6

Ideal Framework for the Future Patent Attorney System

Amid industry’s pro-patent trends with a strengthened emphasis on patents and intellectual
property (IP), an overall revision was made to the Patent Attorney Act in 2000 for the first time in
80 years since its enactment, with the aim of promoting the use of patent attorneys as IP experts.
Through this revision, the scope of services that patent attorneys are authorized to provide has
been expanded, and various measures have also been put in place regarding the examination ofpatent attorneys so as to increase the number of patent attorneys. Furthermore, in the
Supplementary Provisions, it is provided that the revised Act shall be reviewed five years
following its enforcement.
In this study, in order to inquire into the actual condition of the patent attorney system anddiscuss the future development of the system amid the changes in surrounding circumstances
following the revision to the Patent Attorney Act, we discussed a wide range of issues focusing on
the themes left unaddressed in the FY2005 study (which addressed the “patent attorney
examination system,” “training for patent attorneys,” the “code of ethics (relating to conflicts ofinterest) for patent attorneys” and the “disclosure of patent attorney information”), thereby
identifying any problems. The FY2006 study focused on: the “review of the scope of services,”“incorporation of patent firms (as patent profession corporations),” “corporations or employees
acting as agents,” and “specially authorized patent attorneys.”

I

Against this background, in FY2005, we
conducted questionnaire surveys on thepatent attorney system in general, and basedon the findings in the surveys, we discussed
issues focusing on four major themes, namely
the “patent attorney examination system,”“training for patent attorneys,” the “code of
ethics (relating to conflicts of interest) for
patent attorneys” and the “disclosure ofpatent attorney information,” thereby
identifying problems with the existing patent
attorney system.
In the FY2006 study, we discussed awide range of issues focusing on the themes
left unaddressed in the FY2005 study, namely,
the “review of the scope of services,”“incorporation of patent firms (as patentprofession corporations),” “corporations or
employees acting as agents,” and “speciallyauthorized patent attorneys,” thereby
identifying any problems. Furthermore, we
conducted questionnaire surveys in order toinvestigate whether SMEs actively use
patent attorneys.

Introduction

Amid industry’s pro-patent trends witha strengthened emphasis on patents andintellectual property (IP), an overall revision
was made to the Patent Attorney Act in 2000
for the first time in 80 years since its
enactment, with the aim of promoting the useof patent attorneys as IP experts. This
revision has expanded the scope of services
that patent attorneys are authorized toprovide, and also enabled patent attorneys toincorporate their firms as patent profession
corporations. Furthermore, for the purpose ofincreasing the number of patent attorneys,reforms have also been made with respect tothe patent attorney examination.
However, since these revisions were
implemented, the circumstances surrounding
IP and the patent attorney system havechanged, with the government advocating anational policy to make Japan an IP-based
nation, and the need to increase the number
and quality of IP experts being pointed out.
In addition, Article 13 of the Supplementary
Provisions for the 2000 revised Patent
Attorney Act requires a review of the revised
Act to be made five years after its
implementation.
1
IIP Bulletin 2007

patent attorneys do not seem to contribute
fully to providing these services. Therefore,
the Patent Attorneys Act should clearlystipulate that the services relating tooverseas filing procedures shall be provided
by patent attorneys under the obligation andresponsibility of the profession of patent
attorney.
[iv] There is no legal provision thatclearly stipulates an exemption from thedisclosure of documents exchanged between
patent attorneys and their clients. The lack ofsuch an exemption provision might cause thestanding of Japanese nationals in the
discovery procedure to suffer detrimental
treatment by courts or other authorities in
the United States. To avoid such a situation,
it should be expressly stipulated in Japanese
law that documents exchanged between
patent attorneys and their clients shall be
exempted from disclosure.
(2) Opinions expressed in the committee(i) Review of the scope of services in general- Different types of licensed professionals
conventionally had their own areas ofactivity, but, today, there are overlaps inthese areas as society becomes more
complex. For the convenience for the
public and users of IP services, it isnecessary to reconsider the scope ofservices of patent attorneys.
- In the previous year’s questionnaire
surveys, I cannot clearly find a demand
from users for a review of the scope ofservices. Is there really such a demand?
- It is meaningful to clearly stipulate that“these services should be provided only by
those qualified as patent attorneys” or“these services are not exclusive servicesof patent attorneys, but they may beprovidedbypatentattorneys,”distinguishing the scope of services ofpatent attorneys from that of other typesof licensed professionals.
(ii) Review of the scope of specified unfair
competition- The existing scope of services for dealing
with specified unfair competition seems
to have no problem as it is.
- From the perspective of deregulation, I

II Future Development of the Patent
Attorney System
1 Review of the scope of services(1) Services to be provided by patent
attorneys: Committee Member Kanbara
In the course of providing users withconsistent and quality IP services throughout
the intellectual creation cycle, patent
attorneys are still subject to some restrictions
on the scope of services that they are allowed
to provide.
[i] The scope of specified unfair
competition defined by the Patent Attorneys
Act is too narrow to enable users to fully
enjoy patent attorneys’ expertise inintellectual property. To correct such asituation, it is recommended that the scope of
specified unfair competition should also
include the acts prescribed in Article 2(1)(xiii),(xiv) and (xv) of the Unfair Competition
Prevention Act (the acts prescribed in item(xiv) should be limited to the act of making or
circulating a false allegation concerning an
intellectual property right).
[ii] In the procedure for the suspension ofimports at Customs, currently, a patent
attorney is only allowed to act as an agent for
the right holder, which means that theimporter cannot enjoy support from a patent
attorney acting as an agent. This causes
inequality in access to patent attorneys’
expertise. To achieve a balance between theparties, patent attorneys should also beallowed to act as agents for importers in the
Customs procedures.
[iii] There is no legal provision that
expressly stipulates the services relating tooverseas filing procedures. Currently, these
services are provided not only by patent
attorneys but also various types of businesses.
This may be because society has not yet fullyrecognized that the services relating tooverseas filing procedures are criticallyimportant when obtaining rights in foreigncountries with respect to inventions
developed in Japan, and in this respect, they
will affect directly the quality and strength ofintellectual property rights to be obtained
overseas. In the present circumstances,2
IIP Bulletin 2007

-

-

-

-

(xiii) and thereafter of Article 2(1) areprohibited for regulatory purposes. In
light of such a considerable genericdifference, it is necessary to analyze what
it would mean to expand the scope of
specified unfair competition so as also toinclude the acts prescribed in Article
2(1)(xiii) to (xv).
(iii) Review of the agent services for Customs
procedures (import suspension)- Since patent attorneys are allowed to act
as agents for right holders in filing
applications, they should also be allowed
to act as agents for the alleged(respondent) parties (importers).
- Importers who are subject to importsuspension may request patent attorneys
to prepare expert opinions. If it were also
allowed to request patent attorneys to act
as agents in Customs procedures, thiswould be helpful for SMEs in reducing
the procedural and economic burden.
- From the perspective of deregulation, it isfavorable to allow various persons to act
as agents in Customs procedures.
- Since Customs procedures develop into
disputes between conflicting parties (e.g.
right holder vs. importer), they should be
carried out by attorneys at law, not bypatent attorneys.
- Under the current situation where patent
attorneys are not authorized to act ascounsel independently in infringement
lawsuits (not accompanied by attorneys
at law), it is questionable whether or not
it is really necessary to review the scopeof agent services of patent attorneys.
- Customs procedures involving patentrights and other intellectual property
rights usually become disputes that are
similartoinfringement
lawsuits;
therefore, it may be appropriate to allow
patent attorneys to act as agents jointlywith attorneys at law.
- Procedures under the Customs Tariff Act
have become more complex and they now
function as procedures for disputesettlement. Under such circumstances,
we should consider whether or not it isappropriate to allow patent attorneys to

can understand the idea of expanding thescope of services for dealing with specified
unfair competition.
There is a similarity between what
constitutes an act of unfair competitionprescribed in Article 2(1)(xiii) of the
Unfair Competition Prevention Act andwhat constitutes an act involving a
trademark that may be subject to a trial
for the rescission of registrationprescribed in Article 51 and Article 52 of
the Trademark Act, although they target
different
subject
matters(indication/trademark). Therefore, it may
be possible for patent attorneys todetermine whether or not an alleged act
constitutes unfair competition, using
their expertise.
In relation to Article 2(1)(xiv) of the
Unfair Competition Prevention Act,
whether or not making an allegation of
infringement of an intellectual property
right constitutes unfair competition may
be a point at issue. I do not disagree with
the idea of including services for dealing
with specified unfair competition in thescope of services of patent attorneys, but I
still find room to question whether or not
the acts prescribed in Article 2(1)(xiv) of
the Unfair Competition Prevention Act
should necessarily fall within the scope of
specified unfair competition.
The purport of the provision of Article
2(1)(xv) of the Unfair Competition
Prevention Act is not completely the sameas that of the provision of Article 53-2 of
the Trademark Act. The former means tosuspend a third party’s act. Therefore, it
is still questionable whether or not theacts prescribed in Article 2(1)(xv) of the
Unfair Competition Prevention Act
should necessarily fall within the scope of
specified unfair competition.
The acts prescribed in Article 2(1)(i) to(xii) of the Unfair Competition Prevention
Act, which fall within the scope of
specified
unfaircompetition,areprohibited for the purpose of protecting a
specific person’s intellectual property
right, whereas the acts prescribed in item
3

IIP Bulletin 2007

act as agents independently.
(iv) Services relating to overseas filingprocedures- Services relating to overseas filingprocedures mean services for mediating
between clients and overseas agents,
including consulting services concerning
overseas patent systems.
- Since it is very costly to ask Japanese
patent firms for services relating tooverseas filing procedures, there areother options such as filing applications
without agents or via agents other thanpatent attorneys. However, in reality,
Japanese applicants seem to use
Japanese patent firms for overseas filingprocedures.
- There is no law in foreign countries thatspecifically stipulates the power of patent
attorneys to execute overseas filingprocedures, with the exception that theGerman Patent Attorneys Act provides
that patent attorneys may provide advice
on intellectual property irrespective of
territorial jurisdiction.
- The existing Patent Attorneys Act does
not expressly stipulate that services
relating to overseas filing procedures
shall be included in the scope of servicesof patent attorneys. This means that the
duty of confidentiality under Article 30 of
the said Act shall not apply to services
relating to overseas filing procedures.
However, in practice, it is possible to bindpatent attorneys with the professional
duty of maintaining their dignity asprescribed in Article 3 of the same Act.
- The Japan Patent Attorneys Association(JPAA) does not intend to monopolize
services relating to overseas filingprocedures.
- Although patent attorneys are currently
allowed to provide services relating tooverseas filing procedures, it may bedifficult for them, under the current
circumstances, to satisfy the need for
obtaininghigher-quality
intellectual
property rights in various countries. If
services relating to overseas filingprocedures were included in the statutory

-

-

-

-

-

-

-

4
IIP Bulletin 2007

scope of services of patent attorneys, itwould be possible for the JPAA to direct
and supervise patent attorneys effectively
in the fulfillment of their duties. It would
also be possible to make patent attorneys
aware that services relating to overseas
filing procedures do not only meantranslation services.
If services relating to overseas filingprocedures were placed under the JPAA’s
supervision, this would make it easier for
the JPAA to monitor patent attorneys
engaged in these services, and would also
make it clear that patent attorneys shallassume the legal duty of confidentiality.
If, in other service areas (e.g. accounting
services), the acts that shouldbeconducted in Japan by qualified persons
for the purpose of carrying out official
procedures
overseas
wereclearly
stipulated by Japanese law, it would bepossible to clarify why services relating tooverseas filing procedures should be
provided in the name of a patent attorney.
The Tokyo Metropolitan Government
provides grants to SMEs to cover theircosts for filing applications overseas.
Overseas application documents filed bysuch financially-supported SMEs are
sometimes very poor. Therefore, it is avery good idea (to include services
relating to overseas filing procedures inthe statutory scope of services of patent
attorneys), if it is necessary in order toimprove the quality of such services.
I cannot find a good reason to require
services relating to overseas filingprocedures to be provided in the name ofa patent attorney.
It is questionable whether to provide forservices relating to overseas filingprocedures, which may involve foreigncountries, in Japanese law.
It is necessary to ascertain whether or not
users specifically point out any problems
with the present situation, citing
examples.
The idea of stipulating services relating
to overseas filing procedures under the
Patent Attorneys Act might be construed

as being the desire of patent attorneys topreserve their privilege or acquirecompetitive
advantage
over
their
conventional rivals (e.g. search agencies).
- Since most SMEs entrust patent
attorneys with overseas filing procedures,
it is uncertain whether or not it is reallynecessary to stipulate specifically by law
that services relating to such procedures
shall be provided in the name of a patent
attorney.
- It is questionable whether or not it isreally impossible to improve the qualityof services relating to overseas filingprocedures without stipulating them bylaw.
(v) Exemption from the disclosure of
documents exchanged between patent
attorneys and their clients, patent attorneys’
privilege of nondisclosure in the UnitedStates, and other issues- In the discovery procedure in US civil
litigation,
nondisclosureisrarelydemanded in prosecution cases, and isintended mainly for infringement cases.
With regard to whether or not disclosure
is required for various documents
exchanged between Japanese patent
attorneys and their clients, courts
allowed nondisclosure in some cases anddenied it in others. Such inconsistency is
a problem.
- The judgment on the VLT case in 2000
seems to overestimate the enactment of
Article 220 of the Code of Civil Procedureas having established a procedure similar
to the US discovery procedure. There isno supportive evidence to prove that the
court made a concrete examination of theprovisions of Article 220 of the said Code.
There is concern about what would
happen when courts examine theprovisions more closely in future cases if
no measure is taken. In particular, a
problem can be found in that somedocuments that patent attorneys deal
with in their daily routine do not satisfy
conditions (c) and (d) of Article 220(iv) of
the Code of Civil Procedure.
- The Code of Civil Procedure or the Patent

-

-

2

Incorporation of patent firms (as patentprofession corporations)(1) History of the introduction of thecorporation
systemandcurrent
problems: Committee Members Kanbara
and Lecturer Mr. Isshiki
The corporation system was introduced
by way of the revision to the Patent
Attorneys Act in 2000, as a result of a
discussion highlighting the continuity
required for patent attorney services and theneed for patent firms capable of providing
comprehensive services. On that occasion, as
in the case of audit corporations, theprovisions (of the Civil Code) then applicableto general partnership companies wereapplied mutatis mutandis to patentprofession corporations. For this reason,
patent profession corporations have thefollowing characteristics: (i) all patent
attorneys who are partners of a patentprofession
corporation
shall
assumeunlimited liability jointly and severally; (ii) a
patent profession corporation shall basicallyconsist of more than one partner.
There
are
many
advantages
to5

IIP Bulletin 2007

Act should be revised so as to limit
somewhat the duty to submit documents.
The Japan Federation of Bar Associations(JFBA) considers that the existing Codeof Civil Procedure allows exemption fromdisclosure to a certain extent and it has
become significantly easier to manage
documents by taking advantage of thespecial authority to act as counsel atcourt; therefore, currently, the JFBA has
no specific ideas for further improvement.
In Article 197(1)(ii) of the Code of Civil
Procedure as applied mutatis mutandis
under Article 220(iv) of the said Code,patent attorneys and attorneys at law arelisted alongside each other. This can beconstrued as meaning that professions of
the same nature shall necessarily betreated in the same manner. If patent
attorneys demand more privilege of
nondisclosure,theyshouldargue
specifically that their current privilege isinsufficient.

-

incorporation, including: (i) guarantee thecontinuous and stable operation of agent
services; (ii) improve social confidence inpatent attorneys and their services; (iii)
receive tax benefits; (iv) encourage directors
to participate in corporate activities; (v)clearly distinguish between individual assets
and corporate assets.
By the end of January 2007, 66 patentprofession corporations had been established.
The number of partners is only two to five per
corporation. Despite users’ demand for thecontinuous and large-scale operation ofpatent agent services, not many patent firms
have been incorporated thus far. Measures
should be taken to facilitate the use of thecorporation system for patent attorneys.
More specifically, it is necessary toconsider (i) imposing unlimited liability only
on designated partners, and (ii) allowing theestablishment of a one-partner corporation.
(2) Opinions expressed in the committee- A partnership may be establishedbetween patent attorneys whose clients’interests are in conflict with each other.
The partnership system may be popularfor usability.
- In the case of a partnership, it isnecessary to conclude a new contract
whenever a partner changes. The
corporation system may be preferable for
ensuring the continuous operation ofservices.
- In order to increase the usability of thecorporation system, it is necessary to
publicize the system to the greatest
possible extent and reform the system by
eliminating the defects thereof.
- Patent firms may have difficulty finding
their successors due to not being
incorporated.
- Some committee members pointed outthat by disclosing BS and PL, patentprofession corporations can increase thetransparency of their business andattract more users, whereas otherssuspected that unlimited liability is
imposed on these corporations in
exchange for exemption from theobligation to disclose BS or PL.

-

-

-

-

-

-

-

6

IIP Bulletin 2007

When users choose patent attorneys as
their agents, they prefer patent attorneys
who belong to patent firms where eachconsists of more than one patent attorney,rather than patent attorneys who operate
patent firms independently, by reason ofcontinuity and permanence.
If users become aware of the benefits ofincorporation of patent firms, they will
actively push forward incorporation.
It is doubtful that many patent firms willswitch over to incorporation unless themembers change their recognition ontransparency or correct the idea that thefirms belong to their members.
The JPAA should declare a policy toactively promote incorporation.
It is necessary to define the details of apatent profession corporation such as how
it differs from a partnership under the
Civil Code in terms of liability to a third
party.
If a patent firm becomes a patentprofession corporation, its name will bemaintained
permanently.
Somecommittee members pointed out thatyoung patent attorneys might argue thatthe permanence of names of patent firms
would reduce the opportunities for themto open their own firms (the same
argument was heard regarding the use ofnames of firms as abstract nouns.) Others
stated that today, patent attorneys may
not be very eager to maintain the namesof their firms.
Since it sometimes takes a long period oftime to conclude one case, it may bedifficult for all partners of a patent firm
to assume responsibility for all cases
handled within the firm.
It has often been argued recently that the
responsibility for each client shall beborne by the patent attorney who is incharge of the client. According to thisargument, a patent firm’s responsibility
should be divided to this extent.
Liability limitation may be acceptable if it
is reasonable in light of the characteristic
nature of the services of patent attorneys.
We should consider how to limit liability

-

-

-

-

-

-

-

upon the introduction of the corporation
system, including a method of publicizing
the scope of liability to be assumed andthe division of the liability.
Where unlimited liability is imposed on
only designated partners, and therepresentative partner assumes noliability for any acts of other partners,clients would not be completely satisfied.
The representative partner should
assume liability to a certain extent.
In the case of a patent profession
corporation where only designatedpartners shall assume unlimited liability,
it may be inappropriate to state only thename of the corporation in an application
form because it would be impossible todiscover who should actually assume
unlimited liability.
Some committee members suggested theidea of registering the limit of liability as
required under the Companies Act,
whereas others argued that the situation
would be somewhat different in the caseof a patent profession corporation which
is financed and managed by the
corporation itself, compared with stockcompanies for which limiting the liabilityof directors is reasonable.
Establishing a patent firm as a onepartner corporation may be acceptable if
there is a good reason to do so.
In order to allow a patent firm to beestablished as a one- partner corporation,
it is necessary to consider in advance
what should be done if the one partner
leaves.
If a patent firm is allowed to beestablished as a one- partner corporation,
this would promote the incorporation ofpatent firms because currently about 60
to 70% of the patent attorneys registeredwith the JPAA operate one-attorneyfirms.
The reasons why the incorporation ofpatent firms has not been promoted may
be because: (i) the owner of a patentprofession corporation is required todisclose the corporation’s assets to otherpartners; and (ii) if there is more than one

-

-

3

Corporations or employees acting as
agents(1) Changes in the environment affecting
corporations or employees acting as
agents: Committee Member Toda
Through the recent reforms of theaccounting
system,consolidated
management is now allowed for corporategroups, and the types of subsidiary subject toconsolidation have been established as
uniform types. In addition, corporate
governance has been expressly stipulated bylaws in the United States and Japan, whichmeans that the governance of intellectual
property within a corporate group as a wholehas also become very important.
Since intellectual property is valuable asa management asset but can also be a risk
factor, corporate groups currently face thenecessity of centralized management ofintellectual property. Furthermore, as thenumber of in-house patent attorneys has
increased and human resources capable of IP
management
have
been
developed,
companies may hope to entrust in-housepatent attorneys with the IP management forthe companies themselves as well as closely
affiliated companies within their corporategroups.
Under such circumstances, in the casewhere an in-house patent attorney who
belongs to the IP management subsidiary (orthe parent company) acts as an agent in theposition of an employee of the corporation, aquestion arises in relation to the restrictions
7

IIP Bulletin 2007

partner other than the owner, the owner
may be dismissed by a resolution of otherpartners.
A general partnership company is allowed
to be established with only one partner inorder to make it easier to start a business.
If we apply this theory to a patentprofession
corporation,
weshouldconsider whether it is also necessary tofacilitate business start-ups in the area ofpatent attorney services.
It may be possible to segregate the patent
firm’s assets from the firm owner’s assets
without incorporating the firm.

of engagement in the patent attorneybusiness prescribed in Article 75 of the
Patent Attorneys Act. It is not desirable toestablish strict guidelines under which allservices currently performed by suchin-house patent attorneys would be deemed
to be illegal.
However, the request that corporations
other than patent profession corporations beallowed to act as an agent does not seem to be
dominant in industry.
(2) Spin-off of IP departments and Article 75of the Patent Attorneys Act: Committee
Member Itami
The scope of companies within a
corporate group for which in-house patent
attorneys who work at the spin-off IP
management company are allowed to act asagents, should be defined while taking into
account the services that have actually beenhandled by the IP department before thespin-off.
A spin-off IP management company may
be allowed to assist the parent company oraffiliated company in carrying out the filingprocedure if it is not engaged in preparing
documents, which is prohibited under Article
75 of the Patent Attorneys Act. It is necessary
to discuss and clarify the details of allowableassistant acts in advance.
(3) Opinions expressed in the committee- If corporations (companies) are allowed toact as agents for the filing procedures,
this might make Article 75 of the Patent
Attorneys Act meaningless.
- In the case where a patent attorney whois an employee of a subsidiary acts as anagent for the patent filing procedures onbehalf of the parent company, if thepatent attorney receives fees from thesubsidiary, his/her employer, it would besuspected that the subsidiary itself hadentered into a contract with the parent
company for acting as an agent. This
would mean that a corporation other thana patent profession corporation acts as anagent, and might be in violation of Article
75 of the Patent Attorneys Act. However,considering that a parent company andits subsidiary can be collectively regarded

-

-

-

-

-

-

-

8
IIP Bulletin 2007

as one corporation, it would go against
economic reality to regard such practice
as violating the Patent Attorneys Act only
because the parent company and its
subsidiary are different entities.
In relation to Article 75 of the Patent
Attorneys Act, it is necessary to clearly
define (i) the scope of “preparation of
documents” and (ii) the scope of “others.”
Since companies that form a corporategroup have tended to be regarded as one
corporation
recently,
theissuesconcerning the scope of services allowed
to be undertaken by patent attorneys andthe remuneration for such services can be
determined flexibly to some degree.
The JFBA considers that in the case of aparent company and its subsidiary thatcan be regarded as one entity, thesubsidiary shall not be precluded fromdealing with legal affairs for the parent
companyifitsatisfiescertainrequirements. This rule can be also
applicable to the patent attorney system.
The scope of the subsidiaries prescribedin Article 2(iii) of the Companies Act may
also apply in the discussion concerning
patent profession corporations.
Procuring agents for patent filing byreceiving fees is not prohibited under
Article 75 of the Patent Attorneys Act,but such an act is sometimes malicious
and therefore it is currently regulated
under Article 3 of the said Act as an issue
of professional ethics. Some committee
members suggested that the procurementof patent attorneys should be included in
the scope of services exclusively
authorized to patent attorneys.
Public organizations do not receive
remuneration for the procurement ofpatent attorneys. However, the persons
engaged in the procurement receive
payments for their work, and this aspect
might be regarded as “engagement in thebusiness.”
Under the current circumstances where
patent attorneys work as employees ofpublic organizations, the scope of patent
agent services that public organizations

--are allowed to provide would be different
depending on whether or not theorganizations have patent attorneys as
their employees.
Various ways of providing agent services
for patent filing have been developed inline with economic reality.
Most SME consultants provide various
kinds of consulting services concerning
invention, management, and disputesettlement, and it is difficult to determine
which services would be deemed to beillegal (under the Patent Attorneys Act).

(2) Specially authorized patent attorneys
system: Lecturer Mr. Koda
Initially, there was an argument thatpatent attorneys with experience of acting as
assistants for attorneys at law in court
proceedings should be mainly allowed toparticipate in the examination for acting as
counsel in specific infringement lawsuits.
However, among the 1,600 persons who
passed the examinations by FY2005, thenumber of those with experience as an
assistant was only 595, accounting for 37% of
the total, whereas those with no such
experience are the majority. Analyzed by the
number of years of membership in the JPAA,
the sum of specially authorized patent
attorneys with job experience of not morethan five years and those with job experienceof not more than ten years accounted for
50.8%. This indicates that the share of
relatively young patent attorneys has been
increasing in the total of specially authorizedpatent attorneys. About 80% of theexamination participants have majors inscience and engineering.
Fromtheperspectiveof
actualperformance, the number of speciallyauthorized patent attorneys who have insome way taken part in infringement
lawsuits was not so large, 138 as of August
2005. However, they have engaged in a wide
range of activities, providing clients (parties
to lawsuits) with advice on technical matters
as a basic service, as well as providing
attorneys at law with advice on intellectual
property laws and technical matters.
In the future, the collaboration between
attorneys at law and patent attorneys will be
important in intellectual property lawsuits.
In this regard, the specially authorizedpatent attorney system can function as acommon interface for these professions,
thereby contributing to speeding up andfacilitating court proceedings.
(3) Opinions expressed in the committee(i) Specially authorized patent attorney system- The effect that has been brought so far
through the implementation of thespecially authorized patent attorneysystem seems somewhat different from4 Specially authorized patent attorneys(1) Current status and problems of thespecially authorized patent attorneysystem: Lecturer Mr. Mitsuishi
Along with the significant increase inrecent years of the number of lawsuits
disputing the infringement of industrial
property rights, in order to enhance andstrengthen dispute settlement services by
increasing the number of counsel withexpertise in this field and to improve theirabilities, a system has been developed toauthorize patent attorneys to act as counsel
in specified infringement lawsuits after
taking measures to secure the reliability andhigh capabilities of patent attorneys (training
and examination). Although this systemcelebrated its fourth anniversary in 2006,
such specially authorized patent attorneys
have not been so frequently used in specified
infringement lawsuits.
In order to acquire the authority to act ascounsel in court, patent attorneys shouldmake independent efforts to study basic
matters in the Civil Code and the Code ofCivil Procedure. In this respect, theirlearning and practical skills in this field may
be insufficient compared with attorneys atlaw. Therefore, it is necessary to oblige patent
attorneys, who wish to act as counsel ininfringement lawsuits, to study the basics of
the Civil Code and the Code of Civil
Procedure for a certain period at university,
etc., including basic case studies.

9
IIP Bulletin 2007

-

-

-

-

-

-

-

professional laws because they are
required to have professional knowledge.
A problem might arise if we promote
deregulationorliberalizationofinterdisciplinarytransactions
foranything.
- According to the findings in the lastyear’s questionnaire surveys, the JIPA
and SMEs seem to expect patent
attorneys to act independently as counsel
at court. Some committee members
pointed out that such expectation comesfrom the hope of reducing legal fees,
whereas others presented a cautious viewthat whether or not to allow patent
attorneys to act as counsel independently
should not be discussed until speciallyauthorizedpatentattorneyshaveacquired sufficient experience of acting as
counsel jointly with attorneys at law andtheir performance has been recognized by
the public.
- Since this system has just started, we arestill at the stage of observing thesituation.
(ii) Training for securing ability- In light of the current situation, apossible measure might be to oblige
patent attorneys to participate instudying necessary matters at university
for a certain period, including basic casestudies, as a requirement for registrationas specially authorized patent attorneys(qualification for taking the examination
for securing ability).
- The training for securing ability can have
two meanings as a requirement forregistration as specially authorizedpatent attorneys: (i) it can be arequirement for taking the examination;(ii) it can be a requirement for obtaining
registration (patent attorneys can takethe examination before completing thetraining but they cannot obtainregistration unless they receive thenecessary education at university).
- If examination participants are to berequired to earn credits at university, it isnecessary to discuss the details of thesubjects for which credits will bewhat was initially expected based on thephilosophy of the system. The advantagesof the system currently argued are that:(i) specially authorized patent attorneys
can have mutual knowledge about thecontents of their work, and (ii) they haverisen in position, or more specifically,
they are allowed to use the title of patent
attorney for overseas-related services andact as counsel in court proceedings.
Taking these effects into account, weshould review the ideal framework of thesystem.
In light of the philosophy of the system,
the most important issue is how speciallyauthorized patent attorneys should makeuse of their title in the course of providing
services for users and society, and how
the JPAA should develop a desirable
environment and guidelines to achieve
this.
As patent attorneys, with their special
authority, acquire the capability andexperience of dealing with lawsuits, they
will also be able to improve their abilities
in providing services for obtaining rights,
which are exclusively authorized topatent attorneys.
The specially authorized patent attorneysystem should be reformed in order toimprove the capabilities of speciallyauthorized patent attorneys so that they
can fully perform their functions as
patent attorneys as partners for
attorneys at law.
In lawsuits, the gap in ability between
counsel significantly affects the result of
the case. Therefore, information should
be disclosed so that clients can choose
capable counsel.
In order to maintain the speciallyauthorized patent attorney system,
mutual communication between the
JFBA and the JPAA is very important.
Since
specially
authorizedpatentattorneys are often required to settle
disputes comprehensively, it may beinsufficient for them to be well versed intechnical matters.
Licensed professionals are governed by
10

IIP Bulletin 2007

usually take measures that are similar to
those referred to in the questions of theexamination. Therefore, the examination
does not seem so difficult or strange.
(iv) Others- Some committee members suggested thatquestions concerning the Civil Code andthe Code of Civil Procedure could be
included in the coverage of the patent
attorney examination, whereas othersargued that the knowledge required for
preparing litigation documents (e.g.
written answers or briefs) are notsuitable as content for the patent
attorney examination because most of thepatent attorneys’ services relate to theprocedures for filing applications.
(Senior Researcher: Hiroyuki ITAGAKI)

required.
- In the training for securing ability, somepatent attorneys indicate incorrectclauses of laws in litigation documents.
This is not due to a problem with thesubstance of the training for securing
ability but a problem with the training
method currently employed by the JPAA.
To solve this problem, the JPAA is
considering a periodical training program
to impart information on legal revision.
- For the purpose of permanently
maintaining the specially authorizedpatent attorney system, it is necessary tosecure a sufficient number of attorneys at
law who can be teachers, depending on
the number of training participants.
- In order to implement effective training
for securing ability, it is a good idea tokeep the number of training participants
as small as possible (so that it will bepossible to give feedback to individual
participants).
- If the aim is to allow patent attorneys to
act as counsel at court independently inthe future, it is necessary to require themto study the basics of the Civil Code andthe Code of Civil Procedure.
- Of
patentattorneys
whohave
participated in the 45-hour training
program, 60 to 80% have been able topass the examination. This means thatthe training is sufficiently effective.
- Some courses in international intellectual
property litigation that are implemented
at graduate schools specializing in
intellectual property are similar to thetraining for securing ability.
(iii) Examination- Whether or not the existing examination
is appropriate has not been verified.
- It may not be possible to find out entirely,
from the questions of the examination,
what extent of knowledge is required forpatent attorneys (the majority of them
have majored in science and engineering)in order to act as counsel jointly withattorneys at law.
- When companies are involved inintellectual property disputes, they11
IIP Bulletin 2007