Minutes of 1st Meeting of Study Group
Concerning Patent in New Area and Competition Policy
(Interim Translation)
- Time/Date: 3:00-5:00 p.m., Wednesday, March 27, 2002
- Place: Conference Room 1 of Secretariat of JFTC
- Topic: Analysis of current situation as to grant and exercise of business method patent and biotech patent
- Summaries: [Translations as to logistics of this study group are omitted.]
Regarding the expansion of the scope of the patent protection
- With respect to business method patent, I do not have a feeling that subject matter of the patent has expanded. Rather, what is happening, I think, is that the ideas which had already existed has merely become patent by IT (information technology).
- Problem related to the scope of the business method patent protection is not whether the scope of the subject matter has expanded, but rather broadness of its claims.
- With respect to biotech patents such as gene patents, they are in the line with existing subject matter of the patent too. There is doubt whether it can be said that scope of the subject matter has been expanded.
- However, with respect to patents related to biotech, there is an aspect that the scope of the patent subject matter has broadened after the comparative research was conducted by tripartite conference among Japan, U.S. and Europe patent specialists.
Regarding business method patent
- The substance of the business method patent has not changed from the one which we had in the past. However, [the type of applicant has changed: i.e.,] in the past, the sellers of systems such as computer manufacturers mainly filed patent, but nowadays, providers of the net-business service file [business method] patents.
- While the business method patent can be filed by individuals or venture cooperation with small investment, there are cases where it can broadly affect end-users including consumers.
- With respect to business method patent, due to the small amount of accumulation of prior art, broader claims are inevitably granted. In addition, there is a possibility that patents that possess ground for invalidation is granted. However, I assume that these problems are transitional.
- Although it is said that business method patents possess broader right, it is not always true. In addition, since it is easy to circumvent the [patented] technology [with respect to business method], "one-winner" phenomenon is unlikely to happen.
Regarding patents related to biotech
- Different from machine area, in pharmaceutical area, it is difficult to avoid refusal to license by resorting cross-licensing [negotiation] because one or a few patents relates to each pharmaceutical. There is a possibility that downstream R&D would suffer from tremendous damage if a patent like gene patent, which belongs to upstream part of R&D, is acquired and the holder refuses to license.(1)
- Cases where a patent has a dependent relationship with the patent that belongs to the upstream is especially problematic. In such cases, entities that possess dependent patent may be compelled to agree to unwilling [licensing] contract. When the license is refused, counter measures such as compulsory license are necessary.
- When a patent that is related to research tools is licensed to researchers, cases are conceivable where the patent holder request researchers to submit their results of R&D. This kind of license agreements is problematic.
- There is an opinion that it is problematic for university to patent its research result and license it to a cooperation exclusively. But, since there are areas where innovations develop by exclusive licensing [practices], we need to analyze the issue area by area according to the technology.
(Note): Brackets and footnote are remarks of translator (Toshiaki Tada).
1. The words "upstream" and "downstream" is not clear. It can be assumed, however, that patent/invention at upstream level means basic, pioneer or master patents/inventions which are necessary for improved, posterior inventions to be reduced to practice. Likewise, it can be assumed that patent/invention at the downstream level indicates the patent/invention that has dependent relationship with the prior basic inventions.