JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/January 8th, 2020

Re:JIPA Comments on“Request for Comments on Intellectual Property

Protection for Artifical Intelligence Innovation”
Dear Director Iancu ,United States Patent and Trademark Office:
1. The Japan Intellectual Property Association (JIPA) is one of the world's
largest organizations of IP system users with 1334 members (as ofDecember 25, 2019), most of which are Japanese companies.
2. The USPTO previously published a notice requesting comments on AI in
relation to patents, and one of our patent committees has submitted awritten response to this. The USPTO has now issued a request forcomments on Intellectual Property Protection for Artifical Intelligence
Innovation, and we would like to present a written response as indicatedbelow. Specifically, we offer answers to questions 7, 8 and 9, which deal withtrademarks and data. Except those questions, we shall reserve making astatement on its opinion at the present time.
Question 7.

Would the use of AI in trademark searching impact theregistrablity of trademarks? If so, how?
Answer: The use of AI in trademark searching will impact the registrabilityof trademarks depending on the way to use AI.
For example, if the final decision on registrability is to be made by a human,and AI is used as a tool to aid work in searching (such as by screening thelarge volume of data gained in searches, and selecting and removing
trademarks that are clearly not similar, thereby reducing the number ofmarks that humans need to consider regarding similarity), AI can boost theefficiency and accuracy of the searches.
However, the quality of examinations cannot be guaranteed if AI in its
current form is used for the entire search process, with AI making the final
decision on registrability by itself based on the search results. This isbecause AI at its current level of accuracy does not always make suitable1

decisions, and there is also the risk of an AI malfunction resulting in anincorrect conclusion. These risks will lead to a higher rate of marks being
registered in error.
Question 8.

How, if at all, does AI impact trademark law? Is the existing

statutory language in the Lanham Act adequate to address the use of AI inthe marketplace?
Answer: The provisions related to infringement in the Lanham Act (15U.S.C. § 1114) define the entities that are liable for trademark infringement
as well as the actions that are deemed to be infringing.
If businesses that utilize AI see growth in the future, society may encounter
issues in relation to these provisions. For example, if AI is designed to act on
its own and comes to infringes on the trademark rights of another party, it
may be difficult to identify who is the infringing or violating entity or what
the infringement or violation is.
Furthermore, while there are many cases where AI is used only to assist or
support specific tasks at present, we consider that there is a need tocarefully think about the use of AI over the medium- to long-term. Future
developments in technology may lead to AI that possesses the ability to deal
with a wide range of issues in the same way as humans do, or may lead toAI with human-like consciousness that can make comprehensive decisions.
Question 9

How, if at all, does AI impact the need to protect database anddata sets?

Are existing laws adequate to protect such data?

The U.S. already has several federal and states laws in place for theprotection of data; however, we consider that there are a number of issues
with existing laws. These issues are arising from the situation wheredevelopments in AI need a dramatic increase in the amount of data utilized
for providing and sharing between multiple business operators. We haveoutlined the issues in (i) to (iii) below.
(i) Protection Afforded by Trade Secret
The criminal remedies provided in the Economic Espionage Act (EEA) andthe civil remedies provided in the Defend Trade Secrets Act (DTSA) and2

relevant states laws serve to protect data that falls under the category oftrade secrets.
However, these laws do not offer protection for data that is intended to be
known to the public, or any other kind of data that falls outside of thecategory of trade secrets. In the AI era, as stated above, a lot of data will
shared between multiple business operators, where such data will falloutside of the category of trade secrets.
(ii) Protection Afforded by Copyright Law
If a database falls under the category of a compilation, it is protected by U.S.
federal copyright law.
However, U.S. federal copyright law does not protect data deemed to beunoriginal, such as in the case of a simple collection of data.
(iii) Protection Afforded by Contract
If several parties have entered into a contract regarding the exchange ofdata, any of the parties can request civil remedies for a breach of thiscontract, such as for the use of data outside of the intended purposes.
However, such remedies are only enforceable against the signing parties,
and cannot be enforceable against a third party, who has improperly
acquired the data outside of the contract.
Japan also faced similar issues to those outlined above, and therefore
revised the Unfair Competition Prevention Act in May 2018 regarding“Protected Data”.1This rivision aims to protect data used for exchange, inorder to stimulate the use of data provided as a product to many people incertain limited ways (such as big data used for the machine learning processin AI), as well as data shared within consortia.
Data is easily replicated and can be distributed multiple times acrossnational borders. As such, we believe that it is ideal for all countries toadopt similar or identical legislation regarding the protection of data. For
this reason, we request that you regard Japan's Protected Data acts as an
example of best practice, and develop a similar legal system that the U.S.
can use to protect data used for exchange and that can be conducive to datautilization.
1 「Revision of Unfair Competition Prevention Act」;Defining the acts of unfair competition

on“ProtectedData”

andproviding

civil

remedies

againsthttps://www.meti.go.jp/english/policy/economy/chizai/chiteki/index.html

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theacts ．

We thank the USPTO for permitting JIPA to provide comments and would
be pleased to further discuss these comments with the USPTO and others asappropriate.
Sincerely,
Japan Intellectual Property Association
President

Yuji TODA

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