Japanese Intellectual Property Law 1 (General Overview) | Articles

Patent Law

The Patent Law protects inventions. An invention is defined as “a highly advanced creation of a technical idea utilizing the laws of nature” (Patent Law Article 2, Paragraph 1). The duration of patent rights is 20 years from the filing date of the patent application (Patent Law Article 67, Paragraph 1).
To obtain patent protection, an invention must be registered as a patent. The requirements for a patent application, known as patentability are: (1) industrial applicability, (2) novelty, and (3) inventive step. (1) requires that the invention has some practical use in any industry, referred to as “utility” in the United States. (2) means that the invention was not publicly known at the time of the application (Patent Law Article 29, Paragraph 1, Items 1-3). (3) states that when a person ordinarily skilled in the art of the invention cannot create an invention based on a publicly known invention before the patent application, the invention is regarded as having an inventive step (See Patent Law Article 29, Paragraph 2).
The Patent Law refers to the scope of the invention protected by patent rights as “technical scope,” and states that “the technical scope of a patent invention must be determined based on the statements in the claims attached to the written application” (Patent Law Article 70, Paragraph 1). The process of interpreting this technical scope is very important.
To establish patent infringement, it is necessary for the technology of the suspected infringing product to be included in the interpretation of the claims (claim interpretation). This is judged based on whether the opponent’s technology includes all the elements specified in the scope of the patent claims. Under Japanese law, while the doctrine of equivalents can be recognized by case law, there have not been many court cases that have affirmed this to date.
Legal remedies for patent infringement include injunctions and claims for damages.
Under Patent Law Article 102, Paragraph 1, if the patent infringer has transferred the goods constituting the infringement, the amount of damages can be calculated by multiplying the “quantity transferred” of the infringing goods by the “amount of profit per unit that could have been sold had the infringement not occurred.”
Patent Law Article 102, Paragraph 2 stipulates that the amount of profit gained by the infringer due to the patent infringement act can be presumed as the amount of damages to the patent holder.
Patent Law Article 102, Paragraph 3 provides that the amount of damages to the patent holder can be the amount equivalent to the license fee that would have been due for the implementation of the infringed patent invention. This sets the minimum standard for the patent holder’s damage amount.

Copyright Law

The subject of copyright law protection is the work of authorship. A work is defined as “a work in which thoughts or sentiments are originally expressed and which falls within the literary, academic, artistic or musical domain” (Copyright Law Article 2, Paragraph 1, Item 1). Works include novels, films, music, paintings, photographs, buildings, maps, etc.
Copyright arises automatically upon the creation of the work, adopting a system of formalism (Copyright Law Article 17, Paragraph 2). Although a registration system exists in the Copyright Law, it is merely stipulated to enable rights holders to assert their rights against third parties. This differs from patent rights, trademark rights, and design rights, which require application and registration for rights to arise.
While the Patent Law protects technical ideas used in industry, Copyright Law protects the expression of cultural creative works. This is known as the idea-expression dichotomy. Only the “expression” is protected under copyright law, not the idea itself manifested in the cultural creative works.
The duration of copyright is 70 years after the death of the author (Copyright Law Article 51, Paragraph 2).
Regarding designs used in mass-produced utilitarian items (applied arts), there is a question of whether they should be protected under copyright law or design law. Most case law generally holds that the aesthetic elements of mass-produced utilitarian items should be protected under design law, not copyright law. However, if it possesses high aesthetic elements that could be considered equivalent to fine art, or is recognized solely as objects for aesthetic appreciation, it can be protected under copyright law.
Unlike the fair use provision in the U.S. copyright law, Japanese copyright law does not have a general clause of limitation provisions. Therefore, any act of copyright infringement in Japan must meet one of the specific limitation provisions listed in Copyright Law Article 30 and below.
To establish copyright infringement, it is necessary that (1) the infringing work relies on the infringed work (dependence), and (2) the original expression of the infringed work is maintained in the suspected infringing work (similarity). Regarding (1), unlike patent law, copyright law does not adopt a registration system, so for copyright infringement to be established, the user must have relied on the work (having been exposed to, and knowing of its existence and content). For (2), it is necessary to maintain the essential features.
Legal remedies for copyright infringement include requests for injunctions and claims for damages. Where an injunction is possible, it may be accompanied by a demand for the destruction of goods created through the infringing act (Copyright Law Article 112, Paragraph 2). Regarding claims for damages, provisions for calculating the amount of damages are in place, similar to the patent law (Copyright Law Article 114).

Trademark Law

The subject of protection under trademark law is the trademark, which is a mark that indicates the source of goods or services. Goods sold typically bear the name of the product, which is the trademark. The purpose of trademark law is to ensure that consumers can expect that goods or services marked with the same trademark come from the same source (source-indicating function) and that goods or services marked with the same mark possess a certain quality (quality-assurance function). Trademark law facilitates an environment where consumers can properly select goods and services, establishing fair quality competition and encouraging investment in the provision of quality goods and services.
Trademark law protects not only two-dimensional trademarks but also three-dimensional trademarks. An example of a three-dimensional trademark is the figure of Colonel Sanders from Kentucky Fried Chicken, which is actually registered as a trademark (Registration No. 4153602). Other forms such as color-only trademarks, sound trademarks, motion trademarks, hologram trademarks, and position trademarks have been registrable since the 2014 revision of the Trademark Law.
The duration of trademark rights is 10 years from the registration date (Trademark Law Article 19, Paragraph 1). However, since it is possible to renew indefinitely, as long as the rights holder continues to pay the renewal registration fee, the trademark rights can be maintained almost perpetually.
Whether a trademark is similar to another trademark (similarity judgment) is determined in two main scenarios: during registration, where registration is denied if the applied-for trademark is similar to a prior application (Trademark Law Article 4, Paragraph 1, Item 11), and during infringement, where it is determined whether trademark infringement is established (Trademark Law Article 37, Item 1).
In both cases, the similarity with a trademark is generally determined by evaluating the likelihood of confusion about the source or origin of goods or services. This decision focuses on the similarities in the trademark’s (1) appearance, (2) pronunciation, and (3) concept. However, during the registration process, the trademark being applied for is compared to an already registered trademark based on the application’s description, while in infringement cases, the registered trademark is compared to the actual trademark used by the opposing party, taking into consideration the specific circumstances of the trade.
Case law regarding similarity judgments states that “whether there is a likelihood of confusion about the source of the goods when both trademarks are used on the same or similar products should be decided based on the overall consideration of the impression, memory, and association given to the traders by the trademarks used on such products, taking into consideration the specific circumstances of the trade to the extent that they clarify the actual conditions of the transactions” (Supreme Court decision, February 27, 1968, Minshu, Volume 22, Number 2, Page 399—the Iceberg Mark case).

Design Law

The subject of protection under design law is the design, defined as “the shape, pattern, or color, or any combination thereof, of an article, or the shape of equivalent features of a building, or a graphic image, which evokes an aesthetic impression through the visual observation” (Design Law Article 2, Paragraph 1). Essentially, a design refers to the shape of an article, the shape of a building, or a graphic image.
To obtain design protection, a design must be registered. The requirements for a design application are (1) industrial applicability, (2) novelty, and (3) non-obviousness of creation. (1) implies that the design must be mass-producible. (2) is broadly similar to the novelty requirement in patent law, but it differs in that it considers not only known designs but also those that are “similar” to be lacking in novelty. (3) states that a design cannot be registered when a person ordinarily skilled in the art of the design could have easily created the design based on a shape, equivalent features, or graphic images that were publicly known, contained in a distributed publication, or made available to the public before the design registration application (Design Law Article 3, Paragraph 2).
The duration of design rights is 25 years from the filing date of the application for design registration (Design Law Article 21, Paragraph 1).
The key difference between design rights and the protection against imitation of product forms under the Unfair Competition Prevention Law Article 2, Paragraph 1, Item 3, lies in their applicability to products like clothing, which have short life cycles. While design registration requires a waiting period that could mean missing out on trends, the Unfair Competition Prevention Law provides immediate protection (without the need for application or registration) within a narrow scope (excluding similar products) and for a limited duration (three years from the first sale). This law plays a crucial role in addressing the shortcomings of design rights, particularly for industries with rapidly changing trends.