2 Future Patent Attorney System (*)
In order to collect opinions on a future patent attorney system for this research study, we have conducted adomestic questionnaire survey on patent attorneys, regular member companies of Japan Intellectual Property
Association (JIPA), and small and medium-sized enterprises a domestic interview survey on JIPA's regularmember companies, small and medium-sized enterprises, municipal entities providing IP-related support to smalland medium-sized enterprises, patent firms, professional graduate schools; and an overseas survey on the UnitedStates, the United Kingdom, France, Germany, China, South Korea, the EPO, and the OHIM. We established acommittee consisting of corporate IP personnel, patent attorneys, lawyers, and people with relevant knowledge andexperience. We then had the committee analyze a report with regard to the results of the questionnaire survey, theinterview survey, and the overseas survey and discuss a future patent attorney system from such perspectives as theexamination system, training system, scope of business, corporation system, attorney-client privilege, conflict ofinterest, disciplinary procedure, the mission of patent attorneys, acts of non-patent attorneys, and the partial
expansion of the autonomy of patent attorneys.

IIntroduction

1

Purpose and Necessity of this ResearchStudy

The current Patent Attorney Act has
undergone many revisions, i.e., a thoroughrevision in 2000, a partial revision in 2002, apartial revision in 2005, and a partial revision in2007. These revisions have expanded the scope ofpatent attorneys' scope of business by adding
various operations related to intellectual property
rights, and have increased the number of patent
attorneys, simplified the subjects of the patent
attorneys’ examination in order to allow the entry
of a wide range of people, and expanded the scopeof the examination exemption system.
In particular, the latest revision of the Patent
Attorney Act in 2007 has expanded the scope ofbusiness, enhanced the examination exemption
system, and, in view of the increasinglycompetitive environment surrounding patent
attorneys due to an increase in the number ofpatent attorneys, established two training
systems to provide patent attorneys with varioustraining opportunities. They are the practicaltraining system and the continuous training
system, which is designed to ensure maintenanceof the capabilities required for patent attorneys'operations.
On the other hand, Article 6 of theSupplementary Provisions of the Act on Revisionof the Patent Attorney Act in 2007 provides that
"When five years have passed since theenforcement of this Act, the government shall

examine the state of enforcement of the new Actand shall, if the government deems it necessary,
review the provisions of the new Act and takenecessary measures accordingly."
Today, almost five years have passed since
the enactment of the 2007 revised Patent
Attorney Act. Furthermore, the changing
circumstances surrounding intellectual property
in recent years have further pressed patent
attorneys to act from a global perspective and towork more closely with client companies in orderto take their business and management strategies
into consideration, especially with clients that aresmall and medium-sized enterprises .
Under these circumstances, we haveconducted this research study in order to prepare
basic data for discussions on necessary measures
such as a revision of the Patent Attorney Act. In
the course of this research study, we haveanalyzed the current state of implementation andoperation of the patent attorney system (theexamination system, the training system, and theprovisions concerning business (duties), and anyother matters related to the patent attorneysystem in general) and have identified the relatedissues. Furthermore, we have examined whatroles users expect patent attorneys to play, andhad experts discuss a future patent attorneysystem and list potential issues.
2

Method of this Research Study

In light of the aforementioned purpose andnecessity, we have conducted a domestic
questionnaire survey (9,510 patent attorneys, 906(*) This is an English translation of the summary of the FY2012 JPO-commissioned research study report on the issues
related to the industrial property rights system.
●IIP Bulletin 2013 Vol.22

1 ●regular member companies of the JIPA, and 592
small and medium-sized enterprises), a domestic
interview survey (a total of 22 organizations
consisting of JIPA's regular member companies,
small and midsize companies, municipal entities
providing IP-related support to small and midsize
companies, patent (patent law) firms, andprofessional graduate schools), and an overseas
survey (the United States, the United Kingdom,France, Germany, China, South Korea, the EPO,
the OHIM), had a committee discuss a futurepatent attorney system and list possible issues,and compiled the findings into a report.

Ⅱ Review of the Patent Attorney
System1

Examination System

Examinees are required to take a multiple
number of subjects in the short-answer
examination
underthepatent
attorneyexamination system; and some of the examinees
passed the short-answer examination eventhough their test scores vary greatly from one
subject to another. Meanwhile, despite the factthat there are many treaties related to industrial
property rights, the scope of the examination
related to this topic is unclear. The number ofrelated treaties is expected to rise. Since the2000
revision,theexamination
subject
specifically on the topic of treaties has beenabolished. However, there has been a call toresume discussion of this subject. Furthermore,some of the optional subjects of the essay
examination are currently chosen by no one or bya very small number of examinees. There havebeen concerns about the fairness of oral
examination. Its pass rate has been on the decline.
While the 2000 and 2007 revisions haveintroduced a system of partial exemption of
examination subjects, the system has become
increasingly complicated.
Based on the results of the questionnaire
survey, the interview survey, and the overseas
survey, the committee discussed the introductionof a threshold system to reject examinees who do
not meet the minimum test score requirement forany examination subject, transformation of theoptional examination subjects of the essay
examination into a short-answer examination, an
increase in the number of questions contained in
the short-answer examination, the introduction of
a compulsory essay examination specifically ontreaties, the abolishment of the oral examination●and a review of the paper examination, a review ofthe provision concerning the exemption ofexamination subjects, the evaluation of practicalskills, and the evaluation of foreign language
skills.
2Training SystemIn the practical training program for patent
attorneys, while the trainees practice preparing
application documents, no on-the-job training isoffered. While the continuous training systemprovides various training programs, the patent
attorney navigation system does not offerinformation on the type of training (lecture-based,discussions-based, and practice-based) and on thepatent attorneys' activities as lecturers andauthors. Nor is there any available information toconfirm the effect of group training. (Patentattorneys are required to submit brief reports
after participating in training programs offered byexternal institutions.) Under these circumstances,users cannot choose patent attorneys who havebeen actively trying to improve their skills. This
also means that patent attorneys are not given
sufficient incentive to actively improve theirskills.
Based on the results of the questionnaire
survey, the interview survey, and the overseas
survey, the committee discussed the introductionof practical training, such as OJT programs, into
the practical training system, as well as measures
to deal with increasingly globalized corporate
activities and a method to check each patent
attorney's participation in the continuous training
programs and its effects. In the discussions,committee members also presented opinions
about the abolishment of the exemption system
for some of the programs offered under thepractical training system, the relaxation ofrequirements for lecturers and instructors
employed by the practical training system, areview of the operation of the practical training
system, the relaxation of conditions for
implementing the continuous training plan, therelaxation of conditions for determining credit
exchangeability under the continuous training
system, measures to improve the practical skillsof new patent attorneys, and the introduction ofvarious training courses.
3

Scope of Patent Attorney's Businessis(a) The scope of patent attorneys’ businessspecified as (a) representing others in2 ●IIP Bulletin 2013 Vol.22

procedures with the Japan Patent Officepertaining to patents, utility models, designs,trademarks, PCT applications, or applications
filed for international registration under theProtocol Relating to the Madrid Agreement
Concerning the International Registration ofMarks, (b) representing others in procedures with
the Minister of Economy, Trade and Industry withregard to an objection or to an award pertaining topatents, utility models, designs or trademarks,and (c) giving expert opinions and handling otheraffairs pertaining to matters relating to theprocedures specified in (a) and (b) above. (Article4, paragraph (1) of the Patent Attorney Act(hereinafter referred to as the "Act")). The scopeof patent attorneys’ business does not include
procedures with administrative agencies withregard to circuit layouts, breeder's right, andcopyrighted works.
Furthermore, the scope of patent attorneys’
business also covers the following activities withrespect to patent, utility models, designs,
trademarks, etc., such as (d) representing others
in procedures with regard to suspending animport or export under the Customs Act (Article
4, paragraph (2) of the Act), (e) representing
others in the alternative dispute-resolution
procedures performed by a designated body
(Article 4, paragraph (2) of the Act), (f) engaging
in the business of consultation, mediation, oragency with regard to concluding contracts forselling technological secrets, or non-exclusive
license contracts, or other contracts (Article 4,paragraph (3) of the Act), (g) preparing materials
for procedures with foreign administrative
authorities (Article 4, paragraph (3) of the Act),(h) presenting a statement, or examining
matters as an assistant in IP infringement
lawsuits (Article 5 of the Act), (i) acting as acounsel with regard to a lawsuit to seek
revocation of a trial decision (Article 6 of the Act),and (j) acting as a joint counsel in specificinfringement lawsuits (Article 6-2 of the Act).
However, the scope of patent attorneys’ businessdoes not necessarily cover all of the operations
concerning circuit layouts, breeder's right, andcopyrighted works, and IP-related unfair
competition.
Based on the results of the questionnaire
survey, the interview survey, and the overseas
survey, the committee examined various issues
related to expanding the scope of patent
attorneys’ business, as proposed by the Japan
Patent Attorneys Association. This includes
offering IP-related consultation under the●IIP Bulletin 2013 Vol.22

Intellectual Property Basic Act, expanding
business related to the specified acts of unfair
competition, representing others in proceduresfor filing applications to register new plantvarieties, etc., representing others in procedures
for registration of copyrighted works, etc., acting
as a counsel in lawsuits to seek revocation of a
JPO's administrative disposition, and permitting
patent attorneys to act as an independentcounsel.
4Corporation System

The current Patent Attorney Act does not
permit a patent attorney to establish aone-employee patent professional corporation.
However, there has been a call for the
introduction of a system that permits a patent
attorney to establish a one-employee corporationin order to separate the assets of an individualfrom the assets of an office, to facilitate a futuretransformation
intoa
multiple-employee
corporation, or to expand the size of the officethrough mergers with another patent professional
corporation. On the other hand, some people havepointed out that, if a one-employee corporation ispermitted as a management style of a patentprofessional corporation, it would be problematicfrom the perspective of continuity of corporation.
The committee analyzed the results of thequestionnaire survey and the interview survey
and discussed issues that would be raised if
patent attorneys were permitted to establish a
one-employee patent professional corporation inview of the arguments presented in the meetings
held by the Industrial Structure Council, etc., atthe time of the 2000 and 2007 revisions.
5

Attorney-Client Privilege

The civil procedure of common law countries
has a process called “discovery,” in which it ispermitted to request the disclosure of evidence,such as relevant documents owned by the parties
concerned. As an exception, attorney-client
privilege is given for certain types ofcorrespondence and documents that should be
kept secret for clients. However, the Japan Patent
Attorneys Association has pointed out that, as far
as communications between Japanese patent
attorneys and their clients are concerned, itmight be impossible, in the course of judicial
proceedings in other countries, to refuse todisclose such communications or to prohibit
others from disclosing them. On the other hand,
3 ●since there is no discovery process in Japan, theconcept of attorney-client privilege does not exist.
However, each patent attorney is obliged to keep
secret any information obtained in the course ofhis/her business (Article 30 of the Patent
Attorney Act), and may, like a lawyer, refuse togive testimony on any information that he/she has
obtained in the course of his/her business as longas the information is expected to be kept secret(witness's right to refuse to testify, Article 197,
paragraph (1), item (ii) of the Code of Civil
Procedure). Patent attorneys may also refuse tosubmit any document containing any related
matter that is not exempted from the duty ofsecrecy (the right to refuse to submit documents,Article 220, item (iv), (c) of said Act).
The committee analyzed the results of thequestionnaire survey and discussed whether
communications between attorneys and clientsare protected from disclosure in the course ofcivil proceedings in other countries, identified therelated issues, and examined issues that could beraised by introducing a provision directly
specifying attorney-client privilege into thePatent Attorney Act.
6Conflict of Interest

Article 31, item (iii) (Article 48, paragraph(1), item (iii)) of the Patent Attorney Act is aprovision concerning conflicts of interest, whichmust be avoided by patent attorneys and patentprofessional corporations. Said provision specifies
that a patent attorney shall not undertake any
case requested by a party adverse to another casethat he/she has already been entrusted toundertake. The term "another case that he/she
has already been entrusted to undertake" used in
Article 31, item (iii) is interpreted as referring toa case where the patent attorney confronts theadverse party, and the term "any case" isinterpreted as referring not only to such a interpartes case but also to an ex parte case. However,
if a patent attorney undertakes an inter partes
case, that patent attorney may not continue theex parte case that has been entrusted by theadverse party unless the client's (the adverseparty's) consent is obtained. Any patent attorney
who belongs to a patent professional corporation
is subject to business restrictions under Article
31, item (vi) and item (vii) of said Act (Article 48,
paragraph (3), item (v) and item (vi)) even in
relation to cases in which he/she has not been
involved. Said restrictions are stricter than those
imposed on lawyers who belong to legal●

professional corporations.
The committee analyzed the results of thequestionnaire survey and the interview survey
and discussed a proposal made by the JapanPatent Attorneys Association with regard to alimit on the cases that may be regarded as aconflict of interest.
7Disciplinary Procedure

In order to make a disciplinary disposition
under the Patent Attorney Act, a specified
procedure must be followed. Past cases haveshown that it took a long time to complete theprocedure. If a disciplinary disposition involves
admonition, since such a disposition is regarded
as a seriously averse disposition against patent
attorneys, the procedure for submitting opinions
must first be followed (Article 33, paragraph (4)of the Patent Attorney Act). On the other hand,
the Disciplinary Procedure Guidelines specify
that the constant insufficiency of prepaid funds
shall be regarded as a dereliction of duty or aviolation of the duty of due care that should be
subject to an admonition. Although there are aconsiderable number of patent attorneys whose
prepaid funds are insufficient, since it takes time
to complete the procedure for issuance ofadmonition or publication of the fact, such patent
attorneys could continue undertaking new cases,
causing unexpected damage to clients, etc.
The committee analyzed, for reference
purposes, the current state of dispositions madeby the Japan Patent Attorneys Association andalso the disciplinary dispositions of lawyers, andthey discussed the disciplinary procedure.
8Mission of Patent Attorneys

While it has a provision on the purpose(Article 1 of the Patent Attorney Act) and aprovision on the duties, the current PatentAttorney Act does not have a provision on themission. The Japan Patent Attorneys Association
has proposed that it should be clearly stated thatpatent attorneys are experts who are authorized
to monopolize and carry out under his/her namethe business of "creating, protecting, and utilizing
intellectual properties," as stated in theIntellectual Property Basic Act, to publicly
declare heavier duties as the mission of patent
attorneys, to make efforts to achieve the purposeof the Intellectual Property Basic Act, andthereby to maintain social and economic vitality.
The committee discussed the gist of this
4 ●IIP Bulletin 2013 Vol.22

proposal.
9Acts of Non-patent Attorneys

In some cases, a non-patent attorney
conducts patent attorney business as specified inArticle 75 of the Patent Attorney Act whenrequested to do so by a client. Information onsuch a case such as the person's name may beobtained by using a search system such as
PATOLIS. However, it is impossible to obtain
information as to whether the non-patent
attorney was remunerated for the act ofrepresenting the client. As a result, even in thecase where a non-patent attorney has conductedpatent attorney business, it is impossible toobtain any evidence that remuneration was paid.
Regarding the procedure for filing trademark
applications, the Japan Patent Attorneys
Association was able to issue warnings to only
about 10% of the suspected people. To solve thisproblem, the Japan Patent Attorneys Association
has proposed removal of the term "by receivingcompensation" from Article 75 of the Patent
Attorney Act.
The committee discussed the gist of thisproposal.

attorneys to represent others in infringement
lawsuits, the underlying provisions or judicial
precedents concerning patent attorney-client
privilege, the required qualifications (including
whether work experience is necessary), thepatent attorney examination (including theexamination subjects, job knowledge (practical)
examination, and oral examination), the training
for new patent attorneys, the training foralready-registeredpatentattorneys,
thedisclosure of information on patent attorneys, therecent change in the number of patent attorneys,
the types of patent professional corporations(including one-employee corporations, the limited
liability of patent attorneys), the acts ofnon-patent attorneys, conflicts of interest, andthe plan for revising the system.
(Senior Researcher: Katsutoshi TAKAHASHI)

10 Partial Expansion of the Autonomy ofPatent Attorneys
The Japan Patent Attorneys Association has
proposed the abolishment of the right of theMinister of Economy, Trade and Industry torevoke the resolution of the general meeting theabolishment of the right of the Minister ofEconomy, Trade and Industry to dismiss officers,
and the abolishment of the requirement for
approval from the Minister of Economy, Trade andIndustry to implement a plan for continuoustraining.
The committee discussed the gist of this
proposal.

Ⅲ Results of the Overseas Survey
An overseas survey was conducted to enable
a comparative study on the patent attorneysystems of the United States, the United
Kingdom, France, Germany, China, South Korea,and Europe (the EPO and the OHIM).
The questionnaire covered such matters as
the provision specifying the patent attorneysystem, the scope of business of patent attorneys,
the issue as to whether it is possible for patent●IIP Bulletin 2013 Vol.22

5 ●