12Study on Current Conditions Regarding Industrial
Property Disputes

In recent years, issues related to industrial property disputes have been attracting a lot of attention.
Reflecting this trend, the Strategic Program for the Creation, Protection and Exploitation of Intellectual Property
2005 highlighted such outstanding issues as how to reduce the burden of proof shouldered by a party filing alawsuit over infringement of intellectual property and how to improve the examination system of the Patent
Office.
This paper presents the results of our study conducted to grasp current conditions regarding thecompensation system and allocation of the burden of proof. In this study, we reviewed court decisions on
intellectual property cases and also conducted a survey on companies by sending them questionnaires andconducting interviews with them.
In addition, in order to study the burden currently shouldered by related parties in providing proof for thevalue of an invention, we have conducted research on court decisions and inspection of relevant court documents.
We have gathered and analyzed information on the calculation methods for such invention value and themethods for justifying the amount of compensation.
Furthermore, in an attempt to find out how to improve the examination system of the Patent Office, we
conducted a survey on users of the system by sending them questionnaires and holding interviews with them in
the hope to obtain an evaluation from system users and review the functions and roles of the system employed indealing with intellectual property disputes.

Ⅰ Compensation System
1

Purpose of this study(1) Necessity of the study
Any intellectual property right holder who
demands compensation for the damage caused byan infringement of the right must prove such
related facts as the intention or negligence of theinfringer, the infringement of the intellectual
property right, the suffering of the damage, andthe relationship between the infringement andthe damage. These facts, however, are difficult toprove in most cases. For this reason, industrial
property laws including the Patent Law havespecial clauses as exceptions to the Civil Codeand the Civil Procedure Code.
Meanwhile, the Strategic Program for theCreation, Protection and Exploitation ofIntellectual Property 2005 states that “In fiscal
2005, while making every effort to notify the
public of the revised discovery system and othernew developments, we need to further study
important issues related to intellectual property
and make necessary changes in the legal andother systems. Such important issues include
protection of intellectual property of small andmidsize companies, prevention of the abuse bylarge companies of their position of advantage,
provision of appropriate remedies to right holders

IIP Bulletin 2006

through the compensation system concerning
intellectual property such as the damage
calculation system, and reduction of the burden of
proof shouldered by the party filing an intellectual
property lawsuit such as the need to justify theamount of damages.” Under this program, weneed to have an accurate understanding of theoperation of the current compensation system.
(2) Purpose of the study and mattersrelated to the study
Against the aforementioned background, thisstudy on the compensation system for intellectual
property infringement was conducted in order tounderstand and analyze the operation of thecurrent compensation system. This study is
expected to clarify whether the current
compensation system provides appropriate
remedies to right holders and how the systemshould be further improved.
For example, 1) we reviewed past
infringement cases and collected and analyzed
information on the details of the infringed patents,
the amount of damages, and the provisions ofindustrial property laws applied to the cases (onlythose provisions introduced by revisions from1998 through 2004), etc., as well as studying thegeneral trend in the amount of damages awarded
by the courts, and 2) in addition to such analyses,
we conducted a survey on companies by sending● 96 ●

them questionnaires and holding interviews withthem in order to grasp current conditions
regarding the compensation system forintellectual property infringement and allocationof the burden of proof.
2

Study of domestic court precedents

We studied individual cases in which
compensation was sought for damage caused byinfringement of industrial property rights(including patent rights, utility model rights,
design rights and trademark rights) for the
purpose of grasping the trend in the claims ofright holders (the provisions under which theclaims were made and the amounts of damages
sought) and also in the court judgments (theprovisions applied to the cases and the amount ofdamages awarded).
As the primary purpose of this study was toobserve the effect of the legal revisions
implemented since 1998 (e.g. Section 102(1) of
the Patent Law) on court decisions, we selectedcases for which courts handed judgments during
the period from January 1, 1996 through June 30,2005 so that we could cover the period both
before and after the legal revisions.
This study clearly revealed that the numberof judgments concluded based on the revised laws
was on the rise. However, the legal revisions did
not contribute to increasing the amount ofdamages awarded by the courts. Hoping to
identify a long-term trend, we studied court
decisions made during a longer time span. We
calculated an average approval rate for theamount of damages sought in court for
infringement of a patent right or utility modelright in the period from 1989 through 1994 andalso in the period from 1999 through 2004. We
then compared the two.
We found that the approval rate for theperiod from 1989 through 1994 was 35.73%,
whereas that for the period from 1999 through2004 was 43.19%. It would therefore be safe toconclude that the approval rate for cases where
damages are sought has been on the rise for the
past ten years.
3

Questionnaire survey

In the preceding section, we presented theresults of our study on precedents with regard to
the amount of damages and the application ofrevised laws, etc. While another important
purpose of this study is to clarify the actual

situation regarding allocation of the burden of
proof, we have been unable to fully achieve thispurpose because court documents for theprecedents have no clear statements about thismatter.
In an effort to obtain related information, we
conducted a survey by sending out questionnaires
and holding interviews.
(1) Outlines of the survey
The survey was conducted from January 1,
1998 through June 30, 2005 on 119 companies towhich damages were awarded, in whole or in part,in lawsuits against infringement of industrial
property rights (including patent rights, utility
model rights, design rights and trademark rights).
These companies were chosen based on thecriteria that they were located in Japan and could
be identified by the address to which thisquestionnaire was sent. We received a response
from 29 companies (response rate: 24%).
(2) Results of the survey(ⅰ) All the respondents are corporations, manyof which are large companies capitalized at
300 million yen or more.
(ⅱ) 73% of the respondents cited the Patent Law
as the law under which they sought damages.
The rate rose to 80% when both cases
involving patents and those involving utility
models were subject to the calculation.
(ⅲ) Regarding Section 102(1) (Lost Earnings)
and relevant clauses of the Patent Law, theadvantage of their use cited most often was“It is easy to justify the calculation of thedamages,” while the disadvantage of theiruse cited most often was that “Right holders
must disclose the amount of profits against
their will.” Slightly over half the respondents
answered that the burden on right holders tojustify the amount of damages sought “hasbeen reduced.”
The respondents were equally divided overwhether the amount of damages awarded was
reasonable or too small in light of the realsignificance of the actual damage. Half
replied it was “Reasonable,” while the otherhalf said it was “too small.” A majority of thesmall and midsize companies participating inthe survey answered that it was “too small.”(ⅳ) Regarding Section 102(2) (Estimate of thedamage) and relevant clauses of the Patent
Law, the advantage of their use cited most● 97 ●IIP Bulletin 2006

often was that “there is little room for an
infringer to submit a plea,” while thedisadvantage of their use cited by theoverwhelming majority was that “It isdifficult to prove the amount of profits gainedby the infringer.”
The vast majority of the respondents
answered that the amount of damages paid
under this provision was too small in
consideration of the significance of the actual
damage.
A comparison between these results and theresults described in (iii) above shows thatthe introduction of Section 102(1) of the
Patent Law by the 1998 revision contributed
to enhancing the protection of the rightholder by increasing the amount of damages
awarded and decreasing the burden of proof
in a patent infringement case.
(ⅴ) Regarding
Section102(3)(Amount
Equivalent to License) and relevant clausesof the Patent Law, the advantage of their use
cited most often was that “the payment may
be sought even if the patent, etc., has notbeen exploited,” while the disadvantage of
their use cited most often was that “It isdifficult to prove the amount of the sales of
the infringer.”
76% of the respondents answered that “theroyalty rate awarded by the court” was“high” or “reasonable.” This suggests that,
thanks to the revision of the 1998 law, courts
are more likely to take into consideration thecircumstances surrounding each individual
case and award a reasonable amount ofdamages.
(ⅵ) Regarding Section 104(2) (Obligation toclarify relevant act in concrete manner) andrelevant clauses of the Patent Law, theadvantage of their use cited most often was“A reduction in the specific burden of proof,”
while the disadvantage of their use cited
most often was that “There are no provisions
for sanctions against any party that violates
the duty of disclosure.”
In response to the question, “Has thisprovision contributed to making infringers
clarify relevant acts?,” about half answered“Yes” and the other half said “No.”(ⅶ) Regarding Section 105 (Submission ofDocuments) and relevant clauses of the
Patent Law, the advantage of their use cited
most often was “It reduces the burden of
proof,” while the disadvantage of their use
cited most often was that “It is difficult to

IIP Bulletin 2006

identify the documents owned by the otherparty.”It should be noted, however, that there arefew cases where the submission of
documents is sought under this provision.
This is probably because documents areusually submitted voluntarily in response to
the instructions given by the courts at
appropriate times.
(ⅷ) Regarding Section 105 (3) (Award of
Reasonable Damages) and relevant clausesof the Patent Law, 93% of the respondents
answered “No” to the question, “Have you
received a reasonable award of damages fromthe court?.” This shows that this provision
has rarely been applied. It indicates that, inmost cases, sufficient proof of the facts,
which is required for the approval of damages,
is presented without the application of thisprovision.

Ⅱ The Calculation of Compensationin Court in Cases Where theCompensation for Employee
Inventions is Sought and EachCompany’s Stance on the New
Employee Invention System
1

Recent trends in employee inventions

In recent years, lawsuits to determine“reasonable
compensation”
foremployeeinventions have been attracting public attention.
In particular, the case of Nichia Corporation, forwhich a court decision was handed down inJanuary 2004, and the cases before and after the
Nichia case, namely those of Hitachi and
Ajinomoto, greatly increased public interest in
the issue of compensation for employee
inventions as unprecedented high amounts ofcompensation were awarded.
These lawsuits were handled under the old
employee invention system. In each of the cases,
the plaintiff had already received compensation
when he was an employee of the defendantcompany. The amount of compensation was later
found to be unreasonable in court.
In this way, the old employee invention
system was considered to have the disadvantagethat an employee or other party in a similar
position who has made an invention tends to feel
unsatisfied with the compensation while theemployer or other party in a similar position has
little way to predict the amount of compensation
required. To improve this situation, Section 35 of● 98 ●

the Patent Law was revised in the ordinary
session of the Diet in 2004, which led to theimplementation of the new employee invention
system in April 2005.
Under the new employee invention system
introduced by the legal revision, special emphasis
is placed on a voluntary agreement made between
the employee or similar party and the employer
or similar party. The judgment as to whether theamount of compensation is reasonable is madebased mainly on the process by which the twoparties made such an agreement.
2

determining the amount of compensation. Suchremoval requires care in the establishment of newprocedures.
Nine months have passed since theimplementation of the revised law. In order tostudy the measures taken by each company inresponse to the introduction of the new employee
invention system, we conducted a survey bysending questionnaires to companies.
3

Study on court precedents in which
compensation for employee inventions
was sought

The purpose of this study(1) The calculation method used in court inwhich compensation for employee
inventions was sought and the method
used by the plaintiff to justify theamount of compensation sought
As mentioned above, public interest in cases
concerningcompensationforemployeeinventions has been growing. The public isparticularly interested in the calculation method
for the compensation.
In many of those cases, the plaintiff instituted alawsuit after he retired from the defendantcompany. For this reason, the plaintiff had
difficulty in obtaining data necessary for the
calculation of compensation such as the sales andprofits of the defendant company and the income
gained from the licensing of the invention to third
parties. In order to have a better grasp of realconditions, we conducted a study on thecalculation method for the compensationconsidered reasonable in each case wherecompensation for an employee invention wassought and also on the method used to justify thecompensation level sought by the plaintiff(inventor) for each case because little was known
about such justification methods.
(2) Measures taken by each company inresponse to the introduction of the new
employee invention system
There are two aspects to the series of steps
from the establishment of a standard forcompensation to the payment of compensation.
The first one is the procedural aspect. The
second one is the substantive aspect such as thecontents of the standard and the amount ofcompensation finally paid. Under the new
employee invention system, it is important toremove irrationality from the process of(1) Study on precedents
In order to obtain data about the calculation
methods for compensation used in lawsuits wherecompensation for employee inventions wassought and also about the methods used byplaintiffs (inventors) to justify the amount ofcompensation sought, it is necessary to analyze
individual infringement cases. We therefore
examined each court precedent in which
compensation for an employee invention wassought in order to analyze the plaintiff’s claim,
the defendant’s (employer’s) rebuttal, and thecourt judgment.
(2) Results of the study on precedents
This study was conducted on 29 cases
disputing what the reasonable amount ofcompensation for the employee invention was.
The number of court judgments seems to havebeen increasing since around 2001.
(3) Approval of requests
Of the 29 cases, court approval was granted
to the plaintiff in 19 cases. The approval rate wastherefore 62%.
This study was conducted on the court decisions
given in the first half of 2005. Therefore, the final
study result for 2005 as a whole is expected to bedifferent. During the period from 2001 through2004, not only the number of court judgments but
also the number of approvals were on the rise.
(4) Calculation methods for compensation
We also studied the compensation calculation
methods claimed by the plaintiffs and thecalculation methods approved by the courts.
(Ⅰ) Compensation calculation methods claimedby the plaintiffs
In our study of precedents, we discovered 23
different calculation methods were employed tojustify the compensation claimed by the plaintiffs.

● 99 ●IIP Bulletin 2006

Those methods can be roughly classified into thefollowing four groups:(ⅰ)Calculation method based on sales;(ⅱ) Calculation method based on the income ofthe defendant company in the form of
royalties;(ⅲ) Calculation method based on the profits
gained by the defendant company; and(ⅳ) Calculation method based on the net
production value inside and outside Japan.
(Ⅱ) Compensation
calculation
methods
approved by the courts
Meanwhile, we found 15 different calculation
methods for compensation approved by the courts.
Those methods can be roughly classified into thefollowing three groups:(ⅰ) Calculation method based on sales of the
defendant company;(ⅱ) Calculation method based on the income ofthe defendant company in the form of
royalties; and(ⅲ) Calculation method based on the profits
gained by the defendant company.
4

Method used to justify the amount ofcompensation sought by the plaintiffs
in the case where compensation for an
employee invention was sought(1) Examination through inspection of
court documents
In the previous section, we presented the
major calculation methods for compensation
based on our study of precedents. However, thatstudy did not provide us with information about
the methods used by the plaintiffs to justify theamounts of compensation they sought. As
acquisition of such information was one of the
purposes of our study, we went to the courts andinspected the documents concerning some of thecases in order to examine how the plaintiffs
produced necessary justification.
(2) Results of the inspection
Since compensation is calculated based on
the following seven factors, we studied how theplaintiffs produce evidence for the figures listed in(ⅰ) through (ⅶ) below. We stated the compensation
calculation method used in each case. With regard
to the cases where we conducted an inspection
and found out the evidence used for justification,
we stated this evidence as well. In the case of any
precedent on which we did not conduct aninspection, we stated the calculation method only:(ⅰ) Sales of the defendant company;

IIP Bulletin 2006(ⅱ) Income of the defendant company in the formof royalties;(ⅲ) Profits of the defendant company (other than
the income specified in (ⅱ) above);(ⅳ) Net production value inside and outside
Japan;(ⅴ) Royalty rate;(ⅵ) Degree of contribution of the right to (ⅰ), (ⅱ),
and (ⅲ) above; and(ⅶ) Rate of contribution of the plaintiff to theright(3) Conclusion -- Analysis of evidence usedin justification
Based on the results of our inspection, which
revealed the evidence used by the plaintiffs forjustification, we classified this evidence into twogroups. One of the groups is for that evidence
accepted by courts, and the other group is for that
evidence rejected.
5

Measures taken by companies and otherorganizations in response to theestablishment of the new employee
invention system(1) Outline of the survey
Nine months have passed since theimplementation of the revision to Section 35 of
the Patent Law. With the aim to study what
measures have been taken by companies in
response to the establishment of the new
employee invention system, we conducted asurvey in the following manner.
(ⅰ) Targets of this survey
Companies,
universities,
andpublicorganizations that had ten or more patentapplications publicized in Japan in 2004 (Total
number of organizations meeting these
conditions: 2,019)(ⅱ) Period of the survey
January 10, 2006 (Shipment date ofquestionnaires) through January 24, 2006 (Duedate for posting of questionnaires)(2) Results of the survey(Ⅰ) Response
1,093 (Number of responses)/2,019 (Numberof questionnaires sent) (Response rate: 54.1%)(Ⅱ) Outline of the results of the survey(ⅰ) Awareness of the new employee invention
system
96.0% of the respondents (1,049 companies
and other organizations) were aware of thechange in the employee invention system. This

● 100 ●

shows that the new employee invention system
enforced on and from April 1, 2005 is well-known.
(ⅱ) Revisions of the employee invention rules
A. Measures taken in response to theestablishment of the new employee invention
system
92.3% of those who were aware of theintroduction of the new employee invention
system said they have taken or would takemeasures (968 companies and other organizations).
(a) 86.7%(912
companies
andotherorganizations) replied that “We haveenforced or would implement the new
employee invention rules.”(b) An analysis of the respondents byorganization size shows that 94.7% of large
companies (729 companies), 86.2% of small
and midsize companies (193 companies), and79.3%
ofuniversities
andpublicorganizations (46 organizations) gave theabove-mentioned reply.
(c) According an analysis of the respondents by
the number of applications, 99.5% (201companies and other organizations) of those
who submitted 200 or more applications,
94.5%
(291
companies
andotherorganizations) of those who submitted atleast 50 applications but less than 200
applications, and 87.8% (476 companies andother organizations) of those who submitted
less than 50 applications gave theabove-mentioned reply.
B. Changes in the former rules
Among those who already had the new
employee invention rules by the time of thissurvey, the most commonly-made alteration in
their rules was “A change of the compensation
calculation method,” which was cited by 62.3%(540 companies and other organizations) of themas an alteration they made to their rules in
response to the establishment of the new
employee invention system.
C. Inventions transferred from employees tocompanies before the implementation of the new
employee invention rules
65.0%
(595
companies
andotherorganizations) of the respondents said they had
applied or would apply the new employee
invention
rules for the calculation ofcompensation following the implementation ofthese new rules.
(ⅲ) Discussions
A. Regarding the people involved in devising
the new employee invention rules in eachorganization, the most common answer was “Allemployees,” chosen by 56% of the respondents(449 companies and other organizations).
B. With regard to the means to hold discussions,
63.8% (508 companies and other organizations)answered “Explanatory meetings, while 61.7%(491 companies and other organizations) said
“Intranet” (Multiple answers allowed).
C. The most frequent request from employees
and other people concerned was “Clarification of
the standards,” cited by 34.5% of the respondents(275 companies and other organizations).
(iv) Upper limit of compensation
About the upper limit of compensation paid
for the transfer of an employee invention, 68.3%(714 companies and other organizations) of the
respondents answered there was “no upper
limit.”(v) Means of disclosure
The most commonly used means to disclose
employee invention rules was the Intranet, which
was chosen by 74.5% (773 companies and otherorganizations) of the respondents.
(vii) Former employees
Regarding the payment of compensation for
an invention made by a former employee, 70.4%(736 companies and other organizations) of the
respondents said the treatment of a former
employee will be “the same as a current
employee” in terms of compensation for an
employee invention. This shows many companies
treat former employees and current employees inthe same manner in this respect.

Ⅲ Future of the Advisory Opinion
System of the Patent Office1

Purpose of the study(1) Background
The Intellectual Property Policy Outline
points out that “Along with reform of the litigation
system we should also strive to strengthenalternative dispute resolution (hereinafter“ADR”).” Furthermore, the Strategic Program for
the Creation, Protection and Exploitation ofIntellectual Property 2005 states that “In fiscal
year 2005, we should continue seeking anappropriate division of roles between the Patent
Office, which has an advisory opinion system, and
ADR-related organizations in light of the resultsof the study conducted on ADR in connection
with judicial system reform. We should then makealterations to the system, if necessary.”
With regard to ADR, the ADR Study Groupof the Secretariat of the Judicial Reform● 101 ●IIP Bulletin 2006

Headquarters studied the possibility of expanding
and promoting ADR and established the Law toPromote the Use of Alternative Dispute
Resolution (the so-called ADR Law) which isapplied to ADR in a comprehensible manner.
Meanwhile, a study on the advisory opinion
system was conducted by a Dispute Resolution
Sub-committee that belongs to the Intellectual
Property Policy Committee of the Industrial
Structure Council in 2002. Since the subcommittee concluded that “A further study needs
to be made on this issue in consideration of thedevelopments in the debate regarding the use of
ADR in general,” no further study has been made.
(2) Purpose and subjects of this study
In order to discover the way to improve theadvisory opinion system of the Patent Office, we
consider it important to listen to the opinions of
the users of the system. We therefore conducteda survey and interviews of users to study how
well the system is received by users and whatroles the system plays and what effects it has on
disputes over intellectual property.
2Advisory opinion system and ADR(1) Advisory opinion system
The advisory opinion system of the Patent
Office was introduced by the revision to the
Patent Law in 1959. This system is designed tohave the Patent Office determine whether acertain article (the article that is suspected tohave caused the infringement) infringes a patent.
Under this system, an assessment as to the scopeof a patent right is conducted not by the parties
concerned but by the Patent Office, which granted
the patent in the first place.
This assessment service of the Patent Office
is provided as an administrative service. An
assessment is given as an opinion of the Patent
Office and is not legally binding. When a party
receives an assessment, even if a party disagrees
with the assessment, the party is not allowed tofile a complaint with a court.
In short, the advisory opinion system of the
Patent Office is not intended to bring about the
final resolution to a dispute. The system aims tocontribute to dispute settlement by showing thePatent Office’s opinion on whether the article inquestion infringes a patent, assuming that theright is valid.
The number of requests for these opinions
has significantly increased, peaking in 2000. In
recent years, the figure has remained around 100.

IIP Bulletin 2006

(2) ADRADR (Alternative Dispute Resolution) is ameans to settle a dispute in a flexible manner interms of both substance and procedure based on
the intentions of the parties concerned. The
advantage of ADR is that users can consult withexperts in various fields at a lower cost incomparison with the case of a trial, which is lessflexible in terms of cost and time.
There are two types of ADR organizations
that provide dispute settlement services to meetthe unique needs of each dispute. The first one is“governmental ADR organizations.” The otherone is “private ADR organizations.” However,according to the Judicial Reform Council, “theADR services do not necessarily function
properly with the exception of those offered by asmall number of ADR organizations” as currently
shown in the results of interviews held with ADR
organizations and users as well as surveys
conducted of private ADR organizations. Thoseinterviews and surveys, carried out by the ADR
Subcommittee, have revealed that (1) the public
has insufficient awareness and understanding of
the existence and purpose of ADR, (2) the public
is not well informed of private ADR organizations
and therefore feels uneasy about using them, and(3)there are regulatory restrictions that preventthe active use of the ADR system.
One of the private ADR organizations
concerning intellectual property rights is theJapan Intellectual Property Arbitration Center,
which offers such services as consultation,
arbitration, intermediation, center assessment,
and settlement of disputes over JP domain names.
The service “center assessment” provides anassessment on the scope of a registered patentright, utility model right , design right, ortrademark right and also on the effect of any of
those rights. The process and result of such anassessment is not open to the public, as is normal
for ADR.
3

SurveyThis survey was conducted on 257
companies and organizations that requested anadvisory opinion in and after 1998 and had a
Publication of Advisory Opinion issued. Each ofthem was involved as (A) a party requesting anadvisory opinion on a possible infringement of its
patent and also as a party whose product issuspected of infringing a patent of another partyor (B) a party requesting an advisory opinion on a
possible infringement of its patent or as a party● 102 ●

whose product is suspected of infringing a patentof another party more than once. In total, we
received 53 responses (response rate: 21%).
<Outline of the results of the survey>(ⅰ) About 70% of the respondents werecompanies. In fact, about 60% of the
respondents were companies capitalized at
300 million yen or more. In short, a majorityof respondents were large companies.
More than 80% of the respondents said that,when they were involved in the process ofobtaining an advisory opinion from the
Patent Office, they had agents (patent
attorneys in most cases) represent them.
About 40% of the respondents spent a totalof 0.3 million (inclusive) to 1 million yen(exclusive) to obtain an advisory opinion,although the official fee for an advisory
opinion was only 40,000 yen. This showsthat an agent’s fee accounts for a large partof the cost in many cases.
(ⅱ) The most common reason for using theadvisory opinion system of the Patent Office
was a need to issue an infringement warning,
followed by legal measures, and negotiations,etc. This indicates that many users of thesystem obtain an advisory opinion with theaim to present it to the possible infringer.
The most frequently cited reason for using
the advisory opinion system was its public
nature. The users of the system tend toappreciate the system due to the public
nature of the opinion, the accuracy of theadvice, fairness of assessment, andimpartiality of treatment. They value thesecharacteristics of the system to a greater
degree than the low usage fee and the shortwaiting period.
(ⅲ) About 60% of the respondents considered theadvisory opinions agreeable, while about 40%
regarded them as not agreeable. More than
80% said that they had sufficient
opportunities to fully express their opinions.
Not a few of those who found advisory
opinions disagreeable considered those
opinions appropriate nonetheless.
Most respondents answered that they would
take part in a hearing on a case-by-case basis.
This reluctance is probably attributable, inlarge part, to the burden imposed on hearing
participants.
A majority of the respondents chose“perfectly understandable” or “relatively
understandable” that the advisory opinion

system publicizes advisory opinions, does
not allow a system user to submit an
opposition, does not give a legally binding
judgment, and does not judge whether theright in question is valid or not. This shows
the respondents were divided over theadvantages and disadvantages of thosecharacteristics of the system.
(ⅳ) More than 90% of the respondents have been
involved in a lawsuit or obtained an opinion
from a lawyer or patent attorney.
Most respondents prefer the advisory
opinion system to opinions from lawyers or
patent attorneys in many respects. However,they consider such experts’ opinions moreconvenient in terms of usability andswiftness.
(ⅴ) About 10% of the respondents have usedprivate ADR organizations. This indicates
that, in comparison with lawsuits or lawyers’
and patent attorneys’ opinions, companies
are not familiar with the services offered by
ADR organizations.
As much as about 50% of the respondents
answered that they had not heard of center
assessment.
What they expected from private ADR
organizations were fairness, impartiality,
expertise and nondisclosure. They consideredthese characteristics more important thancosts.
(ⅵ) More than 80% of the respondents hopedthat the Advisory Opinion System of the
Patent Office will continue, while some ofthem attached desired conditions for thecontinuation of the system. Those conditions
included the simplification of procedures,
establishment of regional branch offices, andgranting of legally binding power.
To the question as to what action to take if
the Advisory Opinion System of the Patent
Office did not exist, the most frequently
given answer was that they would institutelawsuits. This suggests that the Advisory
Opinion System plays a certain positive rolein terms of reducing the number of cases
brought to court although it does not bringabout the final settlement of disputes.
4

Conclusion

Based on the results of this survey andinterviews conducted on the users of theAdvisory Opinion System, which is designed toprovide fair and impartial opinions by a public● 103 ●IIP Bulletin 2006

institution in a swift and inexpensive manner, weconclude that the system contributes to reducing
counterfeiting and plays a role in resolving
disputes in general.
(Researcher :Takahiro HIRAIWA)IIP Bulletin 2006

● 104 ●