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 forany errors in expressions or descriptions of the translation. In the event of any discrepancy between
the Japanese original and the English translation, the Japanese text shall prevail.

■ Distribution of News Content Issues under Copyright Law ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 2
ISHIOKA Katsutoshi■ Place of the Act or the Market? Network-related Inventions and Territoriality of PatentRights ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 6
KOMADA Yasuto
In the past, there have been court precedents which have not affirmed the infringement of domestic patentrights, based on the perspective of the principle of territoriality, when an act that violates any provision of apatent force (hereinafter referred to as “act of violation”) is not completed in Japan, but in recent years theprinciple has been relaxed for network-related inventions, with two decisions of the Intellectual Property High
Court (one of these decisions was made by Grand Panel) stating that the act of violation must substantially becommitted within Japan (Intellectual Property High Court Decision July 20, 2022 – Case 2018 (Ne) No. 10077)[Dwango I], Intellectual Property High Court Decision May 26, 2023 – Case 2022 (Ne) No. 10046) [DwangoII]). However, since these decisions comprehensively considered various circumstances, the difficulty remainsof predicting in which circumstances a certain act of violation can be said to have been committed substantiallywithin the country.
This paper will reference German court precedents regarding cross-border patent infringement, where theterritoriality has also been relaxed, and will confirm there surely is a type of network-related invention forwhich the act of violation can be committed exclusively in a foreign country but harm the domestic market ofthe patent holder. This paper will further posit that in the interpretation of Japanese law, when recognizing theexercise of domestic patent rights, there should not be any insistence on the act of violation (whether an important part or simply any part) being performed domestically, and the exercise of said rights should be recognized as long as the place of the final demand (the place of the market) for the invention is to be Japan. Thispaper will also posit that it is possible to reconsider the principle of territoriality for patent rights in the contextof the principles of marketplace law, such that even if the framework of judgements given by the Intellectual
Property High Court are assumed, this should be consolidated to emphasize any impact on the domestic market.

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■ Enforcement of Standard Essential Patents across the Supply Chain ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ15
MAEDA Takeshi
The advancement of IoT has given rise to increased licensing negotiations between different industries forstandard essential patents (SEP), requiring the formation of highly predictable rules. This paper will consider
the ideal for SEP license negotiations, with a focus on which parties in the supply chain should be licensing
partners. In terms of transaction costs, it is desirable that the implementer in negotiations be a single entity, andin general, the negotiations should be conducted by parties with the necessary information to calculate a reasonable royalty. It is also necessary to ensure that the burden of the royalty is shared appropriately within thesupply chain. The SEP royalty should be determined based on the extent to which the patented technology
contributes to increased profits for each implementer, and therefore, in principle, is calculated based on thefinal products in the supply chain. Given this, it would appear desirable for final product manufacturers to beinvolved in negotiations. However, in the case of multi-component products such as automobiles, the patented
technology may often only make a limited contribution to the final product. In this case, it is easier to determinea reasonable royalty by negotiating based on the price of the part, assuming that the price of the part has been
determined appropriately. Therefore, for certain products such as for automobiles, it may be preferable for theparts supplier to be a party to the license.
If the licensing partners are limited to certain parties in the supply chain, there is an issue with how tosecure the legal status of other parties as implementers. However, regardless of how the doctrine of patent
exhaustion is interpreted, or how the have-made right is structured, it is difficult to resolve the insecure positionof other parties. It should also be noted that, regardless of who the licensee is, it is difficult to completelyresolve this issue.

■ Should Removing Trademarks Be Restricted? A Comparative Study between Japan and theUK ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ33
SUEMUNE Tatsuyuki
The act of purchasing products that have been put on the market, removing or erasing another party’s marks,and attaching one’s own marks to return the product to the market as one’s own product (hereinafter “removingand erasing”) does not fall under the various acts listed under “use” in Article 2, Paragraph 3 of the Trademark
Act, and can thus be considered to not be a problem under the Trademark Act, although the fact that such acts
harm the functions of trademarks such as source identification and quality assurance would suggest that suchacts should be illegal. Regarding the possibility that removing and erasing constitutes trademark infringement,
recent court precedents hold digressions, with both affirmative and negative theories. Academic theory is similarly divided into both affirmative and negative theories.
Turning the focus overseas, in the UK there is debate over the suitability over the Tort of “reverse passingoff.” However, as has been noted in previous studies, discussion in the UK about reverse passing off is still
limited in comparison to the US. However, given that in contrast to the development of reverse passing off
theory in the US the UK courts have taken a negative stance towards the recognition of reverse passing off, byanalyzing the background behind this, perhaps there are some clues as to whether reverse passing off should
be considered an illegal act, and whether acts similar to removing and erasing should be considered illegal, as
well as the basis for determining this.
Thus, this paper will refer to the debate in the UK, with the purpose of clarifying whether the act of

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removing and erasing should be considered illegal. Regarding the targets of consideration, in terms of Japaneselaw, there is a position which denies that the act of removing and erasing constitutes trademark infringement
which also accepts the possibility of relief as an infringement of the Unfair Competition Prevention Act Article
2, Paragraph 1, item 20, so Article 2, Paragraph 1, item 20 of the Unfair Competition Prevention Act will also
be considered. Accordingly, in terms of English law, in addition to trademark law, a discussion of “reversepassing off” under the Tort of passing off will also be included.

■ Examining the Legitimacy of Patent Enforcement on Recycled Commodities: Comment on
the Japanese Decision Ricoh Case ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ52TACHIBANA Yusuke
This paper is a precedent commentary on the so-called “Ricoh Toner Cartridge Case.” At the initial hearing
it was decided that restrictions on recycling are considered trade interference under the Antimonopoly Act, andthis also received attention from the appeals court since this meant that the exercise of patent rights constituted
the inappropriate use of rights.
The defendant had produced and sold recycled toner cartridges originally manufactured by the plaintiff.
During the recycling process, the defendants replaced the IC chip with a new one. This was because the plaintiff’s IC chip which detects the amount of toner that is remaining could not be reset and reused. The plaintiff
alleged patent infringement with respect to the replacement of the IC chip. In response to the initial hearing,
the appellate court denied that this was a violation of the Antimonopoly Act and did not recognize this as an
inappropriate use of rights.
Why did the judgements of the initial hearing and the appellate court differ? The reason for this would
appear to be in the criteria for determining the inappropriate use of rights and the application of facts to thelaw. When there is a suspected violation of the Antimonopoly Act in the exercise of intellectual property rights,
this has typically been considered an issue under Article 21 of the Antimonopoly Act. It is commonly believedthat the Antimonopoly Act applies when there is a deviation from the purposes of the intellectual propertysystem, and in such cases consideration is given to the extent to which competition is restricted in the market.
Behind this is the understanding that both the Intellectual Property Act and Antimonopoly Act have the common objective of promoting competition with respect to intellectual property. There is also the view that there
is no need to note the common purpose of both laws. However, when this view is extended, the issue is whether
the enforcement of the rights provided by the intellectual property system exceeds mere protection. It is only
when the protection at issue has a common purpose with the Antimonopoly Act that the violation of the Antimonopoly Act can be decisive in determining the inappropriate use of rights. On this point, the appellate court
took the former position, while the court in the initial hearing was sympathetic to the latter position.
From the perspective of the appellate court, the violation of the Antimonopoly Act was considered decisive.
Looking at the facts of this case in which the question concerned the restriction of competition with respect toconsumables, the deciding factor may have been the need for the products to be genuine. In this regard, thefindings of the initial hearing and the appellate court differed as to whether patent infringement can be avoided
when recycling, and the differences in recognition can be said to be one reason for this variance between thetwo courts.

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■ Outline of the System for Non-Disclosure of Selected Patent Applications ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ80
HIROSAKI Takuto and SENBON Junsuke
In May 2022, a system for the non-disclosure of selected patent applications was established with the enactment of the Act on the Promotion of Ensuring National Security through Integrated Implementation of Economic Measures. Under this system, measures can be taken to suspend patent procedures such as the publication of applications, etc. and to prevent information leaks, with a procedure known as “security designation”
when a patent application is filed for inventions that should not be disseminated for security reasons. The
selection of inventions subject to security designation is carried out in two stages: a primary review by theCommissioner of the Japan Patent Office who receives the patent application; and a security review (secondaryreview) by the Prime Minister. In the primary review, selection is made based on the technical field to which
the invention belongs. In a security review, a review is conducted to determine if it is appropriate to protect
information related to the invention by considering if the description of the patent application include “inventions that would be highly likely to create a situation which would undermine the security of the nation and its
citizens,” and the extent of the likelihood and “the impact of security designation on industrial development”
and other circumstances. Once a security designation has been made, in addition to the suspension of procedures for the publication of applications, and patent granting and refusal decisions under the Patent Act until
the security designation ends, restrictions are also imposed to prevent the leak of information, such as restrictions on the work and disclosure of the invention. Also, to ensure the effectiveness of the system, thoseinventions which have been made in Japan and have not been made public and meet the requirements to besubject to security reviews when the patent is filed in Japan, there is a first-filing requirement that requires thepatent application to be filed first in Japan. Furthermore, the government will compensate for losses that may
occur under ordinary circumstances to the party who suffers loss due to an inability to obtain permission towork an invention, etc. Activities are currently underway to publicize this system towards the start of operation
on May 1, 2024.

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