          
          
                 INTELLECTUAL PROPERTY PROTECTION
          
          If you are seeking to develop trade or to license your 
          technology in Japan, you should take the steps necessary to 
          obtain and protect your rights in patents, trademarks, 
          copyrights, designs, trade secrets, and other intellectual 
          property rights in Japan.  Failure to do so can limit your 
          potential for success.
          
          Japan and the United States are signatories of the Paris 
          Convention for the Protection of Industrial Property and 
          other treaties governing the protection of industrial 
          property rights.  These treaties, however, do not 
          automatically protect patents or trademarks your business 
          has acquired in the United States.  You will have to file 
          applications for patents or for trademark registrations in 
          Japan, but your U.S. rights can provide certain advantages 
          if applications are filed promptly in Japan.  A U.S. patent 
          or trademark attorney, as appropriate, can provide advice, 
          but you will also need to hire a Japanese attorney, 
          preferably one with which your U.S.  attorney has an 
          established relationship, to prosecute the application for 
          a patent or for registration of a trademark.
          
          Japan and the United States belong to the Berne Convention 
          for the Protection of Literary and Artistic Works and to 
          the Universal Copyright Convention.  These conventions 
          provide automatic protection for copyrighted works, 
          including computer programs, originating in either country 
          or produced by authors of either country.  The owner of a 
          U.S. copyright which is infringed in Japan would be able to 
          sue the infringer in Japanese courts.  Registration for 
          copyrighted works is not required.  Japan does provide for 
          voluntary registration of computer programs and musical 
          works, which simplifies the evidence that must be produced 
          in court.
          
          U.S.-produced semiconductor chips are protected in Japan 
          under the Japanese Law Concerning the Circuit Layout of a 
          Semiconductor Integrated Circuit.  Under this law, foreign 
          chip layout-designs should be entered in the registry 
          maintained by the Industrial Property Cooperation Center.
          
          Obtaining and protecting intellectual property rights in 
          Japan can be time-consuming and costly. While the cost or 
          time involved in acquiring intellectual property rights 
          might seem prohibitive, lack of such rights would permit 
          competitors both in and outside of Japan to copy your 
          product or production process which you want to market or 
          license in Japan and to compete with your firm in the 
          Japanese market.  Even when intellectual property rights 
          have been acquired, pirating of technology and designs can 
          occur in Japan, as it does in many countries, including the 
          United States.  Each company in a trading or licensing 
          agreement should understand clearly what its rights and 
          obligations are with respect to the intellectual property 
          rights owned or acquired by the other.  Such a clear 
          understanding helps to create a good rapport based on 
          mutual trust, thereby ensuring the success of the trading 
          or licensing agreement.
          
          In 1989, 1990, and 1991, Japan was included on the "Watch 
          List" under the so-called Special 301 provisions of the 
          Omnibus Trade and Competitiveness Act of 1988, because of 
          deficiencies in its intellectual property laws and problems 
          of a practical nature involving protection of patents, 
          copyrights, and trademarks.
          
          Patents:  Japan's patent law differs from U.S. patent law 
          in several important ways.  First, under Japan's patent 
          law, patents are granted to the first inventor to file an 
          application claiming a particular invention, rather than to 
          the first to invent as is done in the United States.  Under 
          the Paris Convention, the date on which a U.S. applicant 
          filed his U.S.  application will become the Japanese filing 
          date so long as the corresponding application, in Japanese, 
          is filed in Japan within one year of the U.S. filing date.  
          Prompt filing in Japan is also important because printed 
          publication of a description of the invention anywhere in 
          the world, or knowledge or use of the invention in Japan, 
          prior to the filing date of the Japanese application would 
          preclude the grant of a patent on the application.  Second, 
          unlike the United States, where examination of patent 
          applications is automatic, an applicant must request 
          examination of his patent application in Japan but has 
          seven years in which to do so.  As is true in most 
          countries of the world, but not in the United States, all 
          patent applications are published in Japan 18 months after 
          filing.  If, during the examination, the Japanese Patent 
          Office (JPO) finds no impediment to the grant of a patent 
          for a particular invention, it publishes the patent 
          application a second time, including any changes that have 
          been made during the examination.  Following this second 
          publication of the application, any party may oppose the 
          grant of a patent by demonstrating that the standards for 
          patentability are not met by the invention.
          
          Japan and the United States are signatories to the Patent 
          Cooperation Treaty (PCT), which is administered by the 
          World Intellectual Property Organization.  Under the PCT, 
          an applicant can file a single "international application" 
          designating the PCT member countries in which a patent is 
          sought.  The international application has the same effect 
          as filing individual national applications in each of those 
          countries.  U.S. nationals can file an international patent 
          application with the U.S. Patent and Trademark Office of 
          the U.S. Department of Commerce and designate Japan as one 
          of the countries in which a patent is sought.  The 
          international patent application under this program does 
          not obviate the need to file a separate patent in Japan.  
          However, it does provide the applicant with certain 
          advantages regarding time limits and translations.
          
          It takes a long time to obtain a patent in Japan.  Like 
          patent offices in other countries, the JPO does not begin 
          examination until 18 months after a patent application is 
          filed, even if examination is requested at the time of 
          filing.  The shortage of patent examiners adds to the 
          problem as does the number of patent applications filed by 
          Japanese companies, causing a significant backlog of 
          applications awaiting examination.  An applicant can 
          request accelerated examination under certain 
          circumstances, but this does not help reduce the period of 
          examination in ordinary cases.  The JPO has added some 
          examiners to its staff and has begun to hire subcontractors 
          to perform initial searches of patent applications.  In 
          December 1990, the JPO inaugurated the world's first 
          electronic filing system for patent applications.  These 
          measures, however, have yet to result in substantial 
          reductions in the time required to examine a patent 
          application and grant the patent.
          
          It must be emphasized that correct translation is necessary 
          in the patent application process.  The JPO shows little 
          sympathy towards translation mistakes or typos.  Companies 
          should ensure that translations of their applications are 
          perfect.
          
          The average time required to examine a patent application 
          in Japan was 32 months in 1990.  That is in addition to the 
          18 months prior to initial publication and the 2 months 
          following publication for opposition, indicating that, on 
          average, it took 52 months to obtain a patent in Japan 
          (assuming there were no oppositions filed).  During the 
          examination period, no effective legal protection will 
          exist.  By comparison, the average period required for the 
          U.S. Patent and Trademark Office to process a patent 
          application is 18 months.  In the U.S.-Japan Structural 
          Impediments Initiative (SII), the Government of Japan has 
          agreed to reduce the period required for examination to 24 
          months within 5 years.  If the application is uncontested 
          in Japan and all requirements are met, the patent is 
          granted and valid for 15 years from the date the 
          application is published (but not more than 20 years from 
          the date the application was submitted).
          
          Trademarks:  To provide for protection for the brand names 
          of products, Japan enacted the Trademark Law of 1959.  
          Under the law, the first person to file an application for 
          a particular trademark is entitled to the registration of 
          the mark in connection with the particular class of goods.  
          Japan has just enacted a new law providing for the 
          registration of service marks which comes into effect in 
          April 1992.  Currently, service marks are protected only 
          under Japan's Unfair Competition Law.  The trademark law 
          permits the owner of a well-known foreign trademark or 
          service mark to oppose the registration of a mark if it can 
          demonstrate that the mark is confusingly similar to its 
          own.  One common mistake to avoid is to trademark just your 
          product.  You should also trademark the packaging and/or 
          promotional materials that go along with your product.  A 
          trademark registration is valid for ten years from the date 
          of registration and can be renewed indefinitely for ten 
          year periods so long as the trademark continues to be used.  
          If a mark has not been used for a period of three years, it 
          can be canceled.
          
          On February 20, 1990, Japan agreed to the Nice Agreement 
          Concerning the International Classification of Goods and 
          Services for the Purposes of the Registration of Marks.  As 
          is the case with patent applications, a resident agent 
          (usually a lawyer or patent agent) must prosecute the 
          trademark application.  As with the processing of patent 
          applications, Japan's trademark registration process is 
          very slow.  It takes an average of 4 years to process a 
          trademark registration in Japan, compared with an average 
          of 13 months in the United States.  The only protection 
          available for a trademark in Japan prior to registration is 
          under the Unfair Competition Law.  Under this law, the 
          owner of the mark must demonstrate that the mark is 
          well-known in Japan and that consumers will be confused by 
          the use of an identical or similar mark by the unauthorized 
          user.
          
          Copyrights:  Japan's copyright law is administered by the 
          Copyright Office of the Cultural Affairs Agency, Ministry 
          of Education.  Under the Berne Convention for the 
          Protection of Literary and Artistic Works and the Copyright 
          Convention, Japan provides protection for copyrighted 
          works, including computer programs, for nationals of member 
          states of those conventions and/or works first published in 
          member countries.  The protection lasts for the life of the 
          author plus 50 years or 50 years from publication in the 
          case of juridical entities.  Registration is not required.
          
          Japan amended its copyright law in April of 1991 to extend 
          protection for sound recordings from 30 to 50 years, to 
          provide a rental right for foreign phonogram producers, and 
          to provide criminal penalties for copying previously 
          unprotected U.S. and certain other foreign-produced sound 
          recordings released from 1968 to 1978.  The one-year 
          prohibition against rental starts to run from the date of 
          first sale anywhere in the world, not from the date of 
          first sale in Japan; there is no protection for foreign 
          sound recordings produced before 1968.
          
          In 1988, Japan enacted legislation to facilitate the 
          prosecution of suspected video pirates, although loopholes 
          remain.  The law must be enforced more rigorously if it is 
          to be effective in curbing abuses which have cost U.S. 
          owners of rights in video recordings an estimated $200 to 
          $250 million each year.
          
          Semiconductor Chip Layout and Design:  The layout-designs 
          of U.S.-produced semiconductor chips are protected in Japan 
          under the Japanese Law Concerning the Circuit Layout of a 
          Semiconductor Integrated Circuit.  This law is administered 
          by an independent registration agency, the Industrial 
          Property Cooperation Center (IPCC).  Under the Japanese 
          law, foreign chip layout-designs may be registered in the 
          registry maintained by the IPCC.  The duration and the 
          level of the protection is essentially the same as under 
          the U.S. Semiconductor Chip Protection Act. Japanese 
          layout-designs are eligible for protection in the United 
          States under orders issued by the Assistant Secretary and 
          Commissioner of Patents and Trademarks.
          
          Utility Model and Design Protection:  The Japanese utility 
          model system parallels the patent system.  It serves as an 
          incentive to individual inventors and small and 
          medium-sized businesses (which lack large budgets for 
          research and development) to invent.  While novelty remains 
          an important requirement, the degree of inventiveness for a 
          utility model is less than that required for a patent.  
          Devices are protected as utility models, but not methods.  
          Application procedures are similar to those for patents, 
          but the period of protection is 10 years from the date of 
          publication of the application and no more than 15 years 
          from the date of application.
          
          Japan also protects registered designs under a system 
          modeled on the British.  To be registered, a design must be 
          industrially useful, novel, and creative.  The design right 
          lasts 15 years from the date of registration.  The 
          application for registration is similar to that for patent 
          applications.
          
          Trade Secrets:  Japan enacted amendments to the Unfair 
          Competition Law in 1990 which provide some measure of 
          protection for theft of trade secrets such as know-how, 
          customer lists, sales manuals, and experimental data.  The 
          law provides for injunctions against wrongful use, but not 
          against use by innocent third party transferees of trade 
          secrets.
          
          If you are interested in protecting your product in Japan, 
          you will need a Japanese lawyer (bengoshi) or patent agent 
          (benrishi).  Consult with your attorney here in the United 
          States, the Martindale-Hubbell Law Directory, or for a list 
          of selected lawyers and patent attorneys, contact the Japan 
          Export Information Center (JEIC) at (202) 377-2425.  Other 
          English-language intellectual property protection 
          publications available include:
          
          "Patent Protection or Piracy - A CEO Views Japan," Harvard 
          Business Review.  September/October 1990, pp 58-67.  
          Reprint Product Information and Orders:  (617) 495-6192.
          
          Patent Application Paperless System: Guide Book.  Japanese 
          Patent Office (1990).
          
          Guideline for Accelerated Examination and Accelerated 
          Appeal Examination System for Working-Related Patent (or 
          Utility Model) Applications.  Japanese Patent Office (July 
          1989).
          
          Effect of the Japanese Patent System on American Business:  
          Subcommittee Hearing.  U.S. Government Printing Office 
          (June 24, 1988).
          
          Guide to Industrial Property in Japan.  Japanese Patent 
          Office (1988).
          
          Outline of Japanese Trademark System: An Introduction to 
          Foreigners.  Japanese Patent Office (1986).
          
          Industrial Property Rights in Japan.  Japan External Trade 
          Organization (Revised 1981).
          
          
