Q4 Intellectual Property in General

What is an invention under the Patent Act?

The Patent Act of Japan defines the term “invention” as “a highly advanced creation of technical ideas utilizing the laws of nature.” While this alone might be ambiguous and does not provide a specific image of what an “invention” is, the items enumerated below are examples of unpatentable inventions under the Patent Act of Japan, as described in commentary books and other references to the Patent Act.

(1) Something that does not utilize the laws of nature:
An artificial arrangement (such as the rules of a game), a manner of commerce or economic principle, something against the laws of nature such as a perpetual motion machine, and the laws of nature themselves (such as the law of universal gravitation or the law of conservation of energy);

(2) Something that is not a technical idea:
A so-called “skill” such as a method for pitching a forkball, presentation of mere information, and an aesthetic creation including paintings and sculptures;

(3) Something that is not a creation:
Since “creation” means to create something new, a “discovery” such as the discovery of x-rays or of a new breed of butterfly is not deemed as a creation. However, cases where a physiologically active substance that inherently exists in natural world is discovered anew or cases where the function of a specific gene in the genome is identified are not deemed as a mere “discovery” but an “invention” of a creative nature, since they can be found only if they are extracted and refined by adding a human touch to a substance in its native state. Also, in cases where microbes existing in the natural world are screened with a particular aim, the novel microbe obtained therefrom can be the subject of a patent (however, when such microbe is not easily available for other researchers, a strain thereof must be deposited with the competent authority to ensure repeatability); and

(4) Something that is not highly advanced:
The attribution of “highly advanced” is not necessarily limited to ideas that can bring a massive reform to the industrial sector. If improved goods fulfill a new function that has never existed before, and have an industrial applicability, they are still sufficiently patentable. There is no requirement of “utilizing the laws of nature” in the U.S., or animal patents, business model patents (meaning those established using not only an idea itself but also computer technology or communication technology, such as the internet, which have been the subject of a patent from before) or the like, which were previously considered unpatentable, have become patentable, so the subject of a patentable invention will vary depending on the country and the times.

How is the patentability of an invention determined?

The requirements for patentability include:

• It is an invention as mentioned in the answer to Q4-1;
• It is capable of being industrially utilized;
• It was not known to the public before the filing of an application (i.e., novelty);
• It is something that those skilled in the art could not easily have devised (i.e., inventive step);
• It is something that has not been previously filed for an application;
• It is something that is not anti-social; and
• There is no incompleteness in the application documents;

Examples of something that does not have an “industrial applicability” include:

• Medical practice (an operation method, treatment or diagnosis of a human being);
• An invention capable of being utilized solely on a personal basis (such as a method of smoking);
• An invention capable of being utilized solely academically or experimentally; and
• An invention obviously incapable of being implemented in actuality (e.g., a method of covering the entire surface of the globe in a plastic film absorbing ultraviolet radiation to prevent an increase of ultraviolet radiation as the ozone layer depletes).

Similar manner to the definition of an invention mentioned in the answer to Q4-1, the criteria of the patentability of an invention varies depending on the country and the times (for example, a medical practice can be accepted as a patent in the U.S.). In the past, a patent application was filed for a sequence of a DNA fragment, raising the issue of patentability of a gene sequence, the function of which was unknown, or a gene sequence, the function of which was presumed based on sequence homology. While Japan, the U.S. and Europe carried out comparative research in 1998 on the patentability of a DNA fragment and some specific case studies were presented to foster a certain level of common recognition, consistent criteria on the presumption of a function or the like has not necessarily been achieved yet today among Japan, the U.S. and Europe. Patentable technical fields or the scope of rights will likely continue to change in response to various industry circumstances.

What is the difference between a patent right and a right to patent?

A patent right is a right which is formed when the examiner makes a decision after examination in the Japan Patent Office and upon completion of a registration to establish the right. Such right allows its holder to implement his/her/its own invention exclusively in the course of trade, grant another entity a license to implement the invention in the course of trade, prohibit unauthorized implementation thereof, or bring a claim against an unauthorized person/entity for damages caused by such unauthorized implementation. On the other hand, the “right to patent” is the eligibility to file a patent application for the invention and to become a patent holder through the issuance of a patent. Unlike a patent right, the “right to patent” is automatically generated in favor of the inventor upon creation of an invention. While it is said that an invention created by a researcher of Kyoto University is owned by such an institution in principle, this merely means that the institution can acquire the right to patent that is automatically generated in favor of the inventor, pursuant to an employment contract or otherwise, and the University cannot able to file a patent application unless it legitimately acquires the “right to patent” through an assignment by the inventor.

What is the difference between an inventor and an applicant?

An inventor is the human being (a natural person) who created an invention. On the other hand, an applicant is the person (including a juridical person) that will be the patent holder if the patent is issued for the patent application. For the inventor, a “right to patent” is generated under the Patent Act of Japan. This “right to patent” can be assigned to another person (including a juridical person). Under the Kyoto University Regulations on Invention, it is stipulated that, when submission of an employee invention or the like is submitted by a researcher or the like, the University will determine whether or not to acquire the “right to patent” thereto. If Kyoto University acquires the “right to patent,” then Kyoto University will file a patent application as the applicant. In this case, the name of Kyoto University will be specified as the “applicant” on the application form, and the name(s) of the individual inventor(s) will be specified as “inventors” thereon. Once a patent is issued, the applicant will be the “patent right holder.”

Please explain the rights of an inventor and the rights of an applicant.

Some may think that once a right to patent is assigned to the University under the principle of institutional ownership, the researcher who is the inventor does not get rewarded therefor, in the same way as an assignment to a company. However, this is not the case. As a policy at Kyoto University, in cases where the University earns income from the implementation or disposal of a right to the invention acquired from a researcher, after the deducting the transfer expenses and expenses for the patent application and maintenance of the patent, a predetermined portion of the residual part of the income will be returned to the researcher.

Can another person’s patented technology be used for research at the University? Also, in cases where the University is granted a patent, is an inventor restricted from continuing his/her research using the patented technology after the inventor is transferred to another research institution?

Recently, due to an increase in the awareness of intellectual property in Japan, we see more news stories every week or so concerning litigation or payment relating to intellectual property. In 2001, an incident occurred where a Japanese researcher took out research materials that were under the control of a foreign research institute with which the researcher was affiliated, and the researcher was arrested on the suspicion of industrial espionage. Some people may have a concern that a pro-patent trend (meaning that the effect of a patent right is strong) may inhibit unfettered research at universities. The implement for examining the effect of another person’s patented invention or creating researching a better invention using that patented invention as a steppingstone is instead in accordance with the ideal of the Patent Act to “contribute to the development of industry,” and it is possible to implement another person’s patented invention for examination or research under the Patent Act of Japan. However, it should be noted that, for example, the conduct of using the invention of a research tool as a tool (not for the examination or research of such invention itself) to carry out another research constitutes, technically, an unauthorized implementation of a patent, even if it is not for profit but for the university’s internal use. Among the inventions generated in a university, there are many research tool patents which can be utilized for research. In initiatives such as those by the Japanese government’s Council for Science, Technology and Innovation, policies which do not inhibit research activities as much as possible through the broad licensing of the said inventions with less expensive royalties but without allowing particular institutions to possess and implement them are being reviewed. Furthermore, due to the transfer of human resources, there are expanding opportunities for inventors to be transferred from one research institution to another. For transfers between research institutions, we think it is necessary to enhance the exchange of information among the intellectual property divisions of such institutions so that the theme of the research can be continued and an environment can be created where research is not impeded. Since we will also coordinate with the particular institution to which a researcher is transferred, please consult with the Intellectual Property Department of the Office of Society-Academia Collaboration for Innovation.

<For your reference>
Policy concerning Making Use of Research Tools Patent Smooth in the Field of Life Sciences.

I am often instructed to properly record notes of a research for a dispute concerning a patent. How should a record be made?

The purpose of research notes is to keep a record of daily research activities. They also play an important role in securing intellectual property rights based on the research results, such as patents. The research notes serve as evidence that will be needed in the future, such as when and who created the invention and experimented thereon, when and who verified the usefulness of the invention, and when and who completed the invention.

(1) Matters that should be noted in the research notes:
The notes should not only describe the details of experiments, but also the underlying ideas of the invention created, as well as the objectives of an experiment, the schedule, the details of the instructions given by or to another researcher, or the like.

(2) Manner of recording:

• Use a notebook where the pages cannot be refilled.
• When recording a note, use a writing tool where the color does not fade and the photocopying of which can be made in a vivid way (black or blue inks are best).Do not use a pencil.
• When any correction or deletion is made, do not use an eraser, correction fluid, correction tape or the like, but cross out the note using a double line or the like, and affix thereto a small initial or signature and the date of the correction.
• Arrange the notes sequentially from one page to the next page and draw a oblique line on any blank. If the notes continue to the next page or another page, then describe on each relevant page how such notes are linked.
• When pasting any paper, photograph e-mail or the like containing data, experiments or the like, use paste that will prevent it from becoming unglued, add an overlapping signature on the paper which was pasted and the notebook like a tally impression, and enter the date.
• At the close of each day, enter the date and add a signature. Also, regularly make a third party add a signature as a witness on each page. The signature may be made either in the native language of each signer, or in English, but do not change the language mid-way. Do not use a seal impression.
• Multiple authors may use a single notebook. In that case, specify the names of the joint users on the cover sheet of the notebook in advance, and the person who made each note will, at the close of each day, enter the date and add his/her signature.

When supervising research in a laboratory, can a confidentiality obligation be imposed on students, not only for research under a collaboration research agreement but also for ordinary research activities?

To file a patent application, the details of the invention must be kept confidential without disclosing the same to any other persons until filing of the application. However, students are required to publish a graduation dissertation, master’s dissertation or the like before a predetermined deadline. Moreover, they are asked to explain the details of their research in their job search activities and the like. Thus, compliance with the confidentiality obligation may be disadvantageous to students. In imposing a confidentiality obligation on a student, the risks accompanying the execution of a non-disclosure agreement and the benefits of being exposed to cutting-edge research by executing such agreement should be sufficiently explained to the student. Concurrently therewith, the scope of an allowable publication should be pointed out to the student if the details of the research are to be published to other persons.