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In recent years, joint technology and product development by multiple companies, universities, etc. has become common, however, there is not always a prior agreement on the handling of inventions, and there are often situations where the attribution of the right to obtain a patent is unclear. Under such circumstances, it is easy for one of the parties to file an application claiming that the invention is their own and obtain patent rights, and such cases of misappropriation, etc., have occurred in companies and universities in no small number, with some cases leading to litigation.

Thus, when the Patent Law was amended in 2011, Section 74 of the Patent Law was newly established, introducing a system (transfer request system) that allows the true right holder to request transfer of the patent right (or in the case of violation of joint application, their share) from the holder of a patent right based on a misappropriated application, etc. 

Section 74 of the Patent Law provides that "a person who has the right to obtain a patent" can "request the transfer of the patent right" from the patentee (exercisable even if the patent right has been assigned to a third party). 

A true rights holder can be recognized to have contributed to the development of the industry by publication of a misappropriated application. The contribution derives from content of the invention itself and does not change depending on who filed the application, and consequently, the true rights holder is now able to demand transfer of the patent right to the extent of their share. Further, when such a transfer is registered, the patent right is deemed to have belonged to the true right holder from the beginning, rather than being invalid.

In this article, we introduce a case in which the transfer registration procedure was requested based on Section 74, Paragraph 1 of the Patent Law regarding a joint inventor's interest.

2. Outline of the case  

In this case, the plaintiff, who works for a fishery company and handles live fish processing on a daily basis sought registration of transfer of a patent right based on Section 74, Paragraph 1 of the Patent Law from the defendant who completed an invention of a method for removing blood from fish with the advice of the plaintiff, and then obtained a patent independently.

The background circumstances of the invention include the relationship between skill in removing blood from fish and the freshness and taste of fish. The freshness of fish depends to a large extent on how skillfully the fish is drained of blood, as draining the blood from fish slows down the process of decomposition of the fish. Various methods have been devised to ensure complete washing away of blood. However, all methods were time-consuming, involving conditions and restrictions including such a blood remaining in the body of the fish after blood removal, whether or not the fish’s heart had stopped, matching the size of the fish with the size and thickness of the equipment used to drain the blood, and the facility where the drainage is conducted. 

The defendant, who became interested in fish processing after working as a bartender and researching the subject completed the invention: “Apparatus and method for quickly removing blood from fish body by jetting high-pressure water into hemal arch,” and obtained a patent in 2019. 

However, before the invention was completed, the defendant had contacted the plaintiff, who was an expert in ikijime (quality-preserving quick kill) and had posted on video websites about how to bleed fish, via social networking sites. The defendant received advice from the plaintiff via SNS and email, which the defendant used, so the main issue became the inventorship of the plaintiff. 

2-2. Court Decision  

In this case, the court ruled as follows regarding what kind of person is an "inventor" and what kind of person is a "joint inventor." 

“An inventor is a person who is involved in the creation of an advanced technical idea that utilizes the laws of nature, that is, a person who is involved in the creation of a technical idea that has been made concrete and objective to the extent that it can be implemented by a person skilled in the art.” “In order to become an inventor, it is not necessary for one person to be involved in the entire process.” “For several persons to become joint inventors, each must have creatively contributed to the completion of the characteristic part of the invention in the process of conceiving and embodying the idea to solve the problem.” 

Here, the question is what is a "characteristic part of the invention," and the court held that “a characteristic part of the invention should be construed as referring to that part of the construction of the invention described in the claims that is not found in the prior art, that is, the part that forms the basis of the means of solving the problem peculiar to the invention.”

After examining the problems to be solved, the means for solving the problems, and the effects of the invention, the court recognized that "the invention includes an ikijime device and method for removing the blood of fish of any size instantaneously, simply, and reliably,” and that the characteristic parts of the invention are as follows:

(i) “bleeding fish by injecting a high-pressure liquid under pressure into the blood vessels, including arteries or veins, through the hemal arch of the fish's tail.”

(ii) “realizing a closely sealed structure of the hemal arch to accommodate fish of all sizes, and making the tip of the nozzle tapered to prevent damage to the tip of the nozzle.” 

After examining the contents of the emails exchanged between the plaintiff and the defendant, and the timing of the prototype production, etc. in chronological order, the court found the following: 

“Although having had the opportunity to come in contact with the foot-operated prototype manufactured by the defendant, it can be said the plaintiff, based on his many years of experience working at a fishery company, particularly his practical experience in ikijime of fish, etc., conceived and embodied the characteristic part (i) of the invention. Therefore, it can be said that not only the defendant but also the plaintiff contributed creatively to the completion of characteristic part (i) of the invention. With respect to characteristic part (ii), although the invention was ultimately completed based on the defendant's idea, it should be said that not only the defendant but also the plaintiff contributed creatively in the process of conceiving and embodying the idea to solve the problem.” 

Further, the court held that “the plaintiff and the defendant can both be said to have creatively contributed to the completion of the characteristic parts (i) and (ii) of the inventions, and the plaintiff and the defendant are recognized as joint inventors of the inventions.” The court directed the “defendant to register the transfer of 1/2 of the defendant’s share to the plaintiff based on Section 74, paragraph 1 of the Patent Law.” 

In the event of a dispute, the question arises as to what criteria should be used to identify the inventor.

According to academic theory, an inventor refers only to a person who actually participates in the act of creating the invention, while a mere assistant, adviser, provider of funds, or simply a person who merely gives orders is not considered to be an inventor. Regarding the criteria for determining who is a joint inventor, since an invention is a creation of a technical idea, the presence or absence of substantive cooperation must be judged entirely from this point of view, and persons who are not involved in the creation of the idea itself are not considered to be inventors. Specific examples of persons who are not joint inventors include (i) mere managers who merely gave general advice and guidance to their subordinates' research, (ii) mere assistants who merely compile data or conducted an experiment according to the instructions of the researcher, and (iii) mere sponsors or consignors who provide the inventor with funds and equipment to the inventor or support the inventor to complete the invention.

In the case law, the identification of inventors and joint inventors is divided into two stages: those who provided the conception (provided the problem or set the direction for solving the problem), and embodiment of the conception, and the contribution to the invention is substantially judged at each stage. In this case as well, the exchanges between the plaintiff and the defendant, which took place mainly through the use of SNS, were examined in detail in chronological order, and the contribution to the conception and embodiment of the characteristic parts of the invention was recognized.

Regarding the finding of the "characteristic part of the invention,” the standard was the same as that found in Case No. 2006 (Gyo-ke) 10048 - Trial decision cancellation request. In that case, the following reasons were given:

“Since the substantial value of the invention that the Patent Law seeks to protect is in the disclosure to society of a means to solve a problem, having a concrete configuration, based on a technical idea not found in the prior art, for the purpose of solving a technical problem that had been unable to be achieved in the prior art, only a person who has contributed to the completion of that part of the construction of the invention described in the claims, that is the characteristic part that forms the basis of the means of solving the problem peculiar to the invention, can be regarded as an inventor. 

In technology and product development involving multiple parties, it is best to clarify the contractual terms regarding the ownership of rights, however the importance of keeping records of the development process should be repeatedly stressed. 

Reference: "February 21, 2003, 6th Patent System Subcommittee Handout Material - Determination of Inventors in Japan"

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