Patent Attorneys andTheir Education in Japan
Dr. Shoichi Okuyama
Okuyama & Sasajima, Tokyo, JapanMarch 2018
In Kuala Lumpur1

What I want to say today• History and current situation in Japan• It is important to have a sound patent attorney system• Patent attorney qualification supports the patent system• Patent office and attorney work in tandem• Helpful for the development of local industries and research• For maintaining a sound patent attorney system• High level examination and continuing education are important• Ethics education is also important2

Beginning, more than 130 years ago• First substantive patent act in 1885
▫ By Mr. Korekiyo Takahashi▫ 425 patent applications in 1885
▫ First trademark act in 1884 also by Mr. Takahashi• Mr. Takahashi traveled to the U.S. and Europe to study patent systems forone year
▫ November 1885 through November 1886
▫ He was impressed by a US patent attorney• First “patent attorneys” in Japan appeared in 1890
▫ Tokkyo Daigen Sha (literally “Patent Attorney Co.”) opened two offices in Tokyo▫ Former examiners at the suggestion of Mr. Takahashi
3So Mr. Takahashi, around 1985-90, • Created patent system and trademark system in Japan• Created copyright system• Created the Patent Office for examination• Built a building for the Patent Office• and•Created patent attorney profession• Sowed seed for special patent account for JPO fees
• He moved on to become Finance Minister three times, Prime Minister, and thenFM for fourth-sixth times• He was assassinated by soldiers in 19364

First Patent Attorney System (1899)• First regulations on the registration of patent attorneys appeared in1899▫ Took effect on July 1, 1899

• Patent Act in 1909 stipulates that only patent attorneys have powerof representation before the Patent Office• “Japan Patent Attorneys Association” (JPAA) was established in 1915
– 103 years ago• First Patent Attorney Act was promulgated in 1921
▫ The number of registered patent attorneys reached 1,350 in 1921
▫ 39,064 patent and utility model applications, and 36,809 trade markapplications filed in 1921.

5JPAA• JPAA was established in 1915 in Tokyo• 9 branch offices including one in Tokyo• All patent attorneys have to belong to JPAA
• Compulsory membership• Monthly fee is JPY15,000 or about US$140• The budget is about US$ 20 million• JPAA has staff of 90 including 27 part timers

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What Patent Attorneys Can Do?
• Patent Attorney Act stipulates what we can do:▫ Articles 4 through 6bis:

 Representation before the Japan Patent Office for fees (exclusive) Opinions, customs procedures, ADR
 Representation before the IP High Court for appeals from decisions of Appeal
Department of JPO
 Assistant to lawyers in infringement litigation
 Representation with a lawyer before infringement courts for specific types oflitigation with additional qualification

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Representation before infringement courts• Representation before infringement courts for specific types of litigation• Representation together with an attorney at law• Patent, UM, design, trademark, circuit layout, and certain types of unfair competition
violations• Qualification process• 45 hours of lectures and four drafting exercises• Three courses in Tokyo and one in Osaka• Lecturers are attorneys at law, judges and court clerks• Examination conducted by JPO• Drafting a complaint and a brief• Pass rate is about 45%• More than 3300 patent attorneys have this qualification (as of Feb 2018)
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Trends surrounding JP patent attorneys• Increasing number of patent attorneys• More than 11,000 patent attorneys in Japan• Dwindling domestic filings• Increasing foreign filings by Japanese companies

9We have 11,000 patent attorneys in Japan

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Filings in Japan – Pat, UM, Design, TM
Annual filings in Japan - Patent, UM, Design + TM

500,000

Peak in 2001
440,000 applications

450,000

Patent400,000

350,000

Service Marks became
registrable

UM Actamended

300,000

250,000

200,000

Trademark150,000

100,000

Utility Model
Design50,000

2017

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Education is JPAA’s top priority!!
• “Educational Institute” of JPAA

• 110 attorney members (volunteers) + administrative staff of 10 or so• More than 400 classes per year
• About 250 e-learning programs• Branch offices (9) are active providers as well
• Education budget - Expenditure - 4 million US dollars in total• E-learning and many lectures are free of charge to members• A bit less than US$380 per attorney• Fees may be required for a number of courses• Fee income is about 1.0 million US dollars

12Types of Educational Programs• Pre-registration courses for those who passed bar exam.
• 72 hours – e-learning + live lectures + assignments• CLE courses• Mandatory 70 hours over 5 years (including 10 hours for ethics)• Live lectures + e-learning• Compulsory classes corresponding to important developments such as law
amendments – every attorney is required to take them

• Courses for infringement litigation qualification• 45 hours live lectures in preparation for exam

• Courses conducted by JPAA branch offices (9 branches)• JPAA-certified CLE courses by outside organizations
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Thank you
okuyama@quon-ip.jp

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