JAPAN Trends and Developments Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian, Chuo Sogo LPC
grossly inappropriate in light of the purpose of the patent linkage system.” Accordingly, the Notice in Question does not amount to an unfair act under the Unfair Competition Prevention Act. The above ruling is rendered to determine whether the defendant’s act constitutes an unfair act under the Unfair Competition Prevention Act. However, as the plaintiff argued, there is a ques- tion about the current practice that the MHLW determines the patent infringement, and there is no mechanism for prior co-ordination between the parties at the approval or prior approval stage. Future discussions on the Japanese pat- ent linkage practice are therefore expected. Technology The following recent decisions by the Japanese Courts also show important developments in the field of technology. The first case below shows interesting discussions regarding the eligibility of AI as an inventor, which have been attracting particular attention all over the world in recent years. The second case shows how the standard established in the past IP High Court’s decision regarding the support requirement is specifically applied. A v Japanese Government, Case No 2023 (Gyo-U) 5001, Tokyo District Court (decision rendered on 16 May 2024) In recent years, with the remarkable advance- ments in artificial intelligence (AI), AI – particular- ly generative AI – has come to be widely utilised even in creative activities. This case involves a patent application for an invention (titled “Food Container and Devices and Methods for Attract- ing Enhanced Attention”) submitted by the plain- tiff who developed the AI known as “DABUS”. The application listed “DABUS, The invention was autonomously generated by an artificial intelligence” as an inventor. However, the JPO
rejected the patent application on the grounds that it did not include the name of a natural per- son as an inventor. The plaintiff challenged this decision as unlawful and sought its cancellation at the Tokyo District Court. In this case, the key issue was whether the interpretation of an “inventor” as defined under Japan’s Patent Act could include AI. The Court ruled that AI cannot be considered an “inventor” based on the following findings: • Intellectual Property Basic Act, Article 2(1): This provision defines “invention” as some- thing created through human creative activity, which reasonably implies that inventions are the products of natural persons. • Patent Act, Article 36(1)(ii): This article requires the “name” of the inventor to be stated. In contrast, Article 36(1)(i) requires the “name or designation of the applicant. This distinction indicates that “name” refers specifically to the name of a natural person, thereby assuming that inventors are natural persons. • Patent Act, Article 29(1): This article states that a person who has made an invention is entitled to receive a patent for that invention. However, since AI lacks legal personality, it cannot be the holder of rights to a pat- ent. Therefore, “a person who has made an invention” must reasonably be interpreted as referring to a natural person. • Lack of statutory basis for determining inventorship in AI-generated inventions: If AI were to be included as an “inventor,” there would be no legal framework to determine who among those involved with the AI’s crea- tion and operation should be considered the inventor. • Patent Act, Article 29(2): This provision states that an invention is unpatentable if it could
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