Patent Japan

Thursday, August 31, 2006

Chinese Government Delegation on their Patent Law Revision

On August 29, 2006, the Ministry of Economy, Trade and Industry and the Japan Patent Office announced that they will accept a delegation in September from the People's Republic of China for a dialogue and a symposium on the draft revision of Chinese Patent Law.

The delegation, called the Research Group on Chinese Patent Law Revision, is composed of members from the State Intellectual Property Office, the Supreme People's Court, the National People’s Congress, and the State Council.

The dialogue will be held with members from the METI and industry, and the symposium will be co-hosted by the SIPO and International Intellectual Property Protection Forum.

It is reported that the Group will thereafter visit the US Patent and Trademark Office and the Court of Appeals for the Federal Circuit to talk with their counterparts on the same issue.

Tuesday, August 29, 2006

Committee on Inventive Step

On August 29, 2006, Nikkan-Kogyo Shimbun posted an article which said that a survey committee on inventive step is established under JPO on the same date. (This is a follow-up of my previous report.) 

The committee is composed of nine experts from the Japan Patent Attorney Association, the Supreme Court, universities, and so on.

Matters to be surveyed are,
(i) statistical surveys of examination/appeal cases which were filed and decided all in EPO, USPTO and JPO, and analyses on the cases to which contrary decisions were made among these Offices,
(ii) comparisons on the methodology of inventive step (nonobviousness) in major jurisprudences, and
(iii) questionnaires to companies, universities, and patent law firms upon the methodology/level of inventive step (nonobviousness) in major countries.

Inventive step has been and is still one of the most hotly debated issues in this world. (Refer, for example, to the situations in the US (by courtesy of Mr. Dennis Crouch) or UK.)

It is expected that the survey results, which are supposed to be compiled by the end of May 2007, will be presented at the Trilateral Meeting as basic materials for future discussion.

Monday, August 28, 2006

MOJ's Plan to Beef up Legal Staff

On August 27, 2006, Yomiuri Shimbun posted an article that the Ministry of Justice is considering to beef up legal staff handling lawsuits against the state.

According to the report, the Government was sued in 8,424 cases in 2004, and this plan appears to be aimed at handling "high-profile" policy cases.

Regarding the cases in which the JPO's Commissioner is a defendant, the appeals against JPO Boards' decisions totals 589 in FY 2005. But it doesn't seem to affect these cases at IP High Court, since they are dealt with exclusively by JPO Board members.

Thursday, August 24, 2006

From Archives – Claim Interpretation, "Lipase Case"

On May 8, 1991, the second panel of the Supreme Court, by vacating the decision of the Tokyo High Court, ruled on the interpretation of claim in "Lipase Case", 1987 (Gyo tsu) 3. This landmark decision is still being cited in many cases.

Here is the summary.
When examining novelty and inventive step (Patent Law Section 29 (1) and (2)), the content of a claimed invention has to be ascertained before comparing it with prior art. This should be based on the terms used in the claim, unless any special circumstances would arise. Only in the case such as where the terms of the claim cannot be understood clearly and unambiguously, or where the content of the claim is clearly false in the light of the detailed description, it would be permitted to refer to the detailed description.
In this case, since there are no limitations to the term "lipase" in the claim, nor any special circumstances such as above, the claim should not be interpreted to mean only "Ra lipase."

Note: You might think, at the first glance, that you could get a strong (broad) patent simply by using broader terms in claims. But this ruling specifically refers to “when examining novelty and inventive step,” which means that, not only it could be rejected/invalidated on the ground of clarity and/or support requirement, but it would also be more vulnerable vis-a-vis prior art. Moreover, it does not ensure the broader interpretation in the phase of enforcement. The golden rule - better to disclose various embodiments in order to secure a broad scope of claims - always applies.

Monday, August 21, 2006

NPA Report on IP-related Crimes

On August 17, 2006, the National Police Agency issued a status report on economic crimes.

According to the report, in the first half of 2006 the number of intellectual property infringement crackdown was 254 cases with 394 arrestees, which is the historic high.

Here are the summary of the report.
- The number shows a significant increase since 2002.
- 30% are Internet-related cases, among which 90% are Internet auction-related ones.
- As to trademark counterfeit, store sales, street sales, and Internet sales each occupy 40%, 40% and 30%.
- Most of the counterfeit brand products are smuggled from China, Korea or other Asian countries.
- As to copyright piracy, Internet auction and store sales share 40%, respectively.

Friday, August 18, 2006

From Archives - Doctrine of Equivalents - "Ball Spline Case"

On February 24, 1998, the Supreme Court ruled on the doctrine of equivalents.
This case was the first major decision by the Supreme Court, and is still a leading case, on this issue.

Case No. 1083, 1994 (o)
Judgment by the Third Panel, Supreme Court

Summary of the Judgment
In determining whether an allegedly infringing product falls within the scope of the patent, its scope must be determined based on the claims. If there are different technical features in the claims from the product, said product cannot be regarded as falling within the scope of the patent.
However, even if there are different technical features in the claims from the product, if (a) this different part is not essential for the patented invention, (b) the purpose of the patented invention could be achieved by replacing this part with the one in said product, and an identical function and effect could be obtained, (c) a person skilled in the art could have easily come up with the idea of such replacement at the time of the manufacturing of the product, (d) the product did not belong to the public domain, or could have been easily conceived by a skilled person, at the time of the filing of the patent, and (e) there were no other special circumstances such as the fact that the product had been intentionally excluded from the scope of the claims during the patent application process, then, said product should be regarded to fall within the scope of the claims. 
This is because (1) considering that it is extremely difficult to foresee all variants of infringements which might occur in the future and formulate claims so as to cover them, if a third party could easily avoid infringement by replacing a part of the patented claim by what came to be known after the filing, it would seriously reduce the incentive for invention in the society at large, which is not only against the purposes of Patent Law, i.e. the promotion of industrial development through the protection and encouragement of inventions, but is also against social justice and fairness. (2) Taking this into account, the substantive value of the patented invention should extend to the technology which a third party could easily conceive as substantially the same invention, and he should be expected to foresee this. (3) On the other hand, concerning the technologies which were in the public domain or which a person skilled in the art could have easily conceived at the time of the filing, they could not be regarded to fall within the scope of the patent, since no one could have obtained a patent for them. (4) Furthermore, when the patent holder had once admitted or he had objectively behaved during patent prosecution, e.g. by intentionally excluding it from the patent, that a technology did not belong to the scope of the patent, the he could not entitled to claim otherwise afterwards due to the doctrine of estoppel.

Wednesday, August 16, 2006

Patent Fee Subsidies by Tokyo Government

On August 9, 2006, the Tokyo Metropolitan Government announced its schemes, for small and medium sized companies within Tokyo, to give subsidies relating to the fees for foreign patent applications and the survey costs for patent infringement inflicted overseas.

It says that a half of its cost could be subsidized, with the caps of JPY 3 million for the applications scheme, and JPY 2 million for the infringement one, respectively. The fees for filing, attorney, and translation could be covered for the former, and for the latter the costs for infringement survey and attorney’s fees for expert opinion or warning could be covered.

Reportedly a few prefectures also offer similar programs other than Tokyo, though there is not in the Government of Japan.

Tuesday, August 15, 2006

Chinese Patent Law Revision

On July 31, 2006, State Intellectual Property Office of People Republic of China released a request for comments on the draft revision of Patent Law of China with its annotation thereon (available only in Chinese).

One of the revisions as to substantive examination, among other things, is the definition of novelty. Now under the Section 22 of Chinese Patent Law, public use would constitute the state of the art only when it is used in China. The draft revision is to eliminate its regional limitation.

It says that comments will be accepted by fax or email until August 30, 2006.

Monday, August 14, 2006

IP High Court asked JPO Commissioner's opinion in trademark revocation case

On August 12, 2006, Jiji Press reported that, in the lawsuit against the decision of trademark revocation by the JPO appeal board, the Intellectual Property High Court asked, for the first time, the opinion for the JPO Commissioner.

Section 180bis of Patent Law which was revised in 2003 provides that courts are allowed, by their discretion, to ask the opinion of the JPO Commissioner, or that he can, with the permission of the courts, volunteer to present his opinion, on legal issues in the lawsuit against the decision of the JPO appeal board in the case of inter partes proceedings (e.g. appeal for patent invalidation).

Before that revision, the lawsuits against the decision on the appeal to invalidate patent by the JPO appeal board are contested purely between the patentee and the appellant, and JPO doesn't have chances to make comments on the decision it makes, unless it should intervene in the case according to the Administrative Procedure Act which have rarely happened.

Monday, August 07, 2006

Revisions of Patent Law and Patent Fee Regulation

On August 4, 2006, the draft government decree was released relating the bill to amend the Design Law, by which the date of implementation of the bill has been set on September 1, 2006.

On the same date, the draft government decree on patent fee revision was also released.
This draft provides a one-year limited measure to reimburse the FULL amount of the examination request fee, when the patent application is withdrawn before the substantive examination begins. Now only a half amount of the fee can be reimbursed.
This one-year period will start on August 9, 2006.

Thursday, August 03, 2006

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

3.1 Reasons on Issue 1
A patent is not exhausted and a patentee is allowed to enforce it, when
(i) Type I: patented products are reused or recycled after their ordinary life is lapsed with no remaining utility; or
(ii) Type II: the whole or part of the essential components of the patent, which is indispensable to carry out its purpose, is modified or replaced.
3.1.1 Type I
In this case, Type I condition is not met so the patent is exhausted under this condition, because refilling of ink is considered as the replacement of expendables under the ordinary usage, and neither regulations nor socially common perceptions exist to prohibit the replacement.
3.1.2 Type II
However, Type II condition is met and the patent is not exhausted under this condition, because, in this case, the essential components of the patent is washing away the ink clotted in an ink tank and refilling it to the original level, and to which Recycle Assist’s acts correspond.
3.1.3 Therefore, Canon is permitted to enforce the patent based on Type II condition.

3.2 Reasons on Issue 2
Exhaustion of a process patent should be analyzed depending upon two categories, one of which is the use or transfer of the products manufactured by said process, and the other is the use of said process.
3.2.1 Use or transfer of the products manufactured by patented process
The same ruling (Type I/II) is applicable with the one for product patent.
3.2.2 Use of patented process
3.2.2.1 When the inventive concept of said process claim is the same with its product claim, the process claim would be exhausted insofar as the product claim is.
3.2.2.2 When the apparatus used solely for the patented process, which is indispensable to carry out the purpose of the patent and which is not widely distributed, is transferred by the patentee or its licensee, patent is not enforceable against the assignees of said apparatus who use it to manufacture the products.
3.2.3 In this case, Canon is permitted to enforce the patent for both categories.

3.3 Reasons on Issue 3
If a patentee or its licensee of a Japanese patent transfers the patented products outside Japan, he is not allowed to enforce his patent right against direct and subsequent assignees, unless he has agreed with the direct assignee that the products should not be sold in Japan.
However, a patent is not exhausted when
(i) Type I: patented products are reused or recycled after their ordinary life is lapsed with no remaining utility; or
(ii) Type II: a third party has made modification or replacement to the whole or part of the essential components of the patented products.
In this case, Canon is permitted to enforce the patent based on Type II condition.

This decision has been appealed to and is now pending in the Supreme Court.

Wednesday, August 02, 2006

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

On January 31, 2006, the IP High Court made another Grand Panel decision.

1. Facts
Canon is the patentee of liquid container and its manufacturing process, in which claim 1 is addressed to liquid container and claim 10 is to its manufacturing process. Canon also manufactures and sells the ink tanks corresponding to this patent.
Recycle Assist is engaged in importing and selling the ink tanks, which are originally Canon's products and refilled with ink after an initial use.
Canon brought this action to the Tokyo District Court based on claims 1 and 10 to seek injunction of importing and selling them by Recycle Assist.
The District Court rejected all the Canon's arguments, and Canon appealed the case to the IP High Court.

2. Issues
(1) Whether Canon should be allowed to enforce claim 1 (product claim) against Recycle Assist's ink tanks which are manufactured by refilling with ink of Canon's products sold in Japan,
(2) whether Canon should be allowed to enforce claim 10 (process claim) against Recycle Assist's ink tanks which are manufactured by refilling with ink of Canon's products sold in Japan,
(3) whether Canon should be allowed to enforce the claims against Recycle Assist's ink tanks which are manufactured by refilling with ink of Canon's products sold overseas.

3. Decisions of the Court
The IP High Court accepted all the Canon's arguments, and reversed the decision of the District Court. The reasons are as follows.