in 2004 for the purpose of increasing
the predictability of the amount of
"reasonable compensation." Since then,
there has been few litigations concerning
Employee Invention. Nonetheless, some
people have claimed that this system
disturbed global business activities and
industrial competitiveness. Particularly,
those have claimed that under Article
35 the court would ultimately determine
"reasonable compensation." In June
2013, the cabinet determined, as a
part of the "Basic Policy Concerning
Intellectual Property Policy" that the
Employee Invention system should
be reviewed to make it contribute to
enhancing industrial competitiveness.
Subcommittee
points are identified as problems in the
current system for Employee Invention
(the "Current System").
a calculation method or standard
for "reasonable compensation"
for Employee Invention. The
Law requires "due process" for
adopting rules for compensation.
Many employers, particularly
large manufacturers, seem to have
adopted internal rules for Employee
Inventions and paid compensation
in accordance with the rules. In the
Report, it is said that it becomes
more difficult for an employer to
calculate "reasonable compensation"
for each inventor and a litigation risk
is getting higher. In a company, many
inventors as well as non-inventors are
involved in the process of creating a
particular invention. In addition, due
to the complexity of recent products,
using hundreds or thousands of
patents. As a result, it becomes more
difficult and costly for an employer to
calculate reasonable compensation
for an employee who has made one
invention. Moreover, the inventor
employee might not accept the
compensation which the employer
considers reasonable.
the employee and the employer
for transfer of the Right for future
Employee Invention, the employee
may transfer Employee Invention to
a third party. The employer cannot
obtain the Right once the third party
files an application for a patent for
the relevant Employee Invention.
There is no way for the employer to
have the third party return the patent
or patent application.
is made in accordance with a joint
research and development project of
two parties, the inventor employees
of the respective parties who actually
make the invention will have the
Right jointly. Thus, in order for one
party to have its inventor employee
transfer the Right, the employee must
obtain a consent from the inventor
employee of the other party, i.e., the
co-owner of the Right. This makes the
situation complicated and unstable.
Current System
above, the Draft Report suggests that the
Current System should be revised in the
following direction:
adopt incentive plans for the inventor
employees in accordance with the
process set forth in the guidelines to
subsection c below). It is explicitly stated
that by this requirement, the inventor
employee would be secured the right
substantially equal to the inventor's right
under the current Article 35.
As exception to this rule, such entity that
desires to make the Right belong to the
inventor employee (such as a university
and a research institute) should be
allowed to do so. For an entity having no
internal rules for Employee Invention,
appropriate measures should be adopted
so that the inventor employee's right
should not be unfairly treated.
Incentive Scheme
government should issue guidelines for
procedures in accordance with which
the employer should accommodate
discussions with the employees on
incentive scheme. At the Subcommittee
meeting, it was confirmed that so long
as the rule is adopted through the
process which is noncompliance with the
guidelines, the rules should be considered
reasonable and thus, the compensation
calculated in accordance therewith should
be considered reasonable.
The most controversial point was
who should have the Right, particularly
in the case where an employer does not
adopt any internal rules on this point.
The Subcommittee's opinion on this
point seems to be undecided despite
the language in the Draft Report. Some
committee members still strongly claim
that the Right should belong to the
employees in this case to protect their
interests.
The Draft Report was finalized along
with the discussion at the Subcommittee
meeting in November 2014 and
published in January 2015.