In a recent interview in Managing Intellectual Property, Toshiaki Iimura, Chief Judge of the Intellectual Property High Court of Japan, observes that the court is now seeing significant growth in the number of cases involving foreign companies or foreign patents. In terms of patent cases, he adds, some of the most noteworthy increases include IT, smartphone technology, environmental technology and pharmaceuticals. For those who have followed the latest high-profile patent disputes between Apple and Samsung, the stakes of such decisions, both in terms of global reputation and market share, are all too clear.
Know the basics of domestic IP law
As business becomes more global, IP protections too will require greater global awareness and expertise. Japan, being one the world’s largest economies, is therefore of great strategic importance for international companies of all kinds. This is especially true for ICT and pharmaceutical companies, for whom the country represents not only a major consumer market, but also a key supply chain hub with strong legal protections.
In Japan, there are four main laws offering protection of the following IP properties: invention, utility models, industrial designs and trademarks. Although each law has its own jurisdiction, comprehensive IP protections will often include a combination of the following legal properties, all of which must be registered with the Japanese Patent Office (JPO):
- Patent Law, which covers products and methods of high technological creativity, protects an invention for 20 years from the date the application is filed. For pharmaceutical products and agricultural chemicals, a five-year period of extension may also be applied.
- Utility Model Law protects utility models, which often have a shorter life cycle than patents and relate to product aspects such as shape, structure and technological aspects. This law protects the model for six years from the date of application.
- Design Law covers aspects such as pattern, colour and design characteristics of a product. Under this law, a design is protected for a period of 15 years from the date of registration.
- Trademark Law covers aspects such as letters, diagrams, colour and other identification elements associated with a product or service. Trademark Law protects trademarks for a period of ten years from the date of registration and may be renewed for additional ten-year periods.
In addition to these four main Intellectual Property laws, other types of intellectual property may also be protected under various commercial, copyright and industry-specific laws.
Choose experts with strong local knowledge
More than just an ability to file, translate and renew IP rights, successful protection of IP rights in Japan demands an experienced partner with significant knowledge, expertise and contacts with trusted local IP experts. When launching into any new market, local expertise is everything. This is particularly true for western companies expanding into Japan, where cultural, legal and linguistic differences are not only a barrier, but can also have a significant impact on the successful enforcement of IP rights.
Invest in a local trademark
Language is just one example: In Japan, as in many other Asian countries, the majority of consumers have little or no fluency in English or other western languages. An important first step for any brand is therefore to register a national trademark in the local language. Deciding on a Japanese language mark, however, is more than just a job for a translator. In fact, its sound or meaning is unlikely to be similar to its English counterpart, making it a worthwhile strategic investment to develop and register a Japanese name and mark that you can control and own.
Tap into a trusted network
In addition to overcoming cultural barriers such as these, adapting to the Japanese IP system carries its own set of challenges. The IP system is very sophisticated, requiring attorneys with highly specific legal and technical knowledge, while the business culture itself is oftentimes quite conservative, demanding an extensive network built on trust, respect and longstanding relationships. For a European company, it is therefore critical to form an early partnership with a firm that not only understands its current patent portfolio and strategy, but can efficiently and effectively guide and execute this strategy through an experienced local network of Japanese attorneys.