Patent Japan

Monday, July 31, 2006

Inventive Step

On June 20, 2006, Nikkan-Kogyo Shinbun posted an article in which it said that Japan Patent Office will host a meeting, in July at earliest, on “Inventive Step” inviting industry, Japan Patent Attorney Association, and so on.

This is reflected by the opinions from the industry that the level of inventive step has recently been allegedly getting tougher both in JPO and courts, especially compared with the standard in Europe or US. The article reported that meetings’ results will be compiled by the end of March, 2007, which might be incorporated in the JPO’s Patent Examination Guidelines.

As of the end of this July, the meeting does not seem to have been held yet, as far as I know. I would like to update on this issue when some progress will be made.

Thursday, July 27, 2006

Informal Gathering on Patent Strategy

On July 20, 2006, the first informal meeting on patent strategy was held under the Minister of Economy, Trade and Industry.

This meeting is aimed at up-grading the annual intellectual Property Strategic Program, by incorporating opinions from the business communities. Following seven business leaders were invited.

Mr. Nomaguchi (Chairman of board of Mitsubishi Electric, Chairman of IP Committee of Japan Federation of Economic Organizations)
Mr. Bada (CEO of JFE Steel)
Mr. Yoshida (CEO of JSR)
Mr, Yoshino (CEO of Honda, Chairman of Japan Intellectual Property Association)
Mr. Nanbu (CEO of Nabel)
Mr. Nemoto (CEO of Nemoto)
Ms. Shimosaka (Patent Attorney, Member of Strategic Council on Intellectual Property)

Here is some of their interesting comments.
The number of patent filing has been decreased by 20 %, due to the merger in 2003.
Technology drain to overseas competitors though retirees is serious concern.
Honda is currently suing on more than 100 IP infringement cases. IPR defense abroad is one of the biggest challenges.
Know-how management is no less important, because the state of the art know-how is indispensable for offshore production.

The summary of their comments is available in Japanese.

Tuesday, July 25, 2006

Counterfeit Survey Report

On July 19, 2006, “Survey Results on Counterfeit Damages in FY 2005” was published from JPO. This annual survey started in 1996, to grasp damages caused by overseas counterfeits against Japanese companies.

Surveyed were top 8,000 entities with the total number of patent, design, and trademark filings in Japan last five years, from which 2,452 (30.7%) of them responded.

Summaries of the survey are;
- 22.8% companies answered that they suffer from counterfeits in FY 2004, among which more than 50% and 40% claim trademark and patent/design infringement, respectively;
- trademark infringement is more serious;
- in every phase of manufacture, distribution, and sale, overwhelming damages are happening in Asia, especially, in China, Taiwan and Korea;
- regarding the quality of counterfeit products, 15.9% of the respondents evaluate that there is “no significant difference” against the originals, and 40%+ answered they are “improving”;
- regarding their price, about 30% respondents estimate “50%-75%” against the originals, while about 10% say “about the same” or “more expensive”;
- 55.6% and 37.3% of the companies that suffer from counterfeits have already filed or are now filing trademark and patent applications in some of Asian countries, respectively, which ratio has been gradually increasing;
- 65.6% of counterfeits are detected by the employees of their companies or their affiliates;
- 50% of respondents are taking some measures against counterfeit. Among the companies that suffer from counterfeits, 90% say so;
- the major reason to take anti-counterfeiting measures is “to keep the profit”, while major reasons not to take them are “cost performance” or “damages are small”;
- 60% of the companies prepared with anti-counterfeiting measures have the special staff for them, a majority of which have them in specialized IP sections.
- “the pursuit of manufacturers” and “warning to them” are typical measures, and they typically end up in “settlements”, “injunctions” or “seizure of property.” 40% of them consider it effective;
- the expenses for the measures are provided mostly from “IP-related budget”.
- a majority of respondents don’t collaborate with other companies though, 40% of suffered companies

Monday, July 24, 2006

Conflict of Interest in the Case of Patent Attorneys

On July 18, 2006, the Patent Attorneys’ Subcommittee of Industrial Structure Council held its 3rd meeting.

One of the things that drew my attention discussed in the meeting is the conflict of interest in the case of patent attorneys. Section 31(iii) of Patent Attorneys’ Law provides that patent attorneys may not represent the cases which are requested by an adversarial party of their clients, unless said clients permit them to do so.

The Subcommittee raises two situations that are disputable under this provision.
(i) In cases where a patent attorney X is representing both applicants A and B, if B files an appeal for invalidation against A’s patent and X accepts A’s representation, isn’t it too harsh to say that X is no longer allowed to represent any of B’s patent prosecutions without A’s consent?
(ii) In case where A and B are engaged in the same technical field or the same market, is it justifiable to permit X to represent both A and B as far as only ex parte proceedings are involved.

It appears that these problems stem from the fact that the Law of patent attorneys, which in most of the cases deal with ex parte proceedings against the Patent Office, was written based on the Law of lawyers, which basically act under adversary system.

Friday, July 21, 2006

From Archives - Grand Panel case of IP High Court, “Parameter Case” (2)

The Court upheld the JPO’s decision and revoked the patent, by holding as follows;

1) For claims to be patented, their problem has to be understood from the specification by a person skilled in the art. Whether or not claims are supported is judged from the fact that a skilled person would recognize from the specification that the problem of the claimed inventions is solved, or, from the fact that he would recognize, irrespective of description or suggestion, in the light of the state of the art at the time of filing that the problem is solved. And the patent applicant has the burden to prove that the support requirement is met. In this case, the claim is a so-called a “parameter invention”, which is defined by a certain range using two parameters of its characteristics. For this type of claims to satisfy the support requirement, the technical relationship of the range defined by the equations and the effect to be achieved has to be understood by a skilled person irrespective of the disclosure of examples, or, the fact that intended effect would be achieved within the range has to be understood by examples so that he could recognize it in the light of the state of the art.

2) For parameter inventions as in this case to satisfy the support requirement, it has to be clearly understood from experimental results, not by merely speculations, that an alleged effect arises within the range defined by the equations. It is not permitted to submit experimental data after the filing in order to supplement what is disclosed in the specification and to extend or generalize it to the whole range of the claim.

3) Although the Patent Examination Guidelines is designed to give basic guides for patent examiners, and is also used for applicants as a prosecution management tool, it is merely a guideline to ensure impartiality and reasonability during the procedure in the Patent Office, but does not act as law as in the case of the “Examination Guidelines” in the meaning of Administrative Procedural Law. Therefore, what is stipulated in the Patent Examination Guidelines does not play decisive role for the interpretation of the Patent Law. Additionally, the revised Guidelines of October 2003 stipulates, as one type of support requirement violations, “a case where, even taking into account the technical knowledge at the time of the filing, it is not considered that the contents described in the specification could not be extended or generalized to the whole range of a claim.” It is clearly in line also with the old version of Section 36(6)(i), and it is not violation to apply this interpretation retroactively.

4) Based upon the above reasons, the patent is in violation of Section 36(6)(i), and accordingly it should be revoked. It is not necessary to consider the JPO’s decision in terms of Section 36(4).

Thursday, July 20, 2006

From Archives - Grand Panel Case of IP High Court, “Parameter Case” (1)

On November 11, 2005, the Grand Panel of Intellectual Property High Court made another decision. This case is an appeal from the decision of the opposition proceeding by the Appeal Division of the Patent Office.

The patent is addressed to “an manufacturing process of polarizing film”, which is so-called “parameter invention”, defined by a certain range using two parameters of its characteristics.

The specification says as a technical effect that polarizing film having excellent durability, polarization, and reliability can be achieved, but it disclosed only two examples within the scope of the claim and two comparative examples outside its scope.

Issues in this case are;
1) whether the support requirement by the specification (Section 36(6)(i)), and/or the enablement requirement is satisfied (Section 36(4)),
2) whether presenting ex-post experiment data is permitted to supplement the disclosure of the specification,
3) whether the retroactive application of the Patent Examination Guidelines is permitted.

The claim at issue is;
“A method of manufacturing polarizing film, comprising
a step of preparing a polyvinyl alcohol resin as original fabric, having the width of 30-100 μm, and the relation of the temperature of complete dissolution in hot water (x) and the temperature of equilibrium swelling (y) is defined as the equations given below,
and a step of uniaxially drawing the polyvinyl alcohol resin by 1.2 - 2 times in the process of dyeing and by 2 - 6 times in the process of boron compound treatment.
y > -0.0667x + 6.73
x >= 65
Here, “x” is defined as the temperature of complete dissolution of 2cm x 2cm film in hot water. And, “y” is defined as the temperature of equilibrium swelling, which is calculated by the ratio of film’s weight after the process of dipping of 10cm x 10cm film in constant-temperature water of 20 `C for 15 minutes, against its weight after drying it for 2 hours at 105 `C.”

Wednesday, July 19, 2006

From Archives - First Grand Panel Case of IP High Court, “Ichitaro Case” (2)

(1) As for the first issue (i.e. scope of claims), the Court affirmed the District Court's findings that the term “icon” in the claims should be interpreted simply as “a picture or pictograph on the screen displaying various data and processing functions,” and there are no reasons to require additional limitations, such as movable or arrangable on the desktop. Therefore, the Court concluded that a computer on which Justsystem’s products are installed meets all the elements and thus falls within the scope of the claims.
(2) As for the second issue (i.e. indirect infringement), the Court found Justsystem liable for indirect infringement provided in Section 101 (ii) regarding claims 1 and 2 (i.e. product claims), by holding; that Justsystem’s products are used to manufacture “a personal computer” which meet all the elements of claims 1 and 2; that Justsystem’s products are exclusively used for manufacturing a product corresponding to claims 1 and 2, thus they should not be deemed as “widely and generally distributed staples” as provided in Section 101 (ii); and that, at the time of the service of complaint, Justsystem had been aware that Matsushita was the patent holder and that their products used the patent.
The Court rejected, however, indirect infringement regarding claim 3 (i.e. process claim) in accordance with Section 101 (iv), by holding that Justsystem was manufacturing and selling only the software used for manufacturing the personal computers, rather than manufacturing or selling the said computers as such.
(3) As for the third issue (i.e. invalidation), by comparing the patent with the prior art, which was submitted as evidence after appeal, the Court held that; the only difference is that the “functional description display means” is an “icon” in the claimed invention whereas it is a “screen/menu help” item in the prior art; and, in light of the technical knowledge well known at the time of the patent application, a skilled person could have easily arrived at the idea of using an “icon” instead of a “screen/menu help” item as the “functional description display means.”
For these reasons, the Court concluded that Matsushita's patent was to be invalidated, and thus, pursuant to Section 104-3 (1) of the Patent Law, it is not allowed to enforce its patent.
(4) As for the fourth issue (unduly late offence/defense), the Court rejected Matsushita's argument that the additional allegation/evidence submitted before the Court should be dismissed on the grounds of unduly late defense. The reasons are as follows: (a) proceeding of the first instance had been rather expeditious, (b) this additional allegation /evidence was submitted at the earlier stage of the appellate proceedings, (c) the additional allegation/evidence is only to supplement previous argument from a similar perspective; and (d) considering that the new evidence is a document written in English which had been published abroad a long time ago, it is excusable to take some time to find such document.

Tuesday, July 18, 2006

From Archives - First Grand Panel Case of IP High Court, “Ichitaro Case” (1)

On September 30, 2005, the Intellectual Property High Court issued the first decision on the Grand Panel.

The IP High Court, which is one branch of the Tokyo High Court, was established on April 1, 2004, with 18 judges in four divisions. One of the new features at the IP High Court is that the Grand Panel composed of five judges across the divisions is prepared, for which more rule-setting role is expected.

In this Ichitaro case, Matsushita Electric is a holder of patent entitled “information processing device and information processing method". The patent has three claims: claims 1 and 2 are addressed to “an information process device”, and claim 3 relates to “an information process method”. Justsystem is engaged in manufacturing and selling Japanese word processing software “Ichitaro.” Purchasers of those products use the software by installing it on their own personal computers.

Matsushita brought the infringement lawsuit to the Tokyo District Court alleging that Justsystem's conduct constituted indirect infringement provided in Section 101 (ii) and (iv) of the Patent Law, and sought injunctive relief and destruction of Justsystem’s products.

The Tokyo District Court ruled that Justsystem’s software infringed Matsushita’s patent. This decision drew huge public attention, because “Ichitaro” is the most widely used word processing software in Japanese market after Microsoft’s “Word”.
However, the IP High Court, by admitting a newly submitted prior art, found that Matsushita’s patent should be invalidated, reversed the decision and ruled that Justsystem is not liable for infringement.

The issues before the Court are as follows:
(1) whether a personal computer on which Justsystem’s products are installed, as a product itself or by use thereof, falls in the scope of the patent's claims;
(2) whether Justsystem indirectly infringed Matsushita's patent pursuant to Section 101, (ii) and (iv) of the Patent Law;
(3) whether the patent is to be invalidated and thus Matsushita's exercise of the patent right should not be allowed; and
(4) whether additional allegation/evidence submitted by Justsystem before the Court should be dismissed as unduly late offensive/defensive action.

Friday, July 14, 2006

From Archives - Prior Users’ Right

On June 16, 2006, Japan Patent Office issued guidelines, so called “For the Facilitation to Utilize Prior Users’ Right System.”

The guidelines’ aim is to help inventors make a decision whether to file it for a patent or to keep it as a trade secret, when they come up with new technology. But another purpose is that JPO tries to lessen the burden of incoming patent applications, by averting some portion to trade secrets, because they are flooded with huge backlogs.
Indeed, there was a proposal last year to incorporate “Soleau Envelopes”, which is found in France. This proposal has been deliberated at the Industrial Structure Council, but didn’t get enough support from industries then.
This big volume of Prior Users’ Right Guidelines, which is quite well analyzed from a variety of cases to a survey of various industrial sectors, is supervised by Professor Nakayama of Tokyo University.
However, for a prior users’ right to be admitted, a defendant -accused infringer- has to prove that, at the time of plaintiff’s filing of the patent, it is actually using the invention or preparing to use it within the territory of Japan. It would be generally quite difficult to prove, because this is, by definition, an in-house use. (The patent will be invalidated if it is a public use.)

Thursday, July 13, 2006

From Archives - Implementation Plan for Patent Examination

Major points of “Fiscal Year 2006 Implementation Plan for Accomplishing Medium-to-Long-Term Plan Designed to Promote Prompt Patent Examination Process” issued by the Ministry of Economy, Trade and Industry are as follows;

- the number of first actions to be increased from 245,000 (FY2005) to 296,000 (FY2006),
- the waiting period for first actions to kept 25.7 months (FY2005) to 28.0 months (FY2006).

Specific Actions:
1) for strengthening the examination system, the number of examiners will be increased by 110, including fixed-term employees,
2) for the upgrading efficiency, the number of outsourcing prior art searches will be increased by more than 4,000 applications,
3) responding to users’ needs, first actions will be issued within 9 months for all acceralated examination,
4) upgrading Intellectual Property Digital Library, such as upgrading text search function for prior art search,
5) propelling the international cooperation for examination, such as Patent Examination Highways on a trial basis.

You will find it that this plan is quite ambitious, when you look at the increase ratio of first actions (more than 20%, from 245,000 (FY2005) to 296,000 (FY2006)). Also you may wonder why the waiting period for examination will be extended despite of the increased number of examination. It is simply because application backlog is skyrocketing.

Wednesday, July 12, 2006

From Archives - Intellectual Property Strategic Program

On June 8, 2006, “Intellectual Property Strategic Program 2006” was released from the Intellectual Property Policy Headquarters, which is one of the Councils under the Prime Minister’s Office. This annual program of the 4th edition is composed of five chapters, namely,
1) Creation of Intellectual Property,
2) Protection of Intellectual Property,
3) Exploitation of Intellectual Property,
4) Efforts to Create Culture with the Use of Content,
5) Developing Human Resources and Improving Public Awareness,
followed by Achievements and References.

On the same date, based upon the above program, “Fiscal Year 2006 Implementation Plan for Accomplishing Medium-to-Long-Term Plan Designed to Promote Prompt Patent Examination Process” was released by the Minister of Economy, Trade and Industry to the IP Policy Headquarters.

Tuesday, July 11, 2006

From Archives - Revised Patent Law (2)

Other Patent Law related revisions are anti-counterfeiting measures.

1) “Export” of infringing products is also included as the act of infringement,
2) “possession for the purpose of transfer” of infringing products is also included as the act of infringement,
3) imprisonment term and penalty amount for infringement are to be raised.

Why is the “export” constituted as infringement, while patent rights are valid only within the territory of the country that issues the patent? It is explained that this revision will make more effective to seize, at the time of export, infringing products manufactured in Japan.

Monday, July 10, 2006

From Archives - Revised Patent Law

On March 7, 2006, the draft bill to amend the Design Law, which had been submitted to the 164th regular Diet session, was approved by the Cabinet. Accompanied by this bill, the Patent Law was also revised on the following points.

(1) The time limit to file divisional applications is to be extended. Under the current law, divisional applications can not be filed once grant decisions are made. The revised provision will give applicants the chance to file them during 30 days after the receipt of grant decisions. This could, theoretically speaking, give patentees a strong weapon, as they can “pursue” a prospective infringer, by continuing to file divisional applications with different claims.
(2) New amended claims raising new issues can not be submitted after the first rejection. This means that applicants are required to file a new application as division, when they wish to claim different inventions. The new statute says that amended claims must satisfy the requirement of unity of invention with original claims, which interpretation will be probably issued later on JPO Examination Guidelines.
(3) In the case of foreign language -English- applications, the time limit to file their translations is to be extended to 14 months after the filing date. Now, this period is only two months.

Friday, July 07, 2006


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