table of contents
September [Legal] Newsletter
Publication of the 2024 Patent Administration Annual Report
In July 2024, the Patent Administration Annual Report 2024 was published on the Japan Patent Office website. This is a summary of domestic and international trends surrounding intellectual property and the efforts of the Japan Patent Office, in order to deepen interest and understanding in the intellectual property system.
This section mainly introduces some aspects of design applications filed with the Japan Patent Office.
URL: https://www.jpo.go.jp/resources/report/nenji/2024/document/index/all.pdf (Used on August 9, 2024)
*Created by our company based on pages 33-34
The Agency for Cultural Affairs releases "AI Copyright Checklist & Guidance"
On July 31, 2024, the Agency for Cultural Affairs published on its website the "AI Copyright Checklist & Guidance," a set of guidelines for reducing copyright risks and protecting the rights of copyright holders as AI technology becomes more widespread.
The "AI Copyright Checklist & Guidance" is a 44-page document divided into two parts.
The first part, titled "Checklist for AI Development, Provision, and Use," lists the items that companies and individuals who use AI technology need to avoid copyright-related risks. Specifically, it categorizes stakeholders into four categories: "AI developers," "AI providers," "AI users," and "non-business users (general users)," and provides detailed explanations of the appropriate use of copyrighted works and the importance of data set management.
The second part, "Guidance for Rights Holders," introduces the information and measures that copyright holders, performers and others need to protect their rights, and provides specific guidance on how to assert and manage rights over content generated by AI.
<Reference URL>
AI Copyright Checklist & Guidance
https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/seisaku/r06_02/pdf/94089701_05.pdf
Small and Medium Enterprise Agency: [Intellectual Property Contracts] Guidelines for Intellectual Property Transactions
The Small and Medium Enterprise Agency established the Intellectual Property Transactions Study Group and has been discussing measures to promote intellectual property transactions appropriately. Based on these discussions, the Agency created and published the "Guidelines for Intellectual Property Transactions" in March 2021, and from 2022, it established the "Intellectual Property G-Men" to conduct interviews with small and medium-sized enterprises specializing in intellectual property transaction issues, and is working to grasp the actual situation of intellectual property transactions by small and medium-sized enterprises.
1. Guidelines for Intellectual Property Transactions
The Guidelines were formulated with the aim of preventing problematic cases in intellectual property transactions between large and small enterprises, as well as promoting coexistence and mutual prosperity between companies in intellectual property transactions.
The guidelines extract problematic cases based on hearings conducted by the Small and Medium Enterprise Agency, reports from the Fair Trade Commission, hearings conducted by the Subcontractor G-Men, and consultation cases submitted to the Japan Patent Office, and describe the "ideal state" of intellectual property transactions according to the transaction stage, and summarize points to be aware of. The key points are as follows.
[Key points of the guidelines]
| [Before the contract is concluded] | Not to obtain or force the disclosure of the other party's confidential information without the other party's prior consent - Not to take any action that may lead to the other party's secrets against their will and without the execution of a confidentiality agreement |
| [Prototype manufacturing, joint development, etc.] | - Do not force free technical training or prototype production. ・Do not use intellectual property or know-how without permission - In principle, the outcome of joint development will be determined by the degree of contribution of technology and ideas. If this differs, appropriate compensation will be paid. |
| [Consignment manufacturing, manufacturing and sales, contract sales, etc.] | - Not to request the other party to provide technical information, etc. beyond the scope considered reasonably necessary in light of the original purpose of the manufacturing contract. If such information is requested, a reasonable compensation will be paid. - Not to force the parties to provide design drawings of dies, CAD data, or other technical data against their will, which is not the subject of the manufacturing consignment - When it is necessary to disclose confidential information for the purposes of audits, quality assurance, etc., the areas requiring audits, etc. shall be clearly stated in advance, and confidential information shall not be obtained beyond the purpose of such audits. |
| [Patent applications, free transfer and free licensing of intellectual property rights] | ・Do not interfere with applications, etc., for results that are not directly related to the transaction or that have been independently developed - We will not force the other party to transfer its intellectual property rights free of charge or to have them solely belong to our company. We will also not force the other party to use its intellectual property rights free of charge. |
2. Hearings by IP G-Men and Revision of Guidelines
An investigation by the IP G-Men confirmed cases in which contracts had been concluded that could allow the purchaser to shift responsibility to the receiving SME without exception in the event of an intellectual property dispute between the purchaser and a third party regarding the items delivered to the purchaser. Given that similar contracts may occur between other businesses, it was decided to revise the current guidelines, and public comments have been accepted since July 31, 2024.
Revisions to the Guidelines
https://www.meti.go.jp/press/2024/07/20240731001/20240731001.html
3. To all customers
We believe that you have already taken appropriate measures, but in order to promote coexistence and prosperity between companies, please continue to pay attention to the following points.
Check existing contracts for clauses that may allow for shifting of responsibility.
- Be careful not to include any liability shifting practices in any contracts you enter into in the future, and enter into such contracts only after sufficient discussions to avoid unfairly infringing on the interests of small and medium-sized enterprises.
・When an SME consults you about reviewing contract clauses, consider revising the contract so that it does not violate the "promotion standards" of the Subcontracting SME Promotion Act, referring to the "Guidelines for Intellectual Property Transactions" and "Contract Templates" published by the Small and Medium Enterprise Agency.
Source: "Response to the practice of shifting responsibility and burden of intellectual property disputes onto subcontractors" (Small and Medium Enterprise Agency)
URL: https://www.meti.go.jp/press/2024/07/20240731001/20240731001.html
Source: "Guidelines for intellectual property transactions and contract templates" (Small and Medium Enterprise Agency)
URL: https://www.chusho.meti.go.jp/keiei/torihiki/chizai_guideline.html
(August 9, 2024. Part of the document has been summarized and used by our office.)
Newsletter translated into English
Publication of the Patent Administration Annual Report 2024
In July 2024, the Patent Administration Annual Report 2024 was published on the JPO website. This is a summary of domestic and international trends in intellectual property and the JPO's initiatives to deepen awareness and understanding of the intellectual property system.
Here, we will mainly present a part of the report regarding design applications to the Japan Patent Office.
URL: https://www.jpo.go.jp/resources/report/nenji/2024/document/index/all.pdf (Utilized on August 9, 2024)
*Prepared by our firm based on pages 33-34.
Agency for Cultural Affairs Release “AI Copyright Checklist & Guidance”
On July 31, 2024, the Agency for Cultural Affairs published on its website the “AI Copyright Checklist & Guidance”, a collections of the agency's policies for the reduction copyright risks and protections of the rights of copyright holders as AI technology becomes more widespread.
The “AI Copyright Checklist & Guidance” is a 44-page document consisting of two parts.
The first part, “Checklist for AI Development, Provision, and Use”, lists matters necessary for companies and individuals using AI technology to avoid copyright-related risks. Specifically, it classifies each stakeholder into four positions: “AI developer”, “AI provider”, “AI user” and “non-business user (general user)”, and explains in detail how to use copyrighted materials appropriately and the importance of dataset management.
The second part, “Guidance for Rights Holders”, presents information and measures for copyright holders and performers, etc. to protect their own rights, and includes specific guidance on how to assert and manage their rights against AI-generated content.
AI Copyright Checklist & Guidance
https://www.bunka.go.jp/seisaku/bunkashingikai/chosakuken/seisaku/r06_02/pdf/94089701_05.pdf
Small and Medium Enterprise Agency: Intellectual Property Contracts – Guidelines for Intellectual Property Transactions
The Small and Medium Enterprise Agency has established the Study Group on Intellectual Property Transactions to discuss measures to properly promote intellectual property transactions. Based on these discussions, the “Guidelines for Intellectual Property Transactions” were prepared and published in March 2021, and from 2022, “IP G-men” were established to conduct hearings from SMEs specifically on IP transaction issues, in an effort to ascertain the actual status of IP transactions by SMEs.
1. Guidelines for Intellectual Property Transactions
These Guidelines were established to prevent problem cases in transactions involving intellectual property between large companies and small and medium-sized enterprises and to promote coexistence and co-prosperity among enterprises in intellectual property transactions. The contents of the guidelines are problem cases that were extracted from hearing surveys conducted by the Small and Medium Enterprise Agency, reports by the Japan Fair Trade Commission, hearing surveys by subcontractor G-men, and consultation cases received by the JPO, as well as descriptions of “what should be done” in transactions involving intellectual property in accordance with the stages of transactions in an arrangement that identifies matters that require special attention. The points are as follows.
[Guideline Points]
| [Prior to the conclusion of the contract] | ・Do not demand the acquisition or disclosure of the other party's confidential information without the prior consent of the other party. ・Do not take actions to gain knowledge of the other party's secrets against the other party's will and without a nondisclosure agreement. |
| [Prototype production, joint development, etc.] | ・Do not demand free technical guidance, manufacture of prototypes, etc. ・Do not use intellectual property, know-how, etc. without consent. ・ In principle, the outcome of joint development is determined by the degree of contribution to the technology or idea, and reasonable compensation shall be paid if there is a discrepancy. |
| [Contract manufacturing, manufacturing and sales, contract sales, etc.] | ・ Do not request the other party provide technical information, etc. beyond what is considered reasonably necessary in light of the original purpose of the manufacturing consignment. If this is requested, reasonable compensation shall be paid. ・The provision of mold design drawings, CAD data, and other technical data that are not considered the subject matter of the manufacturing consignment shall not be demanded against the will of the parties concerned. ・ When confidential information is required to be disclosed from the viewpoint of audit or quality assurance, etc., the parts requiring audit, etc. shall be clarified in advance, and confidential information shall not be obtained beyond said purpose. |
| [Patent applications, free assignment and free grant of intellectual property rights] | ・Do not interfere with the filing of applications, etc. for results that are not directly related to the transaction or that have been independently developed. ・ Do not demand the assignment of intellectual property rights belonging to the counterparty free of charge or demand the sole ownership of intellectual property rights by the counterparty. Do not demand the enforcement of the counterparty intellectual property |
2. Hearings by IP G-men and Revision of Guidelines
An investigation by the IP G-men has identified cases where contracts have been concluded under which, in the event of an IPR dispute with a third party with respect to deliverables to the ordering party, the ordering party may, without exception, shift responsibility to the SME that received the order. In light of the possibility of similar contracts between other businesses, it was decided to revise the current guidelines, and public comments have been accepted since July 31, 2024.
Guideline Revisions
https://www.meti.go.jp/press/2024/07/20240731001/20240731001.html
3. To Clients
Although we understand that you have certainly taken the necessary steps already, in order to ensure coexistence and co-prosperity among companies, please continue to pay attention to the following points.
・Check existing contracts for clauses that may allow the act of shifting responsibility.
・Take care to ensure that future contracts do not include acts of shifting responsibility, and that they are concluded after sufficient consultation to ensure that the interests of SMEs are not unfairly infringed upon.
・When SMEs consult regarding a review of contract clauses, modification of the contract should be considered to correct the form so that it does not conflict with the “Promotion Standards” of the Act on the Promotion of Small and Medium-Sized Subcontractors with reference to the “Guidelines and Model Contract Forms for Intellectual Property Transactions” published by the Small and Medium Enterprise Agency.
Source: “Response to Acts of Shifting Responsibility and Burden of Disputes Concerning Intellectual Property Rights to Subcontractors” (Small and Medium Enterprise Agency)
URL: https://www.meti.go.jp/press/2024/07/20240731001/20240731001.html
Source: “Guidelines and Model Contract Forms for Intellectual Property Transactions” (Small and Medium Enterprise Agency)
URL: https://www.chusho.meti.go.jp/keiei/torihiki/chizai_guideline.html
(August 9, 2024, partially abridged and used by our firm)
