described in claims previously in application if the replacement is foreseeable, and proposes that the application of the doctrine of equivalents should be limited to cases where technical alternatives developed after the application are at issue. However, from the perspective of effective operation of the patent system, the application of the doctrine of equivalents is just a small number compared to 300,000 patent applications per year. Requiring all applications to be perfect when first filed would be socially wasteful. The doctrine of equivalents can be seen as a tool to realize an efficient shift of role between patent attorneys and infringement courts in demarcating the scope of protection.
In Japan, many oppose the introduction of the e-Bay doctrine which restricts the availability of injunction, arguing that such restriction would contravene the purpose of the law that grants full rights for patents that have passed the examination of Patent Office. However, if it is necessary for patent system to take into consideration the ex-post factors such as relation-specific investments, asymmetric bargaining powers, or opportunistic behaviors, there should be some room in the system that could consider those factors. As the problem lies in the matter of ex-post enforcement of rights, it is more effective to rely on ex-post adjustments by the courts than on prior screening by the patent office. Therefore from the perspective of role division, the flexible approach that limits injunctions after considering those factors by courts ought to be preferred.
Yoshiyuki Tamura is the professor of intellectual property at Hokkaido University. He also serves, inter alia, as the Program Director of the Research Institute for Information Law & Policy at Hokkaido University; Member of the Committee on Intellectual Property Policy, Industrial Structure Council; Managing Director at Japan Association of Industrial Property Law; Member of the Board of the Copyright Law Association of Japan; and Member of the Committee at the Japan Patent Attorneys Association. His research interests include, but are not limited to, copyright law, patent law, trademark law and unfair competition law. Professor Tamura has published more than ten books on various topics of intellectual property (some of them have been published in several editions) and numerous law review articles, which include Rethinking Copyright Institution for the Digital Age, 1 W.I.P.O.J. 63-74 (2009); A theory of the Law and Policy of Intellectual Property: Building a New Framework, 2009 (1)Nordic Journal Of Commercial Law 1-29 (2009); Patent Enforcement in Japan, in The Enforcement of Patents (Reto Hilty & Kung-Chung Liu eds., Kluwer Law International 2011) (co-authored with Prof. Masabumi Suzuki); Intellectual Property Law (5th ed., Yuhikaku 2010) (in Japanese); Intellectual Property Law (Intellectual Property Publishing 2010) (in Chinese); Case Guide for Patent Law (4th ed., Yuhikaku 2012) (in Japanese); Unfair Competition Law (2d ed., Yuhikaku 2003) (in Japanese); Copyright Law (2d ed., Yuhikaku 2001) (in Japanese); Trademark Law (2d ed., Kobundoh 2003) (in Japanese). Besides, he is also a frequent speaker at various international conferences all over the world and contributes to the ongoing debates concerning current debates on intellectual property law and policy.
The event is by invitation only.
Last updated on 16 May 2018 .