Episode 21

When a company formulates a brand strategy, the trade name and trademark are at the heart of it.
A company's name is its trade name (Article 6, Paragraph 1 of the Companies Act).
A trademark is a character, figure, symbol, etc. that is used in connection with goods or services (Article 2, Paragraph 1 of the Trademark Act).
Building a valuable brand is not something that can be done overnight, but requires constant effort over a long period of time. Here are some examples that show the importance of trade names and trademarks in brand strategies.
・Case 1 (Trade name): Renown was once a major apparel company with the highest sales in Japan, but went bankrupt in 2020. Oggi International took over its main business and changed the company name to "Renown."
・Case 2 (Trademark): Japan Airlines' symbol mark is a crane and circle and has been used for a long time. In 2002, when the company merged with Japan Air System, it switched to a new design and temporarily disappeared. However, after the company went bankrupt in January 2010, Kazuo Inamori (Chairman of Kyocera), who was entrusted with restructuring the company, brought back the crane and circle with the intention of returning to the company's roots.
・Case 3 (Trademark): DUNLOP is a rubber and tire brand that originated in the UK. In Japan, Sumitomo Rubber Industries holds the trademark rights. Sumitomo Rubber Industries announced that it would acquire the DUNLOP trademark rights for four-wheel tires in Europe, North America, and Oceania from Goodyear for 526 million US dollars (82.6 billion yen). With the acquisition of this trademark right, Sumitomo Rubber Industries will be able to develop its tire business under the DUNLOP brand globally, except for some regions and products.
・Case 4 (Trademark): In Scotland, there is a single malt whiskey named after a distillery. Suntory's whiskey "Yamazaki" is the first domestically produced single malt whiskey made only from malt whiskey from the company's Yamazaki distillery. Because this name is a general surname, no trademark was applied for when it was first released. The application was filed in 1994, after the company had already built up a track record of sales. After a trial on the decision to reject the application, the trademark was granted registration in 1999 under Article 3, Paragraph 2 of the Trademark Law (acquisition of distinctiveness through use). It was important to register the product name bearing the distillery's name as a trademark in order to assert the individuality of single malt whisky and to establish a brand image.
In recent years, there have been cases where large, long-established companies have changed their names to new names consisting of just a few letters of the alphabet. In such cases, people may not know what the company is by looking at the new name, but may recognize the company by looking at the old one. Some of these companies have even aired extensive television commercials with their new names.
There is a famous book called "The Fall of Advertising & the Rise of PR" (co-authored by Al Ries and Laura Ries, 2002). In it, they point out that "the fundamental problem is the issue of credibility in advertising. No matter how creative the work is, no matter how appropriate the medium, advertising will run into the wall of a lack of credibility". They further point out that "as far as brand building is concerned, advertising has become obsolete. Now it is the information disseminated by the media that builds brands".

Episode 20

In recent years, the number of AI-related patent applications has increased, and the rate of patent grants has also risen (https://www.jpo.go.jp/system/patent/gaiyo/sesaku/ai/document/ai_shutsugan_chosa/hokoku.pdf).
The Japan Patent Office has published a total of 25 AI-related cases in Annexes A and B of the Patent and Utility Model Examination Handbook (https://www.jpo.go.jp/system/laws/rule/guideline/patent/document/ai_jirei/jirei.pdf).
By the way, AI-related inventions are one type of software-related invention. In order to prepare a specification that can be used to effectively enforce your rights, you must first accurately grasp the technical content of the invention and prepare it in accordance with the basics of preparing specifications for software-related inventions (see "Historical Background of the 'Examination Standards for Software'" stored in the reference materials (https://sophia-ip.jp/en/reference-materials/)).
If you enforce your rights with an insufficiently written specification, the patent will be dismissed in a patent infringement lawsuit on the grounds that it is invalid (Article 104-3, Paragraph 1 of the Patent Act). It is particularly important to meet the support requirement (Article 36, Paragraph 6, Item 1 of the same Act).
Regarding this support requirement, the Intellectual Property High Court has ruled that "Whether the statement of the claims meets the support requirement of the specification should be determined by comparing the statement of the claims with the statement of the detailed description of the invention, and by examining whether the invention stated in the claims is the invention stated in the detailed description of the invention, and whether it is within a scope that a person skilled in the art would recognize from the statement of the detailed description of the invention that the problem of the invention can be solved, and whether it is within a scope that a person skilled in the art would recognize that the problem of the invention can be solved in light of the common general technical knowledge at the time of filing, even without that statement or suggestion. It is reasonable to interpret that the burden of proof for the existence of the support requirement of the specification lies with the patent applicant or patent holder." (Intellectual Property High Court Grand Panel Decision, Case No. 10042 of 2005 (Gyo-Ke), November 11, 2005).
In the case of software-related inventions, what is protected by patent law is the software algorithm (https://sophia-ip.jp/en/features-of-our-office/). The algorithm is expressed as a flowchart.
However, some patent applications for software-related inventions do not include a flowchart. This is likely because the writer of the specification does not understand the technical content of the invention or does not understand the basics of writing specifications for software-related inventions.
Since what is protected by patent law is the software algorithm, a flowchart should be selected as the [selected figures] in the abstract. However, there are many patent applications in which drawings other than a flowchart are selected.
By checking whether a flowchart is selected as the [selected figures] in the abstract, you can easily distinguish the quality of a patent specification for software-related inventions, including AI-related inventions.

Episode 19

A request for examination of a patent application can be made within three years from the filing date (Patent Law, Article 48-3, Paragraph 1), and if no request for examination is made within that period, the patent application is deemed to be withdrawn (Patent Law, Article 4, Paragraph 4).
When one year and six months have passed since the filing date, the patent application is published (Patent Law, Article 64, Paragraph 1), so even if an application with the same content as the withdrawn patent application is filed, it will fall under Article 29, Paragraph 1 (novelty) of the same law and will be rejected (Patent Law, Article 49, Paragraph 2).
The examination request rate for patent applications is 74.8% (2020) (https://www.jpo.go.jp/resources/report/nenji/2024/document/index/020202.pdf). In other words, one in four patent applications will not be granted rights, and will only have the effect of excluding later applications (Patent Law, Article 29, Paragraph 1 or Article 29, Paragraph 2) after the application is published.
Even if it is undecided at the time of filing whether or not to request examination, and the need to obtain rights arises three years after filing, the opportunity to obtain rights has already been lost.
In contrast, since utility models are registered without a substantive examination (Utility Model Act, Article 14, Paragraph 2), the right cannot be exercised until a utility model technical evaluation report has been presented and a warning has been issued (Utility Model Act, Article 29-2). A request for a utility model technical evaluation can be made even after the utility model right has expired (Utility Model Act, Article 12, Paragraph 2).
A utility model right holder can file a patent application based on the utility model registration within three years from the date of filing the utility model registration (Patent Act, Article 46-2, Paragraph 1).
In light of the above, if it is undecided at the time of filing whether or not to request examination, if you file a utility model registration application for the time being, and if the need to obtain rights arises within three years from the date of filing, you can file a patent application based on the utility model registration, and if not, maintain the utility model registration, then you can request a utility model technical evaluation and exercise your rights even if the need to obtain rights arises three years after filing.
By utilizing the patent application system based on utility model registration, you can reduce the costs of filing and obtaining rights, while also being able to obtain rights for the contents of your application as necessary.