A COMPARATIVE STUDY OF THE PHILIPPINE AND THE · PDF fileTHE PHILIPPINE AND THE JAPAN...

A COMPARATIVE STUDY OF THE PHILIPPINE AND THE

JAPAN INTELLECTUAL PROPERTY LAWS

FINAL REPORT JPO FUND RESEARCH FELLOWSHIP

01 November 2001 – 31 March 2002

BY: Atty. Amelia B. Alado Philippines

ACKNOWLEDGEMENT Being the first Filipino recipient of this JPO Fund long-term research fellowship, I felt obligated to come up with an impressive report. But this is not the reason for my hundred (100) pages or so paper. When I was contemplating and came up with my theme of research, colleagues suggested narrowing down my topic. It is comprehensive and the duration of my fellowship might not be enough to cover the complex subject matter. Nevertheless, I proceeded with my task and was able to come up with this report. This report is an account of what I have studied, learned, and observed from various programs, trainings and interviews whilst in Japan. This is a conclusion derived from all these experiences and the author hopes to express her gratitude to innumerable institutions and individuals whom in one way or the other been instrumental for the success of this undertaking. First and foremost, I would like to thank my benefactor, the Japan Patent Office for this fellowship and specifically the International Affairs Division: Yuji Tsuruya-san, Hiroo Takaki-san, Minoru Nitta-san, Ai Nagumo-Hamagishi-san, and Yoshie Urabe-san for the facilitation of this training. Second, experts in their respective JPO Divisions who provided me with additional comprehensive information on IP prosecution: Keiko Shimomura-san, Mitsuo Teramoto-san, Masayuki Miyashita-san, Kimie Ogawa-san, Hiroyuki Ito-san, Hitoshi Amano-san, and Emi Hasegawa-san for my Nihonggo lessons. Thirdly, the receiving institution of Asia Pacific Industrial Property Center (APIC) where I received most of my training and was provided a big space and implements I needed: starting with the kind Director General Shingo Tsuji-san, Masakazu Yokoyama-san, Nobuhisa Kitazawa-san, Sachiko Notake-san, Kazumi Kinoshita-san, Aiko Imayama-san, Seiko Miyazaki-san, Shoji Takizawa-san, Nobuko Tarui-san, Takashi Tanaka-san, Yuichi Shibuya-san, Rayna Rusenko-san, Kazuyuki Miura-san, Kimiko Yamanoi-san, Akiko Ohnosawa-san, Seiichi Takahashi-san, Masaki Takezawa-san, Yukio Shinada-san, Morio Kubomichi-san, and Munekazu Sugihara-san. Fourthly, the learned authorities in IPR, Dr. Shigeaki Mitsuda who provided most of the legal guidance and Professor Ryu Takabayashi who was responsible for imparting to me his judicial experience and knowledge on the judicial system of Japan. Fifthly, others like Shigeo Tashiro-san and Minako Mizuno-san. On the Philippine side I would like to convey my gratitude to the Director General of our Intellectual Property Office, DG Emma Francisco, Director Leny Raz, Atty. Gladys Vilchez and most especially my superior Justice Marina L. Buzon Of the Court of Appeals for sanctioning me to go on this fellowship.

TABLE OF CONTENTS

Chapter I Philippines I.1 History-----------------------------------------------------------------1 – 2 I.2 General Facts and Figures-------------------------------------------2 – 3 Chapter II Structure of the Government II.1 The Executive and IPR----------------------------------------------3 – 4 II.2 The Legislative and IPR---------------------------------------------4 – 5 II.3 The Judiciary and IPR ---------------------------------------------- 5 – 6 Chapter III The IP System The Intellectual Property Office (IPO) -------------------------- 6 – 13 Chapter IV The Intellectual Property (IP) Code IV.1 The Patent Application and Right--------------------------------14 –24 IV.2 The Utility Model and Industrial Design Applications

and Rights ---------------------------------------------------------- 25 –30 IV.3 The Trademark Application and Right -------------------------31 – 37 IV.4 Copyright and Related Rights -----------------------------------38 – 40 IV.5 Infringement and Remedies ------------------------------------- 40 – 45 Chapter V Japan V.1 History ------------------------------------------------------------- 46 – 47 V.2 General Facts and Figures --------------------------------------- 47 – 48 Chapter VI Structure of the Government VI.1 The Legislature and IPR ----------------------------------------- 48 – 49 VI.2 The Cabinet and IPR --------------------------------------------- 49 – 50 VI.3 The Judiciary and IPR --------------------------------------------50 – 51 Chapter VII The IP System The Japan Patent Office (JPO) --------------------------------- 51 – 57 Chapter VIII The Intellectual Property Laws VIII.1 The Patent Registration and Right ----------------------------- 58 – 66 VIII.2 The Utility Model Registration and Right -------------------- 67 – 69 VIII.3 The Design Registration and Right ---------------------------- 70 – 74 VIII.4 The Trademark Registration and Right ----------------------- 75 – 80 VIII.5 The Copyright and Related Rights -----------------------------81 – 85 VIII.6 Infringement and Remedies ------------------------------------ 85 – 87 Chapter IX Addendum IX.1 Patent -------------------------------------------------------------- 88 – 90 IX.2 Utility Model ----------------------------------------------------- 90 – 91

IX.3 Design ------------------------------------------------------------91 – 92 IX.4 Marks -------------------------------------------------------------93 – 94 IX.5 Copyrights -------------------------------------------------------94 – 95 IX.6 Remedies -------------------------------------------------------- 95 Chapter X References X.1 Websites --------------------------------------------------------- 96 X.2 Visits ------------------------------------------------------------- 97 X.3 Literature -------------------------------------------------------- 97 – 99 X.4 Interviews/Consultations -------------------------------------- 99 –100

1

Chapter I PHILIPPINES

I.1 HISTORY – PHILIPPINES What is known today as Philippines is a country named after Crown Prince Phillip II of Spain when Ferdinand Magellan discovered it in 1521. The first inhabitants of the Philippines dates back at least 300,000 years ago when the sea level was low and most of the Asian countries were connected to the Asian mainland by land bridges. Following immigration from the neighboring areas, Negritos and Aetas arrived from Borneo and Sumatra, Malayan from the South, and the Chinese who came as traders around the 9th century AD. The Arabs arrived around the 14th century and settled in the South of the Philippines, which is largely Muslim area up to now. When Ferdinand Magellan first landed in Mactan Island in Cebu around the 16th century, he was resisted by a local chief named Lapu-Lapu and eventually led to Magellan’s demise. But this did not halt the subjugation of the country under the Spanish rule for 400 years. It ushered for the conversion to Roman Catholicism of the country. Although there is still a very small number of the primitive animalism, a diminutive percentage of Protestant, Islam, Buddhism and others, Philippines remain predominantly catholic and is the only country in Asia with the biggest population of Catholics. This long period of occupation was marred by numerous uprisings and continued even after the defeat of Spain against America. Spain ceded the islands to the United States under the terms of the Treaty of Paris on December 10, 1898.

The war of resistance continued under the American rule. With the capture of the revolutionary leader Emilio Aguinaldo, the resistance weakened. And the Americans focussed on developing a democratic government and a sound legal system.

The Philippines was in transition to be fully independent when World War II intervened. This placed the country under Japanese control for over a couple of years. A year following the defeat of Japan after the atomic bombs were dropped, on July 4, 1946, the Philippines became the independent Republic of the Philippines, in accordance with the terms of the Tydings-McDuffie Act.

In 1965, Ferdinand Marcos was elected president and ruled as a dictator for 20 years. In 1972 he declared martial law that lasted for ten years. In 1983, a prominent opposition leader Benigno Aquino was assassinated at the tarmac on his return from America. The assassination sparked more massive anti-government protests and ushered for his widow to run against Marcos in a snap election in 1986, which was orchestrated by Marcos to appease and show the public that he still has the confidence of the people.

2

With the opposition parties rallying behind Aquino, the one of its kind bloodless People Power Revolution resulted in Marcos fleeing the country.

Aquino tried to re-establish the country especially by changing the Constitution. A Constitutional Convention was formed and the Filipinos ratified the current 1987 Constitution. She ruled the country until 1992 when Fidel Ramos, her Defense Secretary and is a key player during the first people revolution, succeeded the presidency.

Ramos concentrated on revitalizing the economy, attracting foreign investment and cleansed corruption. He was in a way successful until his single term, especially provided in the Constitution, ended in 1998. Joseph Estrada who was his Vice-President and a former movie star succeeded him. But Estrada’s presidency was marred by corruption and was short-lived after he was toppled in a second people power revolt in 2001.

By 19 January 2001, the Republic of the Philippines has her second woman president in the person of Gloria Macapagal Arroyo who was ushered the same way as the first one in a bloodless people power.

I.2 GENERAL FACTS AND FIGURES

Full country name: Republic of the Philippines

Map references: Southeast Asia

Area: 299,000 sq. km (116,610-sq. mi.)

Coastline: 36,289 km

Population: 78.4 million

Capital city: Manila (pop: 10 million)

People: Predominantly descendants of Malays, Chinese and Muslim minorities

and a number of mestizos (Filipino-Spanish or Filipino-Americans)

Language: Pilipino (Tagalog) and English plus numerous widely spoken

indigenous languages, some Spanish

Religion: 82% Roman Catholic, 9% Protestant, 5% Muslim, 3% Buddhist

Government: Republic

3

President: Gloria Macapagal-Arroyo

GDP: US$75.2 billion

Major products/industries: Electronic and electrical products, clothing,

Agriculture, aquaculture

Major trading partners: USA, Japan, Taiwan

Chapter II. STRUCTURE OF THE GOVERNMENT The first Constitution of the Philippines is referred to as the 1935 Constitution. The second one is the 1978 Constitution and the third, which is also the current, is the 1987 Constitution of the Philippines. There are three branches of the government namely: the Executive, the Legislative and the Judiciary. These three branches are independent of each other but are also interdependent based on the system of checks and balances.

II.1. THE EXECUTIVE AND IPR

The President, the Vice-President and other local officials, are elected directly by the people; and the Executive Secretaries and officials, appointed by the President composed the Executive branch. The Constitution vests the executive power to the President, thus he has the power to control the departments, bureaus and offices and ensure that the laws are faithfully executed.

The Office of the President is comprised of the executive secretary the press secretary, the cabinet secretaries, and the national security adviser. The following departments are headed by its respective Secretary: agrarian reform; agriculture; budget and management; economic planning; education, culture, and sports; environment and natural resources; finance; foreign affairs; health; interior and local governments; justice; labor and employment; national defense; public works and highways; science and technology; social welfare and development; tourism; trade and industry; and transportation and communications.

The Department of Trade and Industry (DTI) is the department tasked with the enforcement of trade laws. The Intellectual Property Office (IPO) used to be one of the attached agencies of the DTI until 8 October 2001 when the IPO was transferred to the Office of the President by virtue of Executive Order No. 9. This continuing authority of the President to reorganize the administrative structure of

4

its Office is by virtue of the “Administrative Code of 1987”. However, the Trade and Industry Secretary still exercises appellate jurisdiction on decisions of the Director General (DG) of the IPO in the exercise of the latter’s exclusive appellate jurisdiction concerning decisions of the Director of Documentation, Information and Technology Transfer Bureau. The Secretary has also appellate jurisdiction on decisions of DG in the exercise of original jurisdiction containing terms of a license of the author’s right to public performance and other communication of his work.

The Secretary of Trade and Industry exercises concurrent jurisdiction with the Bureau of Legal Affairs (of the Intellectual Property Office) and the Regional Trial Courts in cases of infringement of industrial property rights, unfair competition and false designation of origin. The Bureau of Legal Affairs in turn, may grant provisional remedies in accordance with the Rules of Court and Administrative Penalties.

In addition, the Bureau of Trade Regulation and Consumer Protection (BTRCP), one of the 20 line bureaus of the Department of Trade and Industry has the following functions: formulate and monitor the implementation of programs for the effective enforcement of laws, correct interpretation and adoption of policies on monopolies and restraint of trade, mislabeling, product misrepresentation and other unfair trade practices; monitor the registration of business names and the licensing and accreditation of establishments and practitioners; protect and safeguard the interest of customers and the public, particularly the health and safety implications of intrinsic product features, product representation, and the like; and establish the basis for evaluating consumer complaints and product utility failures.

II.2. THE LEGISLATIVE AND IPR

The legislative branch is a bicameral Congress composed of 24 Senators who make up the Senate and 250 Congressmen that make up the House of Representatives. Qualified voters of the Philippines elect the senators at large and the 200 Congressmen are elected from legislative districts apportioned among the provinces and cities.

The other 50 are party-list representatives selected or elected from the marginalized sectors such as the labor, peasant, urban poor, indigenous cultural communities, women, youth, and such other sectors as may be provided by law, except the religious sector.

The Congress has the main function of making laws and may conduct inquiries in aid of legislation. All appropriation bills originate in the House, but the president is given a line-item veto over them.

5

The Senate and the House have different committees each chaired by several members working in close contact with their counterpart administrative department to facilitate competent formulation of policies and effective legislation. The committee on communication and information technology for instance worked with the trade and industry, the judiciary, the department of finance, and private sector for the passage of Republic Act 8792 also known as the “Electronic Commerce Act” of the Philippines.

The Congress may also conduct inquiry in a hearing type atmosphere where they may summon witnesses or experts to testify to aid the legislature in formulating proper laws.

The Senate ratifies treaties by a two-thirds vote. On 5 February 2001, the Philippine Senate passed Senate Resolution No. 74 ratifying the Patent Cooperation Treaty (PCT).

II.3. THE JUDICIARY AND IPR

The Judicial Branch is composed of a 15-member Supreme Court headed by a Chief Justice and other lower courts established by law. The judicial power, which is the power to interpret the laws, are vested by the Constitution in the Supreme Court and in such lower courts established by law.

The Judicial Reorganization Act of 1981 provides for four main levels of courts and several special courts. At the local level are metropolitan trial courts, municipal trial courts, and municipal circuit trial courts. The next level consists of regional trial courts, one for each of the nation's thirteen political regions. Courts at the local level have original jurisdiction over less serious criminal cases while the regional level courts, which also have appellate jurisdiction, hear more serious offenses. In civil cases the total amount of damages determines the jurisdiction of the court. At the national level is the court of appeals located in Manila. The Special courts are Muslim circuit and district courts in Muslim areas, the court of tax appeals, and the Sandiganbayan. The Sandiganbayan or the “people’s court” tries government officers and employees charged with violation of the Anti-Graft and Corrupt Practices Act.

The President upon the recommendation of the Judicial and Philippine Bar Council appoints the justices in the Supreme Court. It has original jurisdiction over cases affecting ambassadors, other public ministers, and consuls, and over petitions for injunctions and writs of habeas corpus; it has appellate jurisdiction over all cases in which the constitutionality of any treaty, law, presidential decree, proclamation, order, or regulation is questioned.

All justices and judges must be a citizen of the Philippines and a member of the Philippine Bar. Membership in the Philippine Bar is automatic for every lawyer who has passed the national bar examination. The qualifications for the

6

justices of the Supreme Court and the Court of Appeals are more stringent than the lower courts.

The Regional Trial Courts exercise concurrent original jurisdiction with DTI and BLA involving intellectual property cases such as infringement. The trial courts may provide not only provisional remedies but also criminal remedies that entails imprisonment. This is the only remedy reserved with the courts that the administrative agencies cannot award in their administrative decisions.

The Court of Appeals exercises appellate jurisdiction over the above-mentioned decisions of the Regional Trial Courts, decisions of the Office of the President on DTI Secretary’s decisions, and decisions of the DG of the IPO.

The Supreme Court exercises appellate jurisdiction from decisions of the Court of Appeals and is the court of last resort.

Chapter III. THE INTELLECTUAL PROPERTY SYSTEM

INTELLECTUAL PROPERTY OFFICE

Intellectual Property protection has not been long acknowledged in the Philippines considering the history of existence of the Patent Office. But the ability of Filipino inventors has been recognized not only in his country but elsewhere. Since the establishment of the first Patent Office in 1947 it was an indication of the State’s receptiveness of the importance of an effective intellectual property system.

It is a basic policy of the State that for the stimulation of intellectual creativity, it is imperative to have a sound intellectual property system. Not only for domestic activities but also to sustain transfer of technology by providing an operative technological transfer arrangements. It is also the aim of the State to promote technology development and efficient use of technology by dissemination of patent information.

With the continuing transformation of world order of economy, it always presents a seemingly insurmountable challenge. With the shift from traditional economy to knowledge based economy, the propagation of IP culture, the uncertainty of the Information Age and the innovative scientific and technological discoveries complicates more an already intricate world intellectual property systems. WIPO and other intellectual property organizations through the various IP related treaties and conventions have been unifying the diverse systems in the world.

The Philippines for its part, to be globally competitive has been trying to keep pace with the change. National laws have been rationalized and legal systems have been harmonized without compromising national interest. The Philippines have been signatories of the following treaties:

7

Berne Convention for the protection of Literary and Artistic Works (since 1951-Administrative Provisions; 1997-Substantive Provisions)

Paris Convention for the Protection of Industrial Property (since 1965)

Convention Establishing the World Intellectual Property Organization (since 1980)

Budapest Treaty on the International Recognition of the Deposit of Microorganisms for Purposes of Patent Procedure (since 1981)

Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (since 1984)

World Trade Organizations Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (since 1995)

Patent Cooperation Treaty (PCT) (2001)

The Senate of the Philippines ratified the PCT on 5 February 2001and was the latest addition to the IP treaties and conventions the Philippines a member with. The PCT became effective on 17 August 2001, three months after the Instrument of Accession was deposited with the WIPO on 17 May 2001.

Although the Philippines has been a member of WIPO since 1995, the recent Intellectual Property Code, also known as Republic Act (R.A.) No. 8293, was only approved on 6 June 1997 and became effective on 1 January 1998, conformably to the WTO-TRIPS Agreement. This is because of extensive deliberations, innumerable consultations with the concerned sectors and careful analyses of other countries’ intellectual property laws to conclude a law that balances the interests of IP owners and the public in general.

The R.A. 8293 is a codification of the intellectual property laws of the Philippines and resulted in the deletion of the following laws:

RA 165 (Patents Law) RA 166 (Trademarks Law) PD 49 (Copyright/Related Rights Law) PD 285 (Textbook reprinting Law) Articles 188 and 189 of the Revised Penal Code (on unlawful competition/infringement)

8

Subsequent to the effectivity of the Code, the following Rules and Regulations were formulated to effectively implement the provisions of the said Code:

Rules and Regulations on Trademarks, Service marks, Tradenames, and Marked or Stamped Containers

Rules and Regulations on Voluntary Licensing

Rules and Regulations on Settlement of Disputes Involving Technology Transfer Payments and the Terms of a License Involving the Author’s Right to Public Performance or Other Communication of His Work

Regulations on Inter Partes Proceedings (Petitions for Cancellation of a Mark, Patent, Utility Model, Industrial Design, Opposition to Registration of a Mark, and Compulsory Licensing)

Rules and Regulations on Administrative Complaints for Violation of Laws Involving Intellectual Property Rights

Rules and Regulations on Utility Models and Industrial Designs

Rules and Regulations on Inventions.

Additionally, other laws related to Intellectual Property are:

Republic Act No. 623, as amended: Act to Regulate the Use of Duly Stamped or Marked Bottles, Boxes, Casks, Kegs, Barrels, and Other Similar Containers.

Act. No. 3740, as amended: Act to Penalize Fraudulent Advertising, Mislabeling or Misbranding of Any Product, Stock, Bond, etc.

Act No. 3815, as amended: Frauds in Commerce and Industry

Act No. 3850, as amended: Philippine Inventors Incentive Act

Act No. 3247, as amended: Act to Prohibit Monopolies and Combination in Restraint of Trade

Presidential Decree No. 881: Powers of the Secretary of Health to Regulate the Labeling Sale and Distribution of Hazardous Substances.

Executive Order No. 60, s. 1993: The Inter-Agency Committee on Intellectual Property Rights

Act No. 3883, as amended: The Business Names Law

R. A. No. 226: Act to Prohibit the Use of Emblem, Official Seal, and Name of the United Nations for Commercial Purposes

R.A. No. 1287: Act Granting Special Privilege to Any Person who Discovers or Invents a New process, Discovery or invention of Any Native Agricultural Raw Product into a Product which will Stabilize Not Only the National Economy but Also the Dollar Resources

9

R.A. 7459: Inventors and inventions Incentives Act of the Philippines

SC Administrative Order No. 113-95: Rules Governing Appeals to the Court of Appeals from Judgments or Final Orders of the Court of Tax Appeals and Quasi-Judicial Agencies

Creating the Movie and Television Review and Classification Board (P.D. No. 1986)

Rules and Regulations Implementing Movie and Television Review and Classification Board (MTRCB)

Guidelines on the Investigation and Prosecution of Offenses Defined and Penalized Under Article 201 of the Revised Penal Code, as amended by P.D. 989 (Immoral Doctrines, Obscene Publications and Exhibits, Indecent Shows) (Dept. Order No. 26)

Banning Certain Motion Pictures (LOI 13)

Act Creating the Videogram Regulatory Board (P.D. No. 1987)

VRB Revised Rules and regulations

VRB Rules of Procedures

Children’s Television Act of 1997 (R.A No. 8370)

The Office of the Intellectual Property was created by virtue of the IP Code of the Philippines and is tasked to administer and implement the policies of the State as declared in the Code and bears the following functions:

Process the registration and grant of patent, utility models and industrial design rights;

Examine and register marks, geographic indication, and integrated circuits;

Register technology transfer arrangements and settle disputes arising therefrom and develop strategies to facilitate technology transfer;

Promote the use of patent information;

Publication of registered industrial property rights and registered technology transfer arrangements;

Administrative adjudication of proceedings relating to intellectual property rights;

Coordinate with other sectors to strengthen the protection of the intellectual property rights in the country;

Custody of documents and other papers relating to the IPRs.

The Office is composed of a Director General (DG) assisted by two (2) Deputies Director General, their immediate staff and such offices and services in support of the IP Office. The DG holds the following powers and functions:

10

Manage and direct all functions and activities of the Office, including the promulgation of rules and regulations to implement the objectives, policies, plans, programs and projects of the Office;

Exclusive appellate jurisdiction over all decisions rendered by the Directors of Legal Affairs; Patents; Trademarks; Documentation, Information and Technology Transfer Bureau;

Original jurisdiction over disputes relating to a license involving the author’s right to public performance or other communication of his work;

Shall cause to be printed and make available for distribution, pamphlet copies of R.A. 8293, other pertinent laws, executive orders and information circulars.

The Office is further subdivided to the following six (6) Bureaus and each has the following functions:

The Bureau of Patents Checks patent applications and register the right thereof if in order;

Registers utility models, industrial designs and integrated circuits;

Assist in the formulation of policies regarding patents.

The Bureau of Trademarks Checks applications of marks, geographic indications and other marks of ownership

and registers the right thereof if in order;

Assist in the formulation of policies regarding Trademarks.

The Bureau of Legal Affairs Hear and decide opposition to the application for registration of marks;

Decide on cancellation of trademarks;

Decide on cancellation of patents, utility models and industrial designs;

Hear petitions for compulsory licensing of patents;

Original jurisdiction in administrative complaints in violation of R.A. 8293 where the total damages claimed are not less than Two Hundred Thousand Pesos (P/ 200,000.00);

Authority to issue provisional remedies in accordance with the Rules of Court;

11

Power to hold and punish for contempt all those who disregard orders or writs issued in the course of the proceedings;

Power to impose one or more of the administrative penalties enumerated in the Code;

May establish the Rules and Regulations to govern the implementation of the abovementioned functions.

The Documentation, Information and Technology Transfer Bureau Maintain and upkeep national and international classification systems;

Provide advisory services for the determination of search patents;

Maintain search files, search rooms and reference libraries;

Adapt and package industrial property information;

Establish networks or intermediaries or regional representatives;

Educate the public and build awareness on intellectual property;

Establish working relations with search and development institutions and with local and international IP groups;

Perform state-of-the-art searches;

Promote the use of patent information;

Provide technical, advisory and other services relating to the licensing and promotion of technology

Achieve an efficient and effective program for technology transfer;

Register technology transfer arrangements;

Settle disputes involving technology transfer payments.

The Management Information Services and Electronic Data Processing Bureau (MIS EDP Bureau) Conduct automation planning;

Conduct research and development;

Conduct testing of systems;

Conduct contracts with firms;

Conduct contracting, purchase and maintenance of equipment;

12

Conduct design and maintenance of systems;

Conduct user consultation and other similar functions;

Provide management information support and service to the Office.

The Administrative, Financial and Human Resource Development Service Bureau A. The Administrative Service:

Provide services relative to procurement and allocation of supplies and equipment, transportation, messengerial work, cashiering, payment of salaries and other office’s obligations, office maintenance, proper safety and security, and other utility services;

Comply with government regulatory requirements in the areas of performance appraisal, compensation and benefits, employment records and reports;

Receive all applications filed and collect fees therefore;

Publish patent and trademark applications and its registrations as well as registrations of utility models, industrial designs, geographic indication and layout designs of integrated circuits.

B. The Patent and Trademark Administration Service:

Maintain registers of assignments, merging, licenses and bibliographic on patents and trademarks;

Collect maintenance fees;

issue certified copies of documents in its custody and perform other similar activities;

Hold in custody all the applications filed and all certificate of registrations issued by the office, and the like.

C. The Financial Service:

Formulate and manage financial program;

Provide for an effective monitoring system of the financial operations of the office.

D. The Human Resource Development Service:

Design and implement human resource development programs;

Provide for manpower needs of the organization;

13

Maintain high morale and favorable employee attitudes.

The new Intellectual Property Office of the Philippines under the IP Code has an expanded function. The former Bureau of Patents, Trademarks and Technology Transfer served only administrative or staff functions limited to the grant of patents and registration of trademarks and technology transfer. But the present Office is not only a policymaking body but also exercises quasi-judicial jurisdiction for violation of industrial and intellectual property rights.

The major change introduced by the IP Code is the shift from the first-to-invent to first-to-file system. Other changes is the abolition of Supplemental Register to simplify the procedure in registering trademarks, address the emerging intellectual property issues and improved the protection of inventors, owners, authors and other creators of IPRs.

14

Chapter IV. THE IP CODE

IV.1 THE PATENT APPLICATION AND RIGHT

The Patent Application Procedures

Application

([1.1] Initial formality examination

Formality Examination

Search

Publication of Unexamined Application in the IPO Gazette

Request for Substantive Examination

Substantive Examination:

☺ Decision to grant the patent

☺ Publication of Patent in the IPO Gazette

☺ Issuance of Patent Certificate

Applicant is notified of Reasons for Refusal

Opinion and/or Amendment:

☺ [2.1] Decision to Grant the Patent

☺Publication of Patent in the IPO Gazette


[2.2] Final Refusal by Examiner

[3.1] Appeal to Director of Patents:

☺ Decision to Grant A Patent


15


[3.2] Final Refusal by Director of Patents

[4.1] Appeal to Director General

☺ Decision to Grant a Patent



[4.2] Final Refusal by Director General

[5.1] Appeal to Court of Appeals




[5.2] Final Refusal by Court of Appeals

[6.1] Appeal to Supreme Court




[6.2] Final Refusal by Supreme Court

Section 21 of the Intellectual Property Code defines patentable inventions as any technical solution of a problem in any field of human activity, which is new, involves an inventive step and is industrially applicable. The object of patentable invention may be a product or a process or an improvement of any of the foregoing.

16

A patent application in Filipino or English writing may be filed by the actual inventor or in the name of his heirs, legal representative or assigns. It shall be filed either directly or by post to the Bureau of Patents. The application shall contain a request for the grant of the patent; a description of the invention; drawing(s) necessary to understand the invention; one or more claims; and an abstract.

If an applicant other than the inventor files the application, an authorization shall be presented to show his capacity to prosecute in lieu of the actual inventor, in the form of a Power of Attorney attended with all legal requisites. If the applicant is an officer of a juridical person who is the inventor, no proof shall be required.

If the application submitted is complete as to the abovementioned requirements a filing date shall be accorded which is the date when the complete application is filed. Otherwise, the applicant shall be provided a maximum of two (2) months to complete the deficiency.

If the deficiency in the requirements is not remedied within the specified period of two (2) months, the application shall be deemed withdrawn. If the application is completed within the period specified, the filing date accorded shall be the date when the last items required are submitted.

NOTE: First-to-File Rule

- when two or more persons made the same invention separately and independently of each other, the right shall belong to the person who first filed an application for such invention.

- When two or more applications have been filed for the same invention, the first application that has the earliest filing date or priority date shall have the right to the patent.

- When two or more applications have been filed on the same date for the same invention that was made separately and independently of each other, the patent shall be issued jointly to all the applicants.

An application for a patent shall be subject to a filing fee, search fee and the 1st publication fee. The application shall be forfeited if neither fee is paid within the period of one (1) month from the filing date.

An applicant or his assignee may prosecute his own case, but he is advised to employ an attorney-at-law or a competent agent. If the applicant is not a resident of the Philippines he shall appoint a resident agent or representative for purposes of serving notice or processes relating to the application or the right.

17

NOTE: Ownership of the Invention

- The invention shall belong to the inventor, his heirs or assigns.

- The invention shall belong to the one who commissioned the work, unless otherwise stipulated in the contract.

- The invention shall belong to the employee if the invention is not part of his regular duties even if he used the resources of the company in creating the invention.

- The invention shall belong to the employer if the invention is in relation to his regularly assigned duties, unless there is an agreement to the contrary.

After the initial formality examination where a filing date has been accorded and the required fee has been paid, the actual formality examination shall be conducted. During this 2nd formality examination, the contents of the request; priority documents if with claim of priority; proof of authority if applicant is not the inventor; deed of assignment if application has been assigned; payment of all fees in case of excess claims; signature of the applicant; identification of the inventor and formal drawings shall be examined.

After the formality examination, a search shall be conducted if there is an identical or equivalent claim with any published patent applications or registered inventions. The application (unexamined) and results of the search shall be published after eighteen (18) months from the filing date or priority date in the IPO Gazette.

The publication shall confer the rights of a patentee and the applicant shall have recourse against any person who is deemed infringing on his rights as if a patent has been granted to him provided that the person had actual knowledge of the publication and a written notice was sent to him regarding the infringing act. The right may only be enforced after the grant of the patent right and shall be filed within four (4) years from the date of the commission of the crime. If due to exceptional circumstances, the applicant is not able to file a case within the prescriptive period of four years such period may be extended.

NOTE: After the first publication, any person may present observations concerning the patentability of the invention, which shall be communicated to the applicant who may or may not answer the observation.

18

The application shall be deemed withdrawn if no request for substantive examination together with the payment of fee was made within six (6) months from the 1st publication.

During the substantive examination, the examiner shall examine whether the application has complied with the statutory requirements of patentability.

An invention is patentable if it is new (requirement of novelty), involves an inventive step and is industrially applicable. It may relate to a product or a process or an improvement of a product or a process. An invention is not new if it forms part of a prior art. The following forms part of a prior art:

- if the invention has been made available to the public whether in written or oral disclosure or in any other way before the filing date or before the priority date claimed;

NOTE: If prior use is present in a foreign country, the disclosure must be in print or some tangible form, otherwise it shall not form part of prior art even if widespread in that foreign country.

- If the invention is contained in an application filed and published before the filing date or priority date claimed, except if the principle of non-prejudicial disclosure is applicable.

NOTE: Principle of Right of Priority - If the applicants or inventors are one and the same person, it shall not form part of the prior art. Where an application entitled to a priority claim did not claim such right, the applicant shall be given a period of two (2) months from the filing date to submit a priority claim.

Principle of Non-Prejudicial Disclosure – if the disclosure was made by the inventor; an unauthorized disclosure of a foreign patent office or a disclosure made by virtue of an application by an applicant without the inventor’s consent; and a third party which obtained the information directly or indirectly from the inventor, shall not prejudice the novelty of the invention.

Principle of Unity of Invention – one invention, one application or a group of inventions is forming a single general inventive concept, one application. But in case an application violating this principle has been registered, it shall not be a ground for invalidating a patent.

Principle of Divisional Application - an application may be divided out of an original application as long as it does not extend beyond the content of the original application and shall be done before the first application loose its validity by withdrawal, abandonment or before it is patented.

19

Principle of Parallel Applications – parallel applications are filing two applications either simultaneously or consecutively for the same invention or creation. Thus, an application for a patent or a utility model on the same invention or creation is prohibited.

Inventive step is involve when during the time of filing the application or claiming of priority date, and with regard to the existing prior art, the invention could not been made by a person with general knowledge of the art.

An invention has industrial applicability when it can be produced and used in any industry.

The following shall not be considered inventions and therefore, will never be granted patent protection:

- Discoveries, scientific theories and mathematical methods.

Mere discovery is the act of finding out or making known what has already been in existence, hence not patentable. Theory is an intellectual apprehension, a belief or policy or plan. This is more on the mental faculty and is intangible, hence not also patentable. Methods is systematic rules or procedure of doing something and is not also patentable.

- Schemes, rules and methods of performing mental acts, playing games or doing business, and programs for computers;

Rules of playing games is a copyrightable creation. Schemes, rules, and methods of doing business is not patentable in the Philippines, unlike other jurisdictions. Written instructions on how to operate or use a computer such as the programs for computers are also copyrightable.

- Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body.

The State thinks that welfare of the public in general outweighs more the individual right of an inventor in protecting methods for treatment that is why this is not patentable. Doctors, nurses and other medical persons would be the ones liable for infringement if methods for treatment shall be patentable and will have a damaging effect on the health of the general public. But patentability is extended to the products and compositions for use in any of these methods.

20

- Plant varieties or animal breeds or essentially biological process for the production of plants or animals.

These are plant varieties or animal breeds that have been discovered as a new variety or breed. It does not cover new plants or animals that is a product of cross breeding or high breeding. The preceding paragraph does not apply to microorganisms and non-biological and microbiological processes.

- Aesthetic creations

Aesthetic creations are creations that appeals to the senses. It pertains to beauty, or what is pleasing to the senses. It lacks the high level of technical standard for inventions therefore non-patentable.

- Anything that is contrary to public order or morality.

Creations or inventions that might vex the public peace or is against the ideals of human conduct shall not be extended patentability.

Principle of Right of Priority is granted when the following conditions concur:

- A first application has been filed in another country that grants the same privileges to the citizens of the Philippines by virtue of a law, treaty or convention;

- The invention and the applicant is one and the same in the first foreign application and the application claiming the priority right;

- The application expressly claims priority and filed within twelve (12) months from the date the earliest foreign application was filed;

- The necessary documents are filed within six (6) months from the date of filing in the Philippines.

However, the six (6) months period may be extended upon showing of good cause. If the Philippine application has been filed within the priority period of twelve (12) months, the invention shall not loose its novelty if any similar invention might be disclosed during the intervening period. If another person files an application for the same invention within the 12-month period, the first to file principle shall not be applicable to the applicant who has the priority right.

The filing date accorded shall be the date of the first foreign application and not the actual date of filing in the Philippines. Provided, any right in case of

21

acts that was considered to be infringing before the Philippine application shall not be reprehended.

Multiple priority claims are possible whether from the same or different countries. But in case of multiple claims, the twelve (12) months priority date shall be reckoned from the earliest priority date.

The examiner shall have original jurisdiction over all applications filed in the Bureau. After the substantive examination, if the examiner finds that the patent application conforms to the requirements of the IP Code and the Rules, a patent right shall be granted and registered after payment of the required fees.

The issue of the patent together with other information shall be published in the IPO Gazette within six (6) months from the decision to grant the patent. Subsequent to the publication a patent certification shall be issued.

If the examiner finds that the application is defective, he shall notify the applicant of reasons for refusal. The applicant in turn must reply either by requesting reexamination or reconsideration of the application. The reply may be with amendment or without amendment.

To be entitled for reexamination or reconsideration, mere allegations are not acceptable. The applicant must distinctly and specifically challenge the errors in the examiner’s action, must respond to every ground of objection and rejection in the examiner’s action and the applicant’s action has the object of prosecuting the application to final action.

If the reply contains an amendment of the application, the amended claims must clearly point out the patentable inventiveness and novelty and show how references or objections were avoided by the amendment.

The application shall then be reexamined and reconsidered. Whereupon the examiner still finds the rejection in order, a second notification shall be sent to the applicant and the latter may reply in the same manner as abovementioned. If an amendment accompanies a reply, it shall be a restrictive amendment limited to the rejection or to the objections or requirements made, and it shall be reconsidered again. The maximum number of times a reexamination or reconsideration can be made is only up to two times.

Upon final rejection or action, the applicant’s remedy is an appeal of the examiner’s action of rejection to the Director of the Bureau of Patents. All actions of the examiner, which may not be subject of an appeal, are also appealable to the Director, such as refusal of the examiner to admit amendments.

In the event the Director of the Bureau of Patents reverses the decision of the examiner, he shall render a decision to grant a patent, publish the decision to grant together with the other documents and then issue a patent certification.

22

If the Director concurs with the decision of the examiner, he shall send a final refusal to the applicant where the latter may file first for a reconsideration of the decision of refusal and if still unfavorable may file an appeal to the Director General. If the Director General reconsiders the decision of refusal, he shall render a decision to grant a patent, followed by a publication and finally the issuance of a patent certification.

If the Director General sustains the decision of refusal, he shall issue a decision of final refusal to the applicant. The applicant if unsatisfied with the DG’s decision, may not ask for a reconsideration of the DG’s decision of refusal but instead, he may file a petition for review or certiorari to the Court of Appeals. In turn, the Court of Appeals may find for the applicant. In such a case, the IP Office shall publish the decision to grant the patent and subsequently issue a patent certification. Otherwise, the Court of Appeals shall issue a decision sustaining the decision of the Director General to refuse the grant of patent.

In such an event, before the applicant may file a final remedy of appeal by way of petition for review or certiorari to the Supreme Court, it is a pre-requisite that he files a petition for reconsideration to the Appellate Court of its determination to sustain the DG’s decision.

Where the decision of the Court of Appeals is an affirmance of its earlier pronouncement to decline the patent, the applicant has no other recourse but to appeal to the Supreme Court.

If the Supreme Court reverses the decision of the Court of Appeals, a patent right shall be granted, a publication of the grant shall ensue and issuance of the certificate of patent shall be made by the IPO. If the Supreme Court sustains the decision of the Appellate Court, the applicant will have the last remedy to ask for a reconsideration of the Supreme Court’s decision.

The term of patent is twenty (20) years from the filing date of the application. So, if a patent is filed on January 1, 2001, and is subsequently registered, the right shall be valid until January 1, 2021. After which, the invention shall become public, meaning any one may work the invention.

The owner of a patent may request the Bureau and shall be allowed to make the changes in the patent in order to limit the extent of protection conferred by it; to correct obvious mistakes or clerical errors; and other unintentional mistakes. If the correction even of an unintentional mistake, was made after two (2) years from the grant of patent, and would result in broadening the extent of protection it shall be disallowed.

A granted patent right may be lost voluntarily and involuntarily. A voluntary mode of loosing the patent is through surrender. When the owner surrenders the patent to the Office for cancellation, the consent of all persons having an interest in the patent shall be secured such as the licensee(s), a pledgee and other proprietors. This is necessary so that any person may present his opposition to

23

the surrender and the Office shall decide on the propriety of the surrender and opposition.

The involuntary means of loosing a patent is through cancellation by the Office when an interested person files a petition to cancel at anytime after the registration of the right and before the expiration of the term of the patent right based on the following grounds:

The invention is not patentable because it is not new, it lack inventive step and neither industrially applicable;

the disclosure is not clear and complete for it to be carried out;

the invention is contrary to public order and morality;

The person granted the right is not the actual inventor neither has the authority from the actual inventor.

In case of the last ground, within one year from the date of the first publication, a true owner may file with the court a petition for cancellation or petition for declaration of ownership of the right. Here, the true owner of the patent has the following options. One is to prosecute the application in lieu of the applicant. The other is to disregard the original application and file a new patent application. Another is to petition that the application should be refused because of the final order of the court pronouncing him as the real right owner. And the last is to ask for cancellation if a right has already been granted.

The real right owner must choose one option from the options enumerated above within three (3) months from the date the decision became final. A decision by the court becomes final when the reglementary period to file an appeal had lapsed without any appeal filed.

Under Section 76 of the IP Code, the acts considered to be patent infringement is the making, using, offering for sale, selling, or importing a patented product or a product obtained directly or indirectly from a patented process, or the use of a patented process without the authorization of the patentee.

A person shall be liable as a contributory infringer if he actively induces the infringement of a patent or provides the infringer with a component of a patented product or of a product produced because of a patented process. When the person’s act constitutes the act of providing, that is providing a component or providing a product, knowledge is an important factor. The person supplying the component must be aware that it is to be used for infringing a patent and that the product supplied was produced because of a patented process, otherwise he cannot be liable as a contributory infringer.

24

There are two presumptions in case of infringement. If the patent is on a process, any identical product shall be presumed to have been obtained through the use of the process patent. The burden of proving otherwise is with the defendant.

Normally damages cannot be awarded if acts of infringement was committed before the defendant had known or had reasonable grounds to know of the patent. But it shall be presumed that defendant had knowledge of the patent right, if on the product or the packaging there are words written “Philippine Patent” with the corresponding number of patent.

The grounds for invalidity of a patent may be a defense in an action for infringement. Accordingly, if the court shall find the patent to be invalid, it shall be cancelled.

A criminal action may be instituted and imprisonment may be provided in case the offender or anyone in connivance with him commits another act of infringement. There shall be considered a repetition of the infringement when the offender or anyone in connivance committed further infringement after the finality of the judgment declaring them as such. The criminal action has a prescriptive period of three (3) years from the commission of the crime.

To promote transfer and dissemination of technology and to provide safeguards against practices and conditions that may be anti-competitive, Chapter IX of the IP Code is devoted to Voluntary License Agreements or Contracts. In case of a dispute, the Philippine laws shall govern the interpretation of the contract and the venue shall be the place where the licensee has its principal office.

Where arbitration is provided in the contract, either the Arbitration Law of the Philippines or the Arbitration Rules of UNCITRAL or the Arbitration Rules of the International Chamber of Commerce shall be applied.

If within four (4) years from the date of filing the application or three (3) years from the date of grant of the patent, whichever expires later, a patent has not been worked since the dates mentioned, a compulsory license may be requested and granted.

The same may be requested and granted anytime after registration of the patent when a national emergency or other circumstances may warrant it; where the public interest requires it; where there is a declaration that the manner of right holder in exploiting his patent is anti-competitive and in case of non-commercial use even if its public use.

The Director of Legal Affairs hears the propriety of the request and decides on the grant.

25

IV.2 THE UTILITY MODEL AND INDUSTRIAL DESIGN APPLICATIONS AND RIGHTS

THE UTILITY MODEL AND DESIGN RIGHT APPLICATION PROCEDURE

Application


Formality Examination Report and Search Report:

Withdrawal of Application; or

Convert the Application to Invention Proceed as an Invention; or

Amendments:

Formality Examination and Search reports

Registration

Registrability Report

Publication in the IPO Gazette; or

Registration:

Registrability Report

Publication in the IPO Gazette

THE UTILITY MODEL RIGHT

A utility model is a creation that provides a technical solution to a problem in any field of human activity, which is new and industrially applicable. The provisions on non-patentable inventions, requirement of novelty, regard to prior art and industrial applicability of inventions shall be applicable to utility model applications. The requirement of inventive step is not required for utility models.

When an application for utility model is filed with the Bureau of Patents, the actual date of filing shall be accorded as the filing date when the following requirements are complete:

A completed pre-formatted request provided by the Bureau;

A description of the utility model;

26

claim (s);

drawings or pictorial representation if necessary

payment of the filing fee.

If the application is incomplete as to any of the requirements, the filing date shall be the date when the applicant completed all the requirements necessary.

The provisions on the first-to-file rule and the right of priority for patents shall be applicable to utility model applications.

After submitting the application to the Bureau, a formal examination shall be conducted to check the completeness of the application. At the same time it shall be classified and a search shall be conducted to determine prior art. The formality examination and search reports shall be submitted to the applicant within two (2) months from the filing date.

Upon receipt of the report, the applicant has two (2) months from the mailing date of the report to choose either four of the options illustrated above.

One is to voluntarily withdraw the application in which case all files pertaining to the application shall be expunged from the Bureau’s record. Two is to convert to application for an invention in which case it shall be processed as a patent application.

Third is to amend the application in which case it shall undergo another formality examination, classification and search. After mailing the second examination and search reports, the applicant has two (2) months from the mailing date of the reports to choose any of the following actions: to withdraw; to convert; or ask for registrability report. The applicant is therefore entitled to make an amendment only once.

Fourth option is to request for registrability report upon payment of a required fee. If the formal requirements are complete and upon the expiration of two (2) months from the mailing date of the reports, no action is taken by the applicant whether to withdraw or amend or convert, the application nevertheless, shall be registered without substantive examination. But if the formal requirements are incomplete and no positive action was taken by the defendant before the expiration of the two (2) months period, the application is deemed withdrawn.

The registrability report shall contain citations of relevant prior art documents with appropriate indications as to their degree of relevance which will serve as an aid in the determination of the validity of the utility model claim(s) in respect to newness. This shall be issued within two (2) months from receipt of the request from the applicant.

27

Within six (6) months from the date of registration, the utility model together with the registrability report if requested, shall be published in the IPO Gazette. The publication shall be in the form of bibliographic data and representative drawing, if any.

The term of utility model is seven years from the date of filing of the application without possibility of renewal. A patent application may be converted to a utility model application only once and before the grant or refusal of the patent application. The filing date accorded to the converted application shall be the filing date of the patent application.

A utility model application may be converted to a patent application and the latter application may subsequently be converted to another application before the grant or refusal and shall be accorded the filing date of the initial utility model application.

The following are grounds for cancellation of the utility model registration that may be filed after registration but before expiration of the seven years:

That the utility model registered does not qualify for registration because of lack of novelty or industrial applicability or is among non-registrable utility model;

That the registration was effected in spite of non-compliance to the requirements of description and claims;

That drawing necessary for the understanding of the utility model has not been furnished

That the person granted the registration of the utility model is not the real maker or does not have the right to succeed in title.

THE INDUSTRIAL DESIGN RIGHT

Sec. 112 of the IP Code defines an industrial design as any composition of lines or colors or any three-dimensional form, whether or not associated with lines or colors and that such composition or form should give a special appearance to and can serve as pattern for industrial product or handicraft that is new or original.

An important requisite of a design application apart from the requisite newness or originality is the effect of aesthetic and pleasing appearance to the article. An implication of beauty or giving of a pleasing appearance as embodied in an article, hence, a design must be inseparable from the article and cannot exist alone merely as a scheme of surface ornamentation.

A design right shall be registered after filing an application prescribed by the Bureau that shall contain the identity such as the name and address of the applicant . If the applicant is not the designer, an authority must be presented

28

stipulating the right on which the applicant has succeeded. The application shall be accompanied by a specification containing the title; description of the different views and characteristic-feature of the design; and a claim.

Drawings are an important part of the application showing the different views and appearance of the design. Photographs or other graphic representations may be accepted as long as it satisfies the function of the required drawings.

A filing date shall be accorded upon completion of the abovementioned requirements and within one (1) month from the date of application, a filing fee and a publication fee shall be paid, otherwise, the application shall be deemed withdrawn. However, if the application is incomplete with any or some of the elements, the Bureau shall accept it but date accorded shall be the date when the applicant has completed all the elements.

The principles of first to file rule and the right of priority in a patent and utility model applications are relevant to design applications except the period of local application claiming priority shall be filed within six (6) months instead of one (1) year under the two former applications.

A similar formality examination and search shall be conducted and the results shall be communicated to the applicant in the form of reports. The applicant within two (2) months from the mailing date of the reports has only three options. He may withdraw the application or amend the application only once or request for a registrability report upon payment of the fee.

Withdrawal, amendment and request for registrability report shall have the same result and effect as the utility model’s withdrawal, amendment and request as well as inaction on the part of the applicant with regards to a complete or incomplete formal requirements. No conversion of design application to patent or utility model application or vice-versa is allowed.

The principle of one design to one application is the general rule but a set of articles where a design is applied may be permitted as long as the articles presented are not patentably distinct from each other and they should be of substantially dominant design features that are embodied in a single design concept. These articles must belong to the same subclass of the International Classification or to the same set or composition.

If the application complies with all the requirements under the Code and the Regulations and after payment of the fees, the design shall be registered and shall be published, together with the registrability report if requested, within six (6) months from registration.

The maximum term of design right shall be fifteen (15) years. It shall be initially valid for five years from the filing date of the application and shall be extendable for two consecutive periods of five (5) years each.

29

An interested person based on the following grounds at anytime during the term of the industrial design registration may file a petition for cancellation:

The subject matter of the industrial design does not give a special appearance to and cannot serve as pattern for an industrial product or handicraft;

The industrial design is not new and original;

The industrial design is dictated essentially by technical or functional considerations to obtain a technical result;

The industrial design is contrary to public order, health or morals;

The subject matter of the industrial design extends beyond the content of the application as originally filed, in case of amended application.

COMMON PROVISIONS ON PETITIONS AND APPEALS

Decisions of examiner to refuse the registration of the utility model or industrial design application are appealable to the Director of Patents. Any other actions of examiner on matters of form shall be brought up before the Director by filing a petition questioning the correctness of the action. The petition must contain a statement of the facts, the point(s) to be reviewed, or the various grounds upon which the appeal is taken.

A petition or appeal is timely made if filed and appeal fee is paid within two (2) months from the mailing date of the action appealed from. Failure on the part of the applicant to appeal within the prescribed period or to prosecute if an appeal is timely made shall render the examiner’s decision final and has the effect of res judicata.

The examiner shall submit a written statement in answer to the applicant’s petition or appeal within two (2) months from the order of the Director directing him to submit such statement.

In case of appeal, the applicant may or may not submit a reply brief to the examiner’s answer. In case a reply brief is submitted, it shall be limited to new points raised by the examiner. The applicant has one (1) month from the date of receipt of answer to reply.

When the Director of Patents renders a decision, the applicant has fifteen (15) days from receipt of the decision either to file a motion for reconsideration or file an appeal to the Director General. Only one motion for reconsideration is allowed. An appeal to the Director General is deemed perfected by filing a notice of appeal and payment of appeal fee.

30

When the appeal is perfected, the applicant has one (1) month from the filing of notice of appeal to submit a brief that shall contain authorities and arguments to support his appeal. If the required brief is not submitted within the prescribed period, the appeal shall be deemed dismissed.

The Director General may or may not submit comments on the appellant’s brief. If ever he decides to, the comments shall be submitted within one (1) month from receipt of applicant’s brief.

The decision of the Director General shall be final and executory unless a petition to review within thirty (30)days or a petition for certiorari within sixty (60) days is filed to the Court of Appeals.

31

IV.3 THE TRADEMARK APPLICATION AND RIGHT

THE TRADEMARK APPLICATION PROCEDURE

Application


Filing Date Accorded


[A.1] Allowance for Registration ☺

[A.2] Publication for Opposition

[A.2.1] Opposition to Registration:

[1] Deny Opposition

Issuance of Registration ☺

[2] Grant the Opposition

Appeal to Director General:

a) Issue certificate of registration ☺

b) Deny appeal

Appeal to Court of Appeals:


b) Deny appeal

Appeal to Supreme Court


b) Deny appeal

[B.1] Preliminary Rejection

[B.2] Opinion and/or Amendment:

[B.2.2.1] Allowance for Registration ☺

[B.2.2.2] Publication for Opposition

[A] Opposition to Registration:

32

[A.1] Deny Opposition

Issuance of Registration ☺

[A.2] Grant the Opposition



b) Deny appeal



b) Deny appeal



b) Deny appeal

[B.2.3.1] Decision to refuse registration



b) Deny appeal



b) Deny appeal



b) Deny appeal

The IP Code of the Philippines provides protection for marks and names. A mark as defined in the code as any visible signs capable of distinguishing the goods (trademark) or services (service mark) of an enterprise and shall include a stamped or marked container of goods. A trade name is defined as the name or designation identifying or distinguishing an enterprise.

33

A mark is protected when it is registered and similarly it may also be protected even when not registered in case of a well-known mark. Trade names or business names shall not be allowed usage if liable to contravene public order or morals or liable to deceive trade circles or the public as to the nature of the enterprise identified by that name. Trade names and business names are registrable with the Department of Trade and Industry but shall nevertheless be protected even prior to or without registration against unlawful acts by third parties.

The criteria for determining whether a mark is well-known as provided by the Rules and Regulations issued by the IP Office are:

The duration, extent and geographical area of any use or promotion through advertising, publicity or presentation at fairs or exhibitions of the goods and/or services to which the mark applies;

The market shares in the Philippines and other countries;

The degree of the inherent or acquired distinction of the mark;

The quality image or reputation acquired by the mark;

The extent to which the mark has been registered in the world;

The exclusivity of registration attained by the mark in the world;

The extent to which the mark has been used in the world;

The exclusivity of use attained by the mark in the world;

The commercial value attributed to the mark in the world;

The record of successful protection of the rights in the mark;

The outcome of litigation relating to the issue of well-knownness of the mark;

The presence or absence of identical or similar marks on identical or similar goods and/or services owned by other person.

The right to a mark is acquired by registration. For a mark to be allowed registration, an application shall be filed with the Bureau of Trademarks containing a request for registration indicating the identity of the applicant with the list of goods or services for which the registration is sought, grouped according to the classes and respective number of classes of the Nice Classification, a reproduction of the mark to be registered and payment of filing fee.

A right to a mark shall also be acquired based on the principles of reciprocity and nationality. Any person who is a national, domiciled or has a real

34

and effective industrial establishment in a country who extends benefits and protection of intellectual property rights to citizens of the Philippines shall be extended reciprocal rights. And if such person is also a national, domiciled or has business establishment in a member country shall be granted the rights to give effect to a treaty, convention or agreement relating to intellectual property rights.

If any person referred to in the preceding paragraph claims a priority right, provided that such mark is duly registered in the country of origin and the domestic application was filed within six (6) months from the date of the earliest foreign application, the domestic application shall be accorded the filing date when the first foreign application was filed. The retroactive date shall not include acts deemed to be infringement before registration in the Philippines.

But in case of a well-known mark, even if not doing business and not registered in the Philippines, the owner of a well-known mark may oppose the registration, petition the cancellation of a mark already registered or sue for unfair competition against an identical and confusingly similar mark.

Upon receipt of the application, the examiner shall then conduct formality examination for the purpose of according a filing date to the application. If the application is lacking some formal requirements, the applicant shall be notified of the deficiency and shall complete or correct the application as required within one (1) month from mailing date of the notice; otherwise, the application shall be deemed withdrawn.

When the examiner has finally accorded a filing date to the application, he shall then check the distinctiveness and registrability of the mark during substantive examination. The following marks shall be refused registration:

Marks that consist of immoral, deceptive or scandalous matter. Or matter that may suggest a connection with, or suggest contempt or disrepute of persons, living or dead; institutions; beliefs; or national symbols;

Marks that consists of or a simulation of the flag, coat of arms or other insignia of the Philippines or its political subdivisions or of any foreign nation;

Marks that consist of a name, portrait or signature identifying a particular living individual or of a deceased President of the Philippines, except when there is a written consent of the living person or the widow of the deceased President;

Mark is identical with an already registered mark or a mark with an earlier filing date or priority date in respect of same classes of or related goods and/or services and is liable to cause confusion;

Mark that is confusingly similar to or constitute a translation of a mark considered by competent authority to be well-known, whether such well-known mark is registered or not, and used for identical or similar goods or services;

35

Mark that is confusingly similar to or constitute a translation of a mark considered by competent authority to be well-known, which is registered in the Philippines with respect to goods or services which are not similar to those which registration is applied for;

Is likely to mislead the public as to the nature, quality, characteristics or geographical origin of the goods or services;

Consists exclusively of signs that are generic for the goods or services that they seek to identify;

consists exclusively of signs or of indications that have become customary or usual to designate the goods or services;

consists exclusively of signs or indications that may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin, time or production or other characteristics of the goods or rendering of the services.

consists of shapes that may be necessitated by technical factors or by the nature of the goods themselves or factors that affect their intrinsic value;

consists of color alone;

is contrary to public order or morality.

After the conclusion of the substantive examination, the examiner shall allow the trademark registration if there are no reasons for refusal. After which the application shall be published in the IPO Gazette for opposition. Anyone who may be damaged with the registration may file a petition for opposition with the Bureau of Legal Affairs within one (1) month from the date of publication. This period to file opposition is extendable to a maximum of four (4) months upon showing of good cause.

If within one (1) month, there has no opposition filed with the Bureau of Legal Affairs or an opposition has been denied, the Director shall issue a certification to that effect addressed to the Director of Trademarks and thereafter, the Office shall issue the certificate of registration within two (2) months from the date of publication for opposition. The issuance of certificate of registration shall be subsequently published in the IPO Gazette.

If the examiner decides that the application is not entitled to registration, the applicant shall be notified of such refusal indicating the reasons thereof. The applicant, within one (1) month from the mailing of the decision for refusal, shall either contest the grounds relied by the examiner or amend the application. In either case, the application shall be re-examined or reconsidered by the examiner.

36

Unless the decision is stated to be final on the first refusal, the applicant may rebut or amend the application once more. Once the examiner states the finality of refusal for registration on his first decision, the applicant has two (2) months from the mailing date of the questioned decision to appeal to the Director of the Bureau of Trademarks. The period of appeal may be extendable to a maximum period of four (4) months upon showing of good cause.

The decision or order of the Director of Trademarks shall become final and executory after the lapse of fifteen days unless the applicant files a motion for reconsideration of such decision with the Director or interpose an appeal to the Director General within the fifteen day period.

If the Director General shall allow the registration, it shall be published for opposition and shall undergo the aforementioned procedure in case of opposition or non-opposition. If the decision is adverse to the registrability of the application, said decision is appealable to the Court of Appeals and lastly appealable to the Supreme Court if applicant still gets an unfavorable decision.

When a registrable mark is a composite mark and has a component that is unregistrable, the Office may allow or require the applicant to disclaim such part. The disclaimed part may be a generic name of goods or services or customary sign or indication used in trade. But such disclaimer shall not affect existing or rights that might arise if the disclaimed matter became distinctive of the applicant’s or owner’s goods, business or services.

The term of the mark is ten (10) years from registration and may be renewed by filing a request for renewal six (6) months before or six (6) months after the expiration of the term. A renewal fee shall be paid and an additional fee in case the request for renewal was filed after the expiration of the term of the right. A declaration of actual use and evidence shall be filed with the Office within three (3) years from the filing of the application.

Any person who is likely to be damaged or has been damaged by the registration of a mark may file a petition for cancellation with the Bureau of Legal Affairs at any time based on the following grounds:

If registered mark becomes the generic name for the goods or services;

when it is abandoned. A mark is deemed abandoned when the applicant failed to respond to an examiner’s action within two (2) months from the mailing date of the decision;

if the registration was obtained fraudulently;

if the registration was obtained contrary to the provisions of the code;

if the registered mark is being used to misrepresent the source of the goods or services;

37

non-use of the mark.

A petition for cancellation may also be filed in the regular courts that have proper jurisdiction of the mark in question. If a suit to enforce the trademark right has been filed with the proper court or agency, a subsequent petition to cancel the mark shall be filed in the same court or agency. Conversely, if a suit for cancellation has been filed earlier, it shall not suspend the filing of an action to enforce the rights to same registered mark.

38

IV.4 COPYRIGHT AND RELATED RIGHTS A Copyright together with the industrial property rights make up the intellectual property right. Under the Philippine law, copyright protection and enforcement is provided in Part IV of the IP Code. But protection and enforcement of this right is quite different from the other intellectual property rights. For one, there is no requirement of registration to acquire the right.

Copyright and its related rights are protected by the sole fact of their creation, irrespective of the mode or form of their expression as well as the content, quality and purpose. The IP Office is the major and one of the agencies tasked with the enforcement of the copyright. The National Library is another agency that has the duty to formulate rules and regulations to implement the provisions on the law on copyright. It is responsible for registration and deposit of works that has been publicly disseminated for the first time.

This act of registering and keeping the deposit is for expediency and evidentiary purposes and does not serve as a pre-requisite for a copyright protection. A similar registration and deposit is simultaneously made in the library of the Supreme Court.

The two major classifications of works that are protected are the literary and artistic works referred to as the original works, and are original intellectual creations in the literary and artistic domain protected from the moment of their creation. The other classification is derivative works that are the dramatizations, translations, adaptations, abridgments, arrangements, and other alterations of original works.

Another form of derivative works are the collections of literary, scholarly or artistic works and compilations of data and other materials which are original by reason of the selection or coordination or arrangement of their contents. Such collections and arrangements must be artistic and not simply systematic to be protected. Thus, mere data; news of the day and other miscellaneous facts having the character of mere items of press information are not protected.

Official texts of the legislative, administrative and judiciary are not copyrightable and is open for use by anyone. More so the statutes, regulations. Rules and laws but a derivative work such as an artistic compilation of the laws are copyrightable.

The derivative works referred to shall be protected as new works but shall not affect the force of any subsisting copyright of the original works from where the derivative work was derived.

Copyright or economic rights, subject to the limitations subsequently enumerated herein, shall consist of the exclusive right to carry out, authorize or prevent the following:

⌦ Reproduction of the whole work or a substantial portion thereof;

39

⌦ Dramatization, translation, adaptation, abridgement, arrangement or other transformation of the work;

⌦ The first public distribution of the original and other copy of the work by sale and other forms of transfer of ownership;

⌦ Rental of the original or a copy of an audiovisual, cinematographic, fixated in a sound recording, computer programs, compilation of data, other materials and musical work in graphic forms;

⌦ public display of the original or a copy of the work;

⌦ public performance of the work;

⌦ Other communication to the public of the work.

Basically, the aforesaid copyright is the right to allow or authorize the preceding acts mentioned. In other words, if another person performs the act enumerated in the preceding paragraph without the consent of the author, it shall be an act of infringement. But the right of copyright is not an absolute right for it is subject to the limitations on fair use.

Specifically provided in the code are use of the work if made accessible to the public, must be done strictly for charitable, religious or academic purposes and the qualification that it was not made in return for any profit. Also, reproduction of works for the purpose of preservation or perpetuation in the public libraries is allowed.

Additionally, work if done in private or personal use is also justified and de minimis importation of work even without permission from the author is valid.

Independent of the economic rights, the author of a work is entitled to the following:

paternal rights or right to authorship;

to make any alterations of his work prior to publication, or to withhold the publication of his work;

to object to any distortion or mutilation or other modification of his work prejudicial to his honor or reputation;

to prohibit the paternity of any work that is not his creation or the distorted version of his work.

These rights are the so-called moral rights and is personal to the author, thus, it cannot be alienated unlike the economic rights. The waiver of moral rights

40

are allowed under the code as long as it is in writing but shall not be allowed if the waiver shall produce injury to the reputation of another author because of such waiver or to attribute the paternity of a work he did not create.

Performers, producers of sound recordings and broadcasting organizations shall also be entitled to economic and moral rights. These are the so-called neighboring rights and the rights contained are basically the same rights attributed to the authors but only in this case, they are attributed to the following individuals.

The term of protection is during the lifetime of the author and fifty (50) years after his death. In case of joint authorship, the fifty years shall be counted from the death of the last remaining author.

In case of anonymous or pseudonymous works, fifty years from the date on which the work was lawfully published. If the work was never published, fifty years from the making. If the identity of the author is revealed or is no longer in doubt, it shall be protected during his lifetime and fifty years from his death.

In case of works of applied art, twenty five years from the time it was incorporated in a useful article. In case of photographic works and audiovisual works or analogous works, protection is fifty years from the publication of the work, or from the making if it is unpublished.

IV.5 INFRINGEMENT AND REMEDIES The acts enumerated hereunder are acts deemed to be an infringement of intellectual property rights and remedies available to the owner of the right, his assignees, heirs and successors of interest.

Patent Right

- Any person or entity that makes, uses, offer for sale, sells or import a product subject of a patent right without the authorization of the right holder.

- Any person or entity that uses a process and manufactures, deals in, uses, sells, or offering for sale or imports any product obtained directly or indirectly from a patented process without the authorization of the right holder.

Utility Model and Industrial Design

41

- Any person or entity who makes, uses, offer for sale, sells or import a creation or design subject of a utility model right and industrial design right respectively, without the authorization of the creator or designer.

Trademark, Service Mark and Trade names

- Any person or entity without the consent of the owner of a registered mark use in commerce any reproduction, counterfeit, copy, or imitation of a registered mark in connection with the sale, offering for sale, distribution, advertising with which such use is likely to cause confusion, mistake or to deceive.

- Reproduce, counterfeit, copy or colorable imitation of a registered mark or a dominant feature thereof and apply such reproduction, counterfeit, copy or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce.

- Any person who shall employ deception or any other means contrary to good faith and practice such as commits unfair competition by giving one’s goods the general appearance of the goods of another manufacturer/dealer, which would likely influence purchasers to believe that such goods originate from such manufacturer.

- Use of any artifice or device calculated to induce the false belief that such person is offering the services of another.

- Making false statement in the course of trade or commit any other act contrary to good faith or discredit the goods/services of another.

- False designation of origin is committed by any person who uses in commerce any word, term, name, symbol or device or any false designation of origin, misrepresentation, false description of fact which is likely to cause confusion, or to cause mistake or to deceive as to the affiliation, connection or association of such person’s goods or services with another.

- False designation or origin in commercial advertising or promotion that misrepresents the nature, characteristics, qualities or geographic origin of goods, services or commercial activities.

42

Copyright and Moral rights

- unauthorized reproduction, dramatization, translation, adaptation, abridgement, arrangement or transformation of the work or a substantial portion thereof.

- Unauthorized distribution or transfer of the work.

- Unauthorized rental of the work.

- Unauthorized display, performance and other communication to public.

- False attribution and non-attribution of paternity.

- Unauthorized alteration or mutilation of the work.

------------------------------------------------------------------

Civil Remedies

Violation of intellectual property rights may be filed with any of the twenty seven (27) specially designated Regional Trial Courts that has jurisdiction of the infringement case regardless of the amount involved.

Provisional remedies that may be ordered by the courts are “Preliminary Prohibitory Injunction” to require a person to refrain from a particular act or a “Preliminary Mandatory Injunction” to require a person to perform a particular act.

The courts may issue search and seizure orders on infringing products or articles or sales invoices and other documents evidencing sales.

The court may issue subpoena ad testificandum, ordering a party to appear and testify before the courts.

The Court may issue subpoena duces tecum, ordering a party to produce any books, papers, documents, correspondence and other records, which are material to the case.

The court may hold any person in contempt in disobeying orders issued by the court in the course of the proceedings.

the court may award damages sustained and other types of damages like moral and exemplary damages plus attorney’s fees and expenses of litigation.

43

In case of repeated infringement, the court shall provide a penalty of imprisonment for a period not less than six (6) months but not more than three (3) years and/or a fine not less than PHP 100,000.00 but not more than PHP 300,000.00.

the court may order that the infringing goods, materials and implements used for infringement be disposed of outside the channels of trade or destroyed without compensation.

The court may impose a criminal penalty of imprisonment from 2-5 years and a fine ranging from PHP 50,000.00 to PHP 200,000.00 to any person found guilty of infringement of trademark right, unfair competition and false designations.

The court may impose the following criminal penalties in case of infringement of copyrights:

1st offense: imprisonment of 1 – 3 years plus fine between PHP 50,000 – 150,000

2nd offense: imprisonment of 3 – 6 years plus fine between PHP 150,000 – 500,000

3rd and subsequent offenses: imprisonment of 6 – 9 years plus fine between PHP 500,000 – 1,500,000

Note: subsidiary imprisonment shall be provided in case of insolvency.

Administrative Remedies

The following administrative agencies and authorities exercise jurisdiction in the protection and enforcement of intellectual property rights:

- The Intellectual Property Office in infringement cases where the total amount of damages is PHP 200,000.00 and up.

- The Department of Trade and Industry in infringement cases where no damages is claimed or irregardless of the amount of damages if it is claimed.

- The Videogram Regulatory Board in violation of law involving videograms.

- Customs authorities may suspend the release of goods that are imported in violation of the intellectual property law.

44

- The Philippine National Police (PNP) and the National Bureau of Investigation (NBI) under the Department of Justice (DOJ) may institute criminal proceedings or file a criminal complaint.

- The Philippine Center on Transnational Crime has one of its main function to supervise and control the conduct of anti-transnational crime operations of all government agencies and instrumentalities particularly piracy or counterfeit products in violation of intellectual property rights.

The IP Office and the DTI have the authority to issue subpoena duces tecum and testificandum.

The IP Office may grant attachment to the adverse party’s property upon finding of sufficient cause that security for the satisfaction of judgment is imperative.

The IP Office may grant injunction. The adjudication officer of the DTI may issue a preliminary order similar to the above order, to require a person to refrain or perform a particular act.

The DTI may order the seizure of goods or implements and padlock the building or warehouse where infringed goods are stored.

The DTI may also prevent the departure from the country of the respondent and the vessel or aircraft used in the commission of the offense by way of a hold departure order.

Administrative Penalties that may be imposed are:

issuance of a cease and desist order

acceptance of voluntary compliance of discontinuance

condemnation and seizure of products subject of the offense

forfeiture of paraphernalia and other properties used in the commission of the offense

fines

cancellation of existing permit, license, authority or registration granted by the Office or suspension of validity thereof for a period not exceeding one (1) year

withholding of the abovementioned permit, license, authority or registration pending before the Office

censure

45

damages

other analogous penalties and sanctions

The Director of Legal Affairs may punish for contempt any person that disregard orders or writs issued in the course of the proceeding before the Office.

46

Chapter V JAPAN V.1. HISTORY- JAPAN The first inhabitants of Japanese archipelago came from Sakhalin and Siberia, China and Korea, or the Okinawa Islands overland. The northernmost part of the country, Wakkanai, or the Sea of Okhotsk or Ohotsuku-Kai, has a very close proximity to Sakhalin Island, which is now a territory of Russia. The West and Southwest part is neighboring to what is modern day China and South Korea, and Okinawa, which is the most south part of Japan, is proximate to South East Asia. Japan history can be divided into 14 periods:

Jomon period from around 14,500 – 300 BC. Refined stone implements characterized this period such as production of earthenware vessels made of clay for cooking and storing food. These containers are called jomon pottery or cord-marked pottery after their style and decoration.

Yayoi period from 300 BC – AD 300. After the hunting and gathering stage, early

inhabitants settled down and concentrated in agriculture. The widely used wheel turned pottery that time is called Yayoi.

Kofun/ Asuka period 300 – 710. Hakuho period from 645 – 710. Nara period

from 710 – 794. And Heian period from 794 – 1185. Small states developed and were gradually unified by a strong political authority based in Yamato or the present day Nara Prefecture. Chinese written script and culture, including Confucianism and Buddhism via Korea were introduced during this period. Heian-kyo (Kyoto) becomes capital (794) and remained until 1868.

Kamakura period from 1185 – 1333. Samurai Government was formed during this

period. The Minamoto clan defeats the Taira and establishes Kamakura Shogunate. Muromachi Period 1333 – 1568 and Momoyama period from 1568 – 1600. This is

a period of warring states and leaders engage in power struggles. Oda Nobunaga, one of the great unifiers was victorious in his battles for hegemony in Japan.

Tokugawa (Edo) period from 1600 – 1868 or the period of sustained peace. The

Edo Shogunate maintained stability and social order for almost 300 years. This provided a foundation for people to develop their ability and originality in their vocation and various areas of scholarships were improved.

Meiji period from 1868 – 1912, The Taisho period from 1912 – 1926, Showa

period from 1926 – 1989 and the Heisei period from 1989 – to the present, ushered for the development of a modern state from the Meiji Restoration or the restoration of imperial rule. Tokyo was made the capital and a new centralized system was formed that made Japan capable of competition with the Western world. Classes were reorganized,

47

Daimyo domains were transformed to prefectures, literacy was promoted, and banking industry and taxation underwent reforms.

The Meiji Constitution of 1889 allowed the military direct access to the throne

while maintaining the two houses: the house of peers and the Lower House. The current Constitution of 1949 reduced the power of the Emperor as a mere symbol of the State and clauses on renunciation of war and prohibition to maintain an army was introduced.

In the latter part of the 19th century and into the 20th century with its economic

development accelerating, the ultra nationalist military officers dragged the country into World War II that culminated into the worst destruction of the country after the dropping of atomic bombs in Hiroshima and Nagasaki.

Japan surrendered under the terms of the Potsdam Declaration and was under the

Allied occupation for six and a half years. In the first part of the 1950’s. Japan slowly rehabilitated herself and was able to put the economy back to the pre-war condition. The war in Korea helped fuel the industrialization and the emerging consciousness of households for industrial products reached its peak.

In the 1960’s, Japan was faced with emerging domestic problems. The Prime

Minister resigned and the successor accomplished the further development of the economy. Annual growth based on exports like electronic equipment, automobiles and sophisticated technological products made the annual growth at ten percent and rising. Soon Japan became one of the world’s richest nations.

The recession in 1990s coupled with the dramatic transformation that Japan was

undergoing in its internal structure, did not insulate her from the Asian currency crisis. The election of Junichiro Koizumi, a member of the Liberal Democratic Party, as a Prime Minister on 26 April 2001 seemed to promise a lot of changes. But that did not alter the country’s turmoil, although moving in a containable pace. Having the second largest economy in the world, Japan is assumed to have influence on the world economy trend. The International communities are watching how Japan adapt to the seemingly insurmountable domestic challenges it is facing including the growing responsibilities of an international state.

V.2. GENERAL FACTS AND FIGURES Formal Name: Japan (Nihon Koku or Nippon Koku; literally, Source of the Sun Country or Land of the Rising Sun).

Area: Total 377,835 square kilometers; land area 374,744 square kilometers.

Population: 125 million

Capital: Tokyo (population – 10 Million, but doubles during daytime).

48

People: 99.4 percent Japanese and 0.6 percent other, mostly Korean and some Chinese. Ainu and hisabetsu buraku constitute native Japanese minority groups.

Language: Japanese. Emphasis on English as second language.

Religion: Most (84 percent) observe both Shinto and Buddhist rites, and 16 percent other religions, including 0.7 percent Christian.

Government: Constitutional Monarchy with Prime Minister as head of State.

Prime Minister: Junichiro Koizumi

GDP: US$3.3 trillion;

Topography: Mountainous islands with numerous dormant and active volcanoes. Four main islands (Hokkaido, Honshu, Shikoku, and Kyushu) and numerous smaller islands to north and south, all prone to earthquakes. Highest point Mount Fuji (3,776 meters). Numerous, rapidly flowing rivers largely unnavigable but provide water for irrigation and hydroelectric-power generation.

Climate: Generally rainy; high humidity. Diverse climatic range: warm summers and long cold winters in north; hot humid summers and short winters in center; and long, hot, humid summers, and mild winters in southwest.

Major Products/Industries: Automobile manufacturing, consumer electronics, semi-conductors, computers and industrial robots.

Major Trading Partners: United States, South Korea, Taiwan, and Australia.

Chapter VI. STRUCTURE OF GOVERNMENT

The present 1946 Constitution of Japan is a major reform of the Japanese governmental system. The acceptance of the Potsdam Declaration compelled the change from the Meiji Constitution of 1889 to the current Constitution adopted on 3 November 1946 and was put into effect on 3 May 1947. It embodies three principles: The Renunciation of War Clause or pacifism, the respect for fundamental human rights (clauses on Equality; freedom of thought and freedom of expression; right to property; social rights and procedural rights), and the sovereignty of the people.

The Emperor of Japan is a symbol of the State and signifies unity of the people. He is not involve in the governance but performs formal or ceremonial functions. The government is divided into the legislature, the cabinet and the judiciary.

VI.1. THE LEGISLATURE AND IPR

The legislature is a bicameral system called the National Diet and is composed of two Houses – the House of Representatives or the lower House has 480 Members of

49

whom 180 are elected by proportional representation system and 300 are elected directly from single-seat constituencies; and the House of Councilors or the upper House has 247 Members of whom 98 are elected by the proportional representation system and 149 from the 47 prefectural constituencies.

The National Diet has the following functions: foremost and main is to enact laws, designate a Prime Minister, ratify the conclusion of treaties that the Prime Minister may enter with another State and other International Conventions, decide the national budget, hear petitions submitted by the public, and initiate amendments to the Constitution among others.

Members of both Houses in the presence of the Emperor gather together during an opening ceremony at the beginning of each session. This is done for ordinary and extraordinary sessions several days after Convocation Day and for a special session, after the organization of a new Cabinet. During the ordinary and special sessions, the Prime Minister delivers an address on general policy and the respective Ministers of the different Cabinets delivers an address according to their areas of responsibility; like the Ministry for Economy Trade and Industry for economic policy. In an extraordinary session, the Prime Minister and when necessary other Ministers delivers addresses and the Members of the Houses then ask questions.

There are 17 Standing Committees in each House: on Cabinet; General Affairs; Judicial Affairs; Foreign Affairs and Defense; Financial Affairs; Education, Culture and Science; Health, Welfare and Labor; Agriculture, Forestry and Fisheries; Economy and Industry; Land and Transport; Environment; Fundamental National Policies; Budget; Audit; Oversight of Administration; Rules and Administration; and Discipline. Special Committees are established when the House regards it necessary to establish them.

VI.2. THE CABINET AND IPR

Japan has a parliamentary system of government, this means that Diet members elect a prime minister from among themselves, who then forms a cabinet and administers the nation. The postwar political system is a consequence of the major reformation of the Constitution of 1946. Executive power has been vested in the cabinet headed by a prime minister, responsible for appointing and dismissing other cabinet members and is collectively answerable to the Diet.

Cabinet ministers include those appointed to head the twelve ministries, and the ministers of state placed in charge of the agencies and commissions of the Office of the Prime Minister, which itself has the status of a ministry. The twelve ministries are of Justice; Foreign Affairs; Finance; Education (responsible for the protection of copyright, the Japan Copyright Office (JCO) of the Agency for Cultural Affairs (ACA)); Health and Welfare; Agriculture, Forestry and Fishery; Economy Trade and Industry (Japan Patent Office (JPO) handles industrial property rights, one of METI’s agencies); Transport; Posts and Telecommunications; Labor; Construction; and Home Affairs. Other

50

commissions of the cabinet include, the Fair Trade Commission, which handles the Anti-Monopoly Law.

VI.3. THE JUDICIARY AND IPR

Japan has an independent judiciary and has the hierarchy of courts. The Supreme Court is the highest court and summary courts are at the bottom of the hierarchy. The judicial system has the three-instance principle where a party is allowed a maximum of three venues to take up his case or may appeal verdicts up to two times to a higher court. Such an instance would be an appeal to the Tokyo High Court on a decision of the Commissioner of the JPO, then to the Supreme Court on appeal of the Tokyo High Court’s decision. This is also the same on a decision of the Fair Trade Commission in violation of the Anti-Monopoly Law but only if lacking of substantial evidence. In cases of Infringement, the first instance would be the District Court who has jurisdiction over the crime and the second instance would be the High Courts and the third would be the Supreme Court.

The only exception to this three-instance system is a Jokoku appeal (also termed as ‘special appeal’ in this instance) where it is made against a judgment rendered in a High Court as a court of third instance. It is stipulated in the Code of Civil Procedure that a further Jokoku appeal may be made to the Supreme Court, as the court of last resort and with power to determine the constitutionality of the law (Constitution), if there exists a misinterpretation of the Constitution or in contravention thereof.

Article 81 of the Constitution designates the Supreme Court "the court of last resort with power to determine the constitutionality of any law, order, regulation, or official act." It is located in Tokyo and its territorial jurisdiction is all over Japan. The Supreme Court is also responsible for nominating judges to lower courts, determining judicial procedures, overseeing the judicial system, including the activities of public prosecutors, and disciplining judges and other judicial personnel. It renders decisions from either a grand bench of fifteen justices or a petit bench of five.

There are eight High Courts plus 6 branch offices in some High Courts, in eight major cities in Japan, namely, Tokyo, Osaka, Nagoya, Hiroshima, Fukuoka, Sendai, Sapporo and Takamatsu. Each High Court exercises its own territorial jurisdiction over one of the eight major cities.

The Tokyo High Court has exclusive original jurisdiction to review decisions of quasi-judicial agencies such as the Patent Office, the Fair Trade Commission and the Maritime Commission.

Below the hierarchy of the High Courts are fifty district courts and fifty family courts. The Osaka and Tokyo District Courts are special courts for IP cases. Osaka District Court has original jurisdiction in cases of infringement on the western side of the territorial boundary whilst Tokyo District Court has jurisdiction on the Eastern side.

51

The Family Courts handle cases concerning domestic relations and juvenile delinquency. The 437 Summary Courts in cities, towns and villages throughout the country hears minor cases.

Chapter VII. THE INTELLECTUAL PROPERTY SYSTEM

JAPAN PATENT OFFICE

Looking at the nation’s history, the dichotomy of the prevalent situation that time, led to the supremacy of Japanese industry that is widely recognized today. The chronicle of intellectual property rights of Japan is impressive. A vague but somehow related system that led to the present industrial and economic prosperity of Japan and its advanced intellectual property rights and protection system was in place as early as the 18th century.

After centuries of in fighting among the different classes and rulers of old Japan, the Edo shogunate was able to attain a period of sustained peace on the latter part of the 17th century. The development of various industries, prosperity of many cities and flourishing of copious arts were a consequence of a stable social order.

With the announcement of “Shinki Gohatto” (Prohibition of New Matters), by the shogunate government in 1721, the intention was to protect and promote existing industry by prohibiting consumption of new items. This produced monopolistic effect on commercial and industrial guilds that was formed under the approval of the government for the different commercial fields.

By the introduction of western culture during the Meiji restoration, it further led to the advancement of Japanese industry and development of the patent system. But the short-lived Provisional Regulations for Monopoly was established during 1871 and is Japan’s first patent law.

The encounter of Mr. Masana Maeda, a bureaucrat who traveled nationwide to witness the actual state of industry and issued opinions for the amelioration of the industry, and Mr. Korekiyo Takahashi, a politician who eventually became the first Commissioner of the Japan Patent Office, in 1883 was the decisive moment leading to the full development of the Japanese patent system.

The Trademark Law came into existence on 7 June 1884, the Patent Law on 8 April 1885 and the Design Law on 18 December 1888. In 1899, Japan acceded to the Paris Convention and the Bern Convention for the Protection of Literary and Artistic Works that led to the Copyright Law of Japan, the law of Utility Model in 1905 and the Unfair Competition Prevention Law in 1934. Since then, amendments had been regularly introduced to cope with the advancing technology and developing systems.

52

The global recession of 1929 affected the trade relations among the nations. Japan focused on domestic stimulation of demand for local products and promoted inventive creativity among its people. The wartime age exacerbated the dire condition of the intellectual property on that period.

Japan had a tremendous post war recovery during the late 50’s. With the importation of technologies from overseas, Japanese companies banked on this latest technologies from abroad and developed their own. By the early 60’s, Japan was able to revive its economy and even surpassed its economic prosperity on the pre-war era.

After ending its catch-up type growth, Japan has been independently developing and continuously maintaining its reputation as a nation of advanced technological developer. Various governmental and semi-governmental IP agencies occupy a very vital role in the sustenance of this development.

The Japan Patent Office (JPO) one of the agencies of the Ministry of Economy, Trade and Industry (METI) deals with the enforcement of the industrial property laws, namely the Patent Law, Utility Model Law, Design Law, and Trademark Law as its principal function and other related functions fundamental to industrial property.

The following are the major roles of the Japan Patent Office:

Granting exclusive rights to patents, utility models, designs, and trademarks;

An application, whether domestic or international, once received by the Japan Patent Office undergoes examination as to its registrability before any right can be granted. This is one of the main functions of JPO initially done by the examiner. The registrability of the different industrial property rights is stipulated among the different industrial property laws and the examiner performs the requisite examination based on the aforementioned laws.

The procedure is also laid down in the following laws in case of objection, opposition, invalidation or cancellation of any of the intellectual property rights.

Dissemination of information about industrial property rights;

General information relating to industrial property rights is easily accessible by the public through electronic form via the Internet, provision of CD-ROM, and actual visit to the JPO office for inspection is open any time.

Explanatory meetings are held among the 47 prefectures of Japan. This is provided to deepen the understanding and recognition of the IP system’s importance.

In necessitating the development of “patent mind”, JPO has embarked on intellectual property education. It has developed various teaching materials and distributed free of charge to educational facilities in the country.

53

Improving the system and operation of industrial property rights;

JPO is continuously updating its intellectual property system through the international exchange and planning and designing of measures aimed at ensuring industrial property rights. As an effect, the Patent Office revises legal ordinance and amends regulations, revises its guidelines for examination (software technology, bio-technology, etc.), to create a system suitable for its functions.

Planning and Designing industrial right policy;

Japan Patent Office has an indispensable role in planning and designing a policy for industrial property rights, as the country is on the threshold of an era of creative intelligence for the twenty first century.

To stimulate positive and active development, JPO undertakes the following measures:

(1) To provide broader protection by expanding the subject of protection of intellectual property rights.

(2) To provide better protection by defining the use and prevent the abuse of owner ‘s right.

(3) By bridging the activities of universities and research institutions and the resources of industries by utilizing (applied patents) their basic patents. Technology License Organizations (TLOs) under the “Law For Promoting University-Industry Technology Transfer” in May 1998 has the full support of JPO in its activities such as seminars.

(4) By activating dormant patents through distribution database and collection of utilization examples of unused patents. Other promotional activities such as further promotion of entirely paperless processes and development of traders engaged in intermediary business intellectual property transactions.

International exchange and cooperation.

JPO has been implementing human resource development cooperation in the Asia-Pacific region. The Office has accepted an average of 200 trainees per year since 1996 to support the implementation of the TRIPS Agreement. It has dispatched 40 experts in 1999 to intellectual property offices in the Asia-Pacific Region to assist in the automation and give advice on examination.

JPO thrives not only to develop its own system but supports the development of a Global Patent System. Annual conferences are held by the heads of the trilateral patent offices’, the Japan Patent Office (JPO), the United States Patent and Trademark Office (USPTO), and the European Patent Office (EPO), to solve common issues such as

54

information exchange through networks (trilateral internet interconnectivity), promotion of mutual understanding of searches and examinations, and effective utilization of patent information.

The JPO has the Office of the Commissioner composed of the following:

A Commissioner

Deputy Commissioner

The National Center for Industrial Property Information, further subdivided into:

• Patent Information Service Division

• Patent Information Distribution Division

Industrial Property Training Institute

Industrial Property Council

Patent Attorney Examination and Disciplinary Committee

Under the Office of the Commissioner, are six (6) Departments that perform its respective functions:

General Affairs Department

The General Affairs Department comprehensively coordinates the general affairs of the following sections:

Personnel Division

General Affairs Division: Industrial property Legislation Office

Budget and Accounts Division

Technology research Division

Patent Information Division: Patent Information Promotion Policy Office

International Affairs Division

The Trademark, Design and Administrative Affairs Department

The Trademark, Design and Administrative Affairs Department accepts applications, does the formality examination, registration, maintenance and administration of information system of design and trademark application. Under this department are the following divisions:

55

Formality Examination Division: Formality Examination Standards office

Application Support Division: - Registration Office

- Patent Administration Service Office

International Application Division: International Trademark Application Office

Information Systems Affairs Division

Trademark Division

Design Division

Director

First Patent Examination Department

The First Patent Examination Department examines inventions related to the extraction and processing of agricultural, forestry and livestock products, as well as construction, nuclear energy, measurement and office products. Under this Department are:

Administrative Affairs Division: Examination Standards Office

Director: Examination Division (9)

Second Patent Examination Department

The Second Patent Examination Department examines inventions related to machinery.


Third Patent Examination Department


Fourth Patent Examination Department


Appeals Department

Chief Appeals Examiner: - Appeals Division:

- Infringement and Invalidation Affairs Office

56

Other affiliated Organizations under JPO are:

Japan Institute of Invention and Innovation (JIII):

Asia Pacific Industrial Property Center (APIC)

Japan Patent Attorneys Association (Nihon Benrishi-Kai)

Japan Patent Information Organization (JAPIO)

Industrial Property Cooperation Center (IPCC)

Japan Design Protection Association

Japan Foods Patent Center (JFPC)

Patent Application Processing Center (PAPC)

Institute of Intellectual Property (IIP)

Japan Intellectual Property Association (JIPA)

International Association for the Protection of Industrial Property of Japan (AIPPI-Japan)

The Japan Technomart Foundation

In sum, the various intellectual property rights and the laws protecting them are grouped under the following:

The Japan Patent Office (JPO), the agency that handles the following industrial property rights and the laws protecting them are:

Patent Rights (Patent Law)

Utility Model Rights (Utility Model Law)

Design Rights (Design Law)

Trademark Rights (Trademark Law)

The Agency for Cultural Affairs (ACA), one of the agencies under the Ministry of Education, Culture, Sports, Science and Technology handles the:

Copyright (Copyright Law)

Layout-Design of Integrated Circuits rights (Law concerning the Circuit Layout of Semiconductor Integrated Circuits)

57

Trade name rights (Commerce Law)

Trade secrets and acts related to unfair competition (Unfair Competition Prevention Law), handled by the Fair Trade Commission

New varieties of plants (Seeds and Seedlings Law) handled by the Ministry of Agriculture

58

Chapter VIII. THE IP LAWS

VIII.1 THE PATENT APPLICATION AND RIGHT

The Patent Application Procedures

Application


Publication of Unexamined Application or Laying Open

Request for Examination


[A.1] Decision to grant a Patent ☺

Registration ☺

Publication of Patent ☺

Opposition :

Decision to maintain the patent Issuance of Patent Certificate

Decision to revoke the patent

[B.1] Notification of Reasons for Refusal

Amendment :

Decision to grant the patent Registration Publication

Opposition :

Decision to maintain the patent Issuance of Patent Certificate

Decision to revoke the patent

Decision of Refusal

Any person desiring a patent on an invention, which is industrially applicable, shall file an application with the Japan Patent Office (JPO) containing a request stating the name, address or domicile of the applicant. If the applicant is a person other than the inventor, the name, address and domicile of the inventor shall be stated. The request shall be accompanied by the specification, drawings if necessary and the abstract.

When a person files an application there is actually conducted an initial formality examination by the receiving clerk of the Patent Office to check as to

59

the sufficiency of the form of application. If the clerk finds this in order, it shall be accorded a filing date. Otherwise, the clerk notifies the applicant as to the deficiency in the form and the applicant may either correct or bring the matter to the Commissioner of the Patent Office.

The application shall be in Japanese and no other language except English. This is because of a bilateral agreement between the US and Japan. The English language application may be submitted initially, with the translation of all and any text to Japanese language be submitted within two (2) months from the date of filing of the application as provided under Sec. 36bis (2) and Sec. 25quater of the Regulations under Patent Law.

The examiner to check if the application satisfies the requirements of formality shall conduct a second formality examination. This time, substantial requirements of the application such as specification containing the title of the invention, brief explanation of the drawings, detailed explanation of the invention and patent claim(s). The claim(s) shall set forth the invention for which the patent is sought and must be described in a clear and concise manner.

After eighteen (18) months from the filing date of the application, or earlier if the applicant requests for it, the application shall be laid open for public inspection. The laying open shall be effected by publication of the following particulars in the Patent Gazette:

the name, domicile or address of the applicant or the inventor in case he is not the applicant;

number and date of the application;

particulars of the invention and contents of the drawings attached to the request;

in case of a English language application, the particulars stated in the foreign language file and abstract;

number and date of the laying open;

other necessary particulars.

An applicant may claim damages from another person who has commercially worked the invention after it was laid open. Provided that the person was sent a warning setting forth the invention claimed in the application. A warning is dispensed with if the person has knowledge that the invention was claimed in the patent application laid open for public inspection. This right may only be reinforced after the establishment of the patent right.

Within three (3) years when a patent application has been filed, the applicant shall make a request for substantive examination. If a request has been made it shall not be withdrawn. This is to put an end to uncertainty of an

60

invention or application that is pending before the Office that is why, even a third party may request for the conduct of substantive examination.

If no request has been made within the specified period, the application shall be deemed withdrawn. This is of the view that the applicant might have lost interest in prosecuting the case or might have realized that invention has minimal value after all.

A preferential examination by the examiner may be given to an application where a request for substantive examination has been made if after laying open the invention, a third party other than the applicant is commercially working on the invention. An accelerated examination may be requested by the applicant even before the laying open of the application in which case a first action by the examiner from the request may be made between 3 – 6 months or registration granted between twelve (12) – eighteen (18) months.

When the examiner finds no reason for refusal, he shall render a decision to grant the patent, whereupon it shall be registered upon payment of fees. The patent shall be published in the Patent Gazette where any person may file an opposition within six (6) months from the date of publication of the patent.

A trial by a collegial body of three or five examiners shall be conducted whether to maintain or revoke the patent. If the decision of the body is to maintain, an issuance of certificate after payment of fees shall be in order. Otherwise, right holder may file an action with the Tokyo High Court.

When the examiner finds reason to refuse the application he shall notify the applicant of any reasons enumerated hereunder and give him an opportunity to submit a statement of his arguments or to amend the application as required.

An application shall be refused based on the following grounds:

The amendments to the specification or drawings attached to the request does not remain within the scope of the features disclosed as originally attached to the request.

The application is not patentable under Section 25

- Sec. 25 grants the principle of reciprocity or nationality to an alien. If a person is a national or is domiciled or has an effective establishment in a country that allows IPRs benefits to Japanese nationals, the same reciprocal benefits shall be granted to the person. Same thing if he is a national or domiciled or has effective establishment in a member country that gives protection and enforcement to IPRs by virtue of a treaty, convention and agreements.

61

The application is not patentable under Section 29

- Sec. 29 enumerates the requirements of patentable inventions, which are newness or novelty, highly advanced inventive quality by which a law of nature is utilized and is industrially applicable. If an invention has been publicly known publicly worked or has been described in a publication or through other telecommunication lines in Japan or elsewhere, it shall loss its novelty.

The application is not patentable under Sec. 29bis

- Section 29bis, principle of collision must be discussed in relation to Section 39, principle of first-to-file rule.

- Under Section 29bis, where an invention claimed in a patent application is identical with an invention or device disclosed in the specification or drawings originally attached to the request of another application for a patent or utility model filed prior to the filing date of the application in question, it shall be refused registration. This contemplates a case where there are different inventions but similar or identical specifications and different applicants. This is the theory of collision. However, if the applicants are one and the same person, this provision shall not apply because of the theory of self-collision. In other words, the conflict in the specifications can be reconciled because both rights belong to the same person and would not really create a problem.

- Under Section 39, where two or more inventions have been made separately and independently of each other, the first one who filed an application shall be granted registration. Conversely, if two or more applications relating to the same invention are filed on different dates, only the earliest filed application shall be granted registration. When two or more applications have been filed on the same date relating to the same invention, no patent shall be granted upon

62

failure of applicants to agree to only one applicant after mutual consultation. Where an invention claimed in a patent application is the same device claimed in a utility model application and they are filed on different dates, the earliest application shall be registered. When the invention claimed and the device claimed are filed on the same dates, no registration shall be granted upon failure to agree on only one applicant. Section 39 reflects a situation where the invention or creation are the same, the applicants are different persons and the applications were either filed on the same date or different dates.

The invention is not patentable under Section 32

- The invention shall be refused registration even if it has the requisites of patentability of newness, inventiveness and industrial applicability if it contravenes public order, morality or public health.

The invention is not patentable under Sec. 38

- Where an invention has been jointly made or the right to a patent has been succeeded jointly and the individual inventions made in case of joint inventions or the individual rights in case of joint successions cannot be separated independently from each other, a joint application shall only be applied by the joint owners. If one of the joint owners refuses to file an application jointly, no registration shall be allowed.

The invention is not patentable under Section 39.

- See the discussion above.

The invention claimed in the application is not patentable under the provisions of a treaty.

- This is self-explanatory. But in case of conflict between a treaty and the Patent Law, the provisions in the treaty shall prevail.

63

The application does not comply with the requirements under Section 36 (4) or (6).

- Section 36 (4) provides on how an invention shall be explained in detail as provided under the Regulations. Nevertheless, the explanation shall be clear and complete for the invention to be carried out by a person skilled in the art to which the invention pertains.

- Section 36 (6) provides on how the claim(s) in the specifications shall be made.

The application does not comply with the requirements under Section 37.

- Section 37 provides for an application that may contain two or more inventions because of its relationship to each other. This provision deals with the principle on unity-of-invention.

Where the translation into Japanese language of the specifications and drawings of an earlier English language application do not remain within the scope of the features disclosed in the foreign language application.

Where the applicant is not the inventor and has not succeeded under any right of the inventor to prosecute the application.

The Patent Law provides for two types of priority claim. Section 41 provides for domestic priority claim where a person may claim a priority right to an earlier filed application, provided, that the latter application claims a priority right within the one (1) year period from the filing date of the earliest application. That the new application is not divided or converted out of the earlier patent or utility model application.

The earlier application shall be deemed absorbed by the latter application when a domestic priority claim has been filed. After the expiration of one year and three months from the filing date of the earlier application, it shall be deemed withdrawn. If an applicant may claim a priority on a patent application that has been divided or converted, the same theory of absorption and withdrawal cannot be applied and it will result in the increase of the number of applications in the Patent Office.

Likewise, the applicant may not withdraw a claim after the expiration of one year and three months because of this theory of withdrawal or dissolution of

64

the earlier application after the prescribed date. But, if a withdrawal of a patent application containing the priority claim has been timely made, the priority claim shall be simultaneously deemed withdrawn.

The other priority claim is under Sec. 43, the priority claim under the Paris Convention. Where the application filed in Japan claiming an earlier priority was filed within the one year period from the filing date of the valid foreign application and documents were submitted as required under Section 43, the filing date in Japan shall be the real filing date when application claiming priority has been filed in Japan.

When a person who has declared a priority claim under this law failed to submit the documents referred to under Section 43 (2) with in the prescribed time limit, the priority claim concerned shall lose its effect. In other words, the right given to a priority claim within a year in case a similar invention shall have been published or commercially worked shall result in losing the novelty. And in case an application has been filed prior to the application claiming priority the first-to-file principle shall have an adverse effect to the application claiming priority.

A patent application comprising of two or more inventions may be divided into one or more patent applications provided it is done within the prescribed time. In such a case, the filing date of subsequent divided applications shall be the filing date of the original application.

A patent application may also be converted to other applications and there is no limit as to the number of conversions as long as it is done within the allowable time.

After the substantive examination, the examiner shall issue a first notice of refusal if he deems it fit to refuse the application and shall contain the reasons thereof. Upon receipt by applicant of the examiner’s first notice of refusal, he may either amend the application based on the grounds given in the notice of refusal or he may argue without an amendment. In either case, the answer must be tendered within 30 days from the transmittal of the decision.

The examiner upon receipt of an amended answer of applicant, and when new reasons for refusal emerged, he shall forthwith issue the second or last notice of refusal. If the answer of the applicant is without amendment and he choose to maintain his decision he shall issue a decision for refusal.

Usually an amendment shall be allowed anytime before the transmittal of the decision of the examiner to grant the patent.

Where a notice of reasons for refusal has been received, amendment may still be allowed. Also, when applicant demands a trial under Section 121 (1) an amendment may be validly made within 30 days of such demand. In both instances, amendments shall be permitted if it is a cancellation of claim(s); if it is a restriction of claim(s); if it is a correction of errors in the description; and just to clarify ambiguous description.

65

If an amendment does not comply with the above restrictions, the examiner shall decline the amendment by a ruling. No appeal from this ruling to decline an amendment is allowed because the declining of amendment shall result into a decision to refuse the application. Instead an appeal from a decision to refuse is proper.

Where an applicant is dissatisfied with a decision of refusal of the examiner, he may demand a trial within 30 days from the transmittal of the decision. An appeal board (ex-parte proceedings) shall hear and decide the case. If the applicant submitted an amendment within the 30 days, the appeal board shall remand the case to the examiner for reconsideration.

In which case, if the examiner reverses his previous decision of refusal considering the amendment made, he shall proceed with the examination and finally allow the registration. If he decides to maintain his decision, he shall submit a report to the board containing the reasons thereof after taking into consideration the amendment made. The appeal board shall then decide and its decision is appealable to the Tokyo High Court and further to the Supreme Court.

If a demand for trial has been demanded against an examiner’s decision of refusal, and the applicant just argued the reasons without amendment, the appeal board shall act on it immediately without remanding it back to the examiner.

Any person may file an opposition based on the grounds enumerated under Section 113 within six months from the second publication containing the grant of the patent right. A trial board (inter-partes proceedings) may hear and decide the case. The trial board shall render a ruling to revoke if the patent falls under any of the grounds enumerated in the above section. If the patent holder is dissatisfied with the decision, he may file an action with the Tokyo High Court and finally with the Supreme Court.

Where it is not found to fall under any of the grounds, the trial board shall maintain the registrability of the patent. In this case, the oppositor cannot file an appeal on this ruling. His remedy would be limited to filing a trial for invalidation of the patent based on the grounds under Section 123. The problem requirement of this trial is the demandant shall be an interested party. So, if the Oppositor is just any other person, he cannot further continue to prosecute the trial for invalidation.

A trial for invalidation may be prosecuted even after the extinguishment of the term of the right. This is to afford restitution in cases of wrongfully adjudged infringement case during the validity of the patent right but was subsequently invalidated.

Other trials available under the patent law are a trial for invalidation of registration of extension of term, which may be demanded by any person and

66

within the period of the extended term. Demand for invalidation of extension of term after the expiry of the extended term shall render it moot and academic.

Another trial that may be demanded under Chapter VI is a trial for correction by the patentee to correct the specification or drawings attached to the request. The correction that may be made is subject to restrictions provided under the law. This trial may not be demanded when there is a pending trial for opposition.

A demand for retrial against a final ruling to revoke a patent or trial decision may be demanded based on the grounds for retrial under Sections 338 (1) and (2) and 339 of the Code of Civil Procedure.

The following actions shall come under the exclusive jurisdiction of the Tokyo High Court:

an action against a ruling to revoke a patent;

a trial decision;

a ruling to dismiss a written opposition;

a ruling to dismiss a demand for a trial;

a ruling to dismiss a demand for a retrial.

The term of the patent right shall be 20 years from the filing date of the application. This may be extended to a maximum of 5 years additional upon showing of grounds recognized by the Regulation to be a valid cause for the impossibility to work the invention.

67

VIII.2. THE UTILITY MODEL REGISTRATION AND RIGHT

THE UTILITY MODEL PROCEDURES

Application

Examination of Basic Requirements


[A.1] Registration

Publication

[B.1] Invitation to submit Amendments

Amendments :

Register

Publication

Amendment ruled invalid

Any person desiring to obtain a utility model registration with respect to a device which is industrially applicable and which relates to the shape or construction of articles or a combination of articles shall file a request with the Patent Office containing the name, domicile or residence of the applicant and the creator if the applicant is other person from the creator.

Accompanying the request is a specification containing the title of the device, a brief explanation of the drawings, a detailed explanation of the device and the utility model claim(s); the drawings and the abstract.

Together with the filing of the application, a filing fee and a registration fee is paid at the same time. An initial formality examination upon receipt of the application is conducted. This is to check if the application conforms to the basic requirements of formality.

Thereafter, a formality examination shall be conducted to check the registrability of the utility model application. This is not a substantive examination unlike in patent applications. Formality examination checks whether the utility model application complies with formality.

The principles of novelty, unity of application, unregistrability of the device if it is against the public order, morality or public health, self-collision, domestic priority claim and the priority claim under the Paris Convention provided under the patent law is applicable to the utility model application.

68

The first-to-file principle under the utility model law is quite different from the patent law. If two or more utility model applications were filed on different dates relating to the same device, the earliest application filed shall obtain a registration. If they are filed on the same date, no one shall obtain a registration. This presupposes that there shall never be a mutual consultation among the applicants to agree on a sole applicant among them unlike in the patent law. However, when an application has been abandoned, withdrawn or dismissed, the registration shall be granted to the other application that was filed on the same date as the withdrawn, abandoned or dismissed application.

If the examiner finds after formality examination that the registration may be allowed, he shall cause the registration of the utility model application and the subsequent publication of the registration. If he finds otherwise, he shall invite the applicant to amend.

After submission of amendment the examiner may both allow the registration and cause the publication of such registration. Or he may declare that the amendment is invalid and shall refuse registration. In such eventuality, the applicant may file an appeal to the appeal board on the decision to refuse the registration.

If still unfavorable, the applicant may file an action to the Tokyo High Court and finally to the Supreme Court.

A utility model right shall come into force upon registration. Registration is made after filing the application and the examiner allows the registration of the device after the initial formality examination and the 2nd formality examination. Also, when there is an invitation to amend and the amendment was made as required, registration shall also be allowed.

The registration and the establishment of right shall be published in the Utility Model Gazette.

Any person may make a request, at any time for technical opinion as to the registrability of a utility model. This report is referred to as Jitsuyoshima Gijutsu Hyokasho in Japanese. The registrability report is equivalent to a substantive examination under the Patent Law. But this is rather different from the hantei judgment under the said Law.

A hantei judgment is handed down by a board made up of three appeal examiners and is a report on the scope of the patent right. A registrability report is a report made by an examiner and is a technical opinion as to the registrability of the device. It determines the novelty and inventive steps based on distributed publications, prior art effect of prior application, and the first to file rule. The report describes the range of search, indication of previously released related art documents, and evaluation for registrability of each claim.

A hantei judgment can be a basis of validation or invalidation of a patent right by the Tokyo High Court since it is a decision in effect by a board. While a

69

registrability report may never serve as a basis of a right except when someone who holds a right must present the registrability report when giving warning to an alleged infringer.

If the examiner finds out in the course of making the registrability report that the utility model registration should never been registered, the registered right may not be invalidated ipso facto by the result of the report. A trial for invalidation or revocation must be demanded in order to cancel the registration.

When the registrability report concludes the invalidity of registration, the applicant is not entitled for an appeal under the Administrative Appeal Law because their may never be an action against the report. A demand for trial for invalidation shall be made to give effect to the conclusion of the report.

Not all Utility Model right shall be issued a report. A registrability report shall only be made upon a request.

At anytime even after the extinguishment of a utility model right, any party under any of the grounds enumerated in Section 37 of the Utility Model Law may demand a trial for invalidation. The purpose of trial for invalidation even after the extinguishment of the right by any cause such as expiration of the term, is for restitution in case of a trial where an alleged infringer have been adjudged guilty based on an existing valid right that time and has been subsequently invalidated.

The party concerned or an intervener may demand a retrial against a final and conclusive decision based on the grounds under Sections 338 (1) and (2) and 339 (Grounds for Retrial) of the Code of Civil Procedure.

Under Section 28 of the UM Law, it enumerates the acts that are considered to be direct and indirect infringement. An object to be used for the manufacture of the article covered by the registered utility model is deemed to be an indirect infringement. Such object shall include but not limited to special molding machine to produce the utility model registered, or a special printing machine that can be exclusively used for the manufacture of the device. Where the machine is not for the sole purpose of manufacturing infringing product such as a computer, the owner of the right has the burden of proving that such machine is used or to be used for infringement of the device.

The term of the Utility Model right shall be six years from the filing date of the application and is non-extendable.

70

VIII.3. THE DESIGN REGISTRATION AND RIGHT

THE DESIGN APPLICATION PROCEDURES

Application

Formality Check

Substantive Examination :

[A.1] Decision to Grant Registration ☺

Registration of Establishment ☺

Publication of Design Gazette ☺

Trial for Invalidation ?

[B.2] Notification of Reasons for Refusal

Written Argument :

[B.2.1] Decision to Grant Registration ☺

Registration of Establishment ☺

Publication of Design Gazette ☺

Trial for Invalidation ?

[B.2.2] Decision of Rejection

Demand for Appeal Against Decision

Appeal Examination

Appeal Decision

Tokyo High Court

Supreme Court

Any person desiring to register a design shall submit a request to the Patent Office which shall contain the name, domicile or residence of the applicant and the creator of the design if the applicant is other than the creator; the article(s) to which the design is applied; explanation of the article; and explanation of the design.

71

A drawing shall accompany the request and may be in the form of any of the following: design of three-dimensional > six views or two-dimensional > two views; or photographs; or model or sample.

Design as defined under Section 2 (1) of the Japanese Design Law means a shape, pattern or color or any combination thereof in an article, which produces an aesthetic impression on the sense of sight. From this definition the following inferences are made:

the design shall be embodied in an article or a part of an article and may be a combination of any of the following:

- shape of an article or part of an article

- combination of a shape and pattern of an article

- combination of shape and color

- combination of shape, pattern and color

a design without an article to which it is applied shall never be registered. A design is inseparable from the article or a part of an article to which it is applied.

the design shall produce an aesthetic impression on the sense of sight.

The design shall not only be purposeful or inventive arrangement, but shall give distinctive appearance in the article to which it is applied and is pleasing to the eye. The impression shall connote beauty or attractiveness.

Once an application is filed, it shall be then checked as to its formality. The request, drawings and the like if there is any deficiency, the applicant shall be notified and a correction and amendment shall be submitted, failure to submit correction or amendment shall result in invalidation of the application.

After compliance with the formality requirements, the application shall be examined as to the substantiality for registration. The registrability of the design application shall be scrutinized. A design is registrable if it is new, therefore it must have never been known in Japan or elsewhere prior to the filing of the application neither described in a publication, or other designs which are similar to those first two mentioned. The equations in judging similarity are:

Identical shape + identical article = identical design

Similar shape + identical article = similar design

Identical shape + similar article = similar design

72

Similar shape + similar article = similar design

Identical shape + non-similar article = not similar

Similar shape + non-similar article = not similar

Non-similar shape + non-similar article = not similar

A person who has ordinary skill in the art to which the design pertains on the basis of shape, pattern, color or any combination thereof must not easily create the design prior to the filing of the application.

An identical design or a similar design, which has been described in a prior design application and was published in the Design Gazette shall be refused registration.

A design shall also be refused registration if it is liable to contravene public order or morality; or might give rise to confusion with respect to articles connected to another person’s business or composed only of shapes.

The first-to-file rule of Design Law is similar to Patent Law with the exception on related designs. For a related design to be registered even if similar to a principal design, the applicant for both designs must be the same person and the two applications must be filed on the same date.

The general rule is one design for one application. An exception would be in a case of design of a set of articles. A design of set of articles shall be extended protection if they comply with the following requirements: the two or more kinds of articles are used simultaneously; the articles as a whole must be fully integrated; and the design of set of articles must belong from the 56 categories of Sets of Articles under the Regulations.

When no reason for refusal was found as a result of examination, the examiner shall make a decision that the design shall be registered. Upon filing of the fee for the first year, the establishment of the right shall be registered. When registration has been effected, the establishment shall be published in the Design Gazette with all the necessary particulars.

After the publication, anyone may file a trial for invalidation of design registration at any time even after the extinguishment of the right under the grounds enumerated in Section 48 of the Design Law.

Where the examiner finds reasons for refusing the registration of the design, he shall send a notification of reasons for refusal to the applicant. An answer by the latter would be a written argument. If the written argument is satisfactory to the examiner, he shall reverse his decision to instead allow the registration.

73

Where there is a failure on the part of applicant to submit an argument, or if an argument was submitted but the examiner still decides to maintain his disputed findings he shall issue a decision of rejection wherein the applicant shall have 30 days to demand for a trial against the unfavorable decision of the examiner.

The Appeal Board shall conduct an appeal examination and render an appeal decision. If the applicant is still dissatisfied, he may file an action with the Tokyo High Court and lastly to the Supreme Court.

The previous Japanese Design Law had a similar design registration system, with the current Design Law such system was abolished and a related design registration system was instead introduced.

Under the old system, there is a principal design and a similar design. Fee is paid only for the principal design and the similar design is considered part and parcel of the former. Thus a similar design shall be given an extension design number of the principal design. A similar design may be applied anytime before the expiration of the term of the original design. But a similar design not related to principal design is not protected. So, a third party may work a similar or identical article with a similar or identical shape. Also, both principal and similar designs must be disposed of together since they are considered as one design. The term of similar design is dependent on the term of the principal design.

Under the newly introduced system of related design, each design is registered on its own thus, separate payment of fees and a distinct design number. Each design has its own sphere of protection for its value of creativeness. Application has to be on the same date by the same applicant and other party cannot apply for related designs. Thus, a identical and similar designs are protected. Either designs can be disposed or alienated individually. The term of the related design is 15 years from the date of registration of the principal design right.

Partial design registration system is also a newly introduced system. Section 2 does not only include the whole article but also a part of an article can be the subject matter of design registration.

There are some articles that may consists of many individual designs. Some designs might be developed ahead than the rest to complete the whole function of an article. If the design in the application should be kept not only as a marketing strategy until the product appears on the market, the applicant may file a request for a secret design together with the application. In such a case, the secrecy shall be for a maximum of 3 years and the secret design shall not be published as a ordinary design after registration.

Moving designs are designs where an article is transformed based on its function. The appearances both prior to and after the transformation may be eligible for design registration.

74

The term of a design right shall be fifteen (15) years from the registration of its establishment.

75

VIII.4. THE TRADEMARK REGISTRATION AND RIGHT

TRADEMARK APPLICATION PROCEDURES

Application

Publication of Application

Initial Formality Check:

According a Filing Date

Invitation to Amend:

Amendment

Dismissal


Invitation to Amend:

Amendment

Dismissal


[A.1] Decision of Registration ☺

Registration ☺

Issuance of Trademark Gazette ☺

Opposition ? [B.1] Notice of Reasons for Refusal:

Statement or Amendment:

{b.1.1} Decision of Registration ☺

Registration ☺!

{b.2.1} Decision of Refusal

Trial Against Decision of Refusal

76

Any person desiring a trademark registration shall file an application with the Patent Office which shall contain a request stating the name, domicile and residence of the applicant; the trademark for which the registration is sought; and the designated goods or services plus the class of goods or services. It shall also contain other necessary documents such as but not limited to reasons for using the trademark, raw material etc. of goods, efficacy etc. of services and the payment of application fee.

After application for trademark is filed, it shall be published in the Trademark Gazette. This is the first instance when a trademark application is published. This first publication is done before the formality check and examination. The publication shall contain the following particulars:

- The name, domicile or residence of the applicant

- The number and date of the application

- Contents of the trademark stated in the request

- The designated goods or designated services

- Others.

Items 3 and 4 shall not be published in the Trademark Gazette nor may it be laid open for public inspection if it is liable to contravene public order and morality. A trademark that is liable to contravene public order and morality shall be unregistrable but ruling as to the liability of the trademark is a subject under the substantive examination. Therefore, even if the trademark might be unregistrable, it still has to be published initially which is done even before the initial formality check.

The Commissioner though has the discretion to prohibit its publication or its laying open for public inspection if he suppose it to be so. Although the final determination of its registrability shall be decided during the substantive examination.

The first formality check shall be carried out to accord the trademark application a filing date. If there is any deficient requirement the applicant may make amendments to supplement the deficiency. Otherwise the application shall be dismissed.

After submission of corrections in writing, a second formality check shall be conducted. This is to check on formality requirements other than the earlier mentioned requirements. If the examiner finds further discrepancy, he shall make

77

an invitation of amendment. The applicant shall submit amendment based on the second invitation and shall remedy the inconsistency, if not, the trademark application shall be dismissed.

The examiner to determine if the registration shall be allowed or not shall perform a substantive examination. Any trademark may be applied by any person to be used in connection with his goods and/or services except the following, which does not conform to the registrability of trademarks:

⌦ Trademarks which consist solely of a mark indicating in a common way the common name of goods and services;

⌦ Trademarks customarily used in respect of goods and services;

⌦ Trademarks consist solely of a mark indicating in a common way the origin, place of sale, quality, raw materials, efficacy, use, quantity, shape, price of the goods, or the method, time of manufacturing and using them; or the location of the provision of services, quality, articles for use in such provision, efficacy, use, quantity, modes, price or method or time of the provision of services;

⌦ Trademarks which consist solely of a mark indicating in a common way, a common place surname or name of a legal entity;

⌦ Trademarks, which consist solely of a very simple, and commonplace mark.

⌦ Other analogous to the above.

A trademark has three-functionability. One, it distinguishes the goods or services of one from the other. Second, it tells the origin of the goods or services and third, it tells the quality of the goods or services. In abstraction, a mark shall have distinctiveness so that consumers may be able to distinguish the goods and services as coming from a certain manufacturer, producer, seller or provider and that it guarantees its quality when the mark says that it has been produced, manufactured, sold or provided by that person.

In the same token, if a usually unregistrable trademark, through its continuous usage has served its function, consumers are able to recognize the connection of goods or services to another person’s business the trademark shall be registrable. The usually common, simple or non-distinctive mark has gained a secondary meaning through usage.

Unregistrable trademarks are enumerated under Section 4 of the Japanese Trademark Law. The principle of unity in application shall mean one application for a single trademark but one or more items of goods or services and may belong to different classes of classification of goods and services and referred to as multi-class application.

78

After the conclusion of the substantive examination, if examiner finds no reason to refuse the application, he shall render a decision of registration and the subsequent registration of the mark shall follow. After which it shall be published in a second publication but this time containing the establishment of the trademark registration.

Any person may file an opposition for registration of the mark, which is actually in effect a trial for revocation. The Japanese Trademark System has a post-grant system, meaning a trademark is registered before opposition can be made. Once a trademark is registered, the trial for opposition, if taken literally, cannot be given due course because there is nothing left to oppose anymore. Registration has been effected and therefore, the proper action shall be a trial for revocation or invalidation.

If the examiner finds that the grounds raised by the opposition did not overcome the registrability of the mark, the registration shall be maintained. If the oppositor is also an interested party, he may continue to prosecute the revocation by filing a demand for invalidation of the registered mark at anytime even after the extinguishment of the mark.

If the oppositor is not an interested party, he may never initiate a trial to invalidate and if the decision refused opposition, this may never be appealed. Alternatively, if the examiner finds for the opposition, a ruling for revocation shall be made.

A dissatisfied applicant may file an action with the Tokyo High Court and finally to the Supreme Court after a unfavorable decision by the Tokyo High Court.

On the other hand after substantive examination and examiner shall decide to refuse the application, he shall issue a notice for refusal stating the reasons thereof. Thereafter, the applicant shall submit a statement or amendment. In turn, if the examiner finds no reason for refusal, the registration shall be allowed. But if the examiner thinks that the statement or amendment did not overcome the previous ground he shall render a decision of refusal.

Where the applicant wants to challenge the decision of refusal, he has 30 days from the transmittal of the decision to demand a trial thereon. The appeal board shall conduct a trial examination. Where the board rules for the applicant, a trial decision of registration shall be made and establishment of registration shall be subsequently completed.

If the appeal board rules otherwise, it shall issue a trial decision denying the demand. The dissatisfied applicant may then file an action with the Tokyo High Court and further to the Supreme Court.

Under the Japanese Trademark Law, a defensive registration of mark may be allowed when the registered trademark in respect of goods or services has become well known among consumers as indicating the designated goods or

79

services as being connected with his business and the use of trademark by any other person in respect of goods or services, other than the designated or similar goods or services, is likely to cause confusion.

Under this Law, the Defensive Trademark Registration System was adopted to protect famous registered marks. It is therefore one of the pre-requisites of registration of a defensive mark that the mark shall be famous or known before granting a defensive mark registration. The specified goods or services for which the defensive mark registration is sought is not similar to the designated goods or services of the identical trademark, but is liable to cause confusion as to the origin of the goods.

If the trademark is not famous, the use of identical mark for not similar goods or services by any party does not constitute infringement. But if it is a famous mark, even if not similar goods or services, it is liable to cause confusion that the origin of the goods or services are the same taking into consideration the famous character of the trademark.

A defensive mark registration may be said to be an exception to non-working of marks. A regularly registered mark must be used to avoid its extinction by cancellation. The registration of a mark has for its purpose registered for use in the designated goods or services of a person’s business. That’s why when a mark was not used for a period of time; it may be cancelled because it runs counter from its intended purpose.

In the case of defensive mark, the registration is not for use but for protection. As long as the fee is paid, a defensive mark may be perpetually registered without its usage.

One of the grounds of trial for cancellation of registration is the non-working or non-use of the mark. If neither the owner of the mark or any of his licensee(s) has not been using the mark consecutively for three years or more, any person may petition the cancellation of the registration of the mark. But no right shall be cancelled if five years had elapsed from the date of registration of the mark.

The three years requirement of non-usage of a mark that shall warrant cancellation must be within the five-year period counting from the date of registration. Note should be taken that the law requires the period to be consecutive, so an intermittent non-usage of the mark even if accumulated would be more than three years is not sufficient.

No mark shall be cancelled for non-use after five years from its registration. So, if a trial for cancellation on the ground of non-usage has been filed within the six years counting from the date when trademark was registered it shall be dismissed even if warranted.

80

The term of the trademark right is ten years from the date of the establishment of its registration and maybe renewed indefinitely by filing a request for registration of renewal with the Patent Office.

81

VIII.5. THE COPYRIGHT AND RELATED RIGHTS The Japanese Cultural Affairs Agency (JCAA) under the Ministry of

Education, Culture, Sports, Science and Technology, is the Government Agency tasked with the protection and enforcement of the Copyright Act. Under the Japanese Copyright Law, the word “work” is defined as a production in which thoughts or sentiments are expressed in a creative way and which falls within the literary, scientific, artistic or musical domain. Work is the subject matter of a Copyright but there is no formality for its protection.

The protection arises from the moment of its creation (automatic protection) in whatever form of expression and there are no precondition required unlike the other industrial property rights where filing and registration as such is a pre-requisite to be extended protection.

In the Copyright Law, however, it provides for three kinds of registers:

- Copyright Register – used to register an author’s real name; the date of the work’s first publication; the date of creation; and copyright transactions.

- Publication Rights Register – used to register a publisher’s right of publication.

- Neighboring Rights Register – used to register neighboring rights.

Where the work is anonymous or pseudonymous, the author may cause his true name registered with respect to that work. A person whose true name has been registered shall be presumed to be the author of the work concerned.

The date appearing in the Registry to be the first publication or of the first making public shall be presumed to be the date when the work was first published or first made public.

The date appearing in the Registry as the date of creation of program works shall be presumed to be the date of creation of said program works.

The first three presumptions are all valid suppositions unless proven otherwise. In other words, anyone may rebut that the name appearing in the Registration of true name is not the real author of a anonymous or pseudonymous work concerned. The date appearing in the Registry to be the date of the first publication or first making public is presumed to be true unless overturned by factual evidence.

The date appearing in the Registry to be the date of creation shall be the conclusion unless a different date was established to be the real date of creation.

82

Any transaction that may arise out of the copyright shall be registered to affect other parties. Since the copyright itself does not need any formality for protection, any subsequent rights and obligations that might arise would be difficult to enforce especially to parties who are not privy to the transaction. The act of registration is a notice to the whole world that such right is bound by an obligation and any defense of ignorance of such fact, as long as it is registered shall be barred.

Nonetheless, the transfer of copyright, or the restriction on the disposal of copyright; the establishment, transfer, alteration, expiry or the restriction on the disposal of the right of pledge established on copyright is valid between the parties and non-registration in the copyright registry shall not prevent them from avoiding compliance of that contract of which they have bound themselves to.

The Japanese Copyright Law has a unique provision on the right of publication. The right of publication is an exclusive right established in favor of a person who undertakes to publish the work in writing or printing. If this right of publication is registered in the Publication Rights Register, it shall preclude subsequent third party licensees from publishing a work. Otherwise, he cannot assert this right to third parties if not registered.

The neighboring rights of performers, producers of phonograms, broadcasting organizations and wire diffusion organizations shall be registered in the Neighboring Rights Registry.

The two main classification of works in the Copyright Law are, Original Works enumerated under Article 10 and include but not limited to the following:

i) novels, dramas, articles, lectures and other literary works;

ii) musical works;

iii) choreographic works and pantomimes;

iv) paintings, engravings, sculptures and other artistic works;

v) architectural works;

vi) maps as well as figurative works of a scientific nature such as plans, charts, and models;

vii) cinematographic works;

viii) photographic works;

ix) program works.

Among the enumerated works under Article 10, cinematographic work is a special kind of work since it has its own sui generis rights and protection. Article

83

26, on the right of distribution, is unique only to cinematographic works. Normally, once a right is exhausted on the first sale, the copyright of the author ends there. But in case of cinematographic works, original sale or rent by the author or with his consent does not exhaust his right even on succeeding transfers or alienations.

Another unique characteristic of cinematographic work is the bundle of rights it encompasses. In making the work, individual rights such as musical, script, cameraman, director, cinematographer, designers, artists, actors, and others constitute a cinematographic work.

Program works that include computer programs is another special work. This is a latter inclusion of copyrightable works as it was not included or protected before. Computer programs are instructions on how to use the computer and normally they are an improvement of a previously existing programs. Initial trend of development of computer programs requires prior art because they are an adaptation from those pre-existing arts. With the adaptation, there is a new intellectual creativity involved and hence a derivative work. This is the major difference of adaptation from reproduction.

Another area of concern is the computer software. There is still a great area of debate as to which law its protection shall rightfully belong. In some jurisdiction, it is copyrightable, in some, especially those geared toward the patent approach is more likely to consider it as an invention. To reinforce the claim, some inventors incorporate the software in the hardware to make it inseparable and thus shall belong to the criteria of an invention.

The other major classification of work is the “derivative work”, defined as a work created by translating, arranging musically, transforming, dramatizing, making into a movie, or otherwise adapting a pre-existing work. Among them are compilation, database works, and computer programs which all involve intellectual creativity that is why copyrightable.

The General Outlines of the Rights of Authors are:

Rights of Authors:

Moral Rights or Personal Rights –

Right of Making the Work Public

Paternity Right

Right of Preserving the Integrity

Copyright or Economic or Property Rights

Right of Reproduction

Right of Performance

84

Right of Presentation

Right of Public Transmission, etc.

Right of Recitation

Right of Exhibition

Right of Distribution

Right of Transfer of Ownership

Right of Lending

Right of Translation, adaptation, etc.

Right of the Original Author in the Exploitation of a Derivative Work

Rights to compensation for Private Recording, etc.

Neighboring and other Rights of other Authors

Rights of Performers -

Neighboring Rights

Right of Making Sound or Visual Recordings

Right of Broadcasting and Wire Diffusion

Right of Making Transmittable


Right of Lending

Right to Compensation for Private Recording

Right to Secondary Use Fees of Commercial Phonograms

Right to Remuneration for lending Commercial Phonograms

Rights of Producers of Phonograms

Neighboring Rights


Right of Making Transmittable


85

Right of Lending

Right to Compensation for Private Recording

Right to Secondary Use fees of Commercial Phonograms

Right to Remuneration for lending Commercial Phonograms

Rights of Broadcasting Organizations

Neighboring Rights


Rights of Broadcasting and Wire Diffusion

Right of Communication of Television Broadcasts

Rights of Wire Diffusion Organization

Neighboring Rights


Right of Broadcasting and Wire Rediffusion

Right of Communication of Wire Television Diffusions

The general rule for the duration or term of the copyright is fifty (50) years after the death of its author. The exceptions are, in case of pseudonymous or anonymous works fifty (50) years from the time it is made public. In case of corporate authors, fifty (50) years from the date the work was made public or if it is not made public, fifty (50) years from its creation. Under the Berne Convention, the term of the country of origin governs if it is shorter term than the Japanese Copyright Act. Neighboring rights, 30 years from the end of the year in which the first performance takes place or the first fixation of sounds, broadcast or diffusion by cable is made.

VIII.6. INFRINGEMENT AND REMEDIES The following are acts of infringement and other violation of intellectual

property rights as provided in the different Japanese Intellectual Property Laws, their penalties and remedies available to the right holder and other persons who have an interest in the right.

86

Patent Right

- Acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, articles to be used exclusively for the manufacture of a patented product;

- Acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, the course of trade, articles to be used exclusively for the working of such invention.

Utility Model

- Acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, article to be used exclusively for the manufacture of the article covered by the registered utility model.

Design

- Acts of manufacturing, assigning, leasing, importing or offering for assignment or lease of, in the course of trade, things to be used exclusively for the manufacture of article to which the registered design or a design similar thereto has been applied.

Trademark

- Use of a trademark similar to a registered trademark in respect of the designated goods or services or use of the registered trademark or a similar mark in respect of goods or services similar to the designated goods or services.

- Acts of holding, for assignment or delivery, designated or similar goods or services to the designated goods or services and the registered trademark or a similar mark has been applied on the packing.

- Acts of holding or importing articles which are for use by persons to whom the services are provided and the registered or similar trademark has been applied, in the provision of the designated or similar services or goods, for the purpose of using such articles in the provision of the services.

- Acts of assigning or delivering articles, which are for use by persons to whom the services are provided and to which the registered or similar trademark has been applied, in the provision of the designated or similar goods or services, for the purpose of causing that articles to be used in the provision of services, or acts of holding or importing that articles for the purpose of assigning or delivering them.

87

- Acts of holding articles bearing the reproduction of the registered trademark or similar thereto for the purpose of using such trademark in respect of the designated or similar goods or services.

- Acts of assigning, delivering or of holding, for the purpose of assignment or delivery articles bearing the reproduction of a registered or similar trademark, for the purpose of causing such trademark to be used in respect of designated or similar goods or services.

- Acts of manufacturing or importing articles bearing a reproduction of the registered or similar trademark for the purpose of using such trademark or causing it to be used, in respect of the designated or similar goods or services.

- Acts of manufacturing, assigning, delivering, or importing, in the course of trade, articles to be used exclusively for manufacturing goods bearing a reproduction of the registered or similar trademark.

Copyright

- The importation for distribution of objects made by an act which would constitute an infringement on moral rights, copyright, right of publication or neighboring rights if they were made in this country at the time of importation.

- The distribution or the possession for distribution of infringing objects by a person who is aware of such infringement.

- Acts of using on a computer, in the conduct of business copies made by an act infringing copyright in a program work, as long as the person using such copies is aware of such infringement at the time when he acquired an authority to use these copies.

- The intentional addition of false information on rights management information.

- The intentional removal or alteration of rights management information.

- The distribution and importation for distribution or possession for distribution of copies of works or performances, etc. by a person who has knowledge that a violation of rights management information, as described in the two preceding paragraphs have been committed.

- Exploitation of a work prejudicial to the honor or reputation of the author.

REMEDY

All cases of infringement on intellectual property rights are filed with the Tokyo District Court or Osaka District Court.

88

Chapter IX. ADDENDUM IX.1. ADDENDUM ON PATENT

Requirements of patentability: - Novelty:

Note: Same meaning of prior art, which means an invention that has been known, worked or described either in writing or otherwise in Philippines and elsewhere or in Japan or elsewhere. But in case of disclosure made elsewhere, it shall be in writing or in some tangible form to be considered a prior art - Philippines. Note: Non-prejudicial disclosure – any disclosure made by the inventor within 12 months preceding the filing date of the application shall not affect the novelty of the invention - Philippines. Exception to lack of novelty – the application shall be filed within 6 months from the date of the disclosure - Japan.

- Inventive step - Industrial applicability

Employees’ invention:

- Same rule – to the employer if part of regularly assigned duty. To the employee if not part of his regularly assigned duty. Note: any stipulation that invention shall belong to the employer shall be null and void – Japan. Note: any express or implied stipulation that invention shall belong to the employee is valid - Philippines.

Electronic Filing – Japan.

Examinations and publications:

- Same initial formality examination and second formality examination. - First publication of the details of the application.

Note: Laying open for public inspection after 18 months from filing of the application. Publication of the details of the application - Japan. Note: Publication after 18 months from filing of application. Details of the application and search report is published - Philippines. Note: any person may submit an observation as to the patentability of the application – Philippines.

- Substantive examination, after the first publication to judge the patentability of the application.

- Application shall be allowed if formality and substantive requirements are satisfied.

- Post grant opposition. - Preferential and accelerated examination – Japan.

89

Principle of first to file rule: - when two or more applications have been filed on the same date for the

same invention made separately and independently, the patent shall be issued jointly to all the applicants – Philippines.

- when two or more applications have been filed on the same date for the same invention made separately and independently from each other, only one applicant shall be granted the patent after mutual consultation of all applicants. If they cannot agree on one applicant to accept the patent, no right shall be granted to any – Japan.

Priority Claim. - Accorded date shall be the earliest foreign application without prejudice to

acts considered as infringing before the domestic application has been filed - Philippines.

- Accorded date is the actual date when domestic application has been filed - Japan. Note: domestic priority claim – Japan.

Conversion of application - Maybe converted several times as long as within the specified period -

Japan. - Maybe converted only once within the specified period – Philippines.

Request for substantive examination - 3 years from filing date – Japan. - 6 months from initial publication – Philippines.

Examination and Appeal: - Examiner examines and decision of refusal is appealable to the Director of

Patents > Director General > Court of Appeals > Supreme Court - Philippines.

- Examiner examines and decision of refusal is appealable to Appeal/Trial Board > Tokyo High Court > Supreme Court - Japan.

Effectivity of patent right: - A patent shall take effect on the date of publication of the grant of patent

in the IPO Gazette – Philippines. - Patent shall take effect upon registration - Japan.

Term of Patent: - 20 years from filing date – Philippines. - 20 years from filing date but extendable for maximum of 5 years in special

cases - Japan.

Cancellation/opposition of the patent right:

90

- Any interested person may file petition for cancellation before expiration of the term - Philippines.

- 6 months from second publication, any person may file opposition. Any interested party at any time, even after expiration of the patent term may file cancellation – Japan.

Remedy of actual inventor: - Actual inventor can ask for subrogation, file a new application, and seek

refusal or cancellation - Philippines. - Actual inventor may file opposition or cancellation and only prosecute the

application anew – Japan.

Corrections: - Trial for correction – Japan. - Petition for correction – Philippines.

Infringement/Invalidation of patent right: - Invalidity of the patent may be a defense in an action for infringement -

Philippines. - Cannot use invalidity of patent right as a defense – Japan. - A patent right may be invalidated by the court if found invalid during the

course of the infringement proceeding - Philippines. - As a rule, Courts may not declare the invalidity of the patent right unless

previously acted upon by the board - Japan.

Presumptions in case of process patent: - Burden of proof is on the alleged infringer that the product was not

obtained by the use of the process patent.

Ex-Officio Trial: - Trial examiner may proceed ex-officio even if the party or intervenor fails

to prosecute - Japan. - Examiner or Director may not prosecute ex-officio if parties or intervenor

fail to prosecute the case - Philippines.

PCT - Special provisions on PCT applications – Japan.

IX.2. ADDENDUM ON UTILITY MODEL

Registrability Requirement: - Same as invention except inventive step.

Electronic Filing – JAPAN.

91

First to file rule principle

Domestic priority claim (Japan)

Reports: - Formality examination report and search report after filing. Any person

may request registrability report after registration - Philippines. - Registrability report only. May be requested by any person after

registration of the right. Necessary together with a warning letter to caution third party of infringing act. – Japan.

Conversion:

- Maybe converted more than once before the grant or refusal of the application – Philippines.

- Conversions are allowed as long as before the decision to grant or refuse – Japan.

Cancellation/Invalidation: - At any time even after the expiration of term, any interested party may

demand for trial for invalidation of utility model registration – Japan. - Petition for invalidation by any interested party after registration but before

the expiration of the right - Philippines.

Appeal: - Examiner > Director of Patents > Director General > Court of Appeals >

Supreme Court – Philippines. - Examiner > Appeal/Trial Board > Tokyo High Court > Supreme Court –

Japan.

Term - 7 years from the date of filing - Philippines. - 6 years from the filing date of application - Japan.

IX.3. ADDENDUM ON DESIGNS

Priority Claim: - Six months from the date of the first foreign application – Philippines. - Six months from the earliest application, both for domestic and foreign

priority claim – Japan.

Examination: - Formality examination only – Philippines. - Formality and Substantive Examination – Japan.

Reports/ Certificate:

92

- Formality and search reports are given to applicant two months from the filing date. A registrability report shall also be issued to any person upon request. A Certificate of Registration shall be issued and published – Philippines.

- The Commissioner issues a design registration certificate after establishment of a design right has been registered – Japan.

Conversion: - No provision on conversion is provided under the law – Philippines. - A patent or a utility model application may be converted to a design

application within the specified period – Japan.

Types: - Single design or set of design in an article – Philippines. - Single design in an article or part of an article (portion design);

combination design (Regulation enumerates 56 types of sets of articles); related design; secret design; mobile design – Japan.

Publication: - Six months from registration – Philippines. - Publication after registration – Japan.

Term: - A total of fifteen years, initially five years and renewable for two

consecutive five year terms – Philippines. - Fifteen years from the date of registration of its establishment. Related

design shall also be fifteen years from the date of registration of principal design right – Japan.

Cancellation/Invalidation: - Any interested person may file a cancellation proceeding based on any of

the grounds provided at anytime before the expiration of the term of the design right – Philippines.

- An interested person may demand for trial for invalidation of a design right based on any of the grounds provided under the design law even after the extinguishment of the right – Japan.

Appeal: - Examiner > Director of Patents > Director General > Court of Appeals >

Supreme Court – Philippines. - Examiner > Appeal/Trial Board > Tokyo High Court > Supreme Court –

Japan.

93

IX.4. ADDENDUM ON MARKS

Protected matter: - Trademarks, Service marks, and Trade names, also Well-known Marks

whether registered or not. Trade names are registered with the Department of Trade and Industry – Philippines.

- Trademarks, Service marks and Trade Names, also Well-Known Marks registered or unregistered. Trade names are registered in the local area (ku or ward) where the business is situated – Japan.

Defensive Mark Registration System – Japan.

Disclaimer of a generic or customary sign in case of composite marks –

Philippines.

Electronic Filing since January 2000 – Japan.

Two publications – Japan.

Multiple Class Filing – Japan. Substantive Examination and Post-Grant System – Philippines and Japan.

Madrid Protocol from March 2000 – Japan.

Post Grant System – Philippines and Japan.

Opposition: - One month from the date of publication, extendable to maximum of four

months upon showing of good cause. Filed and decided by the Director of Bureau of Legal Affairs – Philippines.

- Two months from the publication of the Gazette containing the trademark. Filed with the Patent Office and decided by a Trial Board – Japan.

Appeal: - Examiner > Director of Trademarks > Director General > Court of Appeals

>Supreme Court – Philippines. - Examiner > Appeal/Trial Board> Tokyo High Court > Supreme Court –

Japan.

Term: - Ten years from registration – Philippines and Japan.

Requirement to maintain registrability: - Declaration of actual use and evidence shall be submitted within 3 years

from filing date – Philippines.

94

- Non-use for over 3 years shall cancel the mark – Japan.

Opposition: - Within 30 days from date of publication – Philippines. - Two months from publication of the Gazette containing the trademark –

Japan.

Cancellation: - Any person may file a petition to cancel registration of a mark with the

Bureau of Legal Affairs within five years from registration in case of non-use of the mark or at any time before the expiration of the term. Decision of Director of Bureau of Legal Affairs is appealable to the Director General – Philippines.

- At any time even after the expiration of the term of the mark, any person may demand for trial for invalidation of a mark based on the grounds enumerated under the law with the Patent Office. A trial board shall decide it and decision is appealable to the Tokyo High Court.

Chapter IX.5. ADDENDUM TO COPYRIGHT

Automatic protection, no formal requirements to be protected – Philippines and Japan.

Agencies: - Intellectual Property Office for enforcement and protection. The National

Library for deposit – Philippines. - Japan Copyright Office for enforcement, protection and necessary

registration – Japan.

Authors of Neighboring Rights: - Performers, producers of sound recordings and broadcasting

organizations – Philippines. - Performers, producers of phonograms, broadcasting organizations and

wire diffusion organization – Japan.

Term: - Generally, from moment of creation until fifty years after the author’s death

– Philippines and Japan.

Registration: - No registration is required but just presumption on the validity of

international registration of works in accordance with an international treaty – Philippines.

95

- Registry maintained to be effective against third parties on Copyright, Publication Right and Neighboring Right and positive presumption on its validity – Japan.

Unique provision on Right of Publication – Japan.

IX.6. ADDENDUM ON REMEDIES

Remedies: - Remedies on infringement may be filed with the Office of the Secretary of

Department of Trade and Industry, The Director of the Bureau of Legal Affairs and the specially designated 27 IP Regional Trial Courts – Philippines.

- Remedies on infringement may be filed with either Osaka District Court or the Tokyo District Court.

96

Chapter X REFERENCES X.1. WEBSITES: 1) http://lcweb2.loc.gov/frd/cs/jptoc.html U.S. Library of Congress Country Study - Japan 2) http://www.tribo.org/history.html Philippine History 101 3) http://lcweb2.loc.gov/frd/cs/phtoc.html U.S. Library of Congress Country Study - Philippines 4) www.philembassy.au.com The Philippines - Government 5) http://www.undp.org/missions/philippine/webdoc1.htm The Philippines at a Glance

6) http://jin.jcic.or.jp/kidsweb/japan/j.html POLITICS AND THE CONSTITUTION 7) http://www.supremecourt.gov.ph/Constitution/Constitution.html The Philippine Constitution THE 1987 CONSTITUTION OF THE REPUBLIC OF THE PHILIPPINES 8) Supreme Court of Japan website 9) Supreme Court of the Philippines website 10) www.ipophilippines.gov.ph IPO Philippines website 11) JPO website

97

X.2. VISITS 12) Visit to the National Diet 13) Visit to the Tokyo High Court 14) Visit to the Supreme Court 15) Visit to the Tokyo Customs 16) Visit to Takeda Chemical Industries, Ltd., Osaka X.3. LITERATURE 17) The National Diet of Japan (House of Councilors Booklet) 18) The Japanese legal System (Edited by Hideo Tanaka and Assisted by: Malcolm Smith) University of Tokyo Press 19) Court System of Japan Booklet (By the General Secretariat, the Supreme Court of Japan 1996) 20) Constitutions of the World (By Robert L. Maddex) Produced by Archetype Press, Inc. Washington D.C. 21) Ministry of Economy, Trade and Industry (METI) Booklet 22) The 1946 Constitution of Japan 23) Eyewitness Japan (Dorling Kindersle Limited, London 2000) 24) A Chronological Outline of Japanese history By: Bito Masahide and Watanabe Akio (International Society for Educational Information, Inc.) 25) Time Out Tokyo Guide (Penguin Books 2001)

98

26) Japan- The Complete Guide to Cities Old and New, the Mountains, Seacoasts and Traditional Culture (Fodor’s Travel Publications, Inc. 1998) 27) Experience of Japan (Institute of Intellectual Property, First Edition 2001) 28) Japan Patent Office, Annual Report 2000 (JPO) 29) A Guide to Japanese Intellectual Property Law (LEC: Tokyo Legal Mind Co., Ltd., First Edition 1994) 30) Introduction to Japanese Law Yosiyuki Noda/ Translated and Edited by Anthony H. Angelo University of Tokyo, Press 31) Patents and Licensing, December 2001 32) Articles, AIPPI Journal, January 2002 33) Articles, AIPPI Journal, July 2000 34) Training Textbooks 2000 35) The System of Unfair Competition Prevention in Japan By: Christopher Heath (Max Planck Institute/ Kluwer Law International 2001) 36) The TRIPS Agreement By: Daniel Gervais (London Sweet and Maxwell 1998) 37) Introduction to Intellectual Property Edited by World Intellectual Property Organization (WIPO) (Kluwer Law International Ltd. 1997) 38) Intellectual Property Protection and Management By: Teruo Doi (Waseda University 1992)

99

39) Intellectual Property Office Booklet (1998) 40) Implementing Rules and Regulations of R.A. 8293 Handbook 41) Intellectual Property Code of the Philippines 1998 Seventh Edition (Central Book Supply, Inc.) 42) Copyright Safeguards and Regulations (Philippine National Library, 1999) 43) The 1987 Constitution of the Philippines 44) The 1997 Rules on Civil Procedure X.4. INTERVIEWS/CONSULTATIONS

A) Dr. Shigeaki Mitsuda Professor of Law at Obirin University Professor Emeritus at Chiba University B) Professor Ryu Takabayashi Professor of Law, Waseda University

C) Yuji Tsuruya – Director Regional Policy Office, International Affairs Division Japan Patent Office (JPO)

D) Masayuki Miyashita – Director Trademark Examination Division (Machinery) Japan Patent Office (JPO)

100

E) Kimie Ogawa – Trademark Examiner 1st Examination Department Japan Patent Office (JPO)

F) Mitsuo Teramoto – Director Inorganic Chemistry and Ceramics Division Japan Patent Office (JPO)

G) Hiroyuki Ito – Technical Officer/ Examiner

Design Division Japan Patent Office (JPO)

H) Keiko Shimomura – Assistant Director International Affairs Division Japan Patent Office (JPO)

I) Hitoshi Amano – Examiner Metals and electrochemistry Division Japan Patent Office (JPO)

REFERENCES

WEBSITES:

1)http://lcweb2.loc.gov/frd/cs/jptoc.html U.S. Library of Congress Country Study - Japan

2)http://www.tribo.org/history.html Philippine History 101 3)http://lcweb2.loc.gov/frd/cs/phtoc.html U.S. Library of Congress Country Study - Philippines 4) www.philembassy.au.com

The Philippines - Government

5)http://www.undp.org/missions/philippine/webdoc1.htm The Philippines at a Glance

6)http://jin.jcic.or.jp/kidsweb/japan/j.html POLITICS AND THE CONSTITUTION

7)http://www.supremecourt.gov.ph/Constitution/Constitution.html The Philippine Constitution THE 1987 CONSTITUTION OF THE REPUBLIC OF THE PHILIPPINES 8) Supreme Court of Japan website 9) Supreme Court of the Philippines website 10) www.ipophilippines.gov.ph IPO Philippines website

11) JPO website VISITS 12) Visit to the National Diet 13) Visit to the Tokyo High Court 14) Visit to the Supreme Court 15) Visit to the Tokyo Customs 16) Visit to Takeda Chemical Industries, Ltd., Osaka BOOKS 17) The National Diet of Japan (House of Councilors Booklet) 18) The Japanese legal System (Edited by Hideo Tanaka and Assisted by: Malcolm Smith) University of Tokyo Press 19) Court System of Japan Booklet (By the General Secretariat, the Supreme Court of Japan 1996) 20) Constitutions of the World (By Robert L. Maddex) Produced by Archetype Press, Inc. Washington D.C. 21) Ministry of Economy, Trade and Industry (METI) Booklet 22) The 1946 Constitution of Japan 23) Eyewitness Japan (Dorling Kindersle Limited, London 2000) 24) A Chronological Outline of Japanese history By: Bito Masahide and Watanabe Akio (International Society for Educational Information, Inc.)

25) Time Out Tokyo Guide (Penguin Books 2001) 26) Japan- The Complete Guide to Cities Old and New, the Mountains, Seacoasts and Traditional Culture (Fodor’s Travel Publications, Inc. 1998) 27) Experience of Japan (Institute of Intellectual Property, First Edition 2001) 28) Japan Patent Office, Annual Report 2000 (JPO) 29) A Guide to Japanese Intellectual Property Law (LEC: Tokyo Legal Mind Co., Ltd., First Edition 1994) 30) Introduction to Japanese Law Yosiyuki Noda/ Translated and Edited by Anthony H. Angelo University of Tokyo, Press 31) Patents and Licensing, December 2001 32) Articles, AIPPI Journal, January 2002 33) Articles, AIPPI Journal, July 2000 34) Training Textbooks 2000 35) The System of Unfair Competition Prevention in Japan By: Christopher Heath (Max Planck Institute/ Kluwer Law International 2001) 36) The TRIPS Agreement By: Daniel Gervais (London Sweet and Maxwell 1998) 37) Introduction to Intellectual Property Edited by World Intellectual Property Organization (WIPO) (Kluwer Law International Ltd. 1997)

38) Intellectual Property Protection and Management By: Teruo Doi (Waseda University 1992) 39) Intellectual Property Office Booklet (1998) 40) Implementing Rules and Regulations of R.A. 8293 Handbook 41) Intellectual Property Code of the Philippines 1998 Seventh Edition (Central Book Supply, Inc.) 42) Copyright Safeguards and Regulations (Philippine National Library, 1999) 43) The 1987 Constitution of the Philippines 44) The 1997 Rules on Civil Procedure INTERVIEWS/CONSULTATIONS

A) Dr. Shigeaki Mitsuda Professor of Law at Obirin University Professor Emeritus at Chiba University B) Professor Ryu Takabayashi Professor of Law, Waseda University

C) Yuji Tsuruya – Director Regional Policy Office, International Affairs Division Japan Patent Office (JPO)

D) Masayuki Miyashita – Director

Trademark Examination Division (Machinery) Japan Patent Office (JPO)

E) Kimie Ogawa – Trademark Examiner 1st Examination Department Japan Patent Office (JPO)

F) Mitsuo Teramoto – Director Inorganic Chemistry and Ceramics Division Japan Patent Office (JPO)

G) Hiroyuki Ito – Technical Officer/ Examiner

Design Division Japan Patent Office (JPO)

H) Keiko Shimomura – Assistant Director International Affairs Division Japan Patent Office (JPO)

I) Hitoshi Amano – Examiner Metals and electrochemistry Division Japan Patent Office (JPO)

A COMPARATIVE STUDY OF THE PHILIPPINE AND THE · PDF fileTHE PHILIPPINE AND THE JAPAN...

Documents

Transcript of A COMPARATIVE STUDY OF THE PHILIPPINE AND THE · PDF fileTHE PHILIPPINE AND THE JAPAN...