Episode 5

Continuing from Episode 4, we will explain the protection of intellectual property rights under various laws.
Software (computer program) algorithms are protected by patent law, and algorithms are represented in flowcharts. When exercising rights regarding a program invention, the invention must be compared with the subject invention according to the flowchart, and the algorithm of the subject invention must be analyzed. As a result of the analysis, even if the right holder determines that the right has been infringed, in actual court, the technical scope of a patented invention (Article 70 of the Patent Act) may be interpreted more narrowly or more broadly than the scope of the claims. These correspond to judicial precedents 1 and 2 of "Technical Scope of Patented Inventions and Their Interpretation" in [Reference Materials], respectively.
Images displayed by programs are now protected by the Design Act revised in 2019 (enforced on April 1, 2020). The comparison of the designs in the images is self-explanatory. However, when exercising design rights, even if the right holder determines that there are similarities, it does not necessarily mean that the court will determine that they are similar.
If the same intellectual property right is protected under multiple laws, even if one is unsuccessful, it may be protected under other laws.

Episode 4

As explained in [Characteristics of our Firm], intellectual property rights are protected by various laws.
Among these, copyright is such that “the enjoyment and exercise of the right does not require any form of performance” (Article 5, Paragraph 2 of the Berne Convention). Japan is a member of the Berne Union, and “if there is a separate provision in a treaty regarding the rights of authors and rights adjacent thereto, the provisions shall apply” (Article 5 of the Copyright Act). Copyrights are granted at the time a copyrighted work is created, without the need for any examination or registration procedures (non-formal principle). In other words, copyright is automatically granted at the time of creation, and the author can exercise the right. This does not apply even if someone else creates a similar work. However, in order to exercise copyright, you must prove that you are the author (Article 2, Paragraph 1, Items 1 and 2 of the Copyright Act).
In the United States, the “formalism” system, which required registration with a government agency in order to obtain a copyright, had been maintained until recent years, but it was finally concluded in 1989 with the Berne Convention that led to a shift to a “formalism system”. Did. Furthermore, Japan concluded the Berne Convention in 1899.
On the other hand, for industrial property rights (patents, utility models, designs, trademarks), registration at the Patent Office is a requirement for the rights to be granted (Article 66, Paragraph 1 of the Patent Law, Article 14, Paragraph 1 of the Utility Model Law, (Article 20, Paragraph 1, Trademark Law, Article 18, Paragraph 1). For this reason, even if you create an idea, if someone else files an application with similar content and obtains the rights, you will not be able to implement your idea (first-to-file system). In that sense, industrial property rights are first come, first served. To exercise industrial property rights, you can prove that you are the right holder by registering at the Patent Office.
In the United States, the “first to invent” system, which grants patent rights to the first person to invent something, has been maintained until recent years, but in 2013, the Patent Law Amendment Act was finally enacted and the system shifted to the “first to file” system.
To obtain industrial property rights, there are application and examination fees, registration fees, and if you request an agent to file the application, you will incur those fees. Even if you file a worthless application and obtain the rights, if you do not exercise the rights, you will end up wasting your money. In this sense, it is essential to apply for industrial property rights “carefully and promptly.”

Episode 3

In Japan, after filing a patent application (Article 36 of the Patent Act) and requesting examination (Article 48-2 to 4 of the same Act), the rate of registration being granted at the first notification (the rate of registration being achieved immediately without notification of reasons for refusal) is 14.3% (January to December 2022) (https://www.jpo.go.jp/toppage/pph-portal-j/statistics.html). In other words, more than 85% of applications will receive a notice of reasons for refusal.
A notice of reasons for refusal (Article 50 of the Act) is a notification that the requirements of Article 29, Article 29-2, Article 36, etc. of the Act are not met. Of these, violations of Article 36 of the same law are due to incomplete descriptions and the incompetence of the filing agent. In other words, it is an embarrassing reason for rejection for the agent.
If the patent office with which your company does business frequently receives notices of reasons for refusal for violation of Article 36 of the same law, it should be determined that the patent office has low ability as an application agent.