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

■ On the Occasion of a New Start for Design Protection ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 2

HONDA Seiichi■ Revised Design Act of 2019: Promotion of Design Use for Advancing Innovations and Build-ing Brands ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 7
WATANABE Tomoko
The revised Design Act, which has undergone one of the biggest changes in history, will come into effecton April 1, 2020. The background to the revision is that good use of designs is essential for innovations—
technologies alone are not sufficient. Furthermore, in order to establish a brand, it is necessary to build an
overall brand image, and the role of designs is naturally very important in that regard. This means that use ofdesigns needs to be promoted in Japanese society. Compared to Europe or the US, use of designs is underdeveloped in Japan, and regrettably, the same applies to establishment of brands.
The revision to the Design Act of 2019 has as its theme promotion of design use for advancing innovations
and building brands. The key changes are the expanded scope of protection and diversification of methods
for filing applications. Regarding the former, the design rights now cover some types of designs that were notprotected, or were only ambiguously protected before, including architecture, interior designs, and image
designs. The intangible value of designs is thus legally protected more broadly now. Concerning the latter,
there are now a wider range of methods for filing applications, supporting companies and other users to “establish diverse and wide-ranging brand images with the use of design rights.” Specifically, the “set of articles”
and “related design system” have been expanded. An application may be filed for a set of articles as one
design. The related design system allows a group of similar designs of a single applicant (or a single rightholder) to be registered as a group. It is hoped that these measures will promote use of design rights and beof some help in establishing the infrastructure for companies to invest in designs with peace of mind. Hopefully, these measures will drive new creations in the future.
This paper explains the details of the Act’s revision, with a focus on the expanded scope of protection,enhancement of design rights for a set of articles, and related design system that are the key changes. Finally,
this paper points out issues that could arise in conjunction with the revision of the Act, and examines measures
to be taken in the future, possibly in combination with protection under other intellectual property right laws.

■ Attempt on Trademark Standardization ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 24NISHIMURA Masako
There are many arguments for standardization concerning patents, but not so for trademarks. This paper

特許研究PATENT STUDIES

No.69 2020／3105

attempts to discuss the necessity and feasibility of trademark standardization. First, the paper surveys thecurrent status of and future potential for standardization of icons for multifunction machines (printers), etc.
for which standardization is actually being explored. There are many icons with registered trademarks. Icons
representing similar functions co-exist with different graphic representations. It would be more convenientfor users if a single, uniform icon were to be used for a function. At the current stage, there is a list of icons
used by manufacturers. The list is believed to help prevent litigation at least among participating companies.
A notable example of standardization is the pictogram, which was promoted by the Tokyo Olympic Games
1964 and 2020 because the use of pictograms was and is necessary due to increasing numbers of foreign
visitors. Pictograms generally used as guidance symbols have the public benefit of communicating certain
information accurately and do not indicate specific manufacturers or sources of products or services. In termsof trademarks, there are restrictions on registering marks that have public benefit, ensuring that said marks
are not used exclusively by a certain party, but the grounds for unregistrability have been changing with theneeds of the times. For example, the names of historical figures, family emblems, or names of famous buildings, items for which there once were no or only ambiguous restrictions on registration, are now practicallyregulated. Commonly seen graphics and store names, which are considered unsuitable for exclusive use by acertain party, are also denied registration. The inclusion of these factors as grounds for unregistrability isconsidered meaningful for standardization. In order to avoid having too many registered marks, it will beessential to study how to allow the use of signs for which there is no need to acquire the right.

■ A Consideration of the Role of Technical Effects in Inventive Step Assessment Under theJapanese Patent Law System: A Review of the Purposive Construction Approach (the Inventiveness Constituent Approach) ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 35
OKADA Yoshimi
There are two major theories on the role of technical effects in inventive step assessment: the “purposiveconstruction approach (inventiveness constituent approach)” and the “reasonable inference approach (indirectevidence approach, secondary consideration approach).” According to the former, if the technical feature(means) of an invention is easily conceivable but one of its technical effects is unexpected and significant,the invention is deemed to have an inventive step in accordance with the object of the patent law. According
to the latter, if one of the technical effects of an invention is unexpected and significant, this fact is recognized
as evidence to infer that the technical feature (means) of the invention would be difficult to conceive. This
paper reviews the purposive construction approach.
The purposive construction approach does not completely deny room for the application of the reasonable
inference approach. Under this approach, in order for an invention to be regarded as having an inventive step
based on one of its technical effects when the technical feature (means) of the invention is easily conceivablefor the purpose of achieving a certain technical effect, the following conditions must be met: 1) the effect isbased on a novel technical feature that has not been comprised in the prior art; 2) the effect is unexpected as
an effect of the means and difficult to discover (unexpectedness); and 3) the effect is predominantly moresignificant than any other technical effects predicted or expected to be discovered (significance).
The first condition is derived from the doctrine of “mere discovery of a new effect of a known technicalfeature (Japanese version of the doctrine of inherency),” which holds that a newly discovered effect does notconfer a publicly known technical feature novelty. The unexpectedness condition is a naturally derived conclusion because an invention is a concept based on the recognized causal relationship between a technicalfeature (means) and its effects. A Supreme Court Case dated August 27, 2019, held that it is erroneous to deny
unexpectedness merely on the ground that it is comparable to the effects of known products (refer to Saibansho-Jihō, No. 1730, pp. 1-3); this judgement is in harmony with court precedents and patent practices in106

特許研究PATENT STUDIES

No.69 2020／3

both the US and Europe. The significance condition is also in common with court precedents and patent
practices in both the US and Europe.
The idea that the technical effects of an invention as well as its technical means are constituents of theinvention is a long-held concept and by no means unusual. The paper attempts to theoretically reinforce thepurposive construction approach by construing it as a way of assessing the inventive step by weighing theneeds of protecting an inventive concept comprising an unexpected effect and the literal interpretation thatusing the invention in a different purpose does not exempt it from infringement.

■ Reflections on International Aspects of the Protection of Trade Secrets ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 59
SUZUKI Masabumi
The protection of trade secrets is gaining more importance all over the world. Under such circumstances,in recent years, we see many cases involving acts occurring abroad. The Unfair Competition Prevention Actof Japan has undergone several revisions, introducing and strengthening penal punishment for persons inforeign countries who have committed misappropriation of trade secrets. A new provision has also been
introduced to make conducts concerning products manufactured by the use of trade secrets unlawful (Article2, Paragraph 1, Item 10).
In the US and the EU, the legal systems related to trade secrets have also changed significantly. In the US,
there was only a penal code (the Economic Espionage Act) with respect to trade secrets protection at thefederal level. In 2016, however, the Defend Trade Secrets Act was enacted as federal law concerning civil
remedies against misappropriation of trade secrets. The Economic Espionage Act did have stipulations on
offenders in foreign countries, but opinions appear divided among researchers and practitioners as to how theforeign acts should be treated in relation to civil stipulations in the federal legislation. As to border measures,the International Trade Commission is playing a certain role to stop the importation of goods infringing trade
secrets.
The EU used to leave trade-secret protection to the domestic laws of the member countries. In 2016,
however, the EU adopted a directive regarding trade secrets protection, and began harmonizing their legal
systems accordingly. One of the characteristics of the directive is that it obligates the member countries toadopt a stipulation to the effect that production, transfer, imports, etc. of “infringing goods,” “the design,characteristics, functioning, production process or marketing of which significantly benefits from trade
secrets unlawfully acquired, used or disclosed” shall be regarded as unlawful. Since the system covers importsof the relevant goods, it is related to acts in foreign countries involving trade secrets.
This paper reviews the relationship between foreign acts and trade secrets protection systems based onJapan’s Unfair Competition Prevention Act as well as on the US and EU systems. In conclusion, the paper
finds many shortcomings in requirements for unlawful misappropriation of trade secrets, particularly theconducts concerning goods infringing trade secrets, and asks for careful examination of the related laws andpractices.

■ Reconsideration of the Supreme Court Decision in Hitachi Case for Employee’s Invention:
Its Significance and Scope as the Precedent after the Revisions of Japanese Patent Act andPrivate International Actꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 68
SHIN Miho
From the 1990s to the 2000s, numerous lawsuits were filed by employees against their employers based

特許研究PATENT STUDIES

No.69 2020／3107

on Article 35 of Japanese Patent Act. Under the Article, which stipulates the succession of the right to obtaina patent in relation to the employee’s invention, the employees demanded a “reasonable remuneration” (Article 35, Paragraphs 3 and 4 of the Patent Act prior to the 2004 revision) for their employee’s inventions.
These legal actions gained nationwide publicity. There were many legal issues in the lawsuits, one of which
was the difficult issue relating to two areas of law—the Patent Act and private international law—as towhether Article 35 was applicable to the right to obtain a patent in foreign countries. There were sharp conflicts of opinion, including whether the issue should be considered an issue of the private international law(governing law) in the first place. The Supreme Court eventually ruled in the so-called “Hitachi case” that
Article 35, Paragraphs 3 and 4, of the Patent Act should be applied by analogy to obtaining a patent in foreigncountries. This essentially settled the controversy, at least on a practical level. Thereafter, once analysis andreview of the Supreme Court ruling on the Hitachi case were more or less complete, arguments subsided
rapidly on the applicability of Article 35 to the right to obtain a patent in foreign countries for employee’sinventions or on the governing law of legal matters concerning employee’s inventions.
However, the legal circumstances surrounding employee’s inventions in Japan have changed significantly.
As is well known, Article 35 of the Patent Act stipulating provisions on employee’s inventions was revised
twice: once in 2004, just prior to the Supreme Court ruling on the Hitachi case, and once in 2015. In themeantime, the private international act of Japan was also revised in 2006 and renamed the “Act on General
Rules for Application of Laws.” In response to the changes in the legal context described above, this paper
reexamines the Supreme Court ruling, as well as the scope of the ruling as precedent, on the Hitachi case inrelation to the employee’s invention system under the current private international law and revised 2004 and2015 Patent Acts, mainly from the viewpoint of the private international law.

■ Industrial Property Rights-related Judgments in Daishin’in Hanketsu Shōroku (Summariesof Great Court of Cassation Decisions) ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 79
SAKURAI Takashi
Daishin’in hanketsu shōroku (summaries of Great Court of Cassation decisions; the “Summaries” hereafter) was issued by Hosokai from 1924 to 1933, recording important judgments to be referred to from
Daishin’in hanketsuroku (Great Court of Cassation decisions). There were 93 volumes each for penal rulingsand civil rulings, including over 5,000 civil judgments from 1898 to 1921 and over 3,000 penal judgmentsfrom 1891 to 1921. Among them are rulings related to the Industrial Property Rights Law. Unfortunately, theSummaries are yet to be digitalized. There are no indexes, either, except for the table of contents of eachvolume. As a result, researchers are forced to spend significant time and effort searching for rulings they want
to refer to. Accordingly, this paper extracts and lists, in the form of a table, all the judgments related to theIndustrial Property Rights Law from the Summaries.
These are all important judgments to be referred to. Of particular importance are:
 Eligibility to Demand Invalidation Trial
The Patent Law of 1899 did not stipulate that only interested parties are eligible for demanding a patent
invalidation trial. Accordingly, there were many litigations about eligibility to demand an invalidation trial(Civil Judgments Nos. 9 and 24).
The Great Court of Cassation ruled that “anyone can demand an invalidation trial, not just the interestedparties.” The revised Patent Law of 1909 had clear stipulations to the effect that only interested parties may
demand an invalidation trial.

108

特許研究

PATENT STUDIES

No.69 2020／3

 Period during Which Invalidation Trial May Be Demanded
Under the Patent Law of 1899, the Great Court of Cassation ruled that, if the patent expires before thepatent appeal is concluded, the applicant cannot receive a ruling on the validity of the patent after its expiration (Civil Judgment No. 26). The revised Patent Law of 1909 stipulated that the patent may be invalidated
after its expiration and that, in this case, the patent right is deemed not to have existed from the start.

■ International Trend on Patent Systems ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 96

NONAKA Matsuo
This paper first gives an outline of recent developments in patent systems worldwide and then discusses
trends in patent applications at major patent offices and international cooperation among them. The paper also
touches upon utility model systems briefly. While technologies do not have national borders, patent systems
do. The patent system of a country is deeply related to the industrial policies of the country. Although thebasic framework of patent systems has been unified mostly across the world, countries and regions still retain
their own patent systems. Between the US and Europe, in particular, there is a fundamental difference inphilosophy—whether to give priority to the interest of the inventor or to that of third parties—and the difference is reflected in the respective patent systems. In order to eliminate differences in patent systems or patentexamination practices, countries have been undertaking initiatives to harmonize them globally, as well as tobuild a common global patent system. Although the goals of these initiatives are unlikely to be accomplishedin the short run, there has been slow but steady progress: the change of the US patent system from the “firstto-invent” to the “first-to-file” system, which was brought by the enactment of the America Invents Act (AIA);
the improvement and wider use of the PCT international application system; and the expansion of cooperationin patent examination among patent offices. The situation in Europe is uncertain due to Brexit. Nevertheless,
it is worth noting that a unified patent system is nearing finalization. In recent years, the aggregate number ofpatent applications has increased rapidly worldwide; the total has reached about 3.3 million, mainly driven
by China. Due to the rise of China and South Korea, the framework for the global cooperation of major patentoffices has expanded to the IP5 Offices (Japan, US, Europe, China and Korea) from the Trilateral Patent
Offices (Japan, US and Europe). The IP5 Offices are promoting various cooperative projects, including: harmonization initiatives at the Patent Harmonization Expert Panel (PHEP); patent-examination cooperationsuch as the IP5 Patent Prosecution Highway (IP5-PPH) and PCT collaborative search and examination; andIT cooperation typified by the Global Dossier system, for example. The offices are also working on response
measures to new technologies such as AI and IoT. The establishment of an international patent classification
for IoT (subclass G16Y) is one such example. China’s patent system has exhibited striking development andthe Chinese government has shifted its political focus from being a “big” IP country to a “strong” IP country.
China does have numerous issues to address, however. It will be necessary, therefore, to keep a close eye on
China from an overall prospective, not just from a single aspect.

特許研究

PATENT STUDIES

No.69 2020／3109