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Ideal Framework for the Future Patent Attorney System

A comprehensive revision was made to the Patent Attorney Law in 2000 for the first time in 80 years since
its enactment. This revision has expanded the scope of services that patent attorneys are authorized to provide,
such as intermediary or agency services for contractual issues, consulting services, agency services for importsuspension at Customs, and agency services for alternative dispute resolution. Reforms have also been madewith respect to the patent attorney examination by abolishing the preliminary test, reviewing and enhancing thescope of potential examination candidates eligible for exemption from the examination, reducing the number of
examination subjects required to be taken and including the Copyright Law and the Unfair Competition
Prevention Law in the examination syllabus. Furthermore, in the Supplementary Provisions, it is provided thatthe revised law shall be reviewed five years following its enforcement.
In this study, in order to inquire into the actual condition of the patent attorney system and discuss future
development of the system amidst the change in surrounding circumstances following the revision to the Patent
Attorney Law, we conducted questionnaire surveys on the patent attorney system in general, targeting patent
attorneys and companies that use their services, and investigated their evaluation of the revised Patent Attorney
Law and the current use of and needs for the patent attorney system. We also discussed a wide range of issues atthe committee focusing on four major themes, namely the “patent attorney examination system,” “training forpatent attorneys,” the “code of ethics (relating to conflicts of interest) for patent attorneys” and “disclosure ofpatent attorney information,” thereby identifying problems with the existing patent attorney system.

Ⅰ Introduction
Amid industry’s pro-patent trends withstrengthened emphasis on patents and intellectual
property (IP), an overall revision was made to the
Patent Attorney Law in 2000 for the first time in
80 years since its enactment, with the aim topromote the use of patent attorneys as IP
experts.
This revision has expanded the scope ofservices that patent attorneys are authorized toprovide, such as intermediary or agency services
for contractual issues, consulting services,
agency services for import suspension at
Customs and agency services for alternative
dispute resolution. It has also enabled patent
attorneys to incorporate their firms as patent
service companies. Furthermore, for the purposeof increasing the number of patent attorneys,reforms have also been made with respect to thepatent attorney examination by abolishing thepreliminary test, reviewing and enhancing thescope of potential examination candidates eligible
for exemption from the examination and reducing
the number of examination subjects required tobe taken, while aiming to improve the quality ofpatent attorneys by including the Copyright Law
and the Unfair Competition Prevention Law inthe examination syllabus in order to meet theneed for new services in these areas.

IIP Bulletin 2006

However, since these revisions were
implemented, the circumstances surrounding IP
and the patent attorney system have changed,with the government advocating a national policy
to make Japan an IP-based nation and the need toincrease the number and quality of IP experts
being pointed out. In addition, Article 13 of the
Supplementary Provisions for the 2000 revised
Patent Attorney Law requires a review of therevised law to be made five years after its
implementation. In this study, in order to inquire
into the actual condition of the patent attorneysystem and discuss the system’s future
development, we conducted questionnaire
surveys on the patent attorney system in general,targeting patent attorneys and companies that use
their services, and investigated their evaluationof the revised Patent Attorney Law and thecurrent use of and need for the patent attorneysystem. We also discussed a wide range of issues
at the committee 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 “disclosure of patent
attorney information,” thereby identifying
problems with the existing patent attorneysystem.

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Ⅱ Future Development ofPatent Attorney System
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theCurrent status and future developmentof the patent attorney system(1) Patent attorneys’ views on future
development of the patent attorneysystem:Committee
MemberMr.
KanbaraSince revisions were made to the Patent
Attorney Law in 2000, the number of candidates
who passed the patent attorney examination andthe pass rate as well as the number of registeredpatent attorneys have been increasing rapidly.
The number of patent attorneys with experiencein dealing with licensing services relating topatent rights and other IP rights has also been
increasing. Furthermore, as a result of therevision to the Patent Attorney Law in 2002, a
new system was introduced to authorize patent
attorneys who pass a specific examination to act
as counsels in infringement lawsuits: as ofFebruary 28, 2006, 1,453 patent attorneys (about
21.8%) were registered as such speciallyauthorized patent attorneys.
One problem that is pointed out regarding
the existing patent attorney system is theincrease in number of new patent attorneys wholack the capability to handle patent attorney
services due to inadequate knowledge of IP
treaties and conventions or limited opportunity toparticipate in practical training or on-the-job
training at patent firms due to the increase in the
total number of new patent attorneys. At thesame time, amid the societal upheaval in Japan,
more existing patent attorneys are unable torespond to conditions brought about by thereforms to the patent attorney system. Other
problems with the existing system are as follows:
even following the legal revisions, patent
attorneys are still subject to some restrictions
when providing IP services; clients suffering
problems due to misunderstanding of overseas
filing procedures; and there is generally a lack ofpatent attorneys capable of satisfying user needs
appropriately.
Given
such
circumstances,anewexamination and training system for patent
attorneys should be created by combining an
examination to assess whether examination
candidates possess the necessary knowledge,
with training designed to enable successful
examination candidates to acquire the minimum
capabilities considered required of patent

attorneys. If it is difficult to introduce a
qualification renewal system, it will be necessary
at least to require patent attorneys to participate
in training programs periodically. With respect tovarious other issues relating to patent attorneys,
such as their involvement in procedures forimport suspension at Customs, response to
specific acts of unfair competition, role asassistants, services relating to overseas filingprocedures, and ethics, an environment should be
developed whereby patent attorneys can provide
IP services of unprecedentedly high quality. As ameasure to promote disclosure of and access topatent attorney information, it would be useful tohave a new system whereby a consultation
service counter, at the request of users, searches
a database and finds appropriate patent attorneys
for users.
(2) Client views on the patent attorneysystem (large companies’ standpoint):
Committee Member Mr. Toda
Having experienced economic stagnation in
the late 1990s, more companies regard IP as asource of corporate value or competitive
advantage. In the intellectual property creation
cycle, IP departments at companies are moredeeply involved not only in protection but also
creation and utilization of IP. Under suchcircumstances, companies face various challenges
including in the areas of IP management within
business groups by using trusts, treatment of
employees’ inventions, assessment of the valueof IP, anti-counterfeiting measures, managementof corporate brands with the aim to increase
corporate value and development of internal IP
experts.
Patent attorneys who are most desired
among companies are those who have a strong
grasp of procedural matters based on technicaland legal knowledge and can successfully obtain
useful IP rights. As their secondary duty, patent
attorneys are also required to act as counsels in
IP disputes or give advice on how to make use of
IP in business management.
Companies do not strongly feel a lack in thecurrent number of registered patent attorneys,
which is over 6,000. The issue of patent attorney
ethics (conflicts of interest) should be addressedby the taking of legislative measures, while giving
consideration to the importance of balance. As amethod of providing information on patent
attorneys, it would be desirable to develop apatent attorney referral system In the context ofdiversification of operational approaches for● 79 ●IIP Bulletin 2006

companies, we should discuss in future whether
one of the companies in a business group shouldbe allowed to carry out the filing procedure on
behalf of other member companies, or the patent
attorney who belongs to one of the companies in abusiness group should be allowed to carry out thefiling procedure on behalf of other member
companies.
Introduction of market principles would beappropriate to create an ideal framework for thepatent attorney system, but in this context, weshould carefully consider how to increase thenumber of patent attorneys. Regarding the scopeof services to be provided by patent attorneys,
priority should be placed on developing patent
attorneys who are capable of successfullyacquiring rights as required within the scope ofservices under their exclusive authority, rather
than merely aiming to expand the scope ofservices. To this end, the existing examinationand training systems should be reviewed. For
instance, we should consider introducing an
examination system that is particularly designed
to qualify those well versed in technical matters,
and establishing a system of compulsory training
before registration.
(3) Client views on the patent attorneysystem (small- and medium-sizedenterprises’(SMEs’)
standpoint):
Committee Member Mr. Kataoka
Based on the report of the SME basic survey
in 2004, there are about 490,000 SMEs in theJapanese manufacturing industry, and about 7
million people work at these enterprises. On
average, the number of employees per enterpriseis 14 to 15 and the level of sales and ordinary
profits is about 250 million yen and about 9
million yen respectively.
According to the results of the questionnaire
survey conducted by the Tokyo Metropolitan
Government from June to October 2003 regarding
the use of IP by SMEs, more than 80% of the 655
respondents had no experience in filing patentapplications. The most common problem
encountered when filing patent applications was
the “large cost burden.” Respondents that had no
IP manager accounted for over 80% of the total.
With regard to the benefits of patenting, an“increase in reputation for the company’s
technical capabilities” was chosen by most
respondents.
Problems relating to the patent attorneysystem pointed out by SMEs in their

IIP Bulletin 2006

consultations with the Tokyo Metropolitan
Government Intellectual Property Center include
the following: the cost burden incurred in
obtaining patents; inferior quality of patents
obtained or other issues arising from filing (e.g.
SMEs filing applications themselves or patent
attorneys filing applications without giving
consideration to the benefit of the clients(SMEs)); lack of available information whensearching for suitable patent attorneys; patent
attorneys’ refusal to undertake commissions on
the grounds of conflicts of interest; considerable
time and labor required to obtain patents; and the
difficulty in carrying out patent infringement
litigation.
In order to resolve the problems mentioned
above, we should implement the following
measures: reduce costs incurred by patent firms;
reduce costs for obtaining patents by providing
grants or loans to cover costs for domestic filing(including the introduction of a performancebased compensation system); develop support
organizations to assist or act on behalf of IP
personnel of SMEs; develop a patent attorney
database and establish consultation service
counters that will find appropriate patent firms
for SMEs; encourage patent attorneys to provide
proper advice on the use of the accelerated patentexamination system; encourage IP experts toprovide support to settle infringement disputes;
and encourage former IP personnel at large
companies to help SMEs in dealing with IP issues(consideration should be given to the relationshipwith the Patent Attorney Law).
2

Patent attorney examination system(1) Revision to the patent attorney
examination system
For the purpose of increasing the number ofpatent attorneys and enhancing the range of
examination candidates, revision was made to thepatent attorney examination by abolishing thepreliminary test and the qualifications required
for taking the examination, including the
Copyright Law and the Unfair Competition
Prevention Law in the areas covered by themultiple-choice test, excluding IP treaties andconventions from the mandatory subjects for the
written test, reducing the number of elective
subjects required in the written test from three(selection from 10 legal subjects and 31 technicalsubjects) to one (selection from one legal subject
and six technical subjects) and organizing thecontents of the examination subjects, and● 80 ●

changing the exemption from the requirement totake the written test on elective subjects.
(2) Existing patent attorney examination
During the period from FY1999 to FY2005,
the revision to the examination system hasbrought about a successful outcome, with thenumber of examination candidates doubling, thenumber of successful examination candidates
increasing, and the pass rate rising. Of the 711
examination candidates who successfully passed
the FY2005 examination, about 50% were in their
30s and slightly over 25% were in their 20s.
Those who majored in science and engineering
accounted for more than 80% of the total. During
the four-year period from FY2002 to FY2005,
1,468 persons or about two-thirds of all
successful examination candidates received
exemptions from elective subjects. Just under
70% of the examination candidates who received
exemptions in the FY2005 examination were
eligible for exemption because of their master’s
degree or doctorates.
(3) Opinions expressed in the committee- The pass rate seems extremely high among
examination candidates who received
exemptions from elective subjects because of
their master’s degree or doctorate, and thisappears to imply that the exemption is very
advantageous to such examination candidates.
However, it will be difficult to abolish the
exemption unless it causes any notableproblems.
- From the perspective of ensuring equal
treatment, it would be a good idea to exempt
all university graduates from elective
subjects or to abolish elective subjects
altogether.
- Although deregulation is important, weshould not reduce the number of examination
subjects or lower the required skill level ofthe examination.
- IP treaties and conventions should be
included in the coverage of the written test
again in order to assess knowledge on thissubject.
- As the former written test on IP treaties andconventions was focused on knowledge on
this subject, such knowledge can be
sufficiently assessed by setting morequestions on basic areas this subject covers
in the multiple-choice test.
- The results of the questionnaire surveys
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be well versed in technical matters. It isnecessary to consider requiring examination
candidates to take technical subjects as
mandatory subjects.
Considering that before the latest revision
was made to the patent attorney examination,it had also been possible for examination
candidates to pass the examination by only
taking legal subjects, it will be difficult tomake a change to the examination system byrequiring examination candidates to taketechnical subjects as mandatory subjects.
As part of the patent attorney examination,some countries implement a job knowledge
test to assess practical skills. It is necessary
to consider introducing such a job knowledge
test, although it might change theexamination system drastically.
If a job knowledge test should be introduced
at all, a problem would be posed in terms ofthe number of examination candidates. In the
United Kingdom, it is possible to implementa typical job knowledge test because only
several dozens of examination candidates
participate in the test. It would be difficult toimplement such a test in Japan where several
hundreds of examination candidates would
participate.
It would be possible to arrange questions
that can nearly serve as a job knowledge test.
Even so, it would be impossible to require
examination candidates to write a patent
specification as part of the written test.
With respect to the multiple-choice test, it
would be appropriate to set the minimum
standard score for every subject and take
into consideration not only the total scores
but also the score in each subject, so as toprevent
examination
candidates
from
intensively studying only some of theexamination subjects and obtaining theiroverall necessary score using those subjects
alone.
With respect to the written test, it isnecessary to improve questioning andgrading methods (e.g. by point-deduction
scoring or point-addition scoring based on
the overall impression of the written test)from the perspective of assessing thecapability of logical reasoning.
It is difficult to assess, in the oral test,
whether examination candidates are qualified
to act as patent attorneys. It is necessary toconsider abolishing the oral test if any
reasonable grounds can be found to ignore

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the rejection rate that is as low as 5%.
The patent attorney examination must atleast serve to guarantee that those who passit have the minimum required capabilities.
The patent attorney examination is not
aimed at assessing practical skills but rather
intended to assess basic knowledge; it should
be designed to assess whether examination
candidates have the minimum knowledge
required for acting as patent attorneys.
However, from the perspective of enabling
people who are currently engaged in dealing
with IP operations to pass the examination
more easily, it would also be appropriate todesign an examination system that will not
impose an excessive burden on such people,
although it might increase the burden on
those without such job experience.
It would be a good idea to establish IP law
schools in the future.
Training for patent attorneys(1) New
training system for patent
attorneys proposed by the Japan Patent
Attorneys
Association:
Committee
Member Mr. Inoue
The existing patent attorney examination is
not designed to assess practical skills. Although
the most effective method to acquire practicalskills is to learn through on-the-job training, it is
becoming more difficult to provide all new patent
attorneys with sufficient on-the-job training
because a large number of people pass theexamination and become patent attorneys every
year. In order to improve the quality of newpatent attorneys as a whole, it is necessary torequire those who have passed the examination
but lack experience in dealing with IP operations
to participate in pre-registration training andacquire the minimum practical skills required foron-the-job
training
atpatentfirms.
Pre-registration training is also provided inrelation to other national examinations for job
qualifications, such as training for judicial
apprentices and supplementary lessons forcertified public accountants.
A basic idea of developing a new training
system is that the government should undertakethe system design and the Japan Patent Attorneys
Association (JPAA) should implement the system
as commissioned by the government. Under the
new training system, an e-learning system would
be available. Trainees are required to participate
in the compulsory training program for a period of

IIP Bulletin 2006

not less than six months and not more than one
year. Based on the draft training program
developed by the JPAA Training Institute, eachtrainee should obtain credits for at least 45 of thetotal 58 subjects, including patent specification
writing and other basic subjects, and take an
examination to confirm the skills accumulated.
(2) Opinions expressed in the committee- According to the results of the questionnaire
surveys, regarding the question of how tosecure high-quality new patent attorneys,
most respondents chose the answer “jobexperience should be included in theregistration requirements.” Although it may
be difficult to implement practical training, itis necessary to provide new patent attorneys
with the minimum amount of training.
- Compulsory training is implemented forjudicial apprentices and certified public
accountants. However, the training systems
for these professions have not been recently
created, and restrictions on the contents ofthe training have also gradually been relaxed.
Under such circumstances, it is questionable
whether introducing compulsory training forpatent attorneys is appropriate.
- If
compulsory
training
shouldbe
implemented at all, it would be reasonable
not for the government but for the JPAA, as
the association that all patent attorneys are
obliged to join, to undertake theimplementation at its own expense.
- If the JPAA should take the initiative at all in
requiring those passing the examination toparticipate in pre-registration training, theassociation would need some basis formaking such training compulsory. Therefore,
the government should take the initiative by
setting certain standards.
- The patent attorney examination is notdesigned to assess practical skills. As an
independent body, the JPAA should play arole in preventing new patent attorneys frommaking mistakes in dealing with actual IP
operations.
- Along with the increase in the total numberof new patent attorneys, the number of those
who lack practical skills has also been
increasing. Since one of the causes of thisproblem is that the government adopted anational policy to increase the number of newpatent attorneys, the government should also
be responsible for helping the JPAA work
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and increasing the quality of new patent
attorneys, rather than leaving all such work
to the association.
It is not realistic to implement compulsory
training before registration for such a long
period of not less than six months and not
more than one year. The training period
should be limited and the training contents
should be selected.
At least six months would be necessary forcompulsory training because the training
should cover a wide range of areas including
practical elements and patent specification
writing.
Based on the results of the questionnaire
surveys, the majority of the respondents
believe training on patent specification
writing should be given. Training in thissubject area might be sufficient ascompulsory training.
Regarding the exemption from compulsory
training, it is necessary to consider whether
exemption should be granted on an individual
subject basis, for all subjects except for theconfirmatory examination, or for all subjects.
For practical training, it would be effective torequire trainees to write a patent
specification and carry out the filingprocedure under the supervision of
instructing patent attorneys. If an officeaction notifying reasons for refusal is issued
within one year of the filing, the trainees
would be able to acquire further skills by
preparing a written opinion to be submitted
in response to such an office action.
Patent attorney ethics(1) Code for conflicts of interest
With the revision of the Patent Attorney Law
in 2000, cases for which patent attorneys shallnot provide services are now specified in Articles
31 and 48, and those who violate these provisions
shall be subject to disciplinary actions under
Article 32. More specifically, Article 31, Item 3(and Article 48, Paragraph 1, Item 3) provides
that a patent attorney shall not undertake acommission, from the other party to the case inwhich he acts as an agent for his client, fordealing with other cases. Since carrying out thefiling procedure is also regarded as dealing with acase, an issue arises as to whether a patent
attorney who has undertaken the filing procedure
for such another party should be subject todisciplinary action. The provisions of Article 31,

Item 3 and Article 48, Paragraph 1, Item 3 of the
Patent Attorney Law correspond to the provisionsof Article 25 of the Lawyer Law. However,considering that the number of cases handled by
one lawyer per annum is about 8.6 whereas thenumber of patent filings handled by one patent
attorney per annum is about 70, patent attorneys
are more likely to face a conflict of interest thanlawyers.
(2) Opinions expressed in the committee- It is necessary to make some arrangements
to support patent attorneys most of whoseclients for patent filing are SMEs.
- “Cases” specified in Article 25 of the Lawyer
Law basically refer to disputes. However, theoverwhelming majority of “cases” handled bypatent attorneys are procedures to be
implemented at the JPO. It would therefore
be appropriate to distinguish disputes fromprocedures.
- Although the invalidation procedure issimilar to a dispute, it would be appropriate
to regard it as an exception and exclude it
from the scope of cases subject to the codefor conflicts of interest.
- The invalidation procedure must not be
excluded from the scope of cases subject tothe code for conflicts of interest. If such a
procedure should be excluded at all as an
exception, it is definitely necessary toprovide in the code of ethics that priorconsent shall be obtained from the otherparty.
- If a patent attorney who has carried out thefiling procedure for his client is prevented,
on the grounds of conflict of interest, fromcarrying out subsequent procedures orinvalidation
procedures,
this
would
undermine the client’s interest.
- It should be possible to resolve the difficultyof obtaining the client’s consent if the patent
attorney has obtained blanket consent upon
initially undertaking a commission from theclient.
- In order to obtain blanket consent from theclient, the patent attorney would have to
inform the client of another client for whom
he also acts as an agent. Client information isimportant for patent attorneys.
- As in the case of the Lawyer Law, it isnecessary to specify, under the Patent
Attorney Law, acts of conflict of interest that
constitute offenses under the law separatelyfrom acts that constitute ethical issues.

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Where the patent attorney has undertaken
the filing procedure of a large company withbusiness operations in many areas, he would
not be able to carry out the filing procedure
for any other companies because of conflictsof interest. It is therefore necessary to relax
the code for conflicts of interest with respect
to conflicting applications pertaining tobusiness fields that are not completely
identical.
Where the patent attorney undertakes
commissions from companies that competewith each other, confidentiality issues would
arise because either company’s know-how
could be leaked to the other via his patentfirm.
As in the case of the Lawyer Law, it would
be a good idea to relax the code for conflictsof interest under the Patent Attorney Law sothat the same patent firm may undertake
commissions from companies that competewith each other if the patent attorney dealing
with either case is not involved in the othercase.
Problems such as outflow of know-how andleakage of confidential information mightoccur if the same patent firm undertakes
commissions from companies that competewith each other even if different patent
attorneys deal with the cases. These
problems should be resolved in order toallow patent attorneys of the same patentfirm to deal with conflicting applications.
Disclosure of patent attorney information(1) Necessity to disclose patent attorney
information
Patent attorney information is indispensable
when companies seek to find and appoint patent
attorneys who will undertake filing procedures forthem. In particular, based on the results of thequestionnaire surveys, SMEs need suchinformation when investigating who to approachfor consulting services on IP management ingeneral. At the same time, due to the significant
increase in the number of patent attorneys, it has
become more important than ever to acquire
patent attorney information, which is increasing
the necessity for disclosure of such information.
(2) Opinions expressed in the committee- Is it appropriate for the JPAA to disclose
certain items of information with or without
each patent attorney’s permission, or only

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disclose information permitted by him?
Problems might arise in the context of the
Personal Information Protection Law.
In light of the provisions of Article 57 of the
Patent Attorney Law, it would be permissible
for the JPAA to disclose all information
recorded in the patent attorney register.
Article 57 of the Patent Attorney Law does
not directly provide for information
disclosure; it only stipulates that the JPAA
shall establish a related by-law.
If it is provided by law that the JPAA may
disclose patent attorney information inaccordance with its by-law, it would be able
to avoid violating the Personal Information
Protection Law as a result of information
disclosure.
It would be sufficient to provide informationthat indicates each patent attorney’s
performance, such as the number ofapplications filed, the number of requests for
examination, and the number of patents
obtained by him in his specialist field.
Publication of patent applications would be agood information disclosure. If such data isdisclosed with patent attorney information,
this would be helpful to clients in finding
desired patent attorneys.
The contents of performance information to
be disclosed should be determined by eachpatent attorney. As a measure to prevent
exaggerated advertising, it would be
sufficient to accept reports from clients who
have found false information.
Patent attorneys who actually engage inpatent operations may have no time toparticipate in training, whereas most of those
who have completed the required training
may lack job experience. In that case, is it
appropriate to indicate the latter as patent
attorneys that have completed training?
It would be possible to enable clients to findpatent attorneys who have not completed
training but are actually engaged in patent
operations, by disclosing information on bothtraining and job experience or providing
information on the number of applications
filed by each patent attorney by technicalfield classification on a linked page.
It would be a good idea to disclose patentfirm information, although this might bedifficult due to staff changes.
In the case of a patent firm operated by only
one patent attorney, the difficulty in finding
the attorney’s successor is a serious problem.

--Such a patent firm should declare its policyon this issue.
The JPAA does not provide patent attorneyreferral services. If a public organization
provides such referral services, this mightpose business-related problems (e.g. theorganization might only use particular patent
attorneys).
It would be helpful to provide clients withpatent attorney information likely to more orless satisfy their needs and allow them todetermine whether to select a desired patent
attorney.

Ⅲ Survey of Actual Conditions
Surrounding Japan’s Patent
Attorney System
We conducted a questionnaire survey inorder
toinvestigate
current
conditions
surrounding the patent attorney system in Japan.
The survey targeted 6,097 registered patent
attorneys, 870 companies that are members of
the Japan Intellectual Property Association (JIPA)
and 400 SMEs. The targeted SMEs were selected
at random, based on the patent gazettes andpublic databases, from among SMEs that had
obtained many patents over the past three years.
The response rate was 31.4% among the patent
attorneys, 51.5% among the JIPA members, and31.8% among the SMEs.
Regarding the expansion in the scope of
permitted services upon the revisions to the
Patent Attorney Law, more than 90% of the JIPA
members and nearly 70% of the SMEs were
aware of this. However, these clients who were
aware of the expanded services had not yet
frequently requested patent attorneys in the
new areas.
Regarding the party who prepares drafts forpatent specifications or claims, “patent firm
(patent attorney or his assistant)” ranked firstamong both the JIPA members and the SMEs,
while one-third responded that the “client(inventor or IP personnel)” prepares drafts. The
majority of the patent attorneys responded thatthey themselves prepare drafts. These results
indicate that clients’ contribution to the
preparation of drafts is generally small.
Regarding the party who prepares drafts for
written opinions or amendments, “patent
attorney” ranked first among both the JIPA
members and the SMEs, while one-fourth
responded that the “client (inventor or IP
personnel) prepares drafts. Among the patent

attorneys, “patent attorney” ranked first at 75.0%,
and “client” was selected only by 2.6%.
With respect to the review of the patent
attorney examination system, most respondents
in the three groups selected “there is no need toreview the system” from the perspective of
increasing the number of patent attorneys. On theother hand, from the perspective of reducing theburden on candidates, while the majority of both
the JIPA members and the SMEs sought the
introduction of either “a step-by-step examinationpassing system” or ”a system based on passing
individual subjects and a period of two or more
years to pass the entire examination”, themajority of the patent attorneys selected “there isno need to review the system.” From theperspective of securing the quality of patent
attorneys, “job experience should be required forregistration” was selected by most respondents
in all groups.
Regarding patent attorney training subjects
that new patent attorneys should take, “patent
specification writing” ranked first in all groups.
For measures to enable patent attorneys toacquire knowledge on a continued basis, “require
periodical training” was chosen by most
respondents.
Regarding the experience of facing problems
in terms of conflicts of interest or ethical issues,
those respondents with such experience were in aminority, at 14.1% among the JIPA members and5.5% among the SMEs.
Regarding the experience of facing patent
attorneys’ refusal to undertake the filingprocedure on the grounds of a conflict of interest,
33.9% of the JIPA members and 6.3% of theSMEs reported they had had such an experience,
while 30.1% of the patent attorneys responded
that they had experienced being unable toundertake the filing procedure on the grounds of aconflict of interest.
Regarding methods for selecting patent
attorneys, the majority of the JIPA members andthe SMEs chose “references given bycompetitors.” Patent attorneys also responded
that they undertook new commissions “throughreferrals from former clients.”
Regarding important factors for selecting
patent attorneys, the majority of the JIPA
members and the SMEs chose “performance intheir specialist field” and “performance in their
specialist technical field.” These factors werealso chosen by the majority of respondents as themost necessary patent attorney information.
Regarding the number of patent attorneys● 85 ●IIP Bulletin 2006

and the amount of patent attorney information
available, the majority of the JIPA members(70.1%) and the SMEs (79.5%) responded thatthey had “never felt a shortage” when selecting
patent attorneys.
In response to the question for the patent
attorneys regarding the incorporation of patentfirms, the majority or 58.1% selected “have noplans to use the partnership system,” while
28.9% selected “want to use the partnershipsystem if certain requirements are fulfilled.” With
regard to defects in the existing system thatshould be corrected, “unlimited liability” ranked
first, chosen by 65.0%.
In response to the question for the JIPA
members regarding the IP management system inthe case of a corporate spin-off, 39.3% selected“have no plans for a spin-off” while 36.8%
selected “establish a central IP management
department at the head office.”
Regarding services that patent attorneys are
expected to undertake, “consulting services on IP
issues in general,” “expert opinions on the scopeof IP rights held by competitors,” and“procedures from filing to obtaining rights to be
implemented at the JPO” were popular responses
among both the JIPA members and the SMEs.
More specifically, however, “procedures at the
JPO” ranked first among the JIPA members
whereas “consulting services on IP issues ingeneral” ranked first among the SMEs.
Regarding what is required from lawyers
who deal with licensing negotiations, “tactics
to promote licensing negotiations while
understanding the client’s situation” and “advice
on developing advantageous contracts” ranked
first and second among both the JIPA members
and the SMEs. On the other hand, regarding
what is required from patent attorneys, “tactics
to promote licensing negotiations while
understanding the client’s situation” and“technical understanding and legal support”
ranked first and second respectively.
Regarding the scope of authority of patent
attorneys acting as counsels in infringement
lawsuits, the majority of the JIPA members andthe SMEs responded that “there is no need tochange the existing scope.” However, the sum of
the respondents that selected “the scope should
be expanded to cover unfair competition in
general” and those that selected “the scopeshould be expanded to cover lawsuits other thaninfringement lawsuits” accounted for 37.0% of
the JIPA members and 44.8% of the SMEs. This
indicates that the respondents that consider it

IIP Bulletin 2006

necessary to expand the existing scope of
authority exceed the number that find “no need to
expand the existing scope.”
Regarding the party who acts as a counsel in
an infringement lawsuit, “lawyer (with a patent
attorney as his assistant)” ranked first among
both the JIPA members and the SMEs. “Lawyer
and specially authorized patent attorney” ranked
second among the SMEs, indicating that speciallyauthorized patent attorneys are more popularamong the SMEs than among the JIPA members.
Regarding whether or not to maintain theexamination for specially authorized patent
attorneys, most respondents considered it
necessary to maintain the examination, and the
respondents that selected “it is no longer
necessary to hold the examination because there
are sufficient specially authorized patent
attorneys” were in the minority in all the groups.
Regarding whether or not to allow patent
attorneys to attend court as counsels
independently, the majority of the JIPA members
and of the SMEs selected “there is no need tochange the existing system.” However, the sumof the respondents that selected “patent
attorneys should be allowed to undertake legal
proceedings jointly with lawyers and attend court
as counsels independently” and those that
selected “patent attorneys should be allowed toindependently undertake legal proceedings andattend court as counsels” accounted for 46.7% of
the JIPA members and 33.1% of the SMEs. Thismeans that the respondents that considered it
necessary to allow patent attorneys to attend
court independently exceeded the number thatfound “no need to change the existing system.”● 86 ●(Senior Researcher: Shuichi HARAJIRI)