12 A Comparative Study of United States and JapaneseLaws on Collaborative Inventions, and the Impactof those Laws on Technology Transfers
Mary LaFrance（*）
This research examines United States and Japanese laws regarding patent rights in collaborative
inventions, and inquires whether these laws may impede technology transfers by creating uncertainty regarding
the ownership, validity, or enforceability of the resulting patents, or by imposing undue obstacles to the licensing
or assignment of such patents. Where the laws of the two countries differ, this paper compares the merits ofeach approach and also assesses whether the differing approaches could be troublesome for cross-bordertransactions.
One of the most significant differences between United States and Japanese law regarding joint inventions
is in the requirement of consent for certain activities involving a jointly owned patent. In Japan, unlike theUnited States, all joint owners of a patent must consent to a non-exclusive license of the patent, or to the transfer
of a single joint owner’s share, while in the United States, unlike Japan, a jointly owned patent cannot be
enforced through an infringement action without the consent of all joint owners.
Thus, while the consent
requirements differ in the two countries, in each case they can present obstacles to the full enjoyment of a joint
owner’s share of the patent.
In both countries, the definition of joint inventorship is imprecise, and even honest mistakes in identifying
which persons qualify as joint inventors can lead to invalidation. In the United States, such errors can often
be corrected without invalidating the patent, but in Japan, no such correction mechanism exists.
Finally, in light of recent Japanese court decisions on the subject of remuneration for employee inventions,employer allocations of remuneration in the future will need to carefully identify and quantify the respective
contributions of all joint inventors. Such precision is generally not required in the United States.

Ⅰ Introduction
When a patentable invention arises fromcollaborative research, who has the legal right toobtain a patent for that invention? If several
parties jointly own the right to obtain the patent,
or share ownership of the patent itself, what are
their respective rights with respect to exploitingor enforcing the patent? Do the current legal
rules facilitate or impede the exploitation andtransfer of patented technology?
These issues have received considerable
attention in the United States, where identifying
joint inventors can be essential to determining
patent priority.
In Japan, issues of joint
inventorship and joint patent ownership havegenerally received less scrutiny. However, suchquestions have begun to receive greater attention
in Japan, due in part to aggressive judicial
interpretation
of
the
rules
governing
compensation for employee inventions, and inpart to the emergence of universities as joint
owners of patents arising from collaborations withthe private sector.

In both countries, important legal issues
pertaining to joint inventorship and joint patent
ownership include (1) defining joint inventorship;(2) the legal rights of joint inventors; (3) theownership rights of joint inventors who
contribute to fewer than all of the claims; (4) the
consequences of errors in identifying joint
inventors; and (5) the impact of joint inventorshipissues on employee inventions.
This article examines the law of joint
inventorship and joint patent ownership in boththe United States and Japan, and considers how
these laws may promote or impede theexploitation of patented technology. (*1)

Ⅱ Defining Joint Inventorship1

United States

In the United States, an inventor is theindividual who “conceives” an invention.
“Conception” means the “formation in the mindof the inventor, of a definite and permanent ideaof the complete and operative invention, as it is(*) William S. Boyd Professor of Law William S. Boyd School of Law University of Nevada, Las Vegas(*1) This article summarizes a longer report which the author prepared for the Institute of Intellectual Property (IIP),
Tokyo. The author would like to thank IIP for its generous sponsorship of this project, the entire staff of IIP for
their assistance and support, and the many Japanese legal experts who agreed to be interviewed for this research.

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hereafter to be applied in practice.”(*2) An idea issufficiently “definite and permanent” when “onlyordinary skill would be necessary to reduce theinvention to practice, without extensive researchor experimentation.” (*3)
In order for a conception to lead to a patentable
invention, the conception must be “reduced topractice,” which requires that someone “actually
perform or carry out the conceived invention.” (*4)
Although reduction to practice is essential topatentability, (*5) a person whose sole contribution
to the invention was to reduce it to practice is notconsidered an inventor. (*6)
For an invention to be joint, it must be “theproduct of the collaboration of the inventive
endeavors of two or more persons working
together toward the same end and producing an
invention by their aggregate efforts.”(*7) They
need not work together physically or at the sametime, they need not make the same amount ortype of contribution, and they need not eachcontribute to the subject matter of every claim.(*8)
To qualify as a joint inventor, a person must
contribute to the conception of the invention, notmerely its reduction to practice.(*9) To contributeto the conception, it is not enough to suggest thegeneral idea of the result to be accomplishedrather than the means to accomplish it.(*10) Thus,
an employer or entrepreneur’s general requestthat someone create a product to accomplish atask is not a joint inventorship contribution tothat product.(*11)
Ambiguity often arises when a person withspecialized skills or knowledge assists the person
who came up with the detailed conception of theinvention. It is recognized that “an inventor ‘may
use the services, ideas and aid of others in theprocess of perfecting his invention without losing
his right to a patent.” (*12) However, it can often be
difficult to determine whether a person who
contributes such expertise has contributed to theconception itself, or has merely exercised theordinary level of skill in the art.(*13)
2

Japan

In Japan, the concept of inventorship and thestandards for determining which collaborative
contributions qualify as joint inventorship are
generally similar to those in the United States,and equally challenging to apply.
Determining who qualifies as a joint inventor
can be extremely difficult. It is clear, however, thata joint inventor must participate in the creation of
the technical idea(s) of the invention, (*14) and that
it is not sufficient to be a mere assistant, advisor,or fundraiser, or to be the one who merely orders
the work to be accomplished. (*15)(*3) Hybritech,(*2)
Hybritech, Inc.
Inc. v.v. Monoclonal
Monoclonal Antibodies,
Antibodies, Inc.,
Inc., 802802 F.2d
F.2d 1367,
1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson on Patents
532 (1890)), cert. denied, 480 U.S. 947 (1987).
(*4) Burroughs(*3)
Burroughs Wellcome
Wellcome Co.
Co. v.v. Barr
Barr Laboratories,
Laboratories, Inc.,
Inc., 40
40 F.3d
F.3d 1223,
1223, 1228 (Fed. Cir. 1994), cert. denied, 516 U.S. 1070
(1996).
(*5) Oregon(*4)
Oregon Health
Health && Sci.
Sci. Univ.
Univ. v.v. Vertex
Vertex Pharmaceuticals,
Pharmaceuticals, Inc.,
Inc., 233
233 F.
F. Supp.2d
Supp.2d 1282,
1282, 1289
1289 (D.Or.
(D.Or. 2002).
2002).
(*6) Under(*5)
Under U.S.
U.S. law,
law, aa reduction
reduction toto practicepractice may
may bebe eithereither actual (building the invention, making the composition ofmatter, or using the process) or constructive (providing an enabling description in the patent application). Thus, it
is not necessary to actually build or use the invention in a tangible sense in order to obtain the patent.
(*7) See,(*6)
See, e.g.,
e.g., Applegate
Applegate v.v. Scherer,
Scherer, 332
332 F.2d
F.2d 571
571 (CCPA(CCPA 1964);
1964); 35
35 U.S.C.
U.S.C. §§ 102(f).
102(f).
(*8) Monsanto(*7)
Monsanto Co.
Co. v.v. Kamp,
Kamp, 269
269 F.
F. Supp.
Supp. 818,
818, 824824 (D.D.C.
(D.D.C. 1967);
1967); see also Burroughs Wellcome, 40 F.3d at 1227 ("A joint
invention is the product of a collaboration between two or more persons working together to solve the problem
addressed."); Kimberly-Clark Corp. v. Proctor & Gamble Distrib. Co., 973 F.2d 911, 915-16 (Fed. Cir. 1992).
(*9) 35(*8)
35 U.S.
U.S. C.
C. §§ 116.
116. Although
Although joint
joint inventors
inventors need not physically work together, they must “collaborate” in thesense of communicating with one another during the conception process, and must knowingly working toward thesame goal. Monsanto, 269 F. Supp. at 824; Kimberly-Clark, 973 F.2d at 916.
(*10) Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998), cert. denied, 525 U.S. 923 (1998);(*9)
Huang v. Calif. Inst. of Tech., 72 USPQ2d 1161 (Feb. 18, 2004) (citing Pannu v. Iolab Corp., 155 F.3d 1344, 1351
(Fed. Cir. 1998)). Sometimes the attempt to reduce an invention to practice reveals that the conception is in factincomplete. Burroughs Wellcome, 40 F.3d at 1229. Under these circumstances, one who participates incompleting the conception through experimentation or similar activities may make a sufficient contribution toqualify as a joint inventor.
This is frequently true of chemical inventions. See Board of Ed. ex rel Board ofTrustees of Florida State University v. American Bioscience, Inc., 333 F.3d 1330, 1341-42 (Fed. Cir. 2003).
(*11) Garrett Corp. v. United States, 422 F.2d 874 (Ct. Cl. 1970), cert. denied, 400 U.S. 951 (1970).
(*10)(*12) Hayhurst v. Rosen, 1992 U.S. Dist. LEXIS 7312, *28, 1992 WL 123178, at *11 (citing Morgan v. Hirsch, 728 F.2d(*11)
1449, 1452 (Fed. Cir. 1984)).
(*13) Shatterproof Glass Corp. v. Libbey-Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (quoting Hobbs v. United(*12)
States Atomic Energy Comm’n, 451 F.2d 849, 864 (5th Cir. 1971)).
(*14) See, e.g., Ethicon, 135 F.3d at 1468-69 (Newman, J., dissenting); American Bioscience, 333 F.3d at 1341-42.
(*13)(*15) Modalities(*14)
Modalities forfor Employees’
Employees’ Inventions
Inventions System,
System, IIP
IIP Bulletin,
Bulletin, vol.
vol. 12,12, page 20 (2003) (citing Nakayama, Kogyo
Shoyuken Hou (Jo) Tokkyo Hou (Indus. Prop. Law -- Book I, Patent Law), Part II, Ch. 1, Sec. 1, Subsec. 1, Item 1.2(expanded 2d ed., Koubundu 2000) (translated at http://www.iip.jp.or/translation); Yoshifuji & Kumagai, Tokkyo Hou
Gaisetsu (Overview of Patent Law) 187-88 (revised & enlarged 13th ed., Yuhikaku 1998)).
(*16) Nakayama, supra note 14, Part II, Ch. 1, Sec. 1, Subsec. 1, Item 1.2.
(*15)
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Professors Yoshifuji and Kumagai distinguishjoint inventors from other collaborators by notingthat a joint inventor must provide “substantial
cooperation”
ratherthan“insubstantial
cooperation” in “the creation of technical ideas.” (*16)
This standard would generally exclude anassistant who merely followed instructions,(*17) a
supervisor or customer who provided the generaltheme for the work without providing a concrete
conception,(*18) and a person who merely funded
the research.(*19) If one person provides aconcrete but incomplete idea, and another personcompletes the idea through the act ofmaterializing it into a working device, they are
joint inventors.(*20) However, one who merely
produces manufacturing drawings depicting
another person’s complete conception of an
invention is not a joint inventor.(*21)
There is a strong consensus that joint
inventors need not make equal contributions to an
invention in order to be joint owners of the rightto obtain the patent. It is somewhat less clear
under current law whether their ownership of theright to obtain the patent should reflect theinventors’ proportionate contributions, or should
be deemed to be equal. It would seem that themost practical approach, however, is to treat thejoint inventors as equal owners unless theyspecify otherwise by contract.

Ⅲ The individual rights of joint
inventors
Unlike the general standards for determining
joint inventorship, the laws regarding the rights
of individual joint inventors and joint patent
owners are quite different in Japan and the UnitedStates.
1inventors make their patent application jointly, a
subgroup of the joint inventors may file the patentapplication if the omitted inventors either haverefused to join in the application “or cannot befound or reached after diligent effort.” (*22) In sucha case, the joint inventors who file the applicationmust do so on behalf of all of the inventors.
Each joint owner of a patent is free to work
the patent, with no duty to share the proceedswith the other joint owner(s).(*23) One joint owner
may unilaterally execute a non-exclusive license,with no duty to share the royalties,(*24) or may
unilaterally assign his or her individual share of
the patent. (*25) These rules encourage maximum
exploitation of the patent by each joint owner.
However, the consent of all joint owners is
required to execute an assignment or an
exclusive license of the patent.(*26) Any of theserules may be altered by contract.
Absent an agreement to the contrary, theconsent of all joint owners is also required inorder to initiate an infringement action. In
Ethicon v. United States Surgical,(*27) an alleged
infringer succeeded in blocking an infringement
suit by proving that the patent applicant
inadvertently failed to name a joint inventor (who
had made small contributions to only two out of
55 claims), and by persuading the omitted
inventor to refuse to cooperate in the suit.
Although the patent was still valid (because suchinventorship errors are correctible under U.S.
law), the patent was unenforceable against the
infringer.
Thus, the combined effect of (1)treating all joint inventors as equal owners of thepatent, and (2) requiring unanimous consent to an
infringement action, could undermine theenforceability, and thus the marketability, of any
patent as to which a joint inventor might havebeen inadvertently omitted.

United States

In the United States, a patent application is
filed by the inventors, not their assignees.
Although the law generally requires that joint

2

Japan

In Japan, all joint inventors must consent toany assignment of a joint inventor’s share of the(*16) Yoshifuji & Kumagai, supra note 14, at 187-89.
(*17) Id.
(*18) Tokyo High Court, Judgment by the 6th Civil Division, Dec. 24, 1991, Hanrei Jiho, No. 1417: p. 108 (theAutomatically-Boiled Shrimp case) ([Annotation] Katsua Tamai, Jurist [Jurisuto], No. 1050: p. 180); Tokyo High
Court Decision of August 15, 1985, S 59 (Gyou-Ke) No. 58.
(*19) Yoshifuji & Kumagai, supra note 14, at 187-89 .
(*20) Tokyo High Court Decision of April 27, 1976, Torikeshishu (Court Decisions in Suits against Appeal/Trial
Decisions) 1976, S47 (“Gyou Ke”) 25, p. 449 (the Mahjong-Rule Pachinko case) (translation supplied by theInstitute of Intellectual Property (IIP), Tokyo).
(*21) Tokyo District Court Decision of April 16, 1979, The Law Times Report [Hanrei Taimuzu], No. 395: p. 155 (theGrain Processing Method case).
(*22) 35 U.S.C. § 116.
(*23) Ethicon, 135 F.3d at 1468; 35 U.S.C. § 262.
(*24) Ethicon, 135 F.3d at 1468.
(*25) See generally Continental American Corp. v. Barton, 1991 U.S.App. LEXIS 8505 (Fed. Cir. 1991).
(*26) Id.
(*27) Ethicon, 135 F.3d at 1465-69; Willingham v. Lawton, 555 F.2d 1340, 1344 (6th Cir. 1977).
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right to obtain a patent, and all joint owners of theright to obtain the patent (whether inventors or
their assignees) must consent to the application;
if even one joint owner fails to consent, the patentcannot issue, or will be subject to invalidation. (*28)
An employer seeking a patent for an
employee invention must be careful, therefore, todetermine whether any person(s) other than its
own employee(s) (who typically have assigned
their rights to the employer) might qualify as
joint inventors. Where two or more companies
engage in joint research, for example, thecontributions of each company’s employees would
need to be carefully documented in order todetermine which (one or more) of the companies
owns the right to obtain the patent. The sameconsideration would apply to a collaboration
between a company and a university.
In Japan, the restrictions imposed by Section
73 on technology transfer involving jointly owned
patents are a source of concern among many joint
patent owners. According to that provision, one
joint owner of a patent “may neither transfer his
share nor establish a pledge upon it without theconsent of all the other joint owners.” Althougheach may work the patented invention without
the consent of the others, unanimous consent isrequired in order to license the patent, either
exclusively or non-exclusively.
The purpose of the joinder requirements forlicensing and for assignments and pledges ofindividual ownership shares is apparently toprotect weaker companies from the risk that
another joint owner of their patent might licenseit, or assign a share, to a stronger competitor of
the weak company. However, in some cases one
joint owner is not in a position to work the patent
which it jointly owns. This joint owner (whichmight be another company or a university) can
derive little benefit from its share of the patent
unless it assigns or licenses its share, which it
will be unable to do without the other joint
owner’s consent. If the party that cannot work
the patent has sufficient bargaining power, it may
be able to negotiate with the other party forconsent to a license or for a share of the profits
derived from working the patent. An alternativethat would protect universities and weakercompanies that lack such bargaining power would
be to eliminate the consent requirement, at least
for non-exclusive licenses. Although one joint
owner might license the patent to a powerfulcompetitor of the other joint owner, this option

would be equally available to both joint owners.
Section 73 may also impede the borrowing
ability of a joint patent owner, by interfering withthe owner’s ability to pledge a patent share as
collateral, and by interfering with the involuntary
disposition of the patent share in bankruptcy. At
the very least, the law in this area should beclarified. Preferably, the law should facilitateborrowing so that small companies that jointly
own patents can raise the capital they need tomore effectively exploit those patents, and to
fund further research. One possible way toaccomplish this would be to give the other joint
patent owners the right to buy back an
encumberedpatent
share
at
some
objectively-determined price, but only in theevent of bankruptcy or default on thecollateralized loan.
Although Japan has no statutes or case law
precisely on point, most experts agree that one
joint patent owner can bring suit against an
infringer, and obtain injunctive relief, without theconsent of the other owners. This view gains
support from the Japan Supreme Court’s
Judgment of March 25, 2002,(*29) holding that asingle joint patent owner could unilaterally
initiate a proceeding to revoke a Japanese Patent
Office (JPO) decision invalidating the patent’s
registration. Although the Court did not indicate
whether its conclusion would also apply to othertypes of unilateral legal actions by a joint inventor– such as an action against an infringer -- its
decision supports the broad principle that eachindividual joint owner should have the power toprotect the patent against extinguishment. Thisis the opposite of the U.S. approach, as
exemplified in Ethicon, which makes jointly
owned patents more difficult to enforce thanpatents with sole owners.
The same principle should permit a single
joint owner to pursue an action for damages
arising from infringement. The problem here liesin determining the amount of damages. Manyexperts believe that such plaintiffs should recover
only their allocable share of the total damages
that would have been awarded if all of the joint
owners had joined in the suit – in other words,
damages should be proportionate to a plaintiff’s
share of the patent. This approach offers theadvantage of simplicity, and mirrors Article 117 ofJapanese copyright law. As Professor Nakayama
has noted, however, this approach is not without
its own complexities, such as the question of how(*28) Section 38 provides that “[w]here the right to obtain a patent is owned jointly, the patent may only be applied forjointly by all the joint owners.” Failure of any owner to consent to the application is grounds for rejecting theapplication under Section 49(ii) or invalidating the patent under Section 123(1)(ii).
(*29) Minshu Vol. 56, No. 3, at page 574. (Case number 2001 (Gyo-hi) No. 154). The court’s reasoning in this caseclosely paralleled its reasoning just one month earlier in a trademark case presenting the same issue. See Japan
Supreme Court Judgment of February 2, 2002, Minshu Vol. 56, No. 2, at 348 (Case number 2001 (Gyo-hi) No. 142).
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to calculate a damages award for a plaintiff who
owns only a small percentage of the patent but isin fact working the patent more extensively thanthe other owners, or perhaps is the only one who
is actually working the patent.(*30) In light of thesecomplexities, it is not surprising that Professor
Monya questions the wisdom of the Article 117
approach, since it could lead to inconsistentrulings for different plaintiffs based on the sameacts of alleged infringement; instead, he suggests,
the nonconsenting owners should be joined in thelawsuit as involuntary defendants.

Ⅳ Where a patent contains multiple
claims, does it matter whether ajoint inventor contributed tomore than one claim?
1

United States

According to Ethicon, the joint inventor of
one claim is a joint owner of all claims combinedin the same patent.(*31) Therefore, the joint
inventor of even a single claim in a patent, or thatinventor’s assignee, has the power to block
assignments or exclusive licenses of the entire
patent, to bar infringement litigation, and to grant
non-exclusive licenses of the entire patent.
Under current law, it is unclear whether joint
patent owners can contract with one anotherregarding ownership of specific claims.
2

Japan

Although Japanese law has not directly
addressed the question, most experts believe that,in the absence of a contract among all of the joint
inventors, each would be presumed to own anequal share in the right to patent the joint
invention.
A somewhat different question pertains to
the ownership of the patent itself. Under current
law, it is unclear whether a joint inventor (or theassignee of the joint inventor) who contributed to
fewer than all of the claims in the patent would bea joint owner of all the other claims as well, oreven whether a contract allocating patent
ownership on a claim-by-claim basis could be
enforced.(*32) This question could be important
where one or more claims of a joint patent aresubsequently invalidated. If one of the joint
owners was the inventor (or assignee of theinventor) of the invalidated claims, but not of thestill-valid claims, should that party still be treatedas a joint owner of the entire patent?
Finally, employers attempting to comply with
Section 35’s requirement of “reasonable
remuneration” for employee inventions will wantsome clarification of the rules pertaining to an
employee’s remuneration rights where theemployee contributed to only some of the claims.
Should the remuneration depend on the amountof profit derived from exploiting only thoseparticular claims, or the entire patent? What if
those particular claims are not exploited at all,but revenue is generated by other claims of thepatent? Similarly, if those claims were rejectedby the JPO, or are subsequently held to be invalid,is that employee still entitled to remuneration
based on profits derived from other claims in thesame patent?

Ⅴ Consequences of Errors
Identifying Joint Inventors
1in

United States

Regardless of whether the inventors havealready assigned their rights, a valid U.S. patentmust precisely identify the true inventor(s) of theclaimed invention. A patent application may berejected, and a patent may be invalidated, foreither overinclusiveness or underinclusiveness in
identifying joint inventors. (*33)
Where the inventorship error is not due to
deceptive intent, rejection or invalidation can
generally be avoided by invoking one of twocorrections mechanisms -- section 116 (applicableduring the application process) or section 256(applicable after the patent issues). However,priority of inventorship could still be lost,
potentially invalidating the U.S. patent, if thepatent’s priority date is based on the activities of aparty who is later determined to have been
improperly included in the inventorship group.(*34)
2

Japan

Although a Japanese patent application must
name the true inventors, failure to do so is not(*30) See Nakayama, supra note 14, Part II, Sec. 6, Subsec. 2, nn.5 & 6.
(*31) 135 F.3d at 1465-66.
(*32) Under Section 27 of the Japan Patent Office Regulations, joint inventors or joint patentees who wish to resolve
their respective ownership rights by contractual agreement may do so, provided that they provide notice anddocumentation to the Patent Office. However, it is not clear whether a claim-by-claim division of rights could be
effected through this mechanism.
(*33) 35 U.S.C. §§ 102(f), 111(a)(1).
(*34) This is because the United States bases priority on the date of invention rather than the date of filing. See, e.g.,
Kimberly-Clark, 973 F.2d at 916.

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grounds for invalidation.(*35) However, under
Section 38, if any joint owner of the right toobtain the patent failed to consent to the filing of
the application, the application should be rejectedunder Section 49(ii), or the patent, once issued,
will be invalidated under Section 123(1)(ii).(*36) In
contrast to the liberal rules allowing correction of
inventorship errors in the United States,
Japanese law does not permit post-registration
correction of a failure to obtain this unanimous
consent.
Because patent applicants in Japan are
typically not the actual inventors, but theirassignees, uncertainties about inventorship canbe reduced by making sure that all possible joint
inventors have assigned their rights to the patentapplicants. This is ordinarily the case where thejoint inventors are all employed by the same
company, but it would require special attention
where the invention arose from collaborations
among several companies, or between a company
and university personnel (faculty or students).
In such a case, a competitor could take advantage
of an underinclusiveness error in order toinvalidate the patent. (*37)
Because Japanese patent law does notdistinguish deliberate misrepresentations frominadvertent errors in this context, even an honest
mistake as to inventorship, or as to the validity ofan assignment agreement, could lead toinvalidation. This result seems unjust withrespect to the excluded inventor as well as anyother joint inventors or assignees who acted
without fraudulent intent, since the invalidation
will extinguish their patent rights.
Recognizing the harshness of this result, in2001 the Japan Supreme Court carved out anapparent exception where one of the applicants
had forged an assignment from a joint inventor.
The aggrieved joint inventor initiated a legal
action to correct the application. However, before
that legal action could be resolved, the patentexamination was completed, and the patent was
registered, with the forger’s name in place of thetrue joint inventor’s.(*38) Concluding that
invalidation would be unfair to the true inventors
in this case, the Supreme Court ordered thetransfer of the forger’s share to the true joint

inventor. It is not clear, however, whether the
Court would have reached the same conclusion if
the error had been inadvertent rather thandeliberate, or if the defrauded inventor had
initiated his action after the patent had alreadybeen registered.
A better solution would be to amend thepatent statutes to allow for corrections where theerror in obtaining consent arises from honest
misjudgments about joint inventorship. This
would protect the reliance interests of all of theparties who share ownership of the right to obtain
the patent, as well as the subsequent assignees or
licensees of the defective patent.

Ⅵ How do joint inventorshipissues affect rights in employee
inventions?
1

United States

U.S. law does not require employers tocompensate employees for their inventions; thus,
employers are not constrained by the federal
definition of joint inventorship in determining
whether and how to reward employees for theirinventions. The existence and amount ofcompensation for employee inventions is dictatedby market forces, due to the mobility of theAmerican workforce. Where a company does
provide such compensation, it does notnecessarily reflect the relative significance ofeach employee’s contribution.
2

Japan

In Japan, errors in identifying theinventorship group can have a serious impact on
the question of reasonable remuneration under
Section 35. If non-inventors (such as supervisors
or executives) are included in the compensationpool, the allocation to the true inventors would
almost certainly be deemed unreasonable, since
the method of allocation would not reflect theinvention contributions of the parties. Similarly,
if an employee’s inventive contribution iserroneously disregarded, that employee could
challenge this under Section 35. Even if the(*35) Nakayama, supra note 14, at Part II, Ch.1, Sec.1, Subsec.1, Item.1(5).
(*36) Under Section 33, while the right to obtain a patent may be transferred, “the joint owner of the right to obtain apatent may not assign his share without the consent of all the other joint owners.” However, this is not grounds forrejection under Section 49 or invalidation under Section 123.
(*37) The invalidation consequence is illustrated in the Judgment of the 6 th Civil Division of the Tokyo High Court, Dec.
24, 1991, Hanrei Jiho, No. 1417: p. 108 (the Automatically-Boiled Shrimp case) ([Annotation] Katsua Tamai, Jurist[Jurisuto], No. 1050: p. 180), which cancelled a JPO Trial Decision upholding the validity of a utility model
registration. In that case, the registrant had claimed to be the sole inventor of a device which was in fact the soleinvention of another person. The facts of the case suggest that the registrant’s misrepresentation was deliberaterather than inadvertent.
(*38) Judgment of June 12, 2001, Case number 1997 (0) No. 1918, Minsu Vol. 55, No. 4, at page 793.
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inventorship group is identified correctly, a
dissatisfied employee could challenge therespective allocations within the group.
Recentcourt
decisionsinterpreting“reasonable remuneration” for employee inventions
under Section 35 have caused employers to
reexamine their remuneration policies.(*39) The
new version of Section 35, taking effect on April 1,
2005, emphasizes the importance of adopting
reasonable procedures to determine the amountof remuneration awarded.(*40)
The Aspartame/Ajinomoto case, decided by
the Tokyo District Court on February 24, 2004,
indicates that a “reasonable” allocation of Section
35 remuneration must reflect the actual
contributions of each employee/inventor. In thatcase, the employees had followed the customary
practice of deciding among themselves how their
Section 35 remuneration should be allocated,awarding a 5/6 share to the most senior andhighly placed inventor, without careful analysis of
the actual significance of each person’scontribution. Based on a detailed analysis of theemployees’ respective contributions to theinvention,
however,theDistrict
Court
determined that the senior employee was entitledto only a 50% share (although it increased theoverall remuneration amount). A court would
probably undertake a similar analysis under the
new version of Section 35. Thus, a thoroughunderstanding of joint inventorship is now
essential to compliance with Section 35.

enforcement better protects the value of patents.
In Japan, the joinder problem arises in the context
of licensing, pledging, and assignments of shares;
in particular, the consent requirement for
non-exclusive licensing, while intended to protect
smaller companies, may in fact disadvantage them,and it appears to disadvantage universities as
well.
Although joint inventorship issues have notcaused many problems for Japanese employers in
the past, careful documentation of joint
inventorship is now essential to compliance with
Section 35, and continues to be essential to thevalidity of U.S. patents. It will also be importantin determining ownership of the right to obtain apatent that results from collaboration between
employees of two companies, or between
company employees and university faculty or
students.
While it may never be possible to define joint
inventorship in a way that eliminates thepossibility of errors in judgment, a review of thepatent laws pertaining to joint invention and joint
patent ownership could lead to reforms which
would enable both the United States and Japan toincrease the marketability and stability of patents
for joint inventions, and thereby encourage morecollaborations among companies as well asuniversities.

Ⅶ Conclusions
Although the concept of joint inventorship issimilar in the United States and Japan, in both
systems the legal standards can be difficult toapply in practice.
This can lead to inadvertenterrors; in close cases, a court’s judgment might
simply differ from that of the patentee(s). Japan
may wish to consider adopting some type ofcorrection mechanism so that fewer patents will
be vulnerable to invalidation under Section 38 due
to inventorship errors.
Joinder requirements can be problematic in
the United States and Japan, but in different
contexts. In the United States, the requirementthat all joint patent owners consent to an
infringement suit means that an inventorshiperror as to even a single claim can render anentire patent unenforceable, whereas theJapanese trend toward allowing unilateral(*39) E.g., Olympus Optical Co., Ltd. v. Shunpei Tanaka, Case No. Heisei 13 (ju) No. 1256, 1822 Hanrei Jiho 39 (Sup. Ct.
Apr. 22, 2003); Tokyo High Court Decision of May 22, 2001 (Hanrei Jiho No. 1753, p. 23); Yonezawa v. Hitachi, Case
No. Heisei 14 (ne) 6451 (Tokyo High Court, Jan. 29, 2004); Nakamura v. Nichia Chemical, Case No. Heisei 13 (wa)17772 (Tokyo Dist. Ct. Jan. 30, 2004) (the blue LED case).
(*40) See Matsuo Nonaka, Current Developments: Japanese Legislative Updates on Intellectual Property in 2004, CASRIP
Newsletter (Spring/Summer 2004).

IIP Bulletin 2005

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