10

Study on Various International Issues
over Intellectual Property Disputes

With the rapid spread of the Internet, new types of cross-border intellectual property disputes are increasing,and it is desired to establish appropriate rules to solve international intellectual property disputes. In particular,
with respect to the handling of intellectual property disputes in cyberspace on the Internet, sufficientconsideration on the basis of actual situations is required. While the Hague Conference on Private International
Law is discussing the draft Convention on International Jurisdiction and Foreign Judgements in Civil andCommercial Matters (draft Hague Convention), it is an important issue to examine and propose measures thatJapan should take.
In this study, based on such circumstances, cases of disputes in cyberspace were collected and examined,
and rules for preventing and solving new types of intellectual property disputes in cyberspace were studied andanalyzed in consideration of dealing with the draft Hague Convention.

Ⅰ ExaminationofCases
Disputes in Cyberspace
1

International
Intellectual
Disputes in Cyberspaceof

Property(1) Characteristics of Intellectual Property
Disputes
Intellectual property infringements arecharacterized in that a single offending act is more
likely to cause infringements of rights in multiple
countries than other types of disputes. In a phaseof the determination of applicable law, it isgenerally understood in the intellectual property
field worldwide that the law to be applied shall be
determined for the region of each country underthe “principle of territoriality.” This is a different
characteristic from the method of selecting anapplicable law for a general act of tort, which seeks
to set the law of one country as the applicable law,even when offending acts or results thereof arise
over multiple countries. In a phase of thedetermination of international jurisdiction, it has
also been generally understood in the intellectual
property field that a court of the country
concerned has exclusive jurisdiction in line withthe law to be applied in the region of each country.
It is now hard to find such requirement forcoincidence between applicable law andinternational jurisdiction in other fields of civil
affairs. These characteristics are considered to be
major obstacles to the integration of the forum or
the applicable law for the efficient resolution ofinternational civil disputes.
(2) Basic Framework of International
Jurisdiction in Japan and the U.S. andInternational
Intellectual
Property
Disputes in Cyberspace(i) U.S.
As a result of examining 24 judicial precedents in
the U.S. concerning international intellectual property

IIP Bulletin 2002

disputes in cyberspace, it was confirmed that injudicial precedents before the emergence of theInternet, the fact of no direct contact between parties
concerned in cyberspace was not considered to be an
obstacle to the finding of “minimum contact,” which isa requirement for due process under the Constitution.
It was also confirmed that even if users of
telecommunications spread over various areas,
jurisdiction is not granted to a state due to only such afact that a user resides in the state concerned or the
network is registered in the state concerned and thatsuch facts are merely taken into consideration as oneof the various factors.
The following were confirmed in judicial
precedents concerning intellectual property rights
after the emergence of the Internet. In cases wherean act as such in cyberspace does not constitute an
infringement of intellectual property right, jurisdiction
is not granted to a state for the reason alone that thewebsite in question is accessible from the state
concerned, and another factor is an important decisive
factor in granting the jurisdiction. It was found,however, that in cases where an act as such incyberspace constitutes some infringement ofintellectual property right, jurisdiction may be granted
to a state for the reason alone that the website inquestion is accessible therefrom or the server islocated there.
(ii) Japan
Differently from the U.S., Japan has not yet
accumulated judicial precedents related tointernational disputes in cyberspace, so analysis
cannot be conducted in line with actual cases in thesame way as for the U.S. However, if applying theframework established by the decisions of theSupreme Court, in which jurisdiction is determinedreferring to the provision of territorial jurisdiction
prescribed in the Code of Civil Procedure and inconsideration of “special circumstances,” it isexpected that Japanese courts shall make decisions
similar to decisions by U.S. courts.

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(3) Basic Framework for the Application oflaw in Japan and the U.S. andInternational
Intellectual
Property
Disputes in Cyberspace(i) U.S.
The U.S. adopts the methodology in which therelation of application of laws is determined withemphasis on the content of substantive laws suchas the purposes or policy to be achieved by the laws,and does not follow the traditional law selection
system under private international law, differently
from Japan. Therefore, for cases in which related
factors spread over multiple countries, a U.S. court
tends to consider damage there as infringement of
U.S. intellectual property right and extraterritoriallyapply the U.S. intellectual property law to suchcases.
(ii) Japan
It has been considered in Japan that the issueof the application of law should be handled within
the framework of the applicable law selection
system under private international law. Recently,
however, objection to this premise has come to thesurface. For example, there is an opinion that theJapanese
PatentLaw
maybeappliedextraterritorially beyond the region in some cases,
considering the Patent Law to be handled in thesame way as norms like “public law” such as the
Antimonopoly Law and administrative laws.(*1)
2

Examination of Cases of Disputes in
Cyberspace (Trademark)- From the Viewpoint of U.S. Law -It is considered here from the viewpoint of U.S.
law whether jurisdiction can be granted to a
country for the reason alone that the language usedin the website is a language used in the country
concerned or that the server is located there, for ahypothetical case suggested by the Committee forthis Study (a case in which a Japanese corporation
applies its trademark registered in Japan to its
in-house products and introduces them on its
website, and in response to this, a U.S. corporation,
which has obtained a federal trademark
registration for a name similar to the trademark of
the Japanese corporation, files a suit with the U.S.
court for the reason of infringement of its
trademark right).
(1) Basic Idea on Jurisdiction under U.S.
Law
Under U.S. law, jurisdiction is considered fromtwo viewpoints, “subject matter jurisdiction” and“personal jurisdiction.”
According to U.S. law, a court must be granted
not only subject matter jurisdiction but also

personal jurisdiction to hold a trial. Generally,
personal jurisdiction is granted to a court when the
defendant concerned has domicile in the forum
state or when the defendant conducted“substantial” or “continuous and systematic”
activity in the forum state. Jurisdiction in suchcases is called “general jurisdiction.” Personal
jurisdiction may also be granted to a court in othercases, namely, in cases where there is minimum
contact, which is sufficient to meet the requirementfor due process under the federal constitution,
between the defendant concerned and the forum
state. Jurisdiction in such case is called “specificjurisdiction.” In relation to cyberspace, the focus inmany cases is whether the exercise of personal
jurisdiction is appropriate, and especially, whether
there is minimum contact. A statute based on thisminimum contact theory, called the long arm
statute, has been established in each state.
(2) Trend of the U.S. Judicial Precedents for
Cyberspace-Related Cases
Looking only at judicial precedents, it is rarethat subject matter jurisdiction comes to an issue inrelation to cyberspace-related cases, so the trend of
judicial precedents is introduced below focusing on
personal jurisdiction.
Judicial precedents show the following
consistent stance: When the defendant concerned
does not have any place of business in the forum
state, the defendant is not considered to be
conducting “substantial” or “continuous andsystematic” activities in the forum state for thereason alone that the defendant is conducting
business through a website, and general jurisdiction
is not granted to a court there. Therefore,
whether personal jurisdiction is granted to a
court depends on whether the court is granted
specific jurisdiction and whether the court canenforce it.
In the U.S. judicial precedents related tocyberspace, tests such as “effects doctrine” and“sliding scale analysis” are often used in judging
whether a court is granted specific jurisdiction.
The effects doctrine requires that an
intentional act of tort by the defendant was clearly
aimed at the forum state and the act caused
damage to the plaintiff concerned in the forum
state as well as that the defendant knew that theact would cause the damage. Some decisions show
reluctance to adopt this doctrine, so it is difficult
in some aspects to predict how the doctrine will
be applied to cyberspace-related cases in the
future.
The sliding scale analysis is doctrine
established by case law which has been formed
mainly in cyberspace-related cases, and this has(*1) Naoki Matsumoto, “Cross-Border Injunction Ni Tsuite (About Cross-Border Injunction),” (Edited by Shimizu = Shitara),“Gendai Saibanhou Taikei (26) Chitekizaisanken (Outline of Contemporary Court Law (26) Intellectual Property Law),” p.
46, from p. 60 onward (Shinnippon-Hoki, 1999).
(*1)● 111 ●IIP Bulletin 2002

been adopted in many judicial precedents. In thisanalysis, websites concerned are classified into thefollowing three categories, and the exercise of
personal jurisdiction is determined based on theclassification.
c Active website
When the defendant’s website is considered to
be one enabling the conducting of actual business inthe forum state, the website falls under thiscategory. When a website falls under this category,the exercise of personal jurisdiction is approved.
d Passive website
Websites that merely provide information
accessible by Internet users fall under this category.
When a website falls under this category, theexercise of personal jurisdiction is denied.
e Interactive website
This is a website that falls under a gray zone.
When the defendant ’ s website falls under thiscategory, the propriety of exercise of personal
jurisdiction is determined considering the degree ofinteractivity on the website.
(3) Application to the Hypothetical Case
Based on the above, issues in the abovementioned hypothetical case are considered below.
First of all, a website that only “introduces”
in-house products is considered to be passive,and personal jurisdiction is unlikely to be granted
to the U.S. court concerned. Unless there isevidence proving that the company actuallyconducted business with residents in the forum
state, it will be determined that there is no
minimum contact. Secondly, there was no casefound in which a language in use directly came to be
an issue. However, in the case that the website is
written in Japanese only, the website is unlikely to
be considered to “aim at the forum state” in the
U.S., since there are few people who canunderstand Japanese in the U.S. The location of theserver seems to hardly have any effect on the
conclusion in case of suits for infringement of a
trademark.
3

Basic Theory to Examine Patent Right
Infringement
Cases
Arising
inCyberspace(1) Possibility of Patent Right Infringement
That May Arise through a Network(i) Examination under Japanese law
The Japanese Patent Law prescribes forpatented invention that the exclusive effect of apatent right extends to acts of commerciallyconducting “working” acts, which are prescribed in
Section 2 (3) of the law. Moreover, the law
prescribes acts of “working” by category of
invention. For an invention of a product, the law
defines acts of working as acts of manufacturing,using, assigning, leasing, importing or offering for
assignment or lease of the product, and for an

IIP Bulletin 2002

invention of a process, it defines them as acts ofusing the process, respectively.
Due to these, it may be understood as an act of“working” to advertise or seek orders for a productto which the effect of patent right for an inventionof a product extends (corporeal thing in this case)on the website for the purpose of selling or renting
the product, and to make advertisements or giveoffers in relation to the provision of free samples orthe act of lending for trial use.
The Examination Guidelines of the Japan
Patent Office provide that computer software
shall be handled as an invention of a “product”
even if it is incorporeal, so inventions of a“product” that consist of incorporeal things arealso discussed here. For example, an act ofdownloading a software item as a component of asoftware product of patented invention, fromdifferent servers and making up one complete
item of software may be considered to be“manufacturing” of the patented invention in somecases. In addition, an act of providing a software
product of patented invention by sending andreceiving it through a network will be consideredassignment or lease.
In the case where an act of working is
conducted and completed within Japan, there is noroom for arguing that the effect of the Japanese
patent right concerned extends to the case. It,
however, comes into a question whether it can beconsidered that the effect of the Japanese patentright extends to cases where all or part of the act is
conducted outside Japan.
(ii) Examination under U.S. law
Under U.S. law, the effect of patent areprovided in 35 USC 154(a)(1), and the infringementof patent is provided in Section 271(a).
Differently from the Japanese Patent Law, theU.S. law does not provide the scope of effect basedon the concept of “working” by category of
invention, but provides for patented inventions ingeneral that the effect of patent extend to acts of“making,” “using,” “selling,” “offering to sell” and“importing.” It also provides geographical scope as“within the United States.”
Under U.S. law, as an act through networks towhich the effect of patent extends, for patented
inventions worked as a corporeal thing, “offering tosell” is considered, and for patented inventions
worked as an incorporeal thing, the act of “making,”“using,” “selling,” “offering to sell” and “importing”
respectively are considered. The geographicalscope of the effect of patent is provided in astatutory form as “within the United States,” andthis provision has been supported by judicial
precedents, in principle.
In terms of a patented invention of anincorporeal thing such as software, when a person
downloads parts of a software item through theInternet and combines them to create, use or sell

● 112 ●

a complete software item that meets the features ofthe patented invention, each act is understood as“making,” “using” and “selling.” In addition, the actof advertising through a network and the act ofdownloading may be considered as acts of “offering
to sell” and “importing” respectively.
In the case where all or some of the features ofan invention are worked outside the U.S., the acts
concerned are formally conducted outside the U.S.
but may not be substantially different from a casewhere the features are worked within the U.S.
There is room for considering that the effect of the
U.S. patent right extends to such acts.
(2) Possibility of Infringement of Patent
Right that Includes a Network as a
Feature(i) Examination under Japanese law
There may be a patented invention that
includes an information and telecommunication
network that forms cyberspace as one of thefeatures. As an example, a business method-related
patent consists of processing means of user side,processing means of server side and an
information and telecommunication network
connecting them.
In case of this patented invention, it is also
assumable that some of the features are worked
outside Japan or by a different person. Therefore, itcomes to an issue whether such cases can also
constitute an infringement of a patent right. For an
act that is completed in Japan, it is considered thatthe effect of the patent right concerned may berecognized to extend to the act even if part of theact is conducted by a different person. Furthermore,
how about cases where some of the features areworked by a different person as well as outside
Japan? It cannot be determined that the conclusionthat as long as some of the features of the claims
are worked outside Japan, the act does notconstitute an infringement of a Japanese patentright is applicable to cases of working some of thefeatures of the patented invention outside Japan,
which are not substantially different from cases ofworking all of the features in Japan.
(ii) Examination under U.S. law
It is in principle understood that the effect ofthe patent concerned extends only to the casewhere all features in a claim are worked in the U.S.
However, in the U.S. patent law, there is theprovision stating that “active inducement” ofinfringement of a patent shall be considered toinfringe the patent concerned. It is considered thatthe effect of this provision extends to acts
conducted outside the U.S.

Ⅱ Coping with the Draft Hague
Convention
1

History and Actual Conditions of the
Draft Hague Convention

The Hague Conference on Private International
Law is an international organization, which has
been continuing activities with the aim of theinternational unification of applicable law andinternational civil procedure law since 1893. The
Hague Conference started discussing the “draft
Convention on International Jurisdiction andForeign Judgments in Civil and Commercial
Matters,” which is now under preparation, in
response to the U.S. proposal in 1992, and the first
Diplomatic Conference was held in June 2001.(*2)(1) Actual Conditions - Direction for
Breaking through Divisive Points
Participating States have almost reached aconsensus on the approval and execution of
judgments, but there are many divisive points
concerning reasons for the grant of jurisdiction.
Main issues are as follows.
(a) Whether it is possible to put rules for“activity-based jurisdiction” on the white list(b) Whether to place “doing business jurisdiction
as general forum” on the black list(c) The relative merits between Article 7 or 8 and
Article 4 for cases concerning contracts concluded
by consumers or individual contracts of employment(d) Handling of the Internet(e) Handling of intellectual property right suits. In
particular, whether suits for infringement of aforeign patent shall be placed under the exclusive
jurisdiction of the country of registration(f) How to adjust relation of application with otherconventions(2) Jurisdiction over Intellectual Property
Right Suits
Regarding patent rights, the first Diplomatic
Conference discussed, in a comparing manner, a
proposal (from the U.K.) that suits for infringementof a patent shall also be placed under the exclusive
jurisdiction of the country of registration and a
proposal (from Switzerland) that suits for the validity
and so on of a patent shall be placed under the
exclusive jurisdiction of the country of registration
but infringement suits shall be handled in line withgeneral rules of jurisdiction. In addition, theConference discussed the handling of cases wherethe validity of a patent is contested as an incidental
question in another suit such as one for license
agreement, as well as a proposal that suits for a
copyright or a neighboring right of copyright should(*2) Refer to Masato Dogauchi, “Saiban Kankatsu Tou Ni Kansuru Joyaku Saitaku Wo Meguru Genkyo --- 2001 Nen 6 Gatsu No
Daiikkai Gaiko Kaigi No Kekka (jyo) (ge) (Present State concerning Adoption of the Convention on Jurisdiction --- Resultsof the First Diplomatic Conference in June 2001 (First half) (Last half)),” Jurist, No. 1211, p. 80, No. 1212, p. 87 (2001).
(*2)● 113 ●IIP Bulletin 2002

be placed under the exclusive jurisdiction of thecountry to which the applicable law belongs and so on.
2

Jurisdiction over Rights
Registration such as Patents

Required(1) Handling of Jurisdiction over Rights
Required Registration such as Patentsfrom the Viewpoint of the Industries
The following are the opinions of arepresentative of industries who participated in theCommittee for this study, concerning the handlingof jurisdiction over rights required registration suchas patents in the draft Hague Convention.
(i) Basic idea of jurisdiction over intellectual
property rights in the draft Hague Convention
Intellectual property legislation is establishedand utilized reflecting the industrial policy of eachcountry. The intellectual property legislation ofeach country is inconsistent in many important
points. Therefore, it is proposed not to handle
jurisdiction over intellectual property rights in thesame way as jurisdiction over general acts of tort
but to handle it in line with (ii) to (v) and II 3 (1)below by setting up an independent article.
(ii) Jurisdiction over rights required registrationsuch as patents and dealing with the“incidental question” in Article 12, Paragraph 6Intellectual
propertyrightsrequired
registration such as patents should be placed underthe exclusive jurisdiction of the country ofregistration for both the judgments of validity andinfringement suits. It is considered necessary tohandle the “incidental question ” in Article 12,
Paragraph 6 as follows. Proposal c: The wholeprovision of “incidental question” in Article 12,
Paragraph 6 should be deleted (common opinion).
Proposal d: Supposing that Proposal c is not
adopted, the subjects covered by the paragraphshould be limited to “license contracts andcontracts on the assignment of right” in order to atleast clarify the definition of an “incidental
question” (opinion of some representatives).
(iii) Handling of intellectual property rights incyberspace
Problems that arise on the Internet, etc.
should be excluded from the subjects of the draft
Hague Convention while considering them as
matters to be continuously discussed.
(iv) Jurisdiction for the reason alone that a branch
is located (Article 9)
It should be stipulated that jurisdiction for thereason alone that a branch is located is notapplicable to intellectual property rights.
(v) Other points to be noted
The draft Convention must be properly
revised so as to state that the provision of exclusive
jurisdiction does not take effect on relations with acountry other than the Contracting States of theHague Convention.

IIP Bulletin 2002

(2) International Jurisdiction over Suits forIntellectual Property Rights Required
Registration such as Patents(i) Idea of international jurisdiction in Japan
Theory in Japan have affirmed the exclusive
jurisdiction of the country of registration over suits
for the grant of a patent or validity thereof, butneither theory nor judicial precedents havesupported the exclusive jurisdiction of the countryof registration over infringement suits. The draft
Hague Convention is considered from such stanceof Japan hereinafter.
(ii) Suits for the grant of a right required
registration and the validity thereof such as apatentArticle 12, Paragraph 4 of the draft Hague
Convention proposes “In proceedings in which therelief sought is a judgment on the grant,
registration, validity, abandonment, revocation or
infringement of a patent or a mark, the courts of theContracting State of grant or registration shall haveexclusive jurisdiction” as Alternative A.
c Suits for the grant, validity, abandonment or
revocation of a right
There is probably no problem in granting theexclusive jurisdiction over suits for the grant,
validity, abandonment or revocation of a right to thecourts of the country of registration, since the grant,
revocation and invalidation of a patent right or the
like is considered to have the nature ofadministrative disposition by the country which
granted the patent right or the like and parties
concerned in such suits are generally a private
person who filed the application concerned and theadministrative office.
d Suits for registration
For patent rights and exclusive licenses as wellas the pledges thereof, registration of rightincluding the issue of their attribution is therequirement for coming into effect. Suits forregistration may be disputes between private
persons, such as claim for registration of
assignment in the case when a registered right is tobe assigned. Such cases should be considered to bein legal relation under private law. However, evenif suits for registration procedure are disputes
between private persons, the rights concerned
cannot be established without act of the state, i.e.
registration. So the suits are closely related toadministration for registration. Therefore, it cannot
be considered unreasonable to grant the exclusive
jurisdiction over such suits to the country ofregistration.
(iii) Infringement suits based on rights required
registration such as patents
There are opinions in favor of the grant of
exclusive jurisdiction to the country of registration,
mainly in the industries. If the grant of exclusive
jurisdiction is prescribed, jurisdiction by generalforum, jurisdiction created by response to the● 114 ●

action and jurisdiction by agreement, which havebeen approved from the viewpoints of Japanesecourts, will be denied. The grant of the exclusive
jurisdiction over infringement suits is questionable,
since it lacks rationale for depriving the jurisdictionof Japanese courts as well as causes cases that areinconvenient to both parties concerned.
(v) The incidental question
The main clause of Article 12, Paragraph 6 ofthe draft Hague Convention proposes that
“Paragraphs 4 and 5 shall not apply where one of
the above matters arises as an incidental questionin proceedings before a court not having exclusive
jurisdiction under those paragraphs.” A defense
for the invalidation of a patent in an infringement
suit or a dispute over license is assumed here as acase “where one of the above matters arises as anincidental question”. Regarding a defense for theinvalidation of a patent in a patent infringement suit,
there are both opinion considering it inappropriate
to determine the validity of administrative
dispositions overseas and opinion approving
determining the validity of foreign patents. For
cases where a defense for the invalidation of apatent is submitted against a claim for the paymentof license fee, it is considered that there is lessground for granting the exclusive jurisdiction oversuch cases than infringement suits.
3

Jurisdiction over Rights not Required
Registration such as Copyrights(1) Dealing with Jurisdiction over Rights not
Required
Registration
suchas
Copyrights from Viewpoint of Industries
The thoughts of representatives of theindustries are mentioned below.
Jurisdiction over intellectual property rights
not required registration such as copyrights or the
like (including Trade secrets and other intellectual
properties protected under the Unfair Competition
Prevention Law. The same applies below.) should
be dealt with as follows. Proposal c: A country towhich the law giving grounds for the right concerned
belongs shall have the exclusive jurisdiction overboth the determination of validity and infringement
suits (opinion of some representatives). Proposal
d: For both the determination of validity andinfringement suits, the jurisdiction of a country towhich the law giving grounds for the rightconcerned belongs as well as jurisdiction by generalforum, jurisdiction created by response to theaction and jurisdiction by agreement shall beapproved by setting an independent provision.
(2) Copyright
Law
andInternational
Jurisdiction --- Preparatory Considerationfrom the Theoretical Viewpoint
Discussion on intellectual property right andinternational jurisdiction has been held focusing
on industrial property law (especially, the Patent

Law). However, in the Internet society, there is ahigh possibility that infringement cases concerning
the Copyright Law will occur. Therefore, it isnecessary to consider issues concerning the
Copyright Law and international jurisdiction fromthe viewpoint of comparison with the Patent Law.
(i) Characteristics of the Copyright Law
Copyrights
becomeeffective
without
registration of works concerned, so it is hard inmany cases to discuss a “country of registration” inthe same way as for industrial property law that
requires registration. Copyrights may be registeredin some manner, but even if they are registered bychance, the registration thereof probably does nothave sufficient meaning to grant jurisdiction to thecountry of registration. Even if there is some kindof registration agency for copyrights, since
copyrights become effective without registration ofworks concerned, the registration agency does notkeep track of the existence of copyrights. Moreover,
it is difficult to adopt the premise that copyrights
are “granted by act of the state.” From such
viewpoints, it is considered that there is little basisof argument for the adoption of exclusive
jurisdiction over copyright suits.
The Copyright Law adopts the nonsubstantive examination system. This cannot be
avoided as long as the law adopts the non-formality
system. Even if the existence of a copyright and thescope thereof is questioned in a copyright
infringement suit, the registration agency cannot
provide any answer. It can also be found from thisviewpoint that the adoption of exclusive jurisdiction
over copyright suits lacks basis of argument.
(ii) Examination
It is found that the Copyright Law relatively
lacks basis of argument for granting the exclusive
jurisdiction over copyright suits to any country incomparison with industrial property law.
With regard to the jurisdiction over copyrightsuits, there is a proposal that “a country to which
the law giving grounds for the right concerned
belongs shall have the exclusive jurisdiction.” Itseems that no primary and clear common
understanding of the wording “a country to which
the law giving grounds for the right concerned
belongs” has been established. It is desired toclearly indicate the interpretation of this wording.
4

Examination of the Draft Hague
Convention from Practical Viewpoints

The provision of intellectual property in thedraft Hague Convention has been discussed fromthe theoretical viewpoint. The draft Hague
Convention is examined with an assumed concrete
example below.
(1) Trend of Protection of Software Patents
and Draft Hague Convention
The Ministry of Economy, Trade and Industry● 115 ●IIP Bulletin 2002

published a draft revision of the Patent Law andother Laws,(*3) which aims to strengthen theprotection of software patents or the like, andclarified that an act of transmitting a patented
program and so on through a network without priorconsent or similar act fall under infringement of apatent right. Under this draft revision, as tosoftware patent, it becomes possible to capture not
only the transfer of software through a medium
such as a floppy disk but also a provision thereof via
the Internet as an infringement act.
On the other hand, in the U.S., whereas it isconsidered for software patents that the act itself ofstoring software on a medium such as a floppy disk
without prior consent constitutes an infringement
act in the same way as under the current Japaneselaw, it cannot be said that sufficient measures havebeen taken against the act of distributing softwareas the subject of patent without prior consent incyberspace.
Therefore, the patentability of propagatedsignal claim, in which computer programs undertransmission are claimed, independently frommedia, has been actively discussed recently in the
U.S.
“A computer data signal embodied in a carrier
wave comprising: reciting source code” is cited as a
specific example. Such claim is discussed since atransmitting act must be captured as it falls underoffer for sale.
Taking the following typical example: Incountry A, Y copied software, for which a patent isowned by X, without X’s prior consent, uploaded it
on a bulletin board system (BBS) and sold it at alow price to X’s customers throughout the world.”,
remedy for X will be considered below.
Article 12, Alternative paragraph A4 of thedraft Hague Convention, which was proposed at the
Diplomatic Conference in June 2001, provides that
“In proceedings in which the relief sought is a
judgment on the grant, registration, validity,
abandonment, revocation or infringement of apatent or a mark, the courts of the Contracting
State of grant or registration shall have exclusive
jurisdiction,” and the Contracting State which
registered a patent concerned shall have exclusive
jurisdiction over infringement of the patent.
Then, in the above example, X must instituteinfringement suits with courts throughout theworld.
On the other hand, Alternative paragraph B5Aprovides that “In relation to proceedings whichhave as their object the infringement of patents,
trademarks, designs or other similar rights, thecourts of the Contracting State referred to in thepreceding paragraph [or in the provisions ofArticles [3 to 16]] have jurisdiction.” According tothis alternative, a court which has jurisdiction by“defendant ’ s forum” provided in Article 3 has
jurisdiction, so X can file suits asserting
infringements of its patent rights throughout theworld with the court of country A.
It is considered from such viewpoints that
Alternative paragraph B5A matches the trend ofprotection of software patents better and shows
appropriate direction.
(2) Decisions for Claim for Registration
According to the above-mentioned Alternative
paragraph A4, the following example will beconsidered below: Researcher A created a great
number of inventions when he was working forcompany B. Company B acquired patent rights forthese inventions by stating A as the inventor of theinventions in Japan as well as throughout the world.
After A’s retirement from company B, A filed suits
for the return of patent rights concerned, assertingthat the inventions concerned are not employee’s
inventions but free inventions and that the patentrights attribute to himself.” According to
Alternative paragraph A4, the courts of theContracting State granting or registering a patentare granted exclusive jurisdiction. Therefore, inthis example, A needs to file suits with courts
throughout the world.
However, taking into account that A is aJapanese and B is a Japanese corporation, it isconsidered rational to hold a trial for all patentrights concerned at a court of Japan. Moreover,according to judicial precedents and practices inJapan, if all parties concerned are Japanese or
Japanese corporations in this example, all disputes
can be solved in a court or the like of Japan.
Therefore,
proceedings forrequestingregistration should be at least excluded from thesubject of exclusive jurisdiction.
5

Some Intellectual Property Issues
Appeared in the Draft Hague Convention

Two issues concerning the preliminary draft
Hague Convention will be picked up hereinafter forconsideration: the theory of exemption fromapplication of the Convention to suits forinfringement of an intellectual property right and anissue on Article 12, Paragraph 6.
(1) Exclusion from Application of theConvention
It has been disputed since the preparation of
the preliminary draft in 1999 whether the countryof registration should be granted exclusive
jurisdiction over suits for infringement of an
intellectual property right required registration. It
seems, after all, impossible to try to decide onwhether the country of registration has either
exclusive jurisdiction or general jurisdiction. Thus,
the third alternative in which this issue is excluded(*3) The draft revision was promulgated as Law No. 24 on April 17, 2002. Refer to the Japan Patent Office website.

(*3)

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from application of the Convention is considered to
be promising.
(i) Handling without setting a particular provisionThis Convention does not positively defineinternational suits to which the Convention applies,
and for other than suits in which all the parties arehabitually resident in the same State, there is nosuch restriction that there is the residence of theparties or another specific factor of the case in any
one of the Contracting States of the Convention.
Therefore, unless a provision of exclusion fromapplication is set, the provisions of the Convention
are to be applied to all cases but that both partiesare resident in Japan. The no provision does notmean that the Convention is inapplicable.
(ii) To include intellectual property rights asmatters of exclusion from application
It is conceivable to exclude “intellectual
property” from the scope of application of theConvention and to add it to matters of exclusionfrom application provided in Article 1, Paragraph 2.
(iii) Idea of putting the jurisdiction of countries
other than the country of registration overinfringement suits into a gray list
The only divisive point concerning the draft
Convention is the issue on jurisdiction overinfringement suits. Therefore, it is worth
examining to exclude only the issue of jurisdictionof countries other than the country of registration
over infringement suits from the scope of theConvention and to put the issue into a gray list
(Article 17).
(iv) Idea of giving priority to jurisdiction of thecountry of registration
The following idea is also possible: Infringement
suits are not included into matters over which thecourts of the country of registration have exclusive
jurisdiction under Article 12, Paragraph 4 of theConvention, but infringement suits filed with acountry with general jurisdiction other than the
country of registration must be suspended if aninvalidation suit is filed in the country ofregistration afterwards.
(2) Issue on Article 12, Paragraph 6
The following provision is proposed as Article
12, Paragraph 6: Paragraphs 4 and 5 shall not apply
where one of the above matters arises as anincidental question in proceedings before a court
not having exclusive jurisdiction under thoseparagraphs. However, the ruling in that matter shallhave no binding effect in subsequent proceedings,
even if they are between the same parties. A
matter arises as an incidental question if the court
is not requested to give a judgment on that matter,even if a ruling on it is necessary in arriving at adecision.
The purport of this provision is that theprovision of exclusive jurisdiction does not exclude
judgements in general suits that contain a matter
under exclusive jurisdiction as an incidental
question. Regarding this provision, there is aquestion whether foreign courts can judge thevalidity of a Japanese patent in an infringement suitunder the Hague Convention though Japanesecourts cannot judge the validity of a patent in an
infringement suit under Japanese legislation.
6

Analysis of Public Comments Submitted
to the United States Patent andTrademark Office (USPTO)The USPTO invited public comments on thepart related to intellectual property right in thedraft Hague Convention in August 2001.(*4) In
response to this, 15 comments were submitted up
to February 7, 2002.(*5) The results of analysis bysorting out the comments into those from jurists,
private companies, etc. and private bodies, etc. will
be introduced below.
(1) Comments from jurists
Three interesting points will be introduced
below, by summarizing comments from Professor
Rochelle Dreyfuss and Professor Jane Ginsburg,from Professor J.A.L. Sterling and from Professor
Doris Estelle Long.
Firstly, arguments stating that special rules are
required for intellectual property since theintellectual property law largely differs in eachcountry are noticeable. Examples of sucharguments are a doubt over the fact that countries,
which do not protect intellectual property rights,
may have jurisdiction and an opinion that decisions
made in such countries should be approved andexecuted in a limited way.
Secondly, a suggestion that a single factsituation may cause damage in multiple countries
or infringe multiple intellectual property rights isnoted. In relation to the former, Professor Dreyfuss
and Professor Ginsburg made a comment that
disputes arising from the same fact situation should
be judged together before a single court, except forpatent-related cases (to be treated as exclusionfrom application of the Convention) and cases
where the validity of registration is contested(exclusive jurisdiction of the place of registration).
For the latter, Professor Long stated that someadjustment is necessary and that it is also
necessary to consider a provision for concurrent
suits(Lis pendens).
Thirdly, oppositions to the standpoint ofconsidering registration to be a ground forjurisdiction drew attention. Professor Dreyfuss andProfessor Ginsburg affirmed dispute settlement at asingle court, and agree to dispute settlement by(*4) 66 Fed. Reg. 43575.
(*4)(*5) http://www.uspto.gov/web/offices/dcom/olia/haguecomments/index.html.
(*5)● 117 ●IIP Bulletin 2002

each place of registration for only limited cases.
Professor Long also expressed doubts about using
the place of registration as a basis for forum
selection not only for copyrights but also for
trademarks, and stated that activities should rather
be considered as a basis for forum selection.
(2) Comments from Private Companies andso onComments were submitted from four private
entities, Verizon Communications, AT & T Corp,
AOL Time Warner, Inc. and Morrison & Forster
LLP. Their positions and common opinions will be
introduced below.
(i) Positions of four commentators
Verizon, AT & T and AOL are some of theworld ’ s greatest telecommunication companies,
and engage in Internet-related businesses including
provider business. Morrison & Forster LLP
submitted comments at the request of the Internet
Coalition on Jurisdiction. This coalition is anorganization consisting of the above-mentioned
Verizon, AT & T and AOL as well as Cable & Wire
USA, the Computer and Communication Industry
Association, the U.S. Internet Industry Association
and Yahoo! Inc.
(ii) Common opinions
Common opinions recognizable from eachcomment are as follows.
c The draft Hague Convention should not beapplied to torts related to e-commerce (Article 10),contracts concluded by consumers (Article 7) andprotective measures (Article 13).
d If these articles are applied to e-commerce andInternet businesses, since websites are accessible
from any country throughout the world, it will beclaimed that torts have caused damage and loss inany country throughout the world and providers
and e-commerce companies will be sued in any
country worldwide. This means that the standard of“minimum contact” under due process establishedin the U.S. is not applied.
e E-commerce as such has been rapidly
developing, so it is unpredictable what legal issues
will arise in the future and by what rules theyshould be resolved. Since the draft Hague
Convention does not assume such e-commerce, theestablishment and application of the Convention
will hinder the future development of Internet
businesses.
f The draft Hague Convention should be applied
to business-to-business (B2B), and should not be
drafted so as to be applied to business-to-customer(B2C).
(3) Comments from Private Bodies and so on
Comments were submitted from seven bodies,
the Computer & Communications Industry
Association, the Free Software Foundation, theSociety of American Archivists, the American
Library Association, the United States Council forInternational
Business,theInternational

IIP Bulletin 2002

Trademark Association and the Software &Information Industry Association. Points to be
noted in comments from each body will be
introduced below.
(i) Computer & Communications Industry
Association
The Association expressed concerns about theoverall draft Hague Convention and stated “weshould not enter into any agreement that would
diminish the constitutional protections guaranteed
to our citizens and American companies orundermine our legal system.”(ii) Free Software Foundation
The Foundation explained adverse effects,
which will arise if international jurisdiction isadmitted by the Hague Convention, by citing
specific cases, and insisted on exclusive jurisdiction
by stating that “only the country where the
distributor or transmitter operates should havejurisdiction.”(iii) Society of American Archivists
The Society cited merits, which are brought
since the U.S. Copyright Law does not protect
moral rights differently from continental law, andexpressed an opinion that negative consequences
would arise for U.S. citizens if matters related tocopyright law were included in the Hague
Convention.
(iv) American Library Association
The Association urged for the exclusion of
intellectual property cases, including copyrightcases, from the scope of the draft Convention or
adopting such language as necessary to assure thatpublic service institutions such as non-profit
libraries in the U.S. can continue to benefit from theconstitutionally based protections they currently
enjoy.
(v) United States Council for International
Business
The Council stated that since a consensus on
jurisdiction has not been established among theContracting States in the present circumstances,
the time is not ripe for the enactment of the Hague
Convention.
(vi) International Trademark Association
The Association limited the subject of its
comments to trademarks and took up a stanceagreeing to grant exclusive jurisdiction over suits
for the infringement or validity of a trademark rightto the courts of the country in which the right arose,
regardless of whether the trademark concerned isrequired to be registered.
(vii) Software & Information Industry Association
While agreeing with the framework of theHague Convention, the Association proposed
narrowing the scope of the Convention to thoseaffecting business-to-business environments andbusiness-related aspects.

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(Senior Researcher: Mamoru Sakashita)