Articles on Patent

【PATENT★★】”ANTIPRURITIC AGENT” Case: A case in which the Court found that there is no motivation for using a compound stated in the cited document as an antipruritic agent on the grounds that description in the cited document is only a “hypothesis which lacks technical grounds”, and “there was plenty of room remaining for a study at the time of the priority date of the Present Invention”. (The patent at issue in this case is the same as that in Intellectual Property High Court Case No. 2020 (Gyo-ke) 10063, in which the court revoked the Japan Patent Office’s decision rejecting an application for the registration of extension of the duration of the patent at issue.)

【PATENT★】”COMPOSITIONS COMPRISING 2,3-DICHLORO-1,1,1-TRI- FLUOROPROPANE, 2-CHLORO-1,1,1-TRIFLUOROPROPENE, 2-CHLORO-1,1,1,2- TETRAFLUOROPROPANE, OR 2,3,3,3-TETRAFLUOROPROPENE” Case: A case in which the Court found that an amendment is considered to have added new matters (violation of requirements for amendments) on the grounds that there is no description of the reason for the necessity of the specific combination of three types of compounds which are separately described in the specification.

【PATENT★】”LEARNING IMPLEMENT” Case: A case in which the Court found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents and dismissed the plaintiff’s claim for confirmation of absence of right to demand an injunction.

[Patent★★] “Interleaving Paper for Glass Plates” Case: A case in which the court deemed that the invention of the prior application falls under an “invention” which is appropriate material as a cited invention (Article 29-2 of the Patent Act). If an invention lacks concreteness, or technical content of an invention is insufficiently disclosed even taking into consideration the common general technical knowledge of a person ordinarily skilled in the art, it does not fall under the “invention” and does not have an effect of excluding the later application provided for in this Article

【PATENT★】”BEAUTY INSTRUMENT” Patent Infringement Case: A case in which the Tokyo District Court found that the defendant’s product, even after a design change, constitutes patent infringement under the doctrine of equivalents.

【PATENT★】”GAME PROGRAM” Case (GREE): A case in which the IP High Court revoked a decision of the Japan Patent Office, finding that it is not appropriate to determine, without specifying the reasoning conducted by using known technology etc., that the invention in question could be easily conceived by a person skilled in the art because the constitution related to the difference is “mere arrangement for a game”.

【PATENT★】”CELECOXIB COMPOSITIONS” Case: A case in which the IP High Court recognized inventive step of a parameter invention, finding that the parameter could not be easily conceived by a person skilled in the art.

【PATENT★★】”Information Storage Device” Patent Infringement Case (Ricoh v. Toner cartridge recycling companies): This is the first case in which the Tokyo District Court recognized the plaintiff’s acts as a violation of the Antimonopoly Act (Article 19 and Article 2, Paragraph 9, Item 6 of the Antimonopoly Act, and Paragraph 14 of the Designation of Unfair Trade Practices) and dismissed the plaintiff’s claims for injunction and compensation for damages on the grounds that said claims constitute an abuse of rights.

【PATENT ★】”VIRUS” Patent Infringement Case: A case in which the Tokyo District Court found to the effect that experiments or research conducted to obtain marketing approval for a new (original) medicinal product also correspond to the “working of the patented invention for experimental or research purposes” set forth in Article 69, Paragraph 1 of the Patent Act. The right of a prior user was acknowledged.

【PATENT ★★】”PIT CONSTRUCTING MACHINE” Case: A case in which the IP High Court found that (i) since the purposes of a primary cited invention and a secondary cited invention are different, the structure of the primary cited invention needs to be changed correspondingly to the difference in the purposes in order to be combined with the secondary cited invention (there is a factor teaching away from combining the secondary cited invention with the primary cited invention), and (ii) a part of a structure of a cited invention is not allowed to be extracted independently (the limitations of specifying technical contents as generic concepts). The Court acknowledged an inventive step of the Present Invention.