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presidential address

In view of the overview discussed below, we set three targets for FY 2012 starting April 1st:

1. Accelerate the reforms started last fiscal year

2. Get outcomes of committee activities, possibly by December 31st, and utilize it within this fiscal year

3. Define the mission of JPAA

Shoichi Okuyama

JPAA President

Overview
About the Intellectual Property System in Japan

 While it was customary for the board to have a slogan for the year, we no longer believe that a single slogan could summarize all activities of such a large organization as JPAA. This fiscal year, JPAA will undertake its activities under the following five themes:
 (1) Building a better intellectual property protection system,
 (2) Developing a patent attorney system that benefits the public,
 (3) Encouraging JPAA committees and institutes to seek business opportunities outside the Association,
 (4) Supporting the infrastructure development for our members, and
 (5) Restructuring JPAA’s administration to improve member services.

Building a better intellectual property protection system
National policies that called for promotion of intellectual property were launched in 2003, and the Japanese government has prepared and promoted the Intellectual Property Strategic Programs in a pro-patent direction. As partly pushed up by these actions, the number of patent applications, which had fallen to 410,000 in 2003, recovered to a little less than 430,000 in 2005. However, the number started to decline again in 2006 and dropped to 342,412 in 2011 (preliminary statistics), slightly down from the previous-year level. Meanwhile, the number of PCT International Applications received by the Japan Patent Office (JPO) in 2011 was 37,974, up by about 20% over the previous year.

The major factor behind this situation may be a decline in the working-age population which started in 1995, but at the same time, patent users’ distrust of Japanese intellectual property systems may also be a hidden factor. In recent years, it often happened that when patent owners tried to enforce their rights, they saw their patents challenged and invalidated, and finally lost infringement disputes. In such cases, even though invested a lot of time and efforts in to obtaining patents, the patent owners were unable to make effective use of their patents, and they found it difficult to gain returns that could cover their investments. Patent users are force to accept a minimum or even lower level of protection. In such a situation, even Japanese corporations are going abroad to obtain rights in countries where they can find markets and expect practical benefits of intellectual property protection. We should be aware of the fact that Japan is also in international competition for providing effective protection for intellectual property. We must build an appropriate framework so that we can say with confidence that there is an environment in Japan where intellectual property rights can be obtained and enforced in a fair and effective manner.

We must work toward improving the reliability of the intellectual property system, which forms the foundation for patent attorneys and the patent attorney system. In addition to the decline in the number of domestic applications for patents and other intellectual property rights, patent attorneys are facing various other problems, such as an increasing number of those who pass the patent bar examination each year and decreasing attorney fees. We cannot completely solve these problems just by taking measures from a shortsighted perspective.

We must go back to the basics. We will make a drastic review of not only the patent system but also the entire intellectual property system including utility models, designs, trademarks, and copyrights. Furthermore, with the goal of realizing intellectual property systems which are attractive and reliable to users and conducive to promoting the use of intellectual property, and with the aim of boosting the value of intellectual property rights, we will propose and implement various measures from the viewpoint of practitioners engaged in the field of intellectual property.

About the Patent Attorney System
Fortunately, movement toward a revision of the Patent Attorney Act marked a solid start, with a view to bringing a revision bill before the ordinary Diet session in 2014. We must once again review the status of the patent attorney system as well as the patent bar examination from the bottom up. The patent attorney system has recently been improved in many aspects, such as the creation of the special qualification for patent attorneys to represent clients in certain types of infringement lawsuits, and the scope of services that may be provided in the capacity of patent attorneys. We may, however, have lost something in the reform process. We need to reflect on the reasons the status of patent attorneys has been established as a system of representation and why patent attorneys are nationally licensed and vested with the exclusive authority to represent clients in procedures before the Japan Patent Office.

Patent rights and other industrial property rights are granted by the state to those who are entitled to such rights as a result of going through administrative procedures. Patent attorneys take part in the process of creating such property rights. On the other hand, industrial property rights are exclusive rights which function to restrict acts of third parties. With this in mind, patent attorneys should perform their duty to help those who wish to obtain property rights, while they are required to prevent unfair enforcement of rights against third parties.

Thus, patent attorneys are required to maintain a high degree of specialization and ethics. This is the exact reason for the existence of the patent bar examination and the exclusive authority vested in licensed patent attorneys.

When viewed from this perspective, the existing state of the patent attorney system – exemplified by the current number who pass the patent bar examination each year, various kinds of exemption under the examination and rules favorable only for a specified type of applicant, and the scope of services that may be provided in the capacity of patent attorneys – is apparently not appropriate in light of the essence of patent attorneys’ duty to contribute to the fair operation of the industrial property system in the public interest.

About our Association (JPAA)
We have to admit that each body or organ of JPAA lacks two critical virtues: a sense of speed and an awareness of mission.

JPAA is not speedy enough in taking actions quickly in response to demands of patent attorneys who are its primary customers.

JPAA should also pay attention to its secondary customers: users of intellectual property systems. Has JPAA properly served them to meet their demands? JPAA is not an entity that produces or sells something for the purpose of making profit, but it is supposed to use funds that it collects as fees from its members effectively for the benefit of the members. Then, what should govern the expenditure of such entity? With an eye to its future in the coming 20 or 30 years, we should now rethink and verify the mission of JPAA.

Specific action items for the fiscal year 2012
In view of the three major targets discussed above, JPAA will focus its activities on the following five aspects:
(1) Building a better intellectual property protection system,
(2) Developing a patent attorney system that benefits the public,
(3) Encouraging JPAA committees and institutes to seek business opportunities outside the Association,
(4) Supporting the infrastructure development for our members, and
(5) Restructuring JPAA’s administration to improve member services.

Building a better intellectual property protection system
JPAA will actively make policy proposals to improve the intellectual property system in order to make it more appealing to users. Committee activities need to be shaped in ways that facilitate policy discussions.

For example, the expert committees on patents, designs and trademarks each have been divided into first and second committees. The first committee will consist of members with at least ten years of professional experience in intellectual property matters to engage itself in policy discussions with external entities. The second committee, on the other hand, will be in charge of studying examination guidelines and case law, and will be responsible for educational activities.

Other expert committees on copyrights, unfair competition, biotechnology and life sciences, software, and intellectual properties in the agricultural, forestry and fisheries fields are also mandated to come up with relevant policy proposals.

The correlation between Japan’s technological development capacity and the number of patent applications is studied in order to encourage the filing of necessary applications.

In relation to small and medium-sized enterprises, JPAA will extend assistance in making inventions, filing patent applications, and utilizing resulting patents.

JPAA will also run a campaign to improve public awareness of the usefulness of trademark and design protection and importance of brand strategies.

Developing a patent attorney system that benefits the public
The review of the Japanese patent attorney act has started toward the introduction of a reform bill before the Diet in 2014. JPAA will launch a full scale investigation toward the ideal patent attorney system. The Patent Attorney Act Revision Committee is to compile a set of recommendations so that we have stronger lobbying activities.

Encouraging JPAA committees and institutes to seek business opportunities outside the Association
(1) Business challenge
While the committees and institutes of JPAA have achieved substantial results in the past in their research and academic work, we will take a step forward and examine what opportunities exist for patent attorneys in real business situations. Every JPAA committee should make an effort to explore new businesses outside the Association.

(2) Strengthening of relationships with other organizations
We will enhance ties with the Japan Intellectual Property Association, Nippon Keidanren, Japan Federation of Bar Associations, Japan Pharmaceutical Manufacturers Association, Japan Bioindustry Association, JEITA, SOFTIC, JASRAC, JETRO, JICA, WIPO, Intellectual Property Strategy Headquarters, Agency for Cultural Affairs, Ministry of Agriculture, Forestry and Fisheries, and the Ministry of Finance. This is to boost the presence of patent attorneys in our society, and pave the way toward patent attorneys’ participation in government organizations as permanent or part-time staff and advisers. We will step up our international activities and enhance relationships with foreign or international associations.

Supporting infrastructure development for our members
JPAA will continue its pursuit of setting standards for efficient case management at its member firms and compile model cases. We will also explore new ways to increase the number of trademark and design applications based on the lessons learned from the “Potential Power of Designs” campaign conducted last year. As for copyrights and other businesses, the Education Institute is to coordinate with the Intellectual Property Management Consultation and Copyright Committees to provide appropriate learning opportunities with possible help from external organizations, in addition to campaigns on patent attorneys’ capabilities.

In regard to the support for small and medium enterprises and venture businesses, we will observe policies which the Japan Patent Office will adopt and ask the Committee on Policy Planning and Administration to identify possible actions JPAA can take.

We will also strengthen training activities, including practical training for incoming patent attorneys and secretaries, as well as language training for our members.

Restructuring JPAA’s administration to improve member services
JPAA has temporarily reduced its membership fee by 25% to 15,000 yen per month for one year, and JPAA will make this reduction permanent. We will consider a point-based system, similar to mileage services, in order to encourage our members to participate in the business of the Association.

JPAA will encourage our members to participate in government business projects, and we will explore ways of member participation in such projects.

In conclusion
As discussed above, the JPAA must address a wide range of tasks and meet high expectations that society places on patent attorneys. We are committed to working with all members to help the JPAA utilize its full potential as an association of experts supporting the nation’s intellectual property system. Your guidance, support and cooperation is cordially invited and much appreciated.

Thank you.

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