Japan Patent Office

Japan Patent Office

Uchida SamejimaLaw Firm

WIPO ASIA SUB-REGIONAL WORKSHOP

Support to Establish IP Strategy of SMEs

-Efforts of the SME Support Institutions-

June 5, 2007

Lawyer, Patent Attorney

Masahiro SamejimaSupported by PPI

Part.01 Intellectual Property Strategy and Business Competitiveness

IP Strategy and Business Competitiveness

(Source: “IP Strategy Manual for SMEs and Venture Businesses 2006” published by the JPO.)

▼ Strategic utilization of IP rights (patent rights, trademark rights, etc.) will strengthen business competitiveness.

Enhancement of business competitiveness

Enhancement of business competitiveness

0

20

40

60

80

100

120

140

Ａ年Ｂ年Ｃ年Ｄ年Ｅ年

High-grade human

resources

High-grade human

resources

Invention/patentInvention/patent

Technology development

Utilization

IP strategy

(1)

(2)

(3)

Market Market controlcontrol

IP strategy and process of business growth IP strategy and process of business growth

IP Strategy and Market Control


▼ Utilization of IP rights will ensure large market shares and high profit margins.

Market control through the use of IP rights (example of a case with patent rights)Market control through the use of IP rights (example of a case with patent rights)

Patent owned by Company A

Patent owned by Company A

Competing Competing Company BCompany B

Competing Competing Company DCompany D

Competing Competing Company CCompany C

Competing Competing Company ECompany E

- Patents will act as barriers to the entry of other companies, which will result in no price competitions and ensure high profit margins.

- Patents will act as barriers to the entry of other companies, which will result in no price competitions and ensure high profit margins.

Product Product supply supply

- R&D investment costs for competing companies will increase due to indirect technology development.

- R&D investment costs for competing companies will increase due to indirect technology development.

Part.02 Japanese SMEs and IP Strategy

IP Management in Japanese SMEs

(Source: “Questionnaire Survey Concerning Efforts for IP” conducted by Aichi Prefecture in 2003, “World’s Top SMEs” by Makoto Kurosaki, published by Kodansha Ltd. in 2003)

Whether or not companies own IP rights or have ever filed IP applicationsWhether or not companies own IP rights or have ever filed IP applications

▼ 99% companies in Japan are SMEs with employees of 300 or less, accounting for 88% of total employment in Japan.

▼ Many of them possess valuable technology, of which at least 550 companies account for the largest share of the Japanese market and approximately 100 are world leaders. ▼ Under present circumstances, due to limits to management resources, many of them have not established appropriate IP management.

Yes, 34.7%

No, 65.3%

No, 31.1%

Yes, 68.9%

■■ SMEs (with fewer than 300 employees) ■■

■■ Large-scale companies (with over 300 employees) ■■

* Figures are based on the results of a questionnaire survey conducted in Aichi Prefecture, which represents one of the biggest concentrations of small-and-medium-sized manufacturing businesses.

Part.03 IP Strategy Undertaken by the Japanese Government

Government Efforts Towards Establishing an Intellectual Property-Based Nation

Government efforts towards establishing an intellectual property-based nationGovernment efforts towards establishing an intellectual property-based nation

▼ Through development of legal systems and financial support, the government is promoting Japanese companies’ IP strategy and thus encouraging their growth.

0

20

40

60

80

100

120

140


R&DR&D

Turning Turning profitsprofits

IP StrategyIP Strategy

GrowthGrowthGrowthGrowth

0

20

40

60

80

100

120

140


R&DR&D

Turning Turning profitsprofits

IP StrategyIP Strategy

(2) Strengthening of business (2) Strengthening of business competitiveness through the competitiveness through the implementation of IP strategies implementation of IP strategies

(2) Strengthening of business (2) Strengthening of business competitiveness through the competitiveness through the implementation of IP strategies implementation of IP strategies

(1) Improvement in the legal (1) Improvement in the legal systems, financial support, etc. systems, financial support, etc.

(1) Improvement in the legal (1) Improvement in the legal systems, financial support, etc. systems, financial support, etc.

(3) These efforts will enhance industrial (3) These efforts will enhance industrial competitiveness throughout the whole country competitiveness throughout the whole country

(3) These efforts will enhance industrial (3) These efforts will enhance industrial competitiveness throughout the whole country competitiveness throughout the whole country

GrowthGrowthGrowthGrowth

Institutional Reform Towards the Realization of an Intellectual Property-Based Nation

Institutional reform by the government toward the realization of intellectual property-based nationInstitutional reform by the government toward the realization of intellectual property-based nation

▼ Former Prime Minister Junichiro Koizumi, during his time of office in 2002, advocated the establishment of “an intellectual property-based nation,” a notion that rapidly gained ground through institutional reform beginning in 2003.

Institutional Reform Enforcement Details

Enactment of the Intellectual Property Basic Act

2003Fundamental principles, establishment of intellectual property center, formulation of promotional programs, etc.

Revision of the Customs Tariff Act, etc.(1) 2003Suspension of import of patent-infringing products; addition of breeder’s right-infringing products to list of goods prohibited for import

Revision of the Unfair Competition Prevention Act (2)

2004Punishment for acts of wrongful acquisition, use or disclosure of trade secrets

Revision of the Patent Law, etc. (3) 2004Reduction of filing fee and annual patent fee; increase in examination request fee; and integration of opposition system and invalidation trial system

Revision of the Copyright Act (4) 2004Expansion of right of transmittability; establishment of moral rights of performer

Enactment of the Act for Establishment of the Intellectual Property High Court

2005 Establishment of the Intellectual Property High Court

Revision of the Bankruptcy Law 2005 Protection of status of IP licensees in the case of bankruptcy

Revision of the Court Organization Law 2005Increase and clarification of court probation officers’ authority in IP related cases; and enhanced protection of trade secrets

Revision of the Trust Business Law 2004IP right was newly included in the scope of assets on consignment, and the scope of actors for trust businesses was expanded to include general business corporations

(1) Revisions were also made in 2004, 2005 and 2006: “Introduction of a system for notifying concerned parties of the names of importers/exporters” etc.

(2) Revisions were also made in 2005: “Punishment for those who committed crimes outside Japan,” “Increased penalties” etc.

(3) Revisions were also made in 2005 and 2006: “Acceleration of examination procedures,” “Further reduction of examination request fee,” etc.

(4) Revisions were also made in 2005: “Introduction of music CD flowback prevention measures” etc.

(Source: “IP Strategy Manual for SMEs and Venture Businesses 2006” published by the JPO, the chart on the previous page as well)

Support Measures for Promotion of SMEs’ IP Strategy (1)

Major supportive measures implemented by the government (1)Major supportive measures implemented by the government (1)

▼ In order to encourage SMEs, which generally have less management resources than large-scale businesses, the government implements various support systems, such as the provision of a consultation services and annual patent fee reductions/exemptions.

(Source: “2007 Guide to Supportive Measures Implemented by the Small and Medium Enterprise Agency - How to Utilize IP Rights-” published by the Small and Medium Enterprise Agency, JST website, etc.)

Purpose Title and outline Details Major authorities

concerned

General support

Regional IP Advisory Counters (IP Promotion Program for SMEs etc.)

Establishment of IP consultation service centers throughout Japan Chamber of Commerce

and industry etc.Holding of IP seminars throughout Japan

Support for acquisition of

IP rights

Provision of information to applicants to facilitate decision-making in regards to examination requests

Support for prior art searchesPatent Office (Ministry of Economy, Trade and Industry) etc.

Implementation of accelerated examination in accordance with company’s or individual demands

Implementation of accelerated examinationPatent Office (Ministry of Economy, Trade and Industry) etc.

Implementation of more accurate examinations

Implementation of examinations based on visits and interviews with applicants, etc.

Patent Office (Ministry of Economy, Trade and Industry) etc.

Reduction of annual patent fee for SMEs

Half-exemption of annual patent fee and examination request fee

Ministry of Economy, Trade and Industry etc.

Support for acquisition of IP rights by universities for their research achievements

Provision of consultation for universities regarding IP right acquisition; support for the filing of international applications

Japan Science and Technology agency etc.

Support Measures for the Promotion of SMEs’ IP Strategy (2)

Major supportive measures implemented by the government (2)Major supportive measures implemented by the government (2)

▼ The government, led by METI (the JPO and the Small and Medium Enterprise Agency) and MEXT, is implementing various supportive measures for businesses and universities.

Purpose Title and outline Details Major authorities concerned

Support for utilization of IP

rights

R&D assistance for practical utilization of technological seeds

Subsidy for expenditures necessary for R&D on practical utilization Ministry of Economy, Trade and

Industry, etcConsultation service for realization of plan

Support for commercialization of technological seeds Various supports including those for IP right acquisition Organization for Small & Medium

Enterprises and Regional Innovation, etc.Consultation service regarding commercialization activities

Regional SMEs’ IP Strategy Support Program Dispatch of IP experts to SMEsJapan Patent Office (Ministry of Economy, Trade and Industry), etc.

Continuous Expert Dispatch Program (charged) Long-term dispatch of IP experts to SMEs Organization for Small & Medium Enterprises and Regional Innovation, etc.

Japan Brand Promotion Program Developmental support for “regional band-name products “ Chamber of Commerce and Industry,

etc.Support for market research and invitation of designers

Establishment of consultation service center for transfer of technology

Consultation service for universities regarding transfer of technology

Japan Science and Technology Agency, etc.

Disclosure of research achievements of universities/company searches

Disclosure of database for R&D achievements by universitiesJapan Science and Technology Agency, etc.Introduction of R&D achievements by universities to

companies

Promotion of university-based venture businessProvision of research funds to universities for commercialization activities

Japan Science and Technology Agency, etc.

Support for IP right protection in abroad 　　　　　　　　　　　　　　　 (SMEs’ IP Protection Program)

Support for investigation on IP right infringing products Japan External Trade Organization

(Source: “2007 Guide to Supportive Measures Implemented by the Small and Medium Enterprise Agency - How to Utilize IP Rights-” published by the Small and Medium Enterprise Agency, JST website, etc.)

Examples of Measures: Regional SMEs’ IP Strategy Support Program

▼ This Support Program was implemented over a three-year period starting in 2004, aimed at helping SMEs introduce and promote IP strategy

▼ The government/JPO outsourced support services to private IP consulting companies.

▼ The IP consulting companies provided SMEs selected by the government with various support systems, such as “review of patent strategy,” “improvement of IP management system” and “development of IP human resources,” and reported the outcomes thereof to the government.

Structure of the Regional SMEs’ IP Strategy Support ProgramStructure of the Regional SMEs’ IP Strategy Support Program

▼ This program also helps growth of private IP consulting companies supporting SMEs.

▼ The consulting companies report the outcome of their provision of support to the government, which also files information regarding methods of support.

Selection/Payment

Selection of businesses subject to support

Support

Consultation Reports

[Reference] Desired Support Systems for SMEs’ IP Strategy Development

Method and process of providing support for SMEs’ IP strategy developmentMethod and process of providing support for SMEs’ IP strategy development

▼ Method and process of providing support for SMEs modeled on the Regional SMEs’ IP Strategy Support Program

- It is highly effective for the IT, materials, and mechatronics industries.

- For the pharmaceutical and biotechnology industries, mapping requires innovative ideas because the acquisition of only a small number of basic patents will determine the success of a company.

- It should be noted that depending on the size and growth stage of an organization, different systems are required.

- Companies with larger number of employees engaged in R&D and IP management are more likely to require system development.


Part.04 IP Strategy Undertaken by Local Governments

Local Governments’ Efforts Towards Realization of Intellectual Property-Based Nation (1)

Prefectures that has formulated IP strategy/policy planPrefectures that has formulated IP strategy/policy plan

▼ Currently, 26 prefectures have already formulated IP strategies and 11 prefectures have begun steps toward the formulation thereof.

(Source: Website of Intellectual Property Strategy Headquarters, Cabinet Secretariat as of May 4, 2007)

Prefectures

Aichi

Mie

Fukui

Ishikawa

Shiga

Prefectures

Osaka

Tottori

Shimane

Tokushima

Prefectures

Fukuoka

Nagasaki

Oita

Okinawa

Prefectures

Tochigi

Ibaraki

Chiba

Saitama

Tokyo

Kanagawa

Gunma

Yamanashi

Prefectures

Hokkaido

Aomori

Akita

Miyagi

Fukushima

Local Governments’ Efforts for Intellectual Property-based Nation (2)

Efforts for IP strategy observed in some major citiesEfforts for IP strategy observed in some major cities

▼ In order to support local businesses, cities that have large populations and industrial concentrations are implementing various unique measures.

(Source: Websites of Kanto Intellectual Property Strategy Headquarters, Nagoya City, and Kansai Intellectual Property Strategy Headquarters)

Name of city Major measures

Yokohama

Formulation of “Yokohama IP Strategy Promotion Plan”

Implementation of prior art search support program

Establishment of a joint IP consulting company with the private sector

Nagoya

Assistance with filing of requests for examination

Assistance with filing overseas applications

Holding of training courses for SME employees in charge of IP

Kyoto

Holding of IP strategy-related seminars

Holding of training programs concerning “legal work and IP”

Dispatch of IP experts to SMEs

Osaka

Holding of IP strategy-related seminars

Patent distribution promotion program

Dispatch of IP experts to SMEs

YokohamaYokohama

NagoyaNagoya

KyotoKyoto

OsakaOsaka

Examples of Measures: Yokohama IP Strategy Support Program

▼ Yokohama is one of the biggest harbor cities in Japan, with a population of 3.6 million and a vast number of commercial and industrial businesses ▼ The city established an IP consulting company, IPMAX, through a joint capital investment with the private sector. ▼ The reasons that the city made it a joint stock company are as follows:

(1) The company is scheduled for full privatization after a certain period so as to keep its administrative costs low;

(2) The city is considering providing financial support, including IP trust, in the future;

(3) This will allow it to provide support utilizing the know-how of private IP consulting companies.

Yokohama City established a joint IP management support company with private sectorsYokohama City established a joint IP management support company with private sectors

▼ IP professionals are supporting SMEs. Human resources from the private sector are in charge of practical business.

Support

▼ Implementation of prior art search support and Holding of IP seminars, etc.

▼ Yokohama City is implementing the SMEs’ IP Strategy Support Program.The city will outsource support services to IPMAX, and support the management of IPMAX for a certain period following its establishment.

Japan Patent Office

Documents

Transcript of Japan Patent Office