Keidanren (Japan Federation of Economic Organizations)
September 16, 1997
The Business and Industry Advisory Committee (BIAC) to the OECD was established in March 1962 as an organization to bring together the opinions of private-sector business circles in the developed nations regarding economic and social policy issues, and submit proposals to the OECD and the governments of affiliated countries. Leading private economic organizations including Keidanren in respective OECD country represent national business community at the BIAC. In contrast to the BIAC, the OECD also has the Trade Union Advisory Committee (TUAC), which makes proposals from the standpoint of labor unions.
As a result of the seven-year long negotiations of the Uruguay Round of multilateral trade talks under the General Agreement on Tariffs and Trade, the Trade-Related Intellectual Property Rights (TRIPS) Agreement was signed at a ministerial meeting in April 1994 and went into effect on January 1, 1995. This TRIPS Agreement makes obligatory the protection standards for intellectual property rights that go beyond existing international treaties, such as the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works. The TRIPS Agreement clarifies minimum criteria in a broad field of intellectual property rights for both developed and developing countries and stipulates minimum standards for the enforcement of rights. Moreover, the agreement enables other countries to share the results of bilateral negotiations through most-favored-nation treatment obligations, raises protection standards internationally, and, regarding disputes, makes possible the application of unified dispute settlement procedures. Developed countries were obliged to implement the agreement from January 1996; developing countries and least developed countries were granted grace periods of implementation by 2000 and 2006, respectively.
Under the System of Laying-Open of (an unexamined) Application, the content of a patent application is publicly disclosed after a certain period has passed since the filing of an application (in the case of Japan, 18 months). The objective of this system is to eliminate such problems as the instability that arises in corporate activities when the content of an invention for which a patent application has been submitted is not disclosed for a long time because of a delay in examination, and to prevent duplicated research, duplicated investment, and the consequent increase in disputes. The disclosure of applications has the following effects: (1) generates right to claim compensation; (2) can acquire enlarged first application status; (3) can apply for priority examination; (4) can receive information from third parties; and (5) can claim evidence, etc. from third parties.
The first-to-invent principle means that the registration of a person who makes an invention first is recognized; the first-to-file principle means that the registration of a person who makes an application first is recognized. The first-to-file system has the merit of giving stability to rights, since it is easy to identify who made the first application. In contrast, the first-to-invent system brings instability to rights, because it is not easy to prove who made an invention first.
The discovery system in a lawsuit enables the party involved to request the other party or a third party to indicate facts or evidence.
In U.S. law, at the time of a court examination of an incident, the party that filed the lawsuit is permitted to make the other party indicate any evidence that the other party is able to submit.
Because of this discovery procedure in the United States, the acquisition of evidence relating to a patent infringement case is much easier than in other countries. Accordingly, when beginning a patent infringement lawsuit, the party filing the suit has only to submit enough information and evidence to show belief that the other party is infringing the patent; no other information or evidence is required. The party filing the suit can obtain definite information about the infringement easily and legally through the discovery procedure after filing the suit.
Under the conventional patent systems of each country, if an inventor wants to acquire protection in several countries just for one invention, he or she must submit applications separately according to the procedures of each country and in different languages. The patent authorities of each country then examine the content of the application separately and grant rights. The Patent Cooperation Treaty (PCT) was concluded with the objective of reducing this duplication of labor.
The international application system based on the PCT is as follows:
Under the Madrid Protocol, regarding trademarks that have been internationally registered or applied for in one signatory country, if an international application (granted registration immediately unless there are defects in form, etc.) is submitted via the home country to the international secretariat of the World Intellectual Property Organization (WIPO) and designated countries in which protection is desired are stipulated, unless a designated country notifies the international secretariat of the WIPO of its rejection of protection within a certain period of time (1 year or 18 months), this has the same effect as directly submitting the application and gaining registration in the designated countries as of the day of international registration.
From the point of view of developing international business, this system has the merit of enabling a company to register a trademark in several designated countries through a single international application. (Submitting translated applications to each designated country, paying fees, and so on are unnecessary.)
However, the United States and other countries still do not participate in this system, because they oppose the fact that the European Union has its own separate vote while each European country has its own vote in the operation of the system (the so-called dual voting right issue). Japan has begun to make the necessary preparations so that it can join the system promptly once the international environment has been put in order.
In the registration of intellectual property rights, inspectors in such countries as Japan and the United States conduct substantive examinations to determine whether or not registration conditions are met. This is called the examination system. In contrast, such countries as Spain, Italy, Belgium, Switzerland (with the exclusion of watches and textiles), and South Africa grant intellectual property rights without examining such substantive conditions as newness and degree of progress. This is called the non-examination system. The thinking behind this non-examination system is that there is little meaning in examining all applications; rather, it is more rational to first of all grant intellectual property rights and then investigate only those cases in which disputes actually arise. In other words, these countries permit lawsuits to declare intellectual property rights invalid after the establishment of the rights and, in lawsuits concerning the infringement of rights, also judge whether an intellectual property right is valid or not.
The objective of the Hague Agreement (the Heague Agreement Concerning the International Deposit of Industrial Designs) is to ensure the protection of one or several designs in more than one country through single deposition with the international secretariat of the World Intellectual Property Organization. At present, the 1934 Act and the 1960 Act are the main acts.
In comparison with the 1934 Act, the 1960 Act differs in that it permits the applicant to designate countries and allows designated countries to reject the efficacy of the protection of international registration. It is also possible for an applicant to deposit with the international secretariat of the WIPO indirectly through a domestic government office.
Japan and other countries which adopt the examination system have not joined the agreement, because under the 1960 act, the period for giving notification of rejection is short at six months. For this reason, work on the drafting of a new Hague Act has been proceeding since 1991 with the objective of promoting the affiliation of countries which adopt the examination system, such as Japan, the United States, Britain, and Sweden, and thereby extending the scope of the agreement.