Intellectual Property Right

Intellectual Property Right

Intellectual Property Right We will provide consultations on domestic/international legal matters regarding patent rights, trademark rights, utility model rights, copy rights, design rights, license contracts, program copy rights, software, and violation of intellectual property rights.

Patent Rights

  1. Legal consultations and documentations of contracts and other documents on patent rights
  2. Negotiations on patent rights
  3. Litigations of violation of patent rights
  4. Proceedings of examinations and judgments of the Patent Agency

Remedies of Violation of Patent Rights

A patent right is an exclusive right to exclusively be able to dominantly use inventions granted patent rights (patented inventions) in the course of trade. Patent rights are granted to inventions satisfying requirements, such as novelty, inventive step, utility possibilities in industrial purposes. In case of violation, by filing following litigations etc., they are saved;-

  1. litigations of injunction demand
  2. litigations of claim for damage
  3. litigations of demand of measures for confidence recovery
  4. litigations of claim for unjust enrichment
  1. litigations of injunction demand is to demand right violators to terminate and prevent from the violating acts. Disposal of objects composing violating acts or scrapping of facilities can be demanded.
  2. litigations of claim for damage is to claim for a compensation of monetary damage due to violation of patent rights. In a special rule of damage claim under the Civil Law, provisions of presumption of damage amounts and presumption of negligence are prescribed.
  3. litigations of demand of measures for confidence recovery is to demand formal apologies in advertisements of newspapers etc. for confidence recovery in case confidence or reputation of patent products are harmed by violating products in inferiority quality etc.
  4. litigations of demand of claim for unjust enrichment is useful in case of claim for demand is not possible to file because the counterparty’s negligence or fault of in violation of patent rights is not admitted, and to demand interests obtained by the counterparty by such violating acts. The violating party can be laid a criminal charge such as imprisonment of less than 10 years or fine less than JPY 10,000,000.

Domestic/International Patents

Patent rights are granted by each country and patent rights issued in Japan are not valid in other countries.
Therefore, in order to exclusively sell products in other countries protected by Japanese patent rights or to give licenses to overseas branches/subsidiaries, new patent rights have to be obtained in foreign countries.

To file an application for a patent right overseas, you should;

(1) file applications in each country, or

(2) file applications under the Patent Cooperation Treaty (PCT).

In case of (1), if you file applications in several foreign countries within one year from the date of first application in overseas country (the “First Application Date”) in accordance with the Paris Convention in relation to protection of industrial property rights, the First Application Date will be applied to the other countries as the date of application.

On the other hand, in case of (2), if you file an application to the Japanese Patent Agency, it has a same effect as filing to all member countries of the PCT. This purpose is to resolve delays in examinations due to duplicated examinations and to relief liabilities of applicants and patent agencies in each country.

Trademark Rights

  1. Legal consultations and documentations of contracts or other documents relating to trademark rights
  2. Negotiations on contracts of trademark rights
  3. Litigations on violation of trademark rights
  4. Proceedings of examinations and judgments of the Patent Agency in relation to trademark rights

What is the Trademark Rights?

A trademark is a mark used to products/services by business operators to distinct their products/services from others. Applications of registrations are filed by designating products/services using trademarks.

Trademarks subject to registrations are characters, graphics, marks, solid figures or these combinations or colors. Since solid figures became subjected by the amendment of the law in 1996, for example, dolls of Mr. Colonel Sanders of KFC, Peko-chan dolls of FUJIYA and the statue of Mr. Shigenobu Okuma of the Waseda University of Japan are registered as trademark in Japan.

The effective period is for 10 years and renewal is also available. However, if the trademarks are not used for more than 3 years, the rights may be annulled by examinations.

The trademark rights system functions to keep credibility of business of corporations as well as to protect interests of consumers by protecting trademarks. Once trademark is registered, the exclusive right to use the trademark right to the designated commercial products/services and the prohibitive right to prohibit others to use similar trademarks to similar commercial products/services are also granted.

Remedies of Violation of Trademark Rights

There are exclusive rights and prohibitive rights in the trademark rights. Therefore, the following acts violate trademark rights;-

  1. acts to use others’ registered trademarks to designated commercial products/services without legitimate rights and their preparation acts,
  2. acts to use others’ registered trademarks within the extent of similarity without legitimate rights and their preparation acts, and
  3. acts to use registered defensive marks and its preparation acts.

Against these violating acts, trademark rights can be saved by filing 1. litigations of injunction demand, 2. litigations of claim for damage, and 3. litigations of demand of claim for unjust enrichment;-

  1. litigations of injunction demand is to demand right violators to terminate and prevent from the violating acts. Disposal of objects composing violating acts or scrapping of facilities can be demanded.
  2. litigations of claim for damage is to claim for a compensation of monetary damage due to violation of trademark rights. In a special rule of damage claim under the Civil Law, provisions of presumption of damage amounts and presumption of negligence are prescribed.
  3. litigations of demand of claim for unjust enrichment is useful in case of claim for demand is not possible to file because the counterparty’s negligence or fault of in violation of trademark rights is not admitted, and to demand interests obtained by the counterparty by such violating acts. The violating party can be laid a criminal charge such as imprisonment of less than 10 years or fine less than JPY 10,000,000.

Domestic/International Trademarks

Trademark rights are granted by each country and patent rights granted in Japan are not valid in other countries. Therefore, in order to obtain trademark rights overseas, new applications should be filed in each country.

By the Madrid Protocol executed (including Japan) in 1999, it became possible to obtain trademarks rights in several countries by one registration by one application without separate applications. Seventy-four countries including U.K., Germany and France etc. are the members of the protocol (as of August 2007 including potential countries). By this protocol, the application cost became low since no application fees need not to be paid in each country. Preservation of trademark rights is also expanding.

Utility Model Rights

  1. Legal consultations and documentations of contracts or other documents relating to the utility model rights
  2. Negotiations on contracts of the utility model rights
  3. Litigations on violation of the utility model rights
  4. Consultation and advices in relation to the utility model rights
  5. Negotiations and other proceedings in relation to the utility model rights

What is the Utility Model Rights?

Utility model rights is a kind of intellectual property rights and exclusive rights to be able to dominantly use devices registered as utility models in the course of trade. “Devices” means creation of technical ideas using natural laws as well as inventions under protection the Patent Act. However, devices under protection as utility model rights are limited to figures, structure or their combinations of the products and advanceness of creation is not required, which is different from inventions under the Patent Act. Because no-examination policy is adopted (different from patent rights), once an application is filed, it will be registered as utility model rights, excluding the cases dismissed by no description of requirements.

The holders of utility model rights are able to setup others exclusive licenses or grant ordinary licenses as well as holding rights to exclusively use registered utility models in the course of trade. The period of rights is for 10 years from the date of application.

Remedies of Violation of Utility Model Rights

In order that holders of utility model rights execute their rights against violators, applications for issuance of evaluation documents of utility models have to be firstly filed to examiners of the Patent Office, and warn to violators by presenting them. Without these actions, any litigation will be dismissed.

Once rights holders warn in accordance with evaluation documents, they are able to file following litigations against violators to save their rights;-

  1. litigations of injunction demand
  2. litigations of claim for damage
  3. litigations of demand of measures for confidence recovery
  4. litigations of claim for unjust enrichment, etc.
  1. litigations of injunction demand is to demand right violators to terminate and prevent from the violating acts. Disposal of objects composing violating acts or scrapping of facilities can be demanded.
  2. litigations of claim for damage is to claim for a compensation of monetary damage due to violation of utility model rights. In a special rule of damage claim under the Civil Law, provisions of presumption of damage amounts and presumption of negligence are prescribed.
  3. litigations of demand of measures for confidence recovery is to demand formal apologies in advertisements of newspapers etc. for confidence recovery in case confidence or reputation of patent products are harmed by violating products in inferiority quality etc.
  4. litigations of demand of claim for unjust enrichment is useful in case of claim for demand is not possible to file because the counterparty’s negligence or fault of in violation of utility model rights is not admitted, and to demand interests obtained by the counterparty by such violating acts. The violating party can be laid a criminal charge such as imprisonment of less than 5 years or fine less than JPY 5,000,000.

Copyrights

  1. Legal consultations and documentations of contracts or other documents relating to copyrights
  2. Negotiations on contracts of copyrights
  3. Litigations on violation of copyrights
  4. Consultation and advices in relation to copyrights
  5. Negotiations and other proceedings in relation to copyrights
  6. Litigations on copyrights of computer programs and legal consultations
  7. Litigations on copyrights of software and legal consultations

What is the Copyrights?

A Copyright is an exclusive right to exclusively use copyrighted works and gain interests.

Copyright works mean works expressing thought or emotion in creative methods and in the extent of creative writing, academic works, art or music. For example, novels, dramas, lucubration, lectures and other language writing works, music works, dance, pantomime works, art works, architectural works, graphic works, film works, photograph works, program works, etc. are subject to rights under the Copyright Act. Rights to make a work public, rights to determine the indication of an author’s name, rights to maintain integrity are also granted as author’s moral right.

Copyrights arise simultaneously at the time of creation and no examination such as for patent rights is necessary for granting and no method execution is required.

The protection period of copyrights is principally for 50 years from the time of creation until the death of authors.

Remedies of Violation of Copyrights

Authors have “author’s moral rights” and “works property rights”. In “author’s moral rights”, there are;-

  • rights to make a work public to determine to make works public or not and such methods,
  • rights to determine the indication of an author’s name to determine to make authors’ names public of not and such methods, and
  • rights to maintain integrity to prevent from changing contents or titles of works without authors’ consents.

A “works property right” is a divisible right that will be evidences to have stop using works without authors’ consents or to demand for damage. In divisible rights, there are reproduction rights, rights of performance, rights of public transmission, rights of recitation, rights of exhibition, distribution rights, transfer rights, rights of rental, translation/adaptation rights and original authors’ rights in relation to use of secondary works, etc.

Against violation of these rights, by filing following litigations they can be saved;-

  1. litigations of injunction demand
  2. litigations of claim for damage
  3. litigations of claim for unjust enrichment, etc.
  4. litigations of claim for measures to restore honors
  1. litigations of injunction demand is to demand right violators to terminate and prevent from the violating acts. Disposal of objects composing violating acts or scrapping of facilities can be demanded.
  2. litigations of claim for damage is to claim for a compensation of monetary damage due to violation of copyrights. In a special rule of damage claim under the Civil Law, provisions of presumption of damage amounts and presumption of negligence are prescribed.
  3. litigations of demand of claim for unjust enrichment is useful in case of claim for demand is not possible to file because the counterparty’s negligence or fault in violation of copyrights is not admitted, and to demand interest obtained by the counterparty by such violating acts.
  4. litigations of demand of measures for restore honors is to demand formal apologies in advertisements of newspapers etc. in order to recover honor or reputation) of the writers in case copyrights are violated. The violating party can be laid a criminal charge such as imprisonment of less than 10 years or fine less than JPY 10,000,000.

Domestic/International Copyrights

Under the Patent Act of Japan, following works are protected;-

  1. works firstly issued in Japan even though their authors are foreigners,
  2. works of citizens of allied countries of the Berne Convention and firstly issued in such countries, and
  3. works of citizens of countries executing the Universal Copyright Convention and firstly issued in such countries.

The Berne Convention is a treaty allied by most of the countries in the world and Japan joined in 1899. Under the treaty no method is required to establish copyrights and it is characterized by national treatment protecting foreigners’ works equal to its citizens and protecting works created before execution of the treaty in principal.

On the other hand, the Universal Copyright Convention is a treaty established for bridging with countries in North and South Americas not allied with the Berne Convention, in which Japan joined in 1956. This treaty is characterized by national treatment, non-retroactivity and indication of © and protects even works created in allied countries of no-method principal as they are registered in allied countries of method principal if they appropriately indicate © marks, authors’ names and date of publication

Design Rights

  1. Legal consultations and documentations of contracts or other documents relating to design rights
  2. Negotiations on contracts of design rights
  3. Litigations of design rights
  4. Litigation of injunction demand
  5. Litigation of claim for damage

What is the Design Rights?

Design means figure of products, patterns/colors, or these combinations and objects rousing a sense of beauty through a visual sense, and a design right is an exclusive rights to be able to dominantly use designs registered as utility models in the course of trade.

Requisites for registration is;-

to rouse a sense of beauty through a visual sense,

to satisfy industrial applicability,

a design not ever existing (novelty),

it is not easy to create (creative difficulty), and

not similar to all or a part of already applied designs.

not accompany with the following grounds of unregistrability, and

  • to be possibly offensive to public order and morals,
  • to possibly arise confusion with products related to others businesses
  • the structures composed of only figures essential keep the products’ function,

in case there are a number of same or similar designs already applied, to apply earlier than others, etc.

Designed satisfied these requirements are allowed to register establishment of design rights by payment of registration fee and a design bulletin is issued.

The effective period of design rights is 20 years at the longest from the date of registration (as for applications before March 31, 2007, it is 15 years at the longest from the date of registration).

Remedies of Violation of Design Rights

In case a design right is violated, such right is saved by filing following litigations;-

  1. litigations of injunction demand is to demand right violators to terminate and prevent from the violating acts. Disposal of objects composing violating acts or scrapping of facilities can be demanded.
  2. litigations of claim for damage is to claim for a compensation of monetary damage due to violation of design rights. In a special rule of damage claim under the Civil Law, provisions of presumption of damage amounts and presumption of negligence are prescribed.
  3. litigations of demand of measures for confidence recovery is to demand formal apologies in advertisements of newspapers etc. for confidence recovery in case confidence or reputation of patent products are harmed by violating products in inferiority quality etc.
  4. litigations of demand of claim for unjust enrichment is useful in case of claim for demand is not possible to file because the counterparty’s negligence or fault of in violation of design rights is not admitted, and to demand interests obtained by the counterparty by such violating acts. The violating party can be laid a criminal charge such as imprisonment of less than 10 years or fine less than JPY 10,000,000.

License Contracts

Legal consultations and documentations of contracts or other documents relating to domestic/international license contracts, and legal consultations and representations of other violation of intellectual property rights.