TOPICS

“Food Container and Device and Method for Attracting Enhanced Attention”

Overview:

The case involves a judgement that upheld an original decision to dismiss a request to revoke a decision to reject a patent application indicating the name of an artificial intelligence as the name of the inventor.

Summary of Judgment and Link to Full Text (in Japanese)

Main Issue:

Whether “inventions” under patent law are limited to those by natural persons.

Conclusion:

1. Regarding “Invention” under the Patent Act and the Right to Obtain a Patent

(A) …A patent right is a right established and granted by the Patent Act, and the right to obtain a patent is also a right established and granted by the same. The Patent Act is simultaneously a substantive law that stipulates substantive requirements and effects for the creation of patent rights and the right to obtain patents, and is also characterized as a procedural law that stipulates procedures for the granting of patent rights.

(B) Patent Act Article 29(1) main paragraph provides that “a person who has made an invention that can be industrially applied may obtain a patent for the invention,” with “a person who has made an invention” therein understood as referring to a person who can be the subject of the right to obtain a patent, that is, a person with legal capacity.

Additionally, that “employee, etc.” as referred to in Patent Act Article 35(1) denotes a natural person is clear from the wording such that whereas “employer, etc.” in said provision includes corporations, the national government, or a local government entities, “employee, etc.” does not these.. Further, although Article 35(3) provides that the right to obtain a patent with respect to “an employee invention made by an employee, etc.,” may originally belong to the employer, etc., this provision also presupposes the inventor to be a natural person (employee, etc.). …As there are no other provisions in the Patent Act that stipulate on the occurrence or original ownership of the “right to obtain a patent,” apart from Article 29(1) min paragraph and exceptions as provided in Article 35(3),… the “right to obtain a patent” therefore arises only in patent law when the inventor is a natural person. Moreover, not only do domestic documents relating to the international application at issue in the subject case require the “Name of the Inventor” to be stated or published, but so do the request for a patent application, publication of the application, domestic publication of an international application, and the patent gazette relating to registration; and even in contrast to requiring the “Name or Designation” be stated or published for the patent applicant, applicant, or patent holder, this demonstrates that the inventor is required to state or publish their “name” as it refers to that of a natural person, presuming that the inventor is a natural person, including in the case of employee inventions.

(C) In which case, as a general rule under the Patent Act, when a natural person creates an invention, the right to obtain a patent originally vests in that natural person, naturally; and although the Act recognizes as an exception that the right to obtain a patent may originally vest in the employer or similar entity in the case of employee inventions (i.e., service invention), subject to certain requirements, no provisions stipulate the original vesting of the right to obtain a patent in any persons other than these. Additionally, there are no provisions that stipulate procedures for granting a patent based on any right other than the “right to obtain a patent” as stipulated in the Patent Act, nor are there provisions that establish procedures for granting a patent presuming an entity other than a natural person being the inventor. It is therefore reasonable to interpret that “inventions” for which patents may be granted under the Patent Act are limited to those for which a natural person is the inventor.

Comments:

As with the original judgment (Tokyo District Court, May 16, 2024; 2023 (Gyo-U) No. 5001), the present judgment also held that “inventions” protected by patent rights are limited to those achieved by natural persons. In contrast to the original judgment having referred to provisions of the Basic Act on Intellectual Property in its reasoning, the present judgment starts from the premise that both the patent right and right to obtain the patent are rights established and granted under the Patent Act, and concludes that as no provisions other than Patent Act Article 29(1) main paragraph and Article 35(3) stipulate the occurrence and original vesting of the right to obtain a patent, this right arises only when the inventor is a natural person, which can be regarded as a determination in line with provisions of the Patent Act.

Norifumi Kobayashi