table of contents
July [General] Newsletter
"IPAS 2023 Case Studies" summarizes the results of startup support
A startup is a company that tries to advance business with new technologies and ideas. The Japan Patent Office has implemented the IP Acceleration Program for Startups (IPAS) since fiscal 2018, and has supported 104 companies over the six years up to fiscal 2023. The Japan Patent Office has created and published a collection of case studies that explains the results of support over the past six years, the case studies of six companies, and six points in building intellectual property strategies that became clear during support for the start-up phase.
The main points published in the case study collection are as follows:
- Overview of IPAS and the issues behind its creation
- Four benefits gained from receiving IPAS mentoring
- Representative examples of IPAS-supported startups
- Columns by experts with extensive knowledge of the startup industry
- Six points that became clear through IPAS support in formulating intellectual property strategies
Measures for startups
The Japan Patent Office has prepared various measures for startups, some of which are introduced below.
(1) Intellectual Property Acceleration Program
This program is aimed at startups that feel the need to develop an IP strategy but have not been able to put it into action or are unsure of where to start. It dispatches an IP mentoring team, including experts in multiple fields such as IP and business, for a certain period of time to help the startup accelerate their business through an appropriate IP strategy that is tailored to their business.
(2) Program to Dispatch Intellectual Property Experts to Venture Capital Firms
This program dispatches intellectual property experts such as patent attorneys and lawyers to venture capital firms (VCs) to support startups in building intellectual property strategies through the VCs. The dispatched experts work together with the VCs to accelerate the growth of startups by providing support for building intellectual property strategies linked to business strategies for startups before and after investment.
(3) Startup-oriented interview-based accelerated screening and super accelerated screening
① Accelerated screening using interviews
After filing a request for examination, you can have an interview with the examiner in charge before the notification of the first examination results. During the interview, you can explain the technical features of your invention directly to the examiner, and an online interview is also possible. As with the accelerated examination, you can get the examination results earlier.
② Super Accelerated Review
The final decision can be obtained even sooner than with the accelerated review. Both the accelerated review utilizing interview and the super accelerated review can be applied for free.
(4) Push-based support for startups (PASS)
Until now, applicants wishing to utilize the accelerated examination service for startups were required to submit an "Explanation of Circumstances Concerning Accelerated Examination." However, applicants who receive a communication from the JPO under PASS can receive accelerated examination through a simplified procedure, such as informing the JPO of their desire to use the service by telephone, without having to submit an explanation of circumstances.
As described above, companies that have developed new technologies or products but are wondering how to commercialize them may be able to receive a variety of support, including assistance with obtaining intellectual property rights such as patents and trademarks, so we encourage them to consider taking advantage of the support measures implemented by the Japan Patent Office.
Can AI become an inventor?
On May 16, 2024, in a lawsuit between an applicant and the Japan Patent Office over the issue of whether AI can be an inventor, the Tokyo District Court handed down a ruling that "inventors are limited to natural persons" (Reiwa 5 (Gyo-U) No. 5001).
The plaintiff wrote the name of the inventor in the domestic documents of the international application as "Dabbas, the artificial intelligence that autonomously invented this invention." In response, the Commissioner of the Japan Patent Office ordered the plaintiff to amend the name of the inventor to include the name of a natural person, but the plaintiff did not make the amendment, and the application was dismissed. The plaintiff appealed against this decision and sought to have the decision overturned.
The ruling determined that "it is reasonable to interpret the Intellectual Property Basic Act as stipulating that an invention is something created by a natural person. In addition, it also pointed out that "in light of the importance of AI inventions in industrial policy, it is particularly expected that Japan will conduct a legislative study on AI inventions and reach a conclusion as soon as possible."
Applications for this invention have been filed in countries around the world, and the United States, the United Kingdom, South Korea, and other countries have ruled that "inventors must be human." It seems likely that this judgment will become the mainstream around the world.
In addition, although it is not related to the discussion of AI inventorship, the United States Patent and Trademark Office (USPTO) has issued guidance for applicants and USPTO examiners regarding AI-assisted inventions. This guidance is also interesting as it deals with the perspective of whether inventorship is recognized for those who have made inventions using AI.
Newsletter translated into English
“IPAS 2023 Collection of Cases” Presents Results of Startup Support
Startups are companies that aim to advance their business with new technologies and ideas. The Japan Patent Office has been implementing the IP Acceleration Program for Startups (IPAS) since 2018, and by 2023 had supported 104 companies over the span of six years. The JPO has prepared and published a collection of cases explaining the results of these six years of support, including case studies of the six companies as well as six key points in building an IP strategy that became clear from the support provided during the initial start-up phase.
The main content published in the collection of cases is as follows:
- An overview of IPAS and the issues behind the creation of IPAS
- Four benefits of receiving IPAS mentoring
- Six examples of IPAS-supported startups
- Columns by experts with extensive knowledge of the startup industry
- Six key points in IP strategy formulation revealed through IPAS support
Policies for Startups
The JPO has prepared various measures for startups. Some of these are introduced below.
(1) IP Acceleration Program
This program is designed for startups that feel the need to develop an IP strategy but have not yet to implement it or do not know where to start. The program supports startups in accelerating their business through appropriate IP strategies tailored to their business by dispatching, for a limited time, mentoring teams that include IP and business experts from various fields.
(2) Program to dispatch IP experts to venture capital firms
This program dispatches IP experts, such as patent attorneys and lawyers, to venture capital (VC) firms to support startups in developing IP strategies through VCs. The dispatched experts work with the VCs to support the startups before and after investment by helping them develop IP strategies that are linked to their business strategies, thereby accelerating their growth.
(3) Accelerated Examination Utilizing Startup-Specific Interviews and Super Accelerated Examination
(i) Accelerated examination utilizing interviews
An interview with the examiner in charge of a case can be conducted after the filing of the request for examination and before the issuance of the first examination result. In the interview, the technical features of the invention can be explained directly to the examiner, and online interviews are possible. As with accelerated examination, the results of examination can be obtained at an early stage.
(ii) Super accelerated examination
It is possible to obtain a final disposition even earlier than under accelerated examination. Note that both accelerated examination utilizing interviews and super accelerated examination can be applied for free of charge.
(4) Push-type Assistance Service for Startups (PASS)
Previously, a “written explanation of the needs of the accelerated examination” had to be submitted for requesting accelerated examination utilizing startup-specific interviews. However, applicants who are contacted by the JPO based on the PASS will be able to obtain accelerated examination without submitting a written explanation, through a simple procedure such as a telephone call to the JPO to inform them of the applicant's wish to use the interview service.
As described above, companies that have developed a new technology or product but are wondering how to commercialize it may be eligible for a variety of assistances, including assistance regarding the acquisition of intellectual property rights such as patents and trademarks. Thus, companies should certainly consider using the support measures provided by the JPO.
Can AI be an Inventor?
On May 16, 2024, in a dispute between the applicant and the Patent Office over whether AI can be an inventor, the Tokyo District Court ruled that “inventors are limited to natural persons” (Case No. 2023 (Gyo-U) No. 5001).
In the filing document for the national entry of an international application, the plaintiff stated as the name of the inventor as “DABUS, the invention was autonomously generated by an artificial intelligence”. In response, the Commissioner of the Patent Office ordered the plaintiff to amend the application to state the name of a natural person as the inventor's name, but the plaintiff failed to do so, and the Commissioner of the Patent Office rejected the application. The plaintiff was dissatisfied with this disposition and sought cancellation of the disposition.
The court's decision concluded that "it is reasonable to conclude that the Intellectual Property Basic Act (omitted) provides that an invention is one that is created by a natural person." As an addendum, the court also noted that "it is particularly hoped that Japan will examine AI inventions as an argument for new legislation and reach a conclusion as soon as possible, in view of the importance of AI inventions for industrial policies."
Applications for this invention have been filed in many countries around the world, and judgments have been issued in the US, the UK, South Korea, and other countries stating that “inventors must be human beings”. It is expected that such judgments will become the norm throughout the world.
Also, although different from the discussion of AI inventor eligibility, the US Patent and Trademark Office (USPTO) has issued guidance for applicants and USPTO examiners on AI-assisted inventions. This guidance is from the perspective of whether an AI-assisted invention is eligible for inventor eligibility, which is another interesting question.