Beijing Law Review, 2012, 3, 133-136
http://dx.doi.org/10.4236/blr.2012.33018 Published Online September 2012 (http://www.SciRP.org/journal/blr)
Japanese New Patent Law: Lessons for China
Meirong Guo
Department of Social Engineering, Graduate School of Decision Science and Technology, Tokyo Institute of Technology, Tokyo, Japan.
Received June 27th, 2012; revised July 29th, accepted August 10th, 2012
ABSTRACT
In this paper, I systematically analyze the new Japanese Patent Law and make a comparative study on Chinese and
Japanese Patent Law to shed a new light on the improvement of the legal system of intellectual property in China. To
begin with, I review the historical development of Japanese Patent Law and the modern patent legal system in Japan.
Next, the aim and contents of the latest revision of Japanese Patent Law are described. I also pay close attention to the
issues remaining unresolved. Regarding the problems faced by Chinese Patent Law, I identify the lessons that China
could learn from Japanese New Patent Law. Finally, I suggest that there are still some unresolved issues in Chinese
Patent Law even after learning from the new Japanese Patent Law.
Keywords: Japanese Patent Law; Chinese Patent Law; Comparative Study
1. Introduction
Globalization has proceeded at an unprecedented pace in
the late twentieth and twenty-first centuries. The advent
of an international economic order has fundamentally
changed the nature of the global economy, affecting
governments as well as firms and individuals in every
nation and region [1]. The development of global econ-
omy could be promoted by an effective system of intel-
lectual property, which plays significant role in encour-
aging innovation, product development and technical
change. The patent law in the intellectual property right
(IPR) system is closely related to domestic industrial
development and external economic competitiveness.
China has made great achievements in its economic
development since it became a member of World Trade
Organization (WTO) in 2001 [2]. The overall economic
scale of China is keeping up with that of developed
countries. However, the legal system of intellectual
property in China has fallen behind the industrialization
with continuous high-speed growth. Specifically, Chi-
nese Patent Law is quite behind the counterparts in de-
veloped countries. For instance, Japan is known to have
greatly benefited from intellectual property generated in
other developed countries. In Japan, the patent protection
has been designed for th e ultimate objective of industrial
development [3]. It has several features that have helped
the absorption of spillovers of foreign inventive activity
by domestic enterprises. As we all know, Japan is an
important trading partner of China. Therefore, it would
be beneficial for China to have a clear understanding of
Japanese Patent Law in order to improve its legal system
of intellectual property with respects of the rapid eco-
nomic growth between China and Japan. It is also crucial
to pay attention to the development of Japanese Patent
Law because it has been revised frequently. There are a
lot of differences between Chinese Patent Law and the
Japanese one. For instance, there are three kinds of pro-
tection (patent for invention, utility model, and d esign) in
Chinese Patent Law, whereas a patent refers to only an
invention in Japanese Patent Law. The protections of
utility model and design are the task of Utility Mode l Act
and Design Act, respectively.
The present Chinese Patent Law was enacted in 1984.
There are still some unresolved issues in Chinese Patent
Law, although it has been improved through frequent
revisions, most recently in 2008 [4]. For example, some
provisions were not involved in Chinese Patent Law,
such as the legal protection of inv entors in joint research,
the rule intended to remedy infringed patent rights. In
contrast, Japan often revises the Patent Law to meet the
needs of industrial development. The latest version of
Japanese Patent Law was revised in 2011, which gives
some lessons to China, as I argue below. Notwithstand-
ing its significant implications on the possibilities of
Chinese Patent Law few efforts have been made in China
to analyze and assess the new Japanese Patent Law.
In this paper, I try to systematically analyze the new
Japanese Patent Law and to make a comparative study on
Chinese and Japanese Patent Law to shed a new light on
the improvement of the legal system of intellectual pro-
perty in China. To begin with, I review the historical

Japanese New Patent Law: Lessons for China 134
development of Japanese Patent Law and the modern
patent legal system in Japan. Next, the aim and contents
of the latest revision of Japanese Patent Law is described.
In this description, I pay close attention to the issues re-
maining unresolved. Regarding the problems faced by
Chinese Patent Law, I identify the lessons that China
could learn from Japanese New Patent Law. Finally, I
suggest that there are still some unresolved issues in
Chinese Patent Law even after learning from the new
Japanese Patent Law.
2. The Historical Development of Japanese
Patent Law
I begin with overviewing the historical development of
Japanese Patent Law to understand the background of the
latest revision of Japanese Patent Law. The purpose of
Japanese Patent Law is to meet the needs of industrial
development. The law is formulated in order to system-
atically protect the rights of inventors and promote in-
dustry development by means of inventions. The patent
system is one of policies intended for the development of
industries. The patent law could be a well-balanced leg-
islation to implement such a policy.
In order to promote industry development, Yukichi
Fukuzawa introduced the patent system of European and
American to Japan for the first time in Meiji era. By his
advocacy, Japanese society began to introduce and ex-
pand the western patent system. Eventually, Japanese
government decided that the patent legal system should
be implemented in Japan as soon as possible. As the first
Patent Law in Japan, the Rule of Monopoly was promul-
gated in 1871, although it was abolished one year later
without being enforced. Until then, advanced patent ideas
had been introduced into Japanese society [5]. Thus, it
laid the foundation of the patent system in Japan. The
patent system of Japan, Patent Monopoly Act, was en-
acted in 1885. It was revised as Patent Act in 1888 and
the patent system was still continuous. The Japanese
government officially renamed “Patent Act” as “Patent
Law” in 1899. Up to now, the term of “Patent Law” is
still be used. Later, after many revisions made in 1909,
1921 and later at many times, the modern patent system
of Japan was fully established [6].
Japanese patent law was established on the basis of
domestic law of related areas and was incompatible with
the rapidly developing international patent system. In
1959, the Japanese government thoroughly revised the
patent law, referring to a large number of legislations in
Western countries. In this sense, the present Japanese
Patent Law admittedly began from the patent law in 1959.
After the fresh start, Japanese Patent Law has been
greatly developed.
The current Japanese Patent Law is still based on the
patent law in 1959. Since 1989, the major revisions were
made in 1994, 1 996, 1998, 199 9, 2002, 2003, 2 004, 2006,
2007, 2008 and 2011. The latest revision of Japanese
Patent Law in 2011 will be described at length in the next
section [7].
3. The Latest Revision of Japanese Patent
Law
In recent years, with the development of innovation, an
increasing number of companies in Japan have taken full
advantage of the technologies outside their own and ap-
plied them into research and development (R&D) in or-
der to realize the commercialization of new products [8].
Accompanied by the above changes, Japanese Patent
Law was revised on June 8, 2011 to protect the inventors
in joint research and strengthen the protection of license
agreement. For the purpose of broadening the range of
innovation and solving intellectual property disputes
quickly and efficiently, it is thought to be essential to
improve the convenience of users by revising trial system
[9].
The major changes involved in the new Japanese Pat-
ent Law are as follows. First, the new Japanese Patent
Law stipulates that a non-exclusive license shall have
effect on the person who subsequently acquires the pat-
entee or the exclusive licensee, or the exclusive license
on the patent right even if it is not registered. Before the
law was revised, a non-exclusive license did not have
any effect on any person unless it was registered [10].
There were only a small number of cases in which
non-exclusive license was registered because of the high
cost and complex procedures of registration. Since there
is a potential risk for a holder of non-exclusive registered
right to work holder of non-exclusive registered right to
work to exercise the rights of a patent from the patentee,
the registration system of non-exclusive license was
concealed. Suppose that A is the holder of patent, and S
the license holder of the patent. Further suppose that A
transfers the patent to B (a new holder of the patent)
when there is the license agreement between A and S. In
this situation, the transfer of the non-exclusive license
from A to S shall have effect even if it is not registered
when B wants to seek injunction against S.
Second, the new Japanese Patent Law provides that the
person having the right to obtain a patent (the true hold er
of the patent right) can apply for the transfer of the rights
of a patent in the following two cases. The first is the
situation in which the patent is obtained by some of co-
inventors in a joint research or a joint development; in
this case, the objective of the revision is to strengthen the
protection of the real inventors of a patent. The second
case is that the application of a patent is applied b y so me-
one, who is not inventor (usurped application) or who
disobeys the rule of joint application (breach of joint ap-
plication). Before the law was revised, in the cases of

Japanese New Patent Law: Lessons for China 135
usurped application and breach of joint application, the
true inventor was able to request a trial for invalidation
but unable to request the return of the rights in explicit
terms. Let us A be an inventor, B neither an inventor nor
someone who has the right to obtain a patent and S a
third party. B applies a patent and becomes the holder of
the patent when A does not know. S files a request for a
trial for patent invalidation because B is not the true
holder of patent right. According to the new law, A has
the right to transfer the patent from B to others. However,
before the law was revised, A had the righ t of litigating a
trial for invalidation but was not entitled to the patent
right.
Third, there are two revisions in the new Japanese Pat-
ent Law for the purpose of improving the convenience of
users. The law improves their conveniences by extending
the period of reducing or discharging of patent fee. While
this period varied from one to three years before the law
was revised, the period is from one to ten years after the
revision. Moreover, the users are benefited from the new
law that broadens the objects applied to the exceptions
for lack of novelty. Before the law was revised, these
were considered as the case in which the novelty of in-
vention has lost (e.g., the explanation for funding re-
search and development to investors, or an oral presenta-
tion at a seminar on research and development consor-
tium). The new Japanese Patent Law revised the provi-
sion that objects applied to the exceptions for lack of
novelty from the viewpoint of the diversity of means for
the laying open of patent application. For example, when
the inventor presented his work in an academic confer-
ence, the inventor can apply for the patent and the inven-
tion would not be regarded as losing the novelty no mat-
ter how the inventor made public his work.
Finally, to resolve the disputes qu ickly and efficiently,
the new Japanese Patent Law prohibits the request for a
trial for correction after the litigation rescinding the trial
decision. In the case of a trial for invalidation, if the prior
notice of an appeal is given and the corresponding pro-
cedures to request correction are implemented, it is im-
possible to request a trial for correction after the litiga-
tion rescinding the trial decision. The reason for this re-
vision is to resolve th e “Catch-ball Effect” and to prevent
extensions and useless deliberations. The “Catch-ball Ef-
fect” is a term that describes how a case can go back and
forth from the Japan Patent Office (JPO) to court, such as
the procedure from Trial for Invalidation (JPO), Suit
against Appeal Trial Decision (Court) to Correction Trial,
then return to Trial for Invalidation (JPO), Suit against
Appeal Trial Decision (Court). Thus, after the revision,
the system begins from “Trial for Invalidation (JPO) to
Suit against Appeal Trial Decision (Court) and returns to
Trial for Invalidation (JPO)”. All ends at the “Trial for
Invalidation (JPO)” [11].
4. Lessons for Chinese Patent Law
After joining the World Trade Organization (WTO) in
2001, China has strengthened its legal framework and
amended its IPR and related laws and regulations to
comply with the WTO Agreement on Trade-Related As-
pect of Intellectual Property Rights (TRIPs). Chinese
Patent Law was enacted in 1984 and revised in 1992,
2000 and 2008. Th e aim of the th ird r evision in 2 008 wa s
to improve the quality of patents, the protection of na-
tional and local p ublic interests, and the balance between
patent protection and these public interests. Patents are
considered as a measure of technology prowess and in-
novation. Moreover, patent filing is considered as an
indicator of technology innovation in the country. By
2011, the number of new patent applications in China
had surpassed those of the United States and Japan so
that China is now in a leading po sition in patent filing all
over the world. Although Chinese Patent Law has played
primary role in increasing the number of patent filing,
such criticisms are often raised that the quality of Chi-
nese patent is not high an d that most of patent filling s are
applications for utility model and design but not for in-
vention.
Only when Chinese Patent Law continues to be im-
proved, can the goal of building the so-called innovation
country be achieved. Chinese Patent Law is very similar
to European and U.S. counterparts, with a few exception s.
One of the problems that China is facing now is how to
enforce and implement its patent law and policy effec-
tively. Besides, there are three problems that may still
exist in Chinese Patent Law. The first problem concerns
service invention, which means inv entions by e mployees.
Three issues are of great importance and significance.
First, how should we define the right of an inventor?
Second, how can we accurately distinguish a service in-
vention and a non-service invention? Third, how should
the right of a patent be transferred? Moreover, there are
still some questions unresolved by the current Chinese
Patent Law. For example, who is the patent applicant of
service invention? How pay incentive compensation to
an inventor?
The second problem is about the system of patent
agent. A patent agency, as a professional service agen t in
the patent system, plays a key role in providing a
pre-legal inventor with statutory rights. For the goal of
innovation country, the new Chinese Patent Law should
protect both the interest of the invention and that of the
patent agency. Since China currently makes use of the
market economy, it is essential to build a sound system
of patent agency consistent with international conven-
tions by revising Chinese patent law. Particularly, the
market access of patent agent and the acknowledgement
of patent attorney as a market agent should be clarified in

Japanese New Patent Law: Lessons for China 136
the patent law in order to enhance the predictability of
actions that is essential for the development of free mar-
ket economy.
The third problem is about administrative and judicial
“double protection”. Currently, there are two primary
ways to resolve patent disputes in China: the administra-
tive route and the judicial one. Because the infringements
of patent right are judged in the administrative and judi-
cial processes independently, the resources of govern-
ment are wasted. In addition, civil disputes in other areas
than intellectual property are also decided in some of
intellectual property courts. On the other hand, the cases
of the infringements of patent right are trialed by the lo-
cal patent administrative agencies; some of these admin-
istrative issues are resorted to administrative pleading
proceedings again and thus overburden the government.
Although the new Chinese Patent Law has added new
articles to improve the current situation, the problem is
not yet resolved.
The new Chinese Patent Law was revised in 2008,
while the new Japanese Patent Law in 2011. There is a
common objective to revise the patent law between
China and Japan, which is to improve social innovation.
The new Japanese Patent Law established the system of
transfer request to adequately p rotect the inventor in joint
research or joint development. As noted above, the prob-
lem of service invention is not yet resolved in the curren t
Chinese Patent Law. Regarding the problem of the tran s-
fer of patent right, the system of transfer request in the
new Japanese Patent Law can be a reference for China.
Moreover, the new Japanese Patent Law revised the arti-
cle that has enlarged the years of reducing patent fee for
small company to reduce the burden on business and to
encourage more enterprises to apply patents. These new
devices give us some insights on how to supply more
convenience for u sers.
5. Conclusion
The new Japanese Patent Law was promulgated in June
2011 and will be enforced in April 2012. As I described
before, the related articles were amended to strengthen
the protection of license contracts and the real inventor
(or patent right holder), to improve fairness of dispute
resolution and to forbid the request for a trial for correc-
tion after the litigation rescinding the trial decision.
These will work together for the three goals: meeting the
aims to open innovation, making dispute resolution faster
and fairer and improving users’ convenience. However,
there are still some issues unresolved by the new Japa-
nese Patent Law. First, the revision indeed made it possi-
ble to oppose the third party, even without the registra-
tion with the JPO. However, it does not limit the righ t of
injunction. Thus, there should be different stipulations
ntended for different industrial areas. Second, the right
of transfer is valid in a usurped application , regardless of
whether the applicant is a true in ventor. Generally speak-
ing, the patentee who obtains a patent right should meet
two conditions of invention and patent filing. Therefore,
the revision should make it clear whether the applicant is
the true inventor. In contrast, in Chinese Patent law, the
non-exclusive license holder must register with the Pat-
ent Office in order to oppose a third party. Thus, the
situation in China is the similar to the situation in Japan
before the law was revised. Moreover, in Chinese Patent
Law, it is still not possible to return the rights to th e true
inventor. Therefore, inventors must be cautious of usurped
applications and br eaches of joint applications. It follows
from these all that we can learn valuable lessons from the
new Japanese Patent Law.
i
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