Introduction

 As in other industries, the importance of intellectual property is growing for space-related companies as well. For example, the “Report on the Direction of Intellectual Property Measures and Support in the Space Field”, published in March 2020 by the National Space Policy Secretariat of the Cabinet Office and the Ministry of Economy, Trade and Industry, points out that changes in the business environment, etc. have heightened the importance of IP strategy in the space industry, noting that:

 

In recent years, in the space industry, technological innovation such as the miniaturization of artificial satellites, together with the falling cost of space equipment worldwide, has brought new entrants into the space business with business models different from those seen to date. As a result, it is becoming easier for an unspecified and large number of users, including competitors, to obtain products and components that incorporate intellectual property.[1]

The same report also addresses the importance of patents among the various forms of intellectual property, stating that “as Japan's space industry expands into overseas markets, there are a number of cases in which European and U.S. companies have filed international applications for conceptual patents having a broad scope of rights” and that Japanese companies also “may be considered to face a need to protect their own technologies and businesses through patents.”[2]

 This article discusses patent rights - whose importance is thus increasing in the space business as well - by outlining the Japanese Patent Act and describing the current state of patent filings in the space field in Japan.

Patent Rights

First, let me briefly explain the outline of patent rights under the Japanese Patent Act (the “Act”).

A patent right is a right that comes into existence where an “invention” (defined as “the highly advanced creation of technical ideas utilizing the laws of nature” under Article 2 (1) of the Act) satisfies certain requirements, a patent application is filed, the application passes examination by the Japan Patent Office and receives an examiner's decision to grant the patent, and the registration establishing the patent right is made. The term of a patent right ends, in principle, at most 20 years after the filing date of the patent application (Article 67 (1) of the Act).

Inventions under the Patent Act are broadly divided into inventions of products and inventions of processes. Examples of product inventions include an invention of a winged spacecraft and an invention of a satellite equipped with imaging optical apparatus. A concrete example of a process invention is an invention of a method for removing debris. Japanese patent rights have been granted for some inventions of these kinds.

A person holding a patent right (a patentee) may claim damages from, or seek an injunction against, a third party who, without authorization, works the patented invention in the course of trade under Article 709 of the Civil Code of Japan and Article 100 of the Act. For a product invention, such works include, for example, producing, using, transferring, exporting or importing the product. Accordingly, where a third party produces, uses, transfers, imports or exports within Japan a product that is the subject matter of a Japanese patent, the patentee may in principle claim damages and other relief in respect of that act of working; conversely, a party that infringes another company's patent may find itself facing a claim for damages and other relief from the patentee.

Furthermore, Japanese case law adopts the principle of territoriality with respect to patent rights, under which “as far as a patent is concerned, emergence, transfer, effect etc. of the patents of each country are governed by their respective national laws, and the effect of patents is acknowledged only within the country.”[3]

 

The effect of a Japanese patent right is therefore acknowledged only within Japanese territory. Consequently, if, for example, a U.S. corporation were alleged to have infringed a Japanese patent right only in the United States, and an injunction against a particular act were sought before a Japanese court, the Japanese court is not expected to grant that injunction.

As to whether the effect of a Japanese patent right is acknowledged in outer space, at the meeting of the Committee on Economy, Trade and Industry of the House of Representatives during the 204th session of the Diet, held on April 21, 2021, Mr. Tetsuya Otsuru, a government witness, at the time, Councilor at the Minister's Secretariat of the Ministry of Foreign Affairs, stated:

I understand that, as a general principle, a patent right acquired in a country has effect only within the territory of that country. […] Since outer space is not the territory of any country, my understanding is that, in principle, the effect of a patent right does not extend there.

Based on that understanding, therefore, an assertion that an act performed in outer space infringes a Japanese patent right would in principle not be accepted by a Japanese court. A separate question, although not addressed in this article, is whether the effect of a Japanese patent right extends to acts of working performed on board a space object over which Japan has jurisdiction.

It should also be noted that obtaining a patent right is not necessarily the right course for every invention. It is important to weigh the advantages, such as the ability to seek injunctions and other relief, against the disadvantages, such as the costs of filing and maintaining the right, and the fact that the contents of the application, including the substance of the invention, are as a rule published once one year and six months have passed from the filing of the patent application. It is critical, on that basis, to determine which inventions to pursue patent protection for and which to keep as trade secrets.

 

The Current State of Japanese Patent Filings in the Space Field

Regarding the current state of Japanese patent filings in the space field, the “Report on the Direction of Intellectual Property Measures and Support in the Space Field,” analyzes Japan's space industry as tending to file relatively few patent applications.[4] Indeed, the “Summary of Results of the Survey of Technology Trends in Patent Applications: Cosmonautic Vehicles,” published by the Japan Patent Office in February 2020, points out with respect to Japanese patent applications relating to space vehicles such as rockets and artificial satellites that, “as a result of the large number of patent applications filed in Japan from Europe and the United States, the share of filings in Japan accounted for by Japanese players is 55.9%, which is low compared with the corresponding figure across all technical fields (macro survey), of approximately 80%,” and that “Japanese players, looking at numbers alone, trail the major countries in the number of patent applications, the number of published papers, the number of rocket launches, and the number of satellites manufactured.”[5]

As described above, while the importance of protecting technology through patent rights is increasing in the space business, the number of Japanese patent applications relating to cosmonautic vehicles by Japanese players has been noted to be relatively small.

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Notes

[1] Report on the Direction of Intellectual Property Measures and Support in the Space Field [Uchū bunya ni okeru chizai taisaku to shien no hokosei hokokusho] at 3 (National Space Policy Secretariat, Cabinet Office / Ministry of Economy, Trade and Industry, March 2020), https://www8.cao.go.jp/space/application/space_activity/rfy02/rfy02.html.

[2] Ibid, at 9-10.

[3] SaikōSaibansho [Sup.Ct.] July. 1, 1997, Hei7(o) no. 1988, 51 Saikō Saibansho minji hanreishū [Minshū] vol.6, 2299 (Japan).

[4] supra note 1, at 5.

[5] Japan Patent Office, Summary of Results of the Survey of Technology Trends in Patent Applications: Space Vehicles, at 2 (Feb. 2020), https://www.jpo.go.jp/resources/report/gidou-houkoku/tokkyo/document/index/2019_04.pdf.