Contents & Abstracts
Note: These abstracts have been written in Japanese and the National Center for Industrial Property Information
and Training (INPIT) translated into English for reference. INPIT is entirely responsible for any errors inexpressions or descriptions of the translation. In the event of any discrepancy between the Japanese original
and the English translation, the Japanese text shall prevail.

■ The 10th Anniversary of Intellectual Property Management Skills Test ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 2Shunichi DOI■ Act on the Promotion of and Support for Invention Education of the Republic of Korea ꞏ 5Sunhee YUN
With the advent of the Fourth Industrial Revolution, the government of the Republic of Korea has recognized the necessity for responding to future changes in society so as to achieve innovative growth focused on
the improvement of core technology. To this end, the government has been discussing creating laws serving
as the basis for supporting the competency building of all citizens, so as to swiftly respond to changes in thesocial structure and labor market and incentivize innovative growth.
With people increasingly recognizing creativity as the most important competence for future human resources, the Act establishes a well-organized basis for supporting an “invention education” which is capableof fostering people's ability to solve problems in creative ways and to come up with ideas, and also identified
the allocation of roles among central government agencies and local governments.
The Act on the Promotion of and Support for Invention Education provides for organized support for
invention education at the national level aimed at fostering creative human resources, and the incorporationof invention education into curriculums of kindergartens, elementary schools, middle schools and highschools. The Enforcement Decree provides for (i) the formulation and implementation of a master plan andimplementation plan for invention education, (ii) the establishment and operation of the Consultative Council
on Invention Education, (iii) the establishment and operation of invention education centers and (iv) the requirements for the designation of an invention education development institute.
Amid the era of the Fourth Industrial Revolution, Korea, though belated, has established an organizational
infrastructure for incentivizing invention education by laying down the Act to serve as the legal basis forexperience-based invention education and IP awareness education for all citizens.

■ The Innovation and the Human Resources in Creation ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 14
Yoshitaka ENOMOTO
Fostering human resources who can create new value is socially required for the future. Such humanresources are supposed to have the power to create something unique to human beings, the capacity to copewith problems with no clear answers, and the ability to set a future vision while viewing the entirety and tomaterialize that vision (Intellectual Property Strategy Vision).
A logical way of thinking based only on rules and conventional patterns will lead to the same answer,82

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No.67 2019／3with which no one can differentiate his/her ideas from those of others or respond to new problems that arisein an increasingly complicated society. In order to create innovative changes, it is necessary to think by intuition and sensibility, being free from such rigid ideas.
To escape the intersubjective level of ordinary people, we need to accept personalities and realities thatcannot be contained in personas or models without prejudice and have courage and experience to step out
into an unknown world beyond common sense. By sharing new awareness arising within ourselves with others, we may find new value.

■ An Analysis of Non-Dedicated Product Type Indirect Infringement ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 23

Makoto HATTORI and Hitomi ONISHIThis paper expresses the author's humble opinions about the important points of issue concerning nondedicated product type (multi-functional type) indirect infringement (Article 101, items (ii) and (v) of the
Patent Act), which was newly established through the 2002 amendment of the Patent Act, in light of court
cases and theories.
1. Indispensability requirement
The text of the provisions only provides that “any article … that … is indispensable for the resolution ofthe problem by the invention,” and even in light of the background to the legislation, application that is amenable to the text of the provisions seems to be sufficient.
2. Working requirement
In the judgment of the Intellectual Property High Court of September 30, 2005, in the appeal instance on
the Ichitaro case, the court ruled that “under said item (item (v)), the act of producing, transferring, etc. any
article by means of which a process pertaining to a patented invention can be worked is deemed to constituteinfringement of the patent right, and the act of manufacturing, transferring, etc. an article that is used for
producing said article is not deemed to constitute infringement of the patent right.” However, the author
cannot agree with the summary of the judgment in terms of the text of the provisions and the purpose of thesystem of indirect infringement.
3. Subjective requirement
The subjective requirement should be recognized to be fulfilled based on the recognition of existence ofthe probability that an unspecified purchaser of an article suspected of constituting indirect infringement
would use the article for the purpose of direct infringement. It is not reasonable to consider the subject requirement in an excessively strict manner.
4. Injunctive relief
The author thinks that the concern that widely recognizing establishment of non-dedicated product typeindirect infringement will cause permission of excessive injunctions should be resolved in the main text of
the judgment on injunction or in the litigation procedures in which the parties make allegations and show
proof thoroughly.

■ An Analysis of Intangible Asset Valuation ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 34
Tomoichiro HASEBE
As a result of dissemination of the fact that M&A is indispensable for corporate growth, companies thatdevelop from M&A are increasing, and accounting standards for M&A are also achieving development. InJapan, with dissemination of the International Financial Reporting Standards, a procedure for allocation ofpurchase prices in M&A to intangible assets (purchase price allocation) is being established mainly at listed

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companies. This paper organizes the current situation and problems with a focus on intangible asset valuation
for the purpose of financial accounting which needs to be disclosed in securities reports, etc.
As methods of intangible asset valuation for the purpose of financial accounting, (i) the relief from theroyalty method whereby profits to which intangible assets contributed are found by using a royalty rate and(ii) the multi-period excess earnings method whereby profits that contribute to intangible assets are extracted
from profits from the entire business, both of which are income approaches, are often used. The relief fromthe royalty method is often adopted in the case where intangible assets subject to valuation can refer to asimilar license transaction for a trademark, patent, etc. On the other hand, where intangible assets subject tovaluation are assets that make the most contribution to the implementation of business, the multi-period
excess earnings method is often adopted. Even if either intangible asset valuation method is adopted, it isnecessary to conduct valuation consistent with the actual conditions of intangible assets subject to valuation
through evaluation of a future business plan, analysis of the degree of contribution of intangible assets, andrisk (discount rate) analysis.
This article puts focus on the methods of intangible asset valuation for the purpose of financial accounting,but intangible asset valuation is conducted not only for the purpose of financial accounting but also for various
purposes, including buying and selling, lawsuits, tax affairs, and internal management. There are cases whereeconomic valuation does not necessarily meet the purpose, and it is thus necessary to conduct intangible asset
valuation that meets each purpose. It is desired that trade practice for intangible assets will become further
active and intangible asset valuation practice will make further progress.

■ A Study on Criminal Law Protection of Industrial Property Rights ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 47

Yoshihiro TANAKA
Japanese industrial property laws not only provide for civil remedies but also set penal provisions for aviolation for the purpose of protecting industrial property rights. All of the Patent Act, the Utility Model Act,
the Design Act, and the Trademark Act, which are called the four industrial property laws, set common penal
provisions for a “crime of infringement” and “dual liability.” However, there are very few cases to whichthese penal provisions are actually applied, except for those in the Trademark Act. This fact indicates that thepenal provisions in the Patent Act, the Utility Model Act, and the Design Act have become dysfunctional andalso suggests that infringement of a trademark right essentially differs from infringement of other industrialproperty rights.
In this paper, (1) regarding the penal provisions in the four industrial property laws, the statutory penalties,changes in the number of cases to which the provisions were applied, and major court cases, etc. wereanalyzed, respectively, (2) the reasons why the penal provisions in the Patent Act, the Utility Model Act, andthe Design Act have become dysfunctional are considered, (3) furthermore, the nature of infringement of atrademark right is considered through comparison with the Copyright Act whose penal provisions have been
applied to a certain extent in the same manner as the Trademark Act, and (4) lastly, in light of the types ofcrimes under administrative criminal law, desirable penal provisions in industrial property laws are consideredfrom the perspective of ensuring the effectiveness of protection of industrial property rights.
The penal provisions in industrial property laws are being toughened in stages from the perspective of
increasing their warning effect, but, on the other hand, the requirements for constituting a crime have not been
considered much in light of the characteristics of individual industrial property rights. However, even if
industrial property laws have a commonality in seeking protection of industrial property rights, they are notlogically required to have a commonality in the penal provisions intended for ensuring the effectiveness ofprotection of industrial property rights. It seems to be of certain significance to reconsider the penal provisions
in the Patent Act, the Utility Model Act, and the Design Act, which have become dysfunctional, from the84

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perspective of ensuring effectiveness.

■ Who Should Own the IP Right in the Case Where the Creation Is Made by a Nonhuman?

-An Old but New Issue- ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 57
Akiko OGAWA
Technological innovation has been drastically streamlining people's lives. Capable machinery, or AI, isbringing about significant changes to daily living, but when such changes expand to some creative fields, notonly limited in ways of giving orders or conducting liaison, problems relating to IP rights occur. In otherwords, to whom should the IP right be granted for any creation made by a nonhuman?
A report by the Intellectual Property Strategy Headquarters states that the IP right for a creation made byusing AI as a tool (AI product) should be granted to the relevant user but does not make a conclusion regarding
a creation independently made by AI (AI creation). At present, how to handle creation by AI technology isbeing discussed.
However, the discussion over AI is not the first case of worrying about the handling of a new technology.
Discussions have been held so far each time when a new technology appeared and the handling thereof has
been decided. In that sense, it is meaningful to consider not only the protection system based on thecharacteristics of AI itself, but also the potential of deciding the right holders by referring to judicial
precedents regarding other types of works than AI.
This report examines whether any rights may be granted to an AI user, AI itself, and an AI developer byreferring to judicial precedents on copyrights for works not created by AI. Regarding an AI user, a casewherein whether a photo falls under a copyrighted work was disputed and a case wherein both parties allegedthat the relevant work was created by a spiritual or divine existence were cited. For AI itself, a case wherein
whether an animal can be an author was disputed was cited, and for an AI developer, a case wherein a casepertaining to a holder of traditional knowledge was cited.

■ Intellectual Property High Court Special Division Judgement as of 20 January 2017; 2017 (Ne)No.10046, Oxaliplatin Case - Regarding Effect of Patent Right in the Case of Duration Extension -ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 67
Naoto SHIMIZU
In this judgment, the Intellectual Property High Court presented, for the first time, its determination
concerning the effect of a patent right after an extension of the patent term. For this reason, this judgment canserve as a beneficial guideline for legal practitioners.
The determination presented in this judgment is as follows in summary.
1) “The subject of a disposition designated by Cabinet Order” and “usage” specified in Article 68-2 of thePatent Act can be identified based on the information that is taken into consideration in the examination of a
medicine, more specifically, “ingredients, amounts, regimen, dosage, efficacy and effect,” which will directly
affect the substantive identicalness between medicines. “Ingredients and amounts” are the elements to identify
the “product (subject),” whereas “regimen, dosage, efficacy and effect” are the elements to identify the“product use (usage).” The effect of a patent right after an extension of the patent term will extend up to theextent of the “working of the patented invention” of the “product” (the medicine in question) identified basedon the “ingredients, amounts, regimen, dosage, efficacy and effect” specified as a result of an administrative
disposition executed under Cabinet Order.

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852) However, if the differences between the medicine in question and a product manufactured by anotherparty (Product X) are mere “minor differences or differences in formality when viewed as a whole,” ProductX can be considered to be a “substantively identical” medicine and to fall within the scope of the patent rightwhose term has been extended. In this case, the “ingredients” should not be limited to active ingredients.
3) A determination as to whether Product X is substantively identical to the medicine in question should
be made only in the case where differences are limited to the difference in “ingredients,” the quantitativedifference in “amount,” and the quantitative difference in “regimen and dosage” as long as no other
differences exist. It is necessary to take into consideration the subject matter of the patented invention and tomake a comparison between the medicine in question and Product X in order to determine whether they areidentical or not in terms of technical characteristics and function and effect.
4) It is impossible to apply the doctrine of equivalents, etc. Based on the commonly used doctrine ofestoppel, substantive identicalness cannot be found to exist.
According to this judgment, the issue of substantive identicalness will arise almost inevitably. The ensuing
dispute might be entirely focused on the issue of what should be found as exceptions. This judgment might
be considered to be not in line with the legislative purpose of establishing the patent term extension system
and also not in line with the stance of the pharmaceutical industry as of the time of the legislation. TheJapanese patent term extension system is quite different from its counterparts in Western countries. Thus, it
seems necessary to modify it.

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