Patent Japan

New Patent License Registration System

2006-12-19T21:37:00.000+09:00

On December 13, 2006, Ministry of Economy, Trade and Industry asked for comments on a new registration system of patent comprehensive licenses.

Under current Japanese law, when licensors transfer patent rights or they go bankrupt, licensees are protected only on the condition that their license contracts are registered at Japan Patent Office. However, comprehensive license contracts are widespread in practice which do not identify the patent numbers, or which are not registered for keeping secret to competitors.

Therefore, in order to protect licensees of those patent license contracts, METI proposed a new registration system, which will not require specific patent numbers for registration, and will be disclosed only when disputes should arise.

Comments will be accepted until January 11, 2007.

International Standard Strategy

2006-12-18T21:00:00.000+09:00

On December 6, 2006, Strategic Council on Intellectual Property issued a 39-page report called "International Standard Comprehensive Strategy."

It recognized the importance of the strategy for acquiring international standards, considering market globalization, the establishment of WTO/TBT (Technical Barrier to Trade), increase of patent-related international standards, and so on.

The report (available only in Japanese) is composed of five chapters, namely;
(i) change of awareness of industry;
(ii) strengthening of national level activity;
(iii) human resource development;
(iv) strengthening of partnership with Asian countries; and
(v) contribution to fair rulemaking.

K-PION

2006-12-14T20:56:00.000+09:00

On November 25, 2006, Korean Intellectual Property Office released a new version of K-PION (Korean Patent Information Online Network), which provides the records of prosecution history at KIPO in English by machine translation. This system is available at patent offices worldwide, including USPTO, EPO and JPO.

JPO already offers the same system, under the name of AIPN (Advanced Industrial Property Network) for other patent offices.

See my previous blog for related information.

Trade and Economy Meeting between TW and JP

2006-12-13T21:46:00.000+09:00

On November 29 and 30, 2006, the Trade and Economy Meeting was held in Taipei between Taiwan's East Asian Friendship Association and Japan's Interchange Association.

The summary of the Meeting was as follows.
(i) Requests from Taiwan
(a) Agreement for IP Protection
Japan responded that it would be difficult to conclude an inter-governmental agreement, and that it is appropriate to deepen cooperation under the present frameworks.
(b) Patent Filing in Chinese
Japan responded that it will consider it, taking into account the ratification of Patent Law Treaty.
(ii) Requests from Japan
(a) Alleviation of Patentees' Burden of Proof for IP Infringement
Taiwan responded that it will consider presumption of negligence, abolishment of patent marking requirement, etc, at the time of patent law revision.
(b) External Examiners
Taiwan responded that it will decrease them to 80 in 2007.

JPO's Agreement with Thailand's DIP

2006-12-11T21:31:00.000+09:00

On November 30, 2006, it was uploaded on the website of Japan Patent Office that the memorandum of agreement was exchanged between the Commissioners of JPO and of Department of Intellectual Property of Thailand.

Based of the memorandum, the following measures are confirmed.
(i) Applicants can request preferred examination in case that a third party is involved in claimed inventions;
(ii) applicants can also request it in case that examination results in foreign countries are provided; and,
(iii) third parties can submit evidence after the publication.

Commissioners' Meeting among CN, KR and JP

2006-12-08T22:18:00.000+09:00

On December 4, 2006, the Commissioners' Meeting was held in Beijing among State Intellectual Property Office (China), Korean Intellectual Property Office and Japan Patent Office.

The points to have been discussed are
(i) electronical exchange of priority document (already available between KIPO and JPO) ;
(ii) dissemination of patent document in English (already available in KIPO and JPO) ;
(iii) enhancement of exchange of statistical data; and
(iv) symposium on the support for small and medium enterprises to be held in Japan.

Commissioner's Meeting of Korea and Japan

2006-12-07T21:28:00.000+09:00

On November 27, 2006, the Commissioners' Meeting was held in Tokyo between Korean Intellectual Property Office and Japan Patent Office.

Main topics to be discussed were as follows.
1) Patent Prosecution Highway
It was announced that the Patent Prosecution Highway (see the same scheme with US) will start on April 1, 2007, between KIPO and JPO.
2) Examiner's Meetings
It was agreed to have patent examiner's meetings in some technical fields.
3) Cooperation among KR, CH and JP
It was agreed to explore the cooperation among KIPO, SIPO and JPO, such as the exchange of search and examination results.

Commissioners' Meeting between China and Japan

2006-12-06T22:46:00.000+09:00

On November 22, 2006, the Commissioners' Meeting was held in Tokyo between China and Japan.

Main topics to be discussed were as follows.
1) Chinese Patent Law Revision
Japan requested (i) the clarification of patent infringement criteria, (ii) the clarification of administrative intervention in patent enforcement proceedings, etc.
2) China's National IP Strategy
China announced that it will compile the National Intellectual Property Strategy next year, after hearing public comments.
3) Work Sharing
Japan proposed to start the exchange of search and examination results between SIPO and JPO.
4) Access to Chinese Patent
China announced that it has a plan to offer patent document dissemination system by way of automatic translation in 2008.

B+ Group Meeting

2006-12-05T22:36:00.000+09:00

On November 20 and 21, 2006, the Meeting of the B+ Group (developed countries) was held on the issue of patent harmonization, as mentioned yesterday.
Experts were gathered from 24 countries and 2 organizations to have a working group meeting on patent harmonization. It was agreed that a treaty text will be drafted based on the outlines proposed by the Chairperson, while the request for amendment would be taken note.

The Outlines of the Treaty
1) First-to-File
Draft Treaty: First-to-File
(Current JP & EP: First-to-File)
(Current US: First-to-Invent)
2) Grace period
Draft Treaty: Twelve months, Automatic
(Current JP & EP: Six months, Declaration required)
(Current US: Twelve months, Automatic)
3) Secret Prior Art
Draft Treaty: Destroys Novelty & Inventive Step, without Self-Collision
(Current JP: Destroys Only Novelty, without Self-Collision)
(Current EP: Destroys Only Novelty, with Self-Collision)
(Current US: Destroys Novelty & Inventive Step, without Self-Collision)

It is scheduled that a plenary session on this matter will be held in May or June 2007, at the Commissioner level.

Trilateral Conference

2006-12-04T21:46:00.000+09:00

From November 13 to 17, 2006, the trilateral conference among European Patent Office, United States Trademark and Patent Office, Japan Patent Office, and as an observer World Intellectual Property Organization was held in Tokyo. The Summary of the meeting is posted on JPO's website.

Following the Conference, a meeting of the developed countries on patent harmonization was held on November 20 and 21. On this meeting, the text of the patent harmonization treaty was discussed at the working level. I will summarize the discussion results later on this blog.

New Guidelines of Office Actions

2006-11-16T21:18:00.000+09:00

On November 16, 2006, Japan Patent Office released new guidelines on office actions.

Examiners are now required to indicate in the office actions the claims that should be rejected and allowable. But, it is alleged by users, in some cases, that this distinction is not apparently comprehensible in their actions.

Accordingly, examiners will be encouraged to use a uniform format to clearly indicate allowable claims, namely, "Claims _____ appears allowable at this time. Another office action would be issued, when new grounds of rejection should be found."

Trilateral Meeting

2006-11-13T21:05:00.000+09:00

From November 13 to 17, 2006, Trilateral Meeting of Patent Offices (EPO, USPTO, JPO) is being held in Tokyo. It is reported that three Offices are exploring ways to establish "mutual recognition" or "world patent."

Of course, every practitioner knows that to realize so-called world patent is easier said than done and still a long way. The fact is that a working group will be established on this meeting to study the differences of practices (e.g. inventive step/nonobviousness) among these offices using hypothetical cases.
Information exchange as to search/examination results has been already available to these examiners.

Dossier Access System

2006-11-08T21:50:00.000+09:00

On November 8, 2006, the results of the internal questionnaire to Japan Patent Office's patent examiners about dossier access system was circulated within the Office. The dossier access system which shows examination information in US Patent and Trademark Office and European Patent Office is now available on the Internet.

65% and 28% of JPO's examiners responded that they refer to the EPO's examination results of corresponding applications "in every case" and "most of the time," respectively. 24% said that refer to USPTO's results each of "in every case" and "most of the time."

Most of them take into account search reports (EPO) and referenced documents (USPTO). 60% and 35% responded that they read communications (EPO) and office actions (USPTO), respectively.

Report on Patent Attorney System

2006-11-06T20:53:00.000+09:00

On November 3, 2006, the Patent Attorney System Subcommittee, a subcommittee of the Intellectual Property Committee of the Industrial Structure Council, released a draft report, and asked for public comments by December 2 thereon.

The points listed in the report are;
1. Training programs for patent attorneys;
2. Qualifying examination;
3. Scope of services stipulated in the patent attorneys law;
3.1 Foreign application related services;
3.2 Expansions of designated unfair competition related services;
3.3 Power of independent representation in infringement cases;
3.4 Power of representation in border measures;
4. Disciplinary punishment;
5. Roles of paralegal in patent law firms;
6. Disclosures of patent attorneys' information;
7. Structure of patent law firms;
8. Miscellaneous points;
8.1 Compulsory enrollment in the Japan Patent Attorneys Association;
8.2 Spin-off of intellectual property departments;
8.3 Conflict of interest.

TRIPS Dispute Resolution Measures against China

2006-10-31T21:16:00.000+09:00

On October 29, 2006, it is reported that US is preparing to file suit under WTO's Trade-Related Aspects of Intellectual Property Rights (TRIPS) against People's Republic of China by reason of rampant IP piracy therein, and that Japan, Canada and EU will follow suit.

Under the WTO's framework, contested members shall have bilateral talks firstly, then, a panel will be set up if a settlement is not reached.

China became a new WTO member in 2001. Probably it will be the first case that goes into a WTO dispute settlement proceeding on IP issues.

Exceptions to Lack of Novelty

2006-10-27T20:43:00.000+09:00

On October 26, Japan Patent Office released a new manual (available only in Japanese) for applicants regarding the procedure for applying the exceptions to lack of novelty (Patent Law Section 30).

According to the new manual,
1) applicants can present the evidence as to publication based on the format indicated in the manual (formerly, the certificates issued by the organizers of academic conference had been required);
2) they can also present the evidence as to the relationship between inventors and themselves based on the format indicated in the manual (formerly, the oaths by each concerned parties had been required); and
3) they are not to required to present the publication document as evidence, accordingly, the translation of the document will be no more required.

Note:
Applying for the exceptions to lack of novelty (Patent Law Section 30) is still NOT a practical procedure for foreign applicants using the priority of Paris Convention, and is NOT recommended (except for using international patent applications based on Patent Cooperation Treaty).

Patent Examination Reform Acceleration Plan (2)

2006-10-25T21:54:00.000+09:00

1. Promotion of Global Acquisition of Patents and Reinforcement of Intellectual Property Protection
(see my previous blog)

2. Further Measures for the Acceleration and Rationalization at the Patent Office
2.1.1 Increase of 149 patent examiners, including 100 fixed-term examiners in FY 2007.
2.1.2 Expansion of outsourcing of prior art searches to 226,000 in FY 2007.
2.2.1 Reinforcement of quality management of patent examination by the feedback of analyzed results. Opinion exchange among major patent offices on patent examination quality management.
2.2.2 Improvement on academic document database.

3. Promotion of Strategic Management of Intellectual Property at Business Enterprises
3.1.1 Continuation of opinion exchange between JPO's Commissioner and private companies' CEOs.
3.1.2 Compilation and publication of "Strategic Invention Management Guidelines."
3.1.3 Holding of Patent Strategic Forum for the opinion exchange between the Minister and expertise.
3.2 Improvement of Industrial Property Digital Library, and development of integrated search system of patent/non-patent document.

4. Strengthening of the Support for Intellectual Property Utilization at Regional or Small/Medium-Sized Enterprises
4.1 Reinforcement of regional IP strategic headquarters.
4.2.1 Further expansion of support for prior art search for SMEs.
4.2.2 Reinforcement of "IP Helpdesks" as regional contact points.
4.2.3 Expansion of support system for SMEs, such as the promotion of fee reductions.

Patent Examination Reform Acceleration Plan

2006-10-23T21:05:00.000+09:00

On October 19, 2006, the Headquarters for the Acceleration and Rationalization for Patent Examination headed by the Minister of Economy, Trade and Industry issued the "Patent Examination Reform Acceleration Plan for the Promotion of Innovation," which is said to be a new basic policy for the patent administration.
This plan is composed of four areas with 20 items.

1. Promotion of Global Acquisition of Patents and Reinforcement of Intellectual Property Protection
1.1. Exploring the realization of "Patent Examination Highway" with EPO, UK, Germany, Canada, and Australia, followed by US and Korea. Compilation of "Guidelines for the utilization of search and examination results conducted by foreign patent offices" within this fiscal year.
1.2. Cooperation for the improvement on IP frameworks and practices in developing countries through economic partnership agreements, so as JPO's examination results to be accepted in these countries.
1.3. Reaching for an agreement on substantive patent law harmonization at developed nations' meeting in this November, including the first-to-file provision.
1.4. Reaching for an agreement on the unification of patent application format at the Trilateral Meeting in this November.
1.5. Agreement on the so-called "Treaty on Counterfeits and Piracy Anti-Proliferation."
1.6. Incorporation of anti-counterfeits measures in EPAs negotiated with developed countries (Australia, Switzerland, etc).
1.7. Enlargement of joint dispatches from public/private sectors for anti-counterfeits missions to China and other Asian countries, aiming at supporting effective IP protection to be established.
1.8. Expansions of the support for enterprises for anti-counterfeits measures and holding of “Counterfeits and Piracy Crackdown Campaign” for consumers in this December.

2. Further Measures for the Acceleration and Rationalization at the Patent Office (to be uploaded later on my blog)
3. Promotion of Strategic Management of Intellectual Property at Business Entities
4. Strengthening of the Support for Intellectual Property Utilization at Regional or Small/Medium-Sized Enterprises

Employee's Invention

2006-10-18T22:06:00.000+09:00

On October 17, 2006, the Supreme Court dismissed the appeal from the decision of the Tokyo High Court on the employee's invention case ("Hitachi Case").

On January 29, 2004, the Tokyo High Court had ruled in the decision that
(i) regarding the patent transfer contract at issue, Japanese law should be the applicable, irrespective of the implied intentions of the parties, because it was made between a Japanese company and its employee;
(ii) "the appropriate compensation" under the section 35 of the Patent Law should encompass the rights to foreign patents, because it should be decided based upon the national industrial policy in which the company and its employee reside, not upon that of other countries where patents are registered; and,
(iii) in case of a comprehensive cross license contract, it would be reasonable to include the royalty which would have been received in "the amount of the profit that an employer would make" under the section 35.

The Supreme Court upheld this decision by ruling as follows on the first two points.
(i) The issues whether an assignee has the right to compensation as a result of the transfer of foreign patents, and how much its compensation amounts to, are regarded to be the issue of legal effects arising from a contract, and, therefore the applicable law for these issues should be decided based on the intention of both parties.
In this case, because an implied intention was found to exist between both parties, Japanese law is to be applicable.
(ii) Since it is difficult, by literal interpretation, to include foreign patents in "a right to a patent" under the section 35 of the Patent Law, the section could not be directly applicable for the claim to the compensation based on foreign patents.
However, while this section is provided considering the difficulty for an employee to make a patent transfer contract with its employer on an equal footing, it makes no difference for this difficulty in case of foreign patents.
Also, corresponding patents in various countries have resulted from a single inventive activity and from a single employment relationship.
Therefore, the sections 35 (3) and (4) should apply mutatis mutandis for the claim to the compensation as a result of the transfer of foreign patents.

Note:
By the Patent Law revision of 2004, the provisions regarding the compensation (section 35) have been changed.
New provisions shall be applicable ONLY to cases where patent rights are TRANSFERED on and after April 1, 2005.

Patent Law Harmonization

2006-10-16T20:58:00.000+09:00

On October 16, 2006, Japan Patent Office issued a summary paper on the plenary session of B+ Group in Geneva on September 24. This is the official summary of the meeting, which I reported on my previous blog.
According to this paper, the next meeting will be held in Tokyo on November 20-21.

Patent Prosecution Highway Program

2006-10-10T21:27:00.000+09:00

On October 1, 2006, a revised patent law regulation was enacted in Korea regarding accelerated examinations.

Based on the revision, corresponding patent applications to Korea originated in Japan could enjoy the procedure of accelerated examinations, provided that (i) search results written by Japan Patent Office, (ii) copies of the prior art cited in the results, and (iii) comparative explanations between claims and the prior art, are submitted to Korean Intellectual Property Office.

The similar procedural scheme has been already available between US Patent and Trademark Office and Japan Patent Office.

Action Plan of JPO Appeal Department

2006-10-04T20:31:00.000+09:00

In March, 2005, the Appeal Department of Japan Patent Office issued a paper called “Action Plan for improving examination/appeal.” This Action Plan is summarized in JPO's Annual Report.

2) Measures for the Reform of Appeal/Trial System
The Appeal/Trial Examination Department addressed the urgent issues of responding to the expected increase in the number of demand for trials in accordance with the remarkable increase in the number of examinations being processed. By exploiting the following steps, the Appeal/Trial Examination Department intends to reduce the number of cases from the Examination Department, and to maintain timely and high quality trials.
b. Execution of Strict Trial Procedures
In order to reduce the number of cases of appeal and trial examinations, there is an urgent need to conduct management which, whenever possible, leads to confirmation of the establishment of rights or decisions of rejection at the examination phase. With regards to inventions eligible for patent, it is important to make them patentable with adequate objections and revisions at the phase of reconsideration by the examiner before appeal. To this end, applicants abide by the system to promote adequate objections and revisions at the examination phase, and a strict appeal and trial examination approach was put into place so that appeals and trials become a serious issue between the examiner who made the decision of rejection and the person demanding for trial objecting to this, in order to realize fair and productive appeal and trial examinations. The operation of such a system promotes the granting of patent at the examination phase to applicants for inventions that are eligible for patent, allowing at the same time for burden and cost reductions for both the applicants and the JPO.

In short, this passage makes it clear that, once the case enters the appeal stage, appeal boards would not easily accept allowable claims by amendment and would make decisions of refusal based on the claims as it stands, when they are considered to be rejected. In the past, when appeal boards would consider that allowable subject matters exist, a prevailing practice was that they would give appellants the chance to file amended claims and would grant patents, even though main claims should be refused.

This change of practice is apparently reflected in the recent trend in the figure [Rate of Decisions to Refuse Patent Applications in Appeals against Decision of Refusal] at page 21 of the JPO's Annual Report.

Business Method Patent

2006-09-29T22:07:00.000+09:00

On September 28, 2006, Japan Patent Office released a report (available only in Japanese) on the recent trend in business method patent.

I remember the days when BM patent applications were beginning to flood in Japan after the State Street decision at the US Federal Circuit in 1998. The phenomenon is clearly illustrated in the first figure (yellow lines represent the applications for business-related inventions whose characterizing features are not business method, and blue lines are the ones for business method itself).

It should be noted however that the JPO's definitions of patentable subject matters regarding computer-implemented inventions are not so broad as in the US. This figure (blue lines are the number and the ratio of grant decisions, and red lines are those of refused decisions) evidently shows that most of the patent applications are rejected in this field – less than 10% has been allowed after 2003.

JPO Annual Report

2006-09-27T20:52:00.000+09:00

On September 15, 2006, Japan Patent Office published the Annual Report of 2006. It is now available only in Japanese, but it will soon be published also in English. Previous Reports are here.

It is a compilation of previously published contents, so basically nothing new, but one of the things that draw my attention is survey results of intellectual property-related activities conducted by JPO.
According to the survey, it is estimated that there are about 45,000 IP-related personnel in Japan (42,000 in industry and 3,000 in universities or other public organizations), and that JPY 916 billion has been spent in FY 2004 as IP-related activities (JPY 517 billion in prosecution, 14 billion to compensation to inventors, 262 billion as personnel expenses).

Substantive Patent Law Treaty

2006-09-26T21:12:00.000+09:00

On September 26, 2006, Nikkei Shimbun posted an article as follows.

Japan, U.S., Others Agree To Craft 1st-To-File Patent Pact
GENEVA (Nikkei) -- Japan, the U.S. and European nations are among 41 countries that have reached a basic agreement to draft a treaty for standardizing the patent approval process based on the first-to-file principle, The Nihon Keizai Shimbun learned Monday.

Confirmed facts are that;
- 41 developed countries, along with European Commission and European Patent Office, had a talk on September 24 in Geneva regarding patent law harmonization hosted by Japan;
- it was agreed at the talk that a draft text on substantive patent law treaty will be drawn up by the next meeting based on the framework text proposed by the chairperson;
- major requirements for patentability are included in the framework, including the first-to-file provision; and
- the next meeting, as a working group, will be convened in Tokyo next November.
(41 nations : Japan, United States, 25 countries of European Union (Austria, Belgium, Cyprus, Czech, Denmark, Estonia, Germany, Greece, Finland, France, Hungary, Ireland, Italy, Latvia, Lithuania, Luxemburg, Malta, Netherlands, Poland, Portugal, Slovakia, Slovenia, Spain, Sweden, United Kingdom), Canada, Australia, New Zealand, Norway, Andorra, Vatican, San Marino, Iceland, Switzerland, Turkey, Bulgaria, Monaco, Lichtenstein, Romania)

It should be noted that the draft framework text is provisionary, and could be subject to change in the future. Particularly, regarding the first-to-file provision, because patent reform bills are now on the table in the US Congress, the outcome is not certain at this stage.

PM Koizumi's Visit to JPO

2006-09-25T22:20:00.000+09:00

On September 14, 2006, Prime Minister Junichiro Koizumi visited Japan Patent Office.

This was the first visit by prime ministers to JPO, as far as I know during my career of 15 years at JPO. Mr. Koizumi will quit as a prime minister after more than five years of his service at the end of this month. The Basic Law on Intellectual Property was enacted in 2002, for the first time in the history of Japan, under his cabinet.

He visited several divisions, including Patent Examination Division, but I missed the chance to see him in person, unfortunately.

JPO's Cooperation with SIPO for Design Database

2006-09-20T20:39:00.000+09:00

On September 18, 2006, Nikkei Shimbun reported that JPO will cooperate with the State Intellectual Property Office of China in building design prior art database.

China is now in the process of Patent Law revision (see my previous blog) in which it is stipulated in Section A6 that design patent holders would be required to present a search report written by SIPO when they would try to enforce their design patents against third parties. (This revised provision is also to be applicable to utility models cases.) Design patents are now and will be issued in China only after formality examination.

This cooperation will surely help SIPO make prior art search, and also be useful against frivolous litigation by ostensible design patent holders.

JIPA's Comment on New IDS Proposal

2006-09-19T21:52:00.000+09:00

On September 7, 2006, Japan Intellectual Property Association published a comment on the USPTO's proposal of the changes to Information Disclosure Statement Requirements.

JIPA expressed in the comment dissatisfaction over the proposed additional explanation about explanation of relevancy, patentability justification, and, especially, they are against the proposal in that the additional explanation is to be automatically required for non-English prior art document.

Unification of patent application format is an agenda in the framework of Trilateral Conference (USPTO, EPO, JPO) or of WIPO, but it doesn't seem that IDS issue is included there, nor that JPO has made its comment on this proposal by USPTO.

Chinese Government Delegation on their Patent Law Revision

2006-08-31T22:27:00.000+09:00

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.

Committee on Inventive Step

2006-08-29T22:15:00.000+09:00

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.

MOJ's Plan to Beef up Legal Staff

2006-08-28T20:42:00.000+09:00

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.

From Archives – Claim Interpretation, "Lipase Case"

2006-08-24T21:35:00.000+09:00

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.

NPA Report on IP-related Crimes

2006-08-21T21:13:00.000+09:00

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.

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

2006-08-18T21:32:00.000+09:00

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.

Patent Fee Subsidies by Tokyo Government

2006-08-16T22:24:00.000+09:00

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.

Chinese Patent Law Revision

2006-08-15T21:57:00.000+09:00

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.

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

2006-08-14T21:14:00.000+09:00

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.

Revisions of Patent Law and Patent Fee Regulation

2006-08-07T22:52:00.000+09:00

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.

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

2006-08-03T22:22:00.000+09:00

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.

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

2006-08-02T23:44:00.000+09:00

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.

Inventive Step

2006-07-31T21:56:00.000+09:00

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.

Informal Gathering on Patent Strategy

2006-07-27T21:03:00.000+09:00

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.
(Bada)
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.
(Yoshino)
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.

Counterfeit Survey Report

2006-07-25T23:44:00.000+09:00

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

Conflict of Interest in the Case of Patent Attorneys

2006-07-24T22:00:00.000+09:00

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.

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

2006-07-21T21:43:00.000+09:00

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).

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

2006-07-20T21:44:00.000+09:00

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.”

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

2006-07-19T20:54:00.000+09:00

(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.

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

2006-07-18T21:40:00.000+09:00

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.

From Archives - Prior Users’ Right

2006-07-14T20:51:00.000+09:00

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.)

From Archives - Implementation Plan for Patent Examination

2006-07-13T20:38:00.000+09:00

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;

Goal:
- 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.

From Archives - Intellectual Property Strategic Program

2006-07-12T21:07:00.000+09:00

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.

From Archives - Revised Patent Law (2)

2006-07-11T21:05:00.000+09:00

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.

From Archives - Revised Patent Law

2006-07-10T20:41:00.000+09:00

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.

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2006-07-07T21:37:00.000+09:00

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