2019.12.24
As for Revisions of Patent Act, etc. (Regarding Protection of Right)
PATENT
As for Revisions of Patent Act, etc. (Regarding Protection of Right)
"The Act for Partial Revision of the Patent Act, etc." was passed and enacted on May 10, 2019, and issued on May 17, 2019, and the revision of the Design Act should be referred to our NEWSLETTER of October 4, 2019. The revised Patent Act is explained with the revised Unfair Competition Prevention Act, both of which were entered into force on July 1, 2019. The purpose of the revision explained as follows is to protect your important technology, etc.
1. Expansion of the Dispute Resolution Procedure of Intellectual Property
The patent right has a feature of difficulty to prove an infringement and a damage as well as to prevent the infringement in spite of easiness to be infringed. Especially, some opinions, that evidence collection is difficult or the amount of compensation for damages is not appropriate, are found in litigations of patent infringement.
In order to protect patent rights properly and balance the burden of proof between a patentee and an alleged infringer, the Patent Act, etc. is revised under the purpose of improving the litigation system.
The system is established, in which, in the litigation of patent infringement, an inspector enters a factory, etc. of the alleged infringer, makes investigations required for proving the patent infringement, and submits the report thereof to the court. Accordingly, it is expected that this new system makes it easier to prove the patent infringement.
The on-site examination is ordered by the court based on the petition of the litigant parties.
As details of the on-site examination, the inspector can enter factories, etc., ask parties questions and request the submission of documents and additionally take actions permitted by the court, such as operation, measurement and experiment of equipment or others.
A neutral technical expert is appointed by the court as the inspector.
Requirements for permitting on-site examination are:
a. the case where the collection of evidence is required to determine whether there is any fact to be proved or not;
b. the case where there is any reasonable reason to suspect that the other party has infringed;
c. the case where the petitioner cannot collect evidence; and
d. the case where there is no circumstance to take inadequate time and effort to collect evidence.
The report is adopted as evidence only after submission to the court.
2) Review of Calculation Method of Compensation for Damages (Article 102 (1) of the Patent Act, issued on May 17, 2019)
Since it is difficult to prove the amount of damage in the litigation of patent infringement, the provision to estimate the amount of damage is regulated. The provision to estimate the amount of damage is revised since there are some cases where damages incurred by a patentee or the exclusive licensee (hereinafter, referred to simply as the Patentee) were not sufficiently compensated even though this provision is applied. This revision helps accurately compensate the damages incurred by the Patentee and expectedly improve the effect of preventing infringement.
Even before this revision, there was a provision that the amount calculated by multiplying the amount of profit per unit quantity in case of sales by the Patentee on the amount (assigned amount) of infringing products assigned by the infringer is the amount of damage. However, the assigned amount in this case was limited to a range not exceeding the Patentee's performance ability, etc. Also, apart from this, the amount equivalent to the license fee was regulated as the amount of damage.
However, it tended not to be allowed to claim the license fee equivalent to the assigned amount exceeding the Patentee's performance ability, etc. since the right to claim damages for such part of the assigned amount is extinguished.
In accordance with this revision, the license fee equivalent to this part of the assigned amount can be claimed. In other words, in addition to the compensation for damages based on the assigned amount not exceeding the Patentee's performance ability, etc. (which has been approved previously), the Patentee will be able to claim the compensation for damages for infringement assigned by the infringer exceeding the Patentee's performance ability (which was limited before this revision) by deeming to have given a license to the infringer.
(ii) The amount equivalent to license fees
Prior to this revision, there was no express provision to approve the amount equivalent to the license fee with due and sufficient consideration in the infringement.
This revision clearly states that the Patentee can take into account the amount to be determined in the negotiation on the premise that there has been a patent infringement in order to calculate the amount of damages equivalent to the license fees. Specifically, the points stated below are taken into account to calculate the damage amount equivalent to the license fees.
a. Fact of a patent infringement
b. Loss of the opportunity of license granted by the Patentee
c. Specific circumstances between the parties of the litigation such as the infringer implementing a patent right without contractual restrictions
3) Expansion of In-camera Inspection Procedure (Article 105 of the Patent Act, to be executed on July 1, 2020)
The court can order submission of documents required to prove an infringement or calculate damages in an infringement litigation of a patent right, etc. However, the court may not order the submission of documents if an owner of documents has a "reasonable reason" of rejecting the submission of such documents. Also, the court can request the owner of documents to show such documents in order to determine whether there is the "reasonable reason" or not and upon determination, an "in-camera procedure" is used, in which only the court can conduct a personal inspection for the determination. Meanwhile, the "in-camera procedure" was not used to determine whether the document was required to prove infringement or calculate damages.
On the other hand, since making a determination based on documents related to infringement litigation of patent rights often requires expert knowledge, it could prevent the court from ordering the submission of documents.
Taking into account the point noted above, the following revision will be made. Accordingly, it is expected that the order to submit documents will be less disturbed and the litigation will be appropriately carried out.
(ii) If the court deems it necessary, a neutral third-party technical expert (expert member) having a confidentiality obligation can be involved in the in-camera procedure.
The revision is also made in the Utility Model Act, Design Act and Trademark Act.
2. Protection of Data Such as Big Data
With the development of information technology such as IoT and AI, the necessity to appropriately protect various types of data with highly added value is increasing. These data can be protected by a patent right if patent requirements are met. Furthermore, the revised Unfair Competition Prevention Act came into effect on July 1, 2019 in order to expand protection of these data.
In some cases, these data could not be protected by a patent right since patent requirements were not met. Since the Unfair Competition Prevention Act has been expanded, the possibility of protection of these data under the Unfair Competition Prevention Act has increased even if it is impossible to obtain the patent right.
As stated below, after the brief explanation of the important points of patent requirements for data, the provisions newly added in the Unfair Competition Prevention Act is explained.
a. Patentability of Inventions
In order to fall under an "invention", it is required to be "creation of a technical idea using the laws of nature".
In order for data itself to fall under "creation of a technical idea using the laws of nature", it is required to be the data corresponding to something "equivalent to a program".
In order for the data itself to correspond to something "equivalent to a program", the data structure specifies information processing and information processing specified by the data is required to be specifically realized using hardware resources such as computers. Therefore, simple input data for information processing and output data outputted as a result of information processing do not fall under the "invention".
b. Inventive Step
The computer processing (information processing) specified in the data is required to have an inventive step over known procedures of computer technology, etc. For example, the inventive step is denied if the computer processing specified in the data is just a combination of known computer processing.
On the other hand, some data related to IoT and AI such as big data may be characterized only by the contents thereof (such as information collected as data, for example, information collected by big data). However, in order to obtain a patent right for data, there must be an inventive step in the computer processing specified by the data in spite of whether the data is new or not. Accordingly, an inventive step is denied if a feature is only in the content of such data.
(ii) Unfair Competition Prevention Act (Article 2(1) (xi) to (xvi) of the Unfair Competition Prevention Act)
As stated below, the provision to protect "data offered limitedly" is added.
"Data offered limitedly" is defined as the technical or business information that:
a. as an information provided to specific persons on a commercial basis (a feature to offer limitedly);
b. stored in a substantial amount by electromagnetic methods (a feature to store in a substantial amount); and
c. controlled by electromagnetic methods (a feature to control by electromagnetic methods).
For this reason, the "data offered limitedly" does not include data provided free of charge. Also, the "data offered limitedly" is required to have the access restriction by passwords, etc.
If the following actions are taken, the holder of the "data offered limitedly" can claim injunction and compensation for damages against the offender.
a. A person having no access right obtains, uses or disclose the "data offered limitedly"(xi).
b. To obtain, use or disclose the "data offered limitedly" under awareness of fraudulent acquisition (xii).
c. To disclose the "data offered limitedly" under subsequent awareness of fraudulent acquisition (xiii).
d. A person having an access right discloses the "data offered limitedly" for the purpose of obtaining an illegal profit or causing damage to other persons, and uses the same in breach of obligations (xiv).
e. To obtain, use or disclose the "data offered limitedly" under awareness of the disclosure of the "data offered limitedly" for the purpose of obtaining an illegal profit or causing damage to other persons by a person having an access right (xv).
f. To disclose the "data offered limitedly" under subsequent awareness of the disclosure of the "data offered limitedly" for the purpose of obtaining an illegal profit or causing damage to other persons by a person having an access right (xvi).
