Intellectual Property Rights

More than three times as many of the U.S. companies responding to a GAO survey were dissatisfied with their overall patent experiences in Japan as compared with those in the United States and Europe; among the most frequently cited problems in obtaining Japanese patents were the long delays, the costs, and the narrow scope of patent protection granted. Other problems, however, were U.S. firms' lack of understanding of the Japanese patent system, translation difficulties, and poor communication between U.S. companies and their Japanese patent representatives. Currently, multilateral efforts are under way to harmonize international patent procedures through the World Intellectual Property Organization, a United Nations agency. The proposed harmonization changes address many concerns raised by U.S. companies about patent protection in Japan. GAO summarized this report in testimony before Congress; see: Intellectual Property Rights: U.S. Companies' Comparative Patent Experiences in Japan, Europe, and the United States, by Allan I. Mendelowitz, Director of International Trade, Finance, and Competitiveness Issues, before the Subcommittee on International Trade, Senate Committee on Finance. GAO/T-GGD-93-36, July 22, 1993 (30 pages).

GAO found that: (1) more than three times as many U.S. firms have patent problems in Japan than in the United States or Europe; (2) most of patent problems that U.S. firms experience include the length of time and cost to obtain patents, the relatively short period and limited scope of patent protection, and greater difficulty in obtaining patents for pioneering inventions; (3) U.S. firms file fewer patents in Japan due to the patent enforcement problems, but few firms reported that patent problems adversely affected their operations; (4) European firms have similar problems in Japan, but are generally satisfied with patent protection in the United States, Japan, and Europe; (5) Japan's patent pendency period is longer due to its pre-grant opposition system, the greater volume of applications, and fewer Japanese Patent Office (JPO) examiners; (6) some U.S. firms have improved and facilitated their patent filing practices; (7) U.S. firms have difficulty in enforcing their patents in Japan due to the lack of discovery under Japanese law, lengthy court proceedings, the Japanese courts' narrow interpretation of claims, difficulty in obtaining preliminary injunctions, inadequate damages, and logistical problems; (8) the United States is pursuing intellectual property rights protection through General Agreement on Tariffs and Trade (GATT) negotiations and a patent harmonization treaty that will establish a minimum level of patent protection worldwide and simplify patent processing; (9) the EPO-based harmonization treaty will require some changes in the U.S. patent system; (10 Japan supports some GATT and harmonization provisions; (11) U.S. government officials and firms believe that the treaties' proposed Japanese patent system changes will improve their patent experience; and (12) the success of the harmonization treaty may depend on the outcome of the GATT intellectual property rights proposal.