Problems relating to Trade and Investment on United States
17. Implementation of intellectual property rights ("IPRs") |
|||
Issue |
Issue details |
Requests |
Reference |
| (1) Heavy Burden of Obligating Applicant the Disclosure of Prior Art | - In regard to patentability of the patent applications, the documental submission that accompanies the disclosure obligation based on the principle of good faith on the pending patent relative to patentability of the material information (on prior art) is extremely onerous upon patent applicants. Especially foreign patent application cases quoted by patent offices (in Japan, EU, and other countries) require not only case numbers but photo copies of gazette, and literature themselves at exorbitant cost for work time, attorney's fees, etc. | - It is requested that the USPTO repeals the applicant's responsibility for disclosure of important information by taking advantage of the information exchange system (such as Dossier Information System) between the Patent Office's concerned without the applicants' participation. | - CFR Title 37, Sec. 1.56 Duty to Disclose Information Material To Patentability, (a)(1) Prior Art Cited in Search Reports of a Foreign Patent Office in a Counterpart Application |
| (2) Anomaly in the deadline for submission of applicant's oath and invoicing of surcharge | - Notwithstanding the provisions under Patent Act Sec. 115 (f)) "Timing of Filing Inventor's Oath or Declaration (IOD) shall be ... No later than the date on which the issue fee for the patent is paid," in practice, unless IOD is filed simultaneously with the filing of patent application, the surcharge is withdrawn automatically from the bank account of the applicant registered by each patent attorney. Thus inconsistency has arisen between the period of IOD submission and withdrawal of the surcharge set forth in the Patent Act. This is unfair. | - It is requested that the U.S. Patent and Trademark Office refrains from automatically withdrawing from the bank account of the applicant the surcharge, where IOD is timely submitted, as specified in the Patent Act | - 35 USC Sec. 115 - Oath of applicant (f) |
| (3) Nebulous Legislative Provisions on the Home Country Application Obligations | - In emerging countries where needs for local development grow, many of them retain legislative provisions for Home Country Application Obligations (HCAO). However, due to the opaqueness of the legislation, on occasions, it is difficult to secure effective protection of IPRs. In addition, in these days when needs grow for the cross border joint development, there is a risk that HCAO in plural countries can conflict each other. | - It is requested that the GOU takes step to: -- deregulate HCAO or clearly sets forth the provisions into law, and -- promote deregulation of HCAO upon the cross border development through agreements by and among multiple countries. |
|
| (4) Nebulous Disclosure Obligations for Information on Foreign Patent Application and Examination Information | - Even today when the computerisation and provision to the public of patent examination information, some countries continue to obligate disclosure of information on the fact of foreign patent application and the result of its examination. It heavily burdens Multi-National Enterprises (MNES) seeking IPRs protection in multiple countries. Due to the vagueness of such requirements, MNEs must run the risk of unintentional violation of its obligations. | - It is requested that the GOU deregulates or repeals the disclosure obligations of the foreign patent application information, or else, advances clarification of the contents of such obligations. | |
| (5) (Copyright) Legal Measures on Circumventing Access Control | - Member Firm is opposed to introduction of both 'Civil' and 'Criminal' Penalties on the 'Conducts' and 'Equipment' in Circumventing Access Control (CAC). Introduction of restrictions holds material impact upon viewing, listening and using conducts of the non-exclusionary copyrighted literary work/materials, with a possibility of largely disrupting the balance between copyright owner and user of copyrighted materials. However, failure of the GOU proposal to refer to these exceptional cases could likely upset the balance of benefits between right-holders and users among the TPP signatories. Protection of access control itself is not only harmful to users' free use and exchange of information. It is also injurious to technology development relative to hardware/software that users could enjoy. As a result, it means nothing but adding negative factors to users in the globally competitive world. Moreover, it could give vent to a side effect of protecting a particular platform. In fact, litigations have materialised in the U.S. to protect certain platform in the name of copyright protection. In this respect, under doctrine of fair use and Digital Millennium Copyright Act of 1998, the U.S. permit distribution of equipment for securing interchangeability Defeating Access Control (DAC), including the application procedures in every three year for renewal of DAC, due consideration being given to balancing between protection and usage. However, member firm is opposed to apply access control avoidance provisions in Japan where no such written exclusionary legislation by GOU exists. In addition, for avoidance of extreme instances where manufacturers' freedom of design/supply is materially impaired, it is also necessary to expressly provide into legislation that the technical devices unilaterally used by the contents providers (including without limitation, access control and copy control) by no means may be made into mandatory requirement. |
- It is requested that GOU tolerates circumvention of access control. | - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.G.10, QQ.G.11, QQ.G.12, QQ.H.9 GOU seeks Introduction of Legal Measures on Avoidance of Access Control - EU, Korea 10.12 - the U.S., Korea 18.4.7 - the U.S., Peru 16.7.4 - the U.S., Chili 17.7.5 |
| (Action) - On 5 October 2015, TPP Agreement agreed in principle by 13-countries including Chile (in Chapter 18 Intellectual Property, Article 68.1) act of unlimited circumvention of access control, manufacture, import, distribution, or sale to public of devices, etc. is liable and subject to the remedies provided for in Chapter 18 Article 68.1 (Civil and Administrative Procedures and Remedies). |
|||
| (6) (Copyright) Turning Copyright Infringement into a Crime prosecutable without a Formal Complaint From the Victim | - Copyright infringement being addressed to private right infringement, there can be no necessity for its recovery in the absence of the injured party's wish for the damage recovery. From the perspective of deterrent effect, it is barely necessary, either. On the contrary, only its negative impacts such as future atrophy due to criminal punishment on expressing act remain . In light of the fact that most creation, expression, etc. begin from copying, tightening of the deterrent measures with criminal fines will only leave the negative atrophic effect upon future expressive works and conducts. Concerning copyright, the vicinity of right is ambiguous, such as restricted right, indirect infringement, etc. Due consideration or deliberation is necessary (for example, from the perspective of atrophic effect) in cases with difficult predictability. | - It is requested that GOU refrains from turning Copyright infringement into a crime prosecutable without a formal complaint from the victim. | - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.H.7-7(h) turning Copyright Infringement into a Crime capable of prosecution without a Formal Complaint from the Victim. - the U.S./Korea 18.10.27 - the U.S./Peru 16.11.27 - the U.S./Chili 17.11.22 - Australia/Chili 17.38 |
| (Action) - On 5 October 2015, TPP Agreement in Chapter 18, agreed in principle, by 13-countries including Chile, "Criminal Procedures and Penalties" provides: "Its competent authorities may act upon their own initiative to initiate legal action without the need for a formal complaint by a third person or right holder, provided, however, that, " With regard to copyright and related rights piracy provided for under paragraph 1, a Party may limit application of this subparagraph to the cases in which there is an impact on the right holder's ability to exploit the work, performance or phonogram in the market. (Chapter 18 Intellectual Property, Article 18.77.6g.). |
|||
| (7) (Copyright) Protection Period | - Extension of copyright protection period to "50-years beyond life" means a delay by a few decades to make the copyrighted work public, forming the base of next creative work. It leaves a question as to its propriety. While one thought relies on the EU/U.S. based international streams, both of which, however, have been prompted by the respective unique domestic needs: in the case of the U.S., the protection of the movie industry, and EU, the formation of the single market, which was incapable of completion without taking substantial time. On the other hand, Japan fails to see any needs for prolonging the protection period. If anything, maintenance of copyright for "50-years after the end of life" should be appropriate, in the burgeoning Asian contents industries geared toward PRC/Korea, etc. In this regard, thanks to the provisions under doctrine of fair use, etc., the U.S., are, in effect, balancing to a degree between protection of copyright and use of copyrighted materials, whereas only the negative impact remains in Japan where no equivalent provisions are made into law. What impact could it give on the extended copyright protection between the result in the protection of copyright and its utility, and in the same perspective, if there are issues that Japan needs to demand other countries over the issues such as restricted rights, etc. These are some of the additional issues Japan needs to address over the optimum balance between copyright protection and its utility. (The same applies equally to the overall tightening of protection of other rights incorporated into TPP, to ascertain, if there are issues Japan must require other countries, while seeking the optimum balance between protection and utility of copyrighted materials. Incidentally, in Europe, extension of the protection period, i.e., the copyright on live performance, recording, and measures to reduce dead contents are being incorporated. |
- It is requested that GOU accepts the copyright protection period of "50-years after the end of life". | - Countries with the Copyright Protection Period of "50-Years After the End of Life": New Zealand, Vietnam, Brunei, Malaysia. - Countries with the Copyright Protection Period of "70-Years After the End of Life (70-YAEL)": the U.S., Australia, Singapore, Chile, Peru. - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.QQ.G.6, QQ.G.7 Protection Period of 70-YAEL - EU/Korea10.6: 70-YAEL - US/Korea 18.4.4: 70-YAEL - US/Peru 16.5.5: 70-YAEL - US/Chili: 17.5.4: 70-YAEL - Australia/Chili 17.27: 70-YAEL - EU/Peru/Columbia: 70-YAEL |
| (Action) - On 15 October 2015, 13-countries including Chili agreed in principle on Trans Pacific Partnership Agreement (P-TPP). In Chapter 18 intellectual property, it provides the period protection of copyrighted materials (including movies), live performance, or recorded materials as follows: (a) on the basis of the life of a natural person, the term shall be not less than the life of the author and 70 years after the author's death; (b) on a basis other than the life of a natural person, the term shall be: (i) not less than 70 years from the end of the calendar year of the first authorised publication of the work, performance or phonogram; or (ii) failing such authorised publication within 25 years from the creation of the work, performance or phonogram, not less than 70 years from the end of the calendar year of the creation of the work, performance or phonogram. |
|||
| (8) (Copyright) Parallel Import of Copyrighted Original (Genuine) Products | - Extension of exclusive right on import of original (Genuine) products interferes with external distribution / transactions of copyrighted products beyond national border. (Note) GOU seeks inclusion in TPP a provision that makes parallel import of original (genuine) products illegal. However, legality of parallel import of original (genuine) products was affirmed in supreme court decision, Kirtsaeng v. John Wiley & Sons, Incentives. (19 March 2013). |
- It is requested that GOU permits the legality of parallel import of original (Genuine) products. | - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.G.3 [US/AU/PE/NZ/SG/CL/ MX propose; VN/MY/BN/JP oppose: Each Party shall provide to authors, [NZ/MX oppose: performers,] and producers of phonograms the right to authorize or prohibit the importation [133] into that Party's territory of copies134 of the work [PE oppose: [NZ/MX: oppose: performance,] or phonogram] made without authorization, [PE/AU/NZ/CA/SG/CL/ MX/JP oppose: or made outside that Party's territory with the authorization of the author, performer, or producer of the phonogram.[135] ]] [136] |
| (9) (Copyright) Statutory Damages | - While the argument presupposes difficulty in providing burden of proof for damages, generally, proof of damages for transmissibility, etc. is not necessarily difficult. To begin with, in other illegal activity where provision of proof of damage is difficult, the onus is upon the plaintiff to prove damage. There can be hardly any justification to introduce "statutory damage" provisions, exceptionally, only on copyright. Moreover, under Anglo-American Laws, from its atrophic effect, statutory damages ought to have a deterrent effect. However, its introduction triggers frequent IPR instigation, with the spiraling amount of damage, as are the cases in the U.S. In this respect, these are no consensus not only within industries, but no social consensus itself exists. Moreover, the decline in sales is not due to illegal download, but rather, fundamentally, to the original price setting of the official products, as pointed out by some. To begin with, before argument on damages, the problems at issue seem to point to the causal relationship between infringement on the transmissibility right and damages. Why the proof of the damage amount alone has become the focus of discussion is questionable. Consequently, the going provisions of lessening the burden of proof alone should suffice. It obviates the need for extraneous provisions on top of them. In the copyright field, both special consideration and review are necessary in a case where the boundary of copyright is ambiguous, (for example, from the view point of atrophic effect, such as indirect infringement of the restricted right--where predictability barely exists.) |
- It is requested that GOU takes step to remove "statutory damage" from the legislation. | - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.H.4.X - 1 - The U.S. seeks introduction of Statutory Damage for copyright under TPP. - EU/Korea 10.50.2, 10.50.3 - The U.S./Korea 18.10.6 - The U.S./Peru 16.11.9 - The U.S./Chili 17.11.9 - The U.S./Columbia 244.2 |
| (10) (Copyright) Punitive Damage Scheme | - Punitive damage scheme fails to come to grip with "restitution in integrum of the damage actually caused to the injured party" to begin with, in breach of good public order and customs. (Japan supreme court Decision of 11 July 1997, Bansei Kogyo Case). Assuming arguendo, the deterrent effect, inherent to criminal penalty, should fail to bring out sufficient results, the answer ought to be sought in strengthening its enforcement under the existing legislation. To begin with, the precise check on its effectiveness is necessary. In the first place, the consequence of establishing the act of copyright infringement has been ambiguous, while from the past, the problem over assurance of its predictability has been pointed out. It is clear from Disney's 'Winnie-The-Pooh' rights case, which shows: The severely narrowed down requisite conditions for establishing the Act of Aiding and Abetting ("AAA"), for avoidance of an "excessive atrophic effect" upon persons engaged in software development. It severely defines its AAA invocation requirements: "Software being capable of application, both for 'legal' and "illegal infringing" use of copyright by persons, within an exceptional high probability of using the software in copyright infringing conduct, while the software provider knowingly has disclosed and provided the software, and only when AAA was committed using software so received." Thus, a copyright infringement case, being both civil and criminal proceedings, requires a degree of clarity, reflecting the circumstances in which AAA is established, just the same as other criminal cases in general. Member firm is opposed to the GOU's ready and hasty resort to beefing up the deterrent effect when the indirect infringement issue largely relates to this subject. In addition, conformance of direction of argument on punitive damage would be advisable, including not only patents but other civil issues as well. "Japanese Supreme Court Decision of 11 July 1997" |
- It is requested that GOU refrains from establishing Punitive Damage Scheme in its legislation. | - WikiLeaks Release of Secret Trans-Pacific Partnership Agreement (TPP), 30 August 2013, QQ.H.4.X - 1 - GOU seeks introduction of Punitive Damage in TPP. |
<<BACK |