24 Criteria for the Recognition of Inventors and the Procedure
to Settle Disputes about the Recognition of Inventors
Research Fellow: Toshitaka Kudo

Under the existing Japanese laws, the indication of the inventor or inventors of an invention in the patentapplication is not subject to substantive examination. Therefore, once a patent is granted, even if the indication
turns out to be false, the false indication does not influence the validity of the patent. However, with theincreasing awareness of the inventor’s right among researchers and technicians, the number of disputes overrecognition of inventors has surged in recent years. In order to solve and prevent such disputes, we need toestablish clear substantive and procedural rules.
In order to enhance the criteria for recognition of inventors, the author proposes that Japan should further
develop the standards of “creation of technological thought” and “present of conception and its materialization”,
both of which have been adopted by judicial precedents and prevailing theories. In this process, a comparative
study with the U.S. case law called “doctrine of simultaneous conception and reduction to practice” should be
conducted. The doctrine focuses on the correlation between the technical fields to which the invention inquestion belongs and the necessity of an experiment.
The author also makes some proposals from the perspective of both construction and legislation in order toimprove the procedure for the settlement of disputes over recognition of inventors. Those proposals are mainly
about the case of usurped applications where the issue of recognition of inventors is often raised as anunderlying problem. More specifically, the author discusses on what conditions the real right holder should bepermitted to request the usurping applicant to surrender to him the patent or the right to receive a patent.
Furthermore, the author points out the necessity to establish a new procedure that allows the real inventor toamend or correct the false indication of an inventor on the application or the patent.

Ⅰ Purpose of This Study
The name or names of the inventor orinventors of an invention must be stated in apatent application. These names must also be
shown in the patent certificate and patentregistration. As the indication of each inventor isnot subject to substantive examination, few people
have paid much attention to who the real inventor
or inventors are. However, with an increase in thenumber of disputes as described below, it has
never been more important to recognize the real
inventor or inventors of an invention. This study
aims to clarify the substantive criteria for therecognition of the real inventor or inventors of an
invention and also to examine arguments from theperspective of interpretation and legislation withregard to the establishment of the procedure forthe settlement of disputes about the recognition of
the real inventor or inventors of an invention.

Ⅱ Current Situation in Recognizing
the Inventor or Inventors of an
Invention
These days, disputes about the recognition

IIP Bulletin 2006of the real inventor or inventors can be classified
into three types: disputes about the ownership ofa patent or the right to receive a patent, disputes
about the demand for reasonable compensationfor employee inventions, and disputes about theconfirmation of the status as an inventor. As joint
research and development projects have become
more common in recent years, the number ofdisputes about the ownership of a patent or theright to receive a patent has risen. In order tosolve a dispute about the demand for compensation
for an employee invention, it is sometimes
necessary to settle a dispute about therecognition of the real inventor or inventor before
discussing about the calculation method forcompensation. This type of disputes is expected
to surge in number thanks to the recently
heightened public awareness of the importance of
this issue. In addition to the above-mentioned
three types, a new type of disputes has emerged.
These disputes are raised not for the purpose ofobtaining a patent or financial benefits but ofgaining confirmation for the status as an inventor,
reflecting the trend toward more emphasis on thevalue of a patent as a symbol of the achievementsof researchers and technicians.

● 202 ●

Ⅲ Criteria for the Recognition of
the Inventor or Inventors of an
Invention
1

Japanese laws

According to judicial precedents andprevailing theories, since an invention istechnological thought regarding specific measures
to solve certain problems, a person who has
devised such measures should be regarded as aninventor. It is also argued that the reduction topractice of a conception requires the fulfillment of
the condition that based on the requirements
specified as the constituent features of theinvention, a party who has the average level ofexpertise about the technical field relevant to theinvention has such level of technical knowledge
that is enough to exploit the invention.
In principle, a person who has offered
substantive cooperation for the “technicalcreation” is considered as a joint inventor. Those
who should not be regarded as inventors aremanagers, assistants, advisors, supporters, andoutsourcees. There is another analysis methodthat has adopted a different viewpoint. The
existence of a substantive collaborator is judged
for each of the two phases of the invention
creation process. The first phase is the provisionof a conception (the provision of a subject oradvice as to the correct direction to a solution of aproblem). The second phase is the reduction topractice of the conception. According to thisanalysis method, any person who has provided anovel conception should be regarded as theinventor. However, in the case where a person
who came up with a conception simply publicizes
the conception without materializing theconception, even if another person succeeds inmaterializing this conception and completes aninvention, the person who originally presented
the conception cannot become a joint inventor.
Furthermore, any person who reduced theconception to practice should be regarded as a
joint inventor unless the reduction to practice is amatter of course among parties in the relevant
field.
2Comparative study(1) Foreign laws(i) U.S. laws
Under U.S. laws, the formation of conception
is traditionally one of the criteria for therecognition of the real inventor of an invention. A

well-known ruling about the meaning of“conception” states “’Conception’ is theformation in the mind of the inventor of a definite
and permanent idea of a complete and operative
invention. For a conception to be considered
complete, the inventor must have mentallyformulated an idea for the invention so clearly
that he can make a disclosure that would enable aperson of ordinary skill in the art to practice thedisclosure without extensive research orexperimentation. For an idea to be considereddefinite and permanent, the inventor needs tohave a concrete and complete idea rather thansimply having general objectives or plans. A
conception can be considered completed even if
the inventor does not have a reasonable
expectation that an invention will work. It isenough for the inventor to present an idea.
Confirmation of the operability of the inventions
should be deemed as a part of the reduction topractice.” The criteria for the recognition of theinventors of a joint invention are specified in 35
U.S.C. 116 and 37 C.F.R. 1.45.
For the analysis of the process of theformation of an invention, it is important to take
into consideration the concept of “reduction topractice” as well as the concept of “conception”.
There are two patterns for an invention to be
reduced to practice. The first one is “actual
reduction to practice.” This can be carried out by
producing products made by reducing theinvention to practice or by putting the invented
method to practical use in order to prove that the
expected results can be obtained. The second one
is “constructive reduction to practice.” This canbe carried out by submitting a patent application
for the invention.
In principle, the concept of reduction topractice becomes an issue in the recognition of
the inventor or inventors of an invention only insuch case where the priorities of inventions are
determined by interference proceedings. As
traditionally mentioned in the theories regarding
precedents, the core of an invention is theconception. The reduction to practice of an
invention basically has nothing to do with therecognition of the inventor or inventors of theinvention. The reason for placing more emphasison the concept of reduction to practice when thepriorities of inventions are determined is thatproving the time of conception, which is a mental
act, is more difficult than proving the time of the
reduction to practice of the invention. Moreemphasis on the concept of reduction to practiceis expected to help realize a more appropriate● 203 ●IIP Bulletin 2006

allocation of burden of proof.

party in the relevant field can implement themwithout difficulties in reality.

(ii) U.K. laws
The U.K. Patents Act has an explicit
provision that defines “inventor” as the actual
deviser of an invention. Moreover, the U.K.
Patents Act has a provision about employee
inventions that specifies that any employee who
simply gave advice or assistance to another
employee making an invention shall not berecognized as a joint inventor. According to
judicial precedents, the recognition of theinventor or inventors of an invention must be
carried out by finding the inventive concept in theclaims of the patent in question and then by
identifying the person who devised this concept.
A person who has contributed to a self-evident
part of the claims or who has assisted the
reduction to practice of the completed conception
should not be regarded as an inventor. In principle,
an inventive concept must consist of an idea plus
a means of realization.
(iii) German laws
Under
Germanlaws,a“creative
contribution” to an invention is the basic criterion
for the recognition of the inventor or inventors of
an invention. Any contribution to daily activities
cannot be considered as a creative contribution.
For a person to be recognized as a joint inventor,
he needs to have contributed to the invention
through his creative and intellectual dedication.
Any person who has not made a substantive
contribution to the solution of the problem or who
has created something in accordance with the
instructions of someone else such as the inventor
cannot be recognized as a joint inventor.
(2) Criteria for specific conceptions
The criteria for the recognition of theinventor or inventors in the United States, theUnited Kingdom, and Germany are different in
how it is stated in their respective laws but are
the same as the Japanese criteria described below
in using the same keywords in the recognition of
the inventor: “conception,” “inventive concept,”
and “creative contribution.”
For a person to be recognized as an inventor,(a) he needs to have not only an idea or a vision
but also specific measures to solve a problem;(b) he needs to be able to reasonably predict thatthe measures to solve the problem specified in (a)above will work as expected; and(c) he needs to propose the problem-solving
measures in detail to such an extent that any

IIP Bulletin 2006

(2) Necessity of experiments
When the above criteria are met, theconception becomes specific enough for theinvention to be regarded as complete. In principle,
no further action, such as the performance of anexperiment to confirm the validity of theconception or the reduction to practice of theconception for actual exploitation, is required forthe recognition of the inventor or inventors.
However, U.S. laws allow an exception under
the doctrine of simultaneous conception andreduction to practice. Under this doctrine, theactual reduction to practice of an invention isconsidered as one of the criteria for therecognition of a conception. This is called thedoctrine of simultaneous conception and reduction
to practice. Today, this doctrine is interpreted asfollows. As far as such “unpredictable technicalfield” as chemistry, biochemistry, or biotechnology
is concerned, a conception of an invention, which
is only a mental act, is not enough to predict andensure the effect of the invention. Therefore, insuch field, “conception” is nothing more than amere wish based on prediction. For this reason, aconception should be deemed to take place
simultaneously when the invention is actually
reduced to practice, i.e., when an experiment on
the invention reveals that it functions as expected.
Thus, a person who reduces the invention topractice by an actual experiment should berecognized as the inventor. For proper use of this
doctrine, the applicability must be carefully
examined on a case-by-case basis. This doctrine
does not necessarily mean that an experiment isrequired as one of the criteria for the conceptionof an invention whenever the invention belongs
to any of the unpredictable technical fields. The
conception of an invention can be recognized tohave taken place before the actual reduction topractice of the invention as long as it can beproven that the effect of the invention isreasonably predictable. This shows the possibility
that the person who originally conceived aninvention could become a joint inventor as theconceiver, while the person who reduced theconception to practice could also be recognized asa joint inventor.
However, according to the doctrine ofsimultaneous conception and reduction topractice, if the criterion specified in (b) above is
not satisfied, the conception cannot be recognizeduntil the validity of the conception originally● 204 ●

formed is confirmed by an experiment. In Japan,
there have been some court rulings that,
depending on the technical field and subject of theinvention in question, the confirmation of thevalidity of the conception by an experiment isrequired for the conception to be recognized as
specific enough. These rulings show that Japan is
also aware of the necessity of an experiment insome cases.
(4) Proposals(i) Developed form of the criteria for therecognition of the inventor or inventors
It is possible to create a developed form of
the criteria for the recognition of the inventor orinventors as follows if the general criteria thathave been adopted by judicial precedents andprevailing theories in Japan are reconstructedfrom the perspective of the doctrine ofsimultaneous conception and reduction topractice of the United States.
(a) In order for a person to be recognized as aninventor, he needs to have formed aconception that consists not of a mere wish
but of measures to solve problems. Moreover,measures must be specific enough for a party
in the relevant field to implement.
(b) If those measures are abstract in the case (a)above,
theinventionisconsidered
incomplete. The invention is regarded
complete when those measures are madespecific enough.
(c) It needs to be reasonably predictable that the
problem-solving measures specified in (a)will bring about the expected results. If it is
not reasonably predictable, the invention is
not regarded complete until the conception isconsidered to be made specific enough after
the expected results of those measures are
confirmed by an experiment or by any othermeans.
(d) Any person who has made a substantive
contribution to the above case (a) or (c) can
be considered as a joint inventor. However, aperson who has merely given advice,supervision, financial support, physicalassistance for specific tasks, or engaged in an
invention as a subcontractor or an
outsourcee cannot be considered as having
made a “substantive contribution.”(ii) Appropriateness of explicit statement of
the criteria for the recognition of theinventor or inventors
For the recognition of the inventor orinventors of an invention, it is extremely
important to analyze each fact specifically.
Therefore, even if general criteria are established
as mentioned above, we could only deduce thesolution for a limited number of disputes about
the recognition of the inventor or inventors partly
because such general criteria cannot catch up
with the rapidly changing world where newtechnical fields are created one after anotherthanks to recent technical innovation and where
researchers and technicians engage in thecreation of inventions in increasingly diverse
ways. If specific instructions are necessary, theyshould be given in the form of case reports andguidelines.
(iii) Recommended measures to be taken bycompanies
In practice, it would be more desirable toprevent any dispute about the recognition of theinventor or inventors from happening to begin
with or to establish a system that encourages theparties concerned to voluntarily solve a dispute
through discussion. For this purpose, eachcompany or research institution needs to raiseawareness of the issues associated with therecognition of the inventor or inventors and to
take appropriate measures in daily businessactivities as follows.
(a) Laboratory notebooks
A laboratory notebook is a notebook torecord the process of each research andexperiment. This notebook consists of boundsheets of paper with each sheet numbered withthe page number. As long as a laboratory
notebook contains detailed information about aresearch or an experiment with the signature of
the person who kept the records and also with thedate of each record, the notebook can bepresented as a convincing evidence when there isa dispute about the chronological order of
inventions, the recognition of the inventor orinventors of an invention, or the calculation of thecontribution rate of each inventor. Laboratory
notebooks are expected to be used in a moresophisticated and advanced manner in the future.
For example, the detailed guidelines about therecord-keeping by use of a laboratory notebook
might be established. People might use notebooks
in an advanced way by obtaining fixed dates forrecords or create further advanced notebooks
such as online laboratory notebooks or electriclaboratory notebooks.

● 205 ●IIP Bulletin 2006

(b) Training for technicians and researchers
In Japan, not enough discussion has been
conducted about the recognition of the inventor
or inventors of an invention. Japaneseorganizations
had
traditionallyadoptedexcessively lenient criteria for the recognition of
the inventor or inventors. It is important toalways include the subject of inventor recognition
in intellectual property training given totechnicians and researchers in order to keeppeople engaging in research and development
activities well aware of the issues related to therecognition of the inventor or inventors of an
invention.

Ⅳ Procedure for Settlement of
Disputes about Recognition of
the Inventor or Inventors
1Japanese laws

(1) Procedural treatment of the inventor orinventors
The right to receive a patent may be
assigned before the submission of a patentapplication. The name and the address or locationof the inventor or each of the inventors of an
invention must be stated in an application. That
information will be disclosed in the patentapplication publication, the patent gazette, andpatent certificate. However, the indication of theinventor or inventors in a patent application is not
subject to substantive examination. In the casewhere a patent applicant is not the inventor, if theapplicant has not succeeded to the right toreceive a patent, it would constitute a reason for
the refusal or invalidation of the application. In
any other case, even if the indication of theinventor or inventors in an application is false, itdoes not affect the effect of the patent.
(2) Procedure for the settlement ofdisputes about the ownership of theright to receive a patent
The submission of an application by a person
who does not have the right to receive a patent or
an application by some of the joint owners of theright to receive a patent will constitute a reason
for the refusal of the application. However, even if
the Patent Office refuses such application
submitted by unauthorized people, it does notmean the recovery of the benefits that could havebeen gained by the real owner of the rightthrough the exclusive exploitation of the patented
invention. Although a usurped application is

IIP Bulletin 2006

denied its status as a prior application,subsequent application of the same invention by atrue right holder will be rejected because of lackof novelty after publication of the application.
Grace period for the true right owner is only
within 6 months from losing novelty, therefore it
is argued whether the true right holder candemand assignment of patent (or right to receivea patent) to an unauthorized patentee (or an
applicant).
According to judicial precedents andprevailing theories and also to the everyday
practice at the Patent Office, the following
procedure will apply to the case where the real
right holder demands a change in the indication of
applicant. In the case where an unauthorized
person submits a patent application, if there is nodispute among the parties concerned, the real
right holder may correct the indication of
applicant by submitting a request for thecorrection of the indication of the name of theapplicant or by registering the transfer of thepatent in question. On the other hand, if there is adispute, the real right holder may institute a
lawsuit to obtain the final and conclusive
judgment that the right to receive a patentbelongs to him. Under current practices, such
judgment may be sought only during the patentpending period. If he obtains such judgment, hecan then have the name of applicant corrected bysubmitting to the Patent Office this confirmationof the court as a certificate for the succession of
the right.
If there is no dispute, this issue can be
settled through the assignment of a patent also
after the grant of the patent, as is the case before
the grant. If there is a dispute, the real rightholder can demand a trial for invalidation of thepatent granted in response to the usurped
application. The real right holder is also said to beallowed to seek the compensation for the damage
caused by the illegal act of infringement on theright to receive a patent from the person who
submitted a usurped application. Further, it isargued whether the real right holder has the rightto request the person who has obtained a patent
through usurped application to surrender thepatent. The Supreme Court ruling in 2001
allowed such request for the particular case.
However, the case had special situations: the true
right holder had filed the original application, andshe filed the declaratory judgment action for
confirming her right to receive a patent before
the grant and the case was still pending at thetime of the grant, then the complaint was changed● 206 ●

to assignment. Therefore, the scope of thejudgment is controversial.
(3) Demand for compensation for an
employee invention
The indication of an inventor on the patentdoes not have any presumptive effect. In thecase of a lawsuit over compensation for an
employee invention, a court may make a
judgment without being bound by the indication of
the inventor or inventors in the patent.
(4) Amendment and correction of theindication of the inventor or inventors
of an invention
Before the grant of a patent, the inventor orinventors of an invention may file a civil caseagainst an applicant for amendment of theindication of the inventor or inventors in theapplication. In this case, such civil proceedings
will be conducted in accordance with theamendment procedure if there is no dispute
among the parties concerned or, if there is adispute, on the grounds of his right of honor as aninventor. After the grant of patent, however, noprocedure is available to correct the indication of
the inventor or inventors.
2Comparative study and proposals(1) Procedural treatment of the inventor orinventors of an invention
Under U.S. laws, the assignment of the rightto receive a patent must not be made before thesubmission of an application. In principle, theinventor himself is required to sign an applicationand submit the application together with a written
oath that he believes himself to be the original
and first inventor. If a person is included as a joint
inventor in a patent application by mistake or if aperson is not included as such in a patentapplication by mistake, an amendment of theapplication is permitted unless the mistake wasmade with the intention to deceive. If an
amendment is not permitted, the patent will be
invalidated. In addition, there are precedents
pointing out that the false indication of theinventor or inventors made with the intention to
deceive could constitute an inequitable conduct
and that the patent will be unenforceable in suchcase.
The United States is unique in requiring theinventor or inventors themselves to submit apatent application. Under European laws, U.K.
laws, and German laws, it is sufficient if theapplicant himself proves that the indication of theinventor or inventors is correct and also that theapplicant has lawfully succeeded to the right to apatent. Recently, most patent applications are for
employee inventions. In most cases, the company
and employee have a prior agreement that thecompany will succeed to the right to receive apatent on any invention made by an employee.
Therefore, it is more efficient if the application
procedure allows the successor to the right toreceive a patent to submit a patent application.
The United States has submitted a bill to revise
its patent law so that not only the inventor orinventors but also the successor to the right toreceive a patent may submit a patent application.
The bill is currently under deliberation in
Congress. As far as this issue is concerned, thecurrent Japanese legal system needs noalterations.
Under U.S. laws, any false indication of theinventor or inventors of an invention made with
the intention to deceive is considered as anadequate reason to make the patent invalid or
unenforceable. This U.S. system seems too strict
to be adopted in Japan as a means to guarantee
the correctness of the recognition of the inventor
or inventors of an invention. On the other hand,under the legal systems of the United Kingdom
and Germany, the real inventor or inventors areallowed to demand an amendment or a correction
to the false indication of the inventor or inventors
unless the false indication was made by a usurped
application. This level of protection for the real
inventor of an invention seems more appropriate
for Japan.
(2) Procedure to provide the real rightholder with a remedy for the damage
caused by a usurped application
U.K. laws and German laws have explicit
provisions that allow the real right holder of an
invention to demand a surrender of a patent on
the invention.
The U.K. Patents Act specifies the rightdetermination procedure available at the Patent
Office for settlement of a dispute between an
applicant and a third party about the ownership of
the right to receive a patent. This is anadministrative procedure conducted mostly
through examination of the submitted documents
in a simple and efficient manner. The comptroller
may, at his own discretion, gather evidence bysuch means as examination of witnesses.
Regarding the right determination procedure, thecomptroller may, as a remedy for the real right● 207 ●IIP Bulletin 2006

holder, (1) order that the application shall proceed
in the name of the real right holder or in thenames of both the original applicant and the real
right holder, (2) refuse to grant a patent inpursuance of the application or order theapplication to be amended, (3) make an ordertransferring or granting any license or other rightin or under the application. If the comptroller has
any case still under the right determination
procedure that could more properly be carried out
by a court, the comptroller may refer the case to a
court. The right determination procedure
available after the grant of a patent is almost thesame while different provisions are relied on. Itshould be noted that there is a time limit bywhich the right determination procedure must becommenced after the grant of a patent. No order
may be made for a transfer of a patent if a request
for the commencement of the right determination
procedure was made after the end of the period of
two years beginning with the date of the grant of
the patent unless it is shown that any person
registered as a proprietor of the patent knew that
he was not entitled to the patent. If an order isgiven to surrender the right to the real rightholder, adjustments of interests need to be madebetween the real right holder and any third party
having interests in the patent. It is specified that,as a result of such adjustments, any licenses orother rights in or under the patent shall lapse in
principle and also that, if the old proprietor or
proprietors or a licensee of the patent, acting ingood faith, have worked the invention in questionor made preparations to do so since before theissuance of the order for a transfer of the right,
the old proprietor or proprietors or the licensee
shall, on making a request to the new proprietor
or proprietors within the prescribed period, be
entitled to be granted a non-exclusive license tocontinue working or, as the case may be, to work
the invention for a reasonable period of time
under reasonable conditions.
Under the German Patent Law, in the casewhere there is a dispute among the parties
concerned, if a patent has not been granted, theperson who is primarily entitled to a patent may
request the applicant to surrender to him theright to receive a patent by following the civil
procedure at a court. In the case of a usurped
application, the real right holder may institute a
lawsuit against the patent owner to demand thesurrender of the patent. Such a lawsuit must be
instituted within two years of the notification of
the grant of a patent (this time limit does not
apply to the case where the usurped application

IIP Bulletin 2006

was submitted in bad faith). The real right holder
may give a notice of opposition only within threemonths of the publication of the grant of a patent.
If the opposition is accepted and results in the
revocation of the patent, the real right holder
himself may apply for the invention as long as
such application is submitted within one month of
the notification of the revocation. Even if the
opposition is rejected, the real right holder may
institute a lawsuit against the patent owner todemand a surrender of the right as long as suchlawsuit is instituted within one years of thecompletion of the opposition procedure (this time
limit does not apply to the case where theusurped application was submitted in bad faith).
Next, we will review the Japanese system inconsideration of Supreme Court rulings in order
to discuss what conditions the real right holder
should be allowed to request the usurping patent
owner to surrender the right to him.
(i) The invention of the real right holder andthat for which a usurped application has been
submitted are regarded to be identical as
long as any amendment to the invention iswithin the scope permitted under law. If a
usurping applicant has greatly changed theoriginal invention, it should be handled as aninvention jointly made by the real rightholder and an unauthorized party. In this case,the real right holder should be allowed torequest the party to transfer his share in thepatent to him.
(ii) While many people support the view that thereal right holder should not be allowed torequest the usurping patent owner tosurrender the right to him unless he himself
have made a patent application, the Supreme
Court ruling in 2001 pointed out thenecessity of the balancing of equities
between the real right holder and theusurping applicant. According to the ruling, a
remedy should be provided to the real rightholder even in the case of a usurped
application. Furthermore, it is interpreted
that the causations between benefit and loss
are recognizable in a commonly accepted
sense. Such relations provide the grounds forthe exercise of the right to request thereturn of undue profits.
(iii) There have been discussions about theappropriateness of limiting the period during
which such a request for a surrender of theright may be made. As more and more third
parties will become interested parties after
the registration of a patent, it is necessary to● 208 ●

specify their rights and obligations under law.
Such stable legal system is especially
important in the case of a usurped application
submitted in good faith. On the other hand, itwould be reasonable to balance the interestsof the real right holder and a usurping
applicant by limiting the period only during
which the real right holder is allowed to
institute a lawsuit because he has
opportunities to learn about a usurped
application through the publicized application
and registered patent. It is however too short
to require the commencement of a lawsuit
before the grant of a patent. In my opinion,such period should last two years after the
grant of a patent as is the case with U.K laws
and German laws. No time limit should be
set in the case of usurped application
submitted in bad faith.
(3) Demand for compensation for an
employee invention
German laws are unique in subjecting therecognition of the inventor or inventors of an
employee invention as well as the calculation ofcompensation to arbitration held by thearbitration committee (Compulsory conciliation).
The advantage of the arbitration system, which isplaced before the judicial system, is that
arbitration allows the flexible settlement ofdisputes by experts. However, Japan decided not
to adopt a German-type legal system at the timeof the recent revision of the system for employee
inventions. This is because a German-type legal
system was considered burdensome to both
employers and employees because it required
them to meticulously follow many procedures. It
should be noted, however, that Japan has
improved its system in its own way. For example,
any court that receives a petition for a civil casemay, ex officio, place the case in arbitration.
Furthermore, arbitration conducted by lawyers
and patent attorneys is available especially for
intellectual property cases. In this way, with theappropriate handling of individual cases at court,
it is possible, even under the existing system, tosettle and solve disputes through arbitration in a
flexible manner.
(4) Procedure to amend or correct theindication of the inventor or inventors
of an invention
U.K. laws and German laws have explicit
provisions about the procedures to amend or
correct the indication of the inventor or inventors

of an invention.
Under the U.K. Patents Act, an applicant isallowed to amend the indication of the inventor orinventors, without the consent of the initiallyindicated inventor or inventors, by resubmitting
an oath as long as the application has not been
publicized yet. After the publication of theapplication or the grant of a patent, any person
who alleges that the indication of the inventor orinventors is false may apply to the comptroller
for the commencement of an administrative
procedure. This procedure can be carried out
through examination of submitted documents in a
simple and efficient manner. Moreover, theprocedure is applicable regardless of whether or
not there is a dispute among the parties
concerned about an amendment to the indicationof the inventor or inventors. As is the case withthe right determination procedure, the comptroller
may, at his own discretion, gather evidence orrefer a case to a court.
Similarly, under the German Patent Law, anapplicant is allowed to amend the indication of theinventor or inventors, without the consent of theinitially indicated inventor or inventors, by
resubmitting an oath as long as the application
has not been publicized yet. After the publicationof the application or the grant of a patent, if there
is no dispute among the parties concerned, anapplicant may make such amendment by filingwith the Patent Office for the commencement of
the amendment procedure with the consent of theinitially indicated inventor or inventors. If there
is disagreement among the parties concerned, thereal inventor may bring a case against thedisagreeing party or parties to court to demand
his/her or their agreement.
In Japan, there is a precedent where a courtthat allowed an amendment to the indication of
the inventor or inventors before the grant of apatent cited the right of honor of inventors as thelegal grounds for allowing the real inventor orinventors to request the applicant to amend theindication of the inventor or inventors. According
to this logic, it can be concluded that more
protection after the grant should be provided forthe inventor’s right to indicate his name on thepatent because the need to respect the honor of
the inventor or inventors has increased since thegrant of a patent. Under Japanese laws, once apatent application is submitted, the indication of
the inventor or inventors of an invention cannot
be amended without the consent of the initiallyindicated inventor or inventors regardless ofwhether such amendment is made before or after● 209 ●IIP Bulletin 2006

the publication of the application. As is the casewith the legal systems of the United Kingdom andGermany, the Japanese system should also allow
the submission of an application without fillingout the section of the application form for theindication of inventor on the condition that it will
be filled out by the time of the publication of theapplication. In sum, the indication of the inventor
or inventors is not required at the time of
application as long as the necessary information
is provided later. This system seems desirablefrom the perspective of legislation.
I propose that after the publication of theapplication or the grant of a patent, if there is nodispute among the parties concerned, anamendment or a correction should be allowedwith the submission of a written oath prepared by
all the parties concerned. This is the procedurecurrently adopted in practice. If there is a dispute,an amendment or a correction in the indication of
the inventor or inventors of an invention should
be carried out according to the court’s
confirmation of the real inventor or inventors
obtained through civil proceedings.
These
procedures should be expressly specified in thestatute.

moment at least, to create a provision that could
imply the grant of a right that is more than theright to indicate the name or names of theinventor or inventors in the patent.

(5) Necessity to specify the right of honorof inventors
In order to create an explicit provision about
the procedure for amendment and correction of
the indication of the inventor or inventors as
described earlier, further study is necessary as towhether it is appropriate to explicitly specify in adomestic law that each inventor is entitled to theright of honor as an inventor. Prevailing theories
and judicial precedents in Japan allow such
amendment and correction on the grounds of theright of honor of inventors specified in the Paris
Convention, which was ratified by Japan as well.
Regarding this issue, the U.K. law has the explicit
provision specifying that the indication of thename or names of the inventor or inventors is theinventor’s “right.” This issue is not clearlyaddressed in German law. In Germany, however,there is a court ruling that interpreted such rightof honor as a personal right.
Japan has not established the procedure foramendment and correction of the indication of theinventor or inventors. Therefore, I personallybelieve that it will be enough to explicitly specify
the establishment of such a procedure as a clear
expression of Japan’s intention to protect theright of honor of inventors. For this reason, it isunnecessary and even undesirable, at thisIIP Bulletin 2006

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