Legal Updates

[Patent★] Patent Administrative Litigation “Training Apparatus” Case: A case in which the Intellectual Property High Court recognized an inventive step on the ground that it was not permitted to extract a part of a configuration from an embodiment of a cited reference and recognize it as a cited invention; moreover, it was not easily conceivable to consider removing parts other than the part in question.

Intellectual Property High Court Case No. 10040 (Gyo-ke) 2023, November 16, 2023 “Training Apparatus” Case (Presiding Judge Shimizu) = Case No. 10041 (Ne) 2023 (Presiding Judge Shimizu) (Original Judgment: Osaka District Court Case No. 3847 (Wa) 2022)   Excerpts from the Judgment, and Some Considerations   1. Scope of the Claim (Claim 1) “A pair […]

【Unfair Competition Prevention Act★★】A case in which the Sapporo High Court denied the confidential nature of information recorded in an electronic ledger of customers, then overturned the District Court conviction and handed down a full acquittal.

Sapporo High Court Decision of July 6, 2023 (Case No. 74 (U) 2023―Presiding Judge Narikawa)   ◆Main text of the case   Outline of the case 　　This case involved the situation described below. 　　Defendant Y1, an employee of Company A which was engaged in the procurement and sale of automotive parts, was shown an electronic […]

【Trademark Act★★】 A case in which the Intellectual Property High Court revoked a refusal decision by the JPO that the trademark in this application fell under Article 4, Paragraph 1, Item 11 or 15 of the Trademark Act. The court held that, in accordance with the actual circumstances of transaction related to the designated goods in Class 16, “information magazines concerning parts and accessories used for modifying off-road vehicles”, the trademark in the application, which is a two-line composite trademark consisting of “Jimny Fan” in Latin letters and “ジムニーファン” in Japanese katakana characters as shown below, is not similar to cited trademark 1 below, which is a logo consisting of “Jimny” in Latin letters, or cited trademark 2 below, which is a two-line trademark consisting of “Jimny” in Latin letters and “ジムニー” in Japanese katakana characters, and does not fall under Article 4, Paragraph 1, Item 11 of the Trademark Act. Moreover, the court held that there is no risk of confusion with Suzuki Motor Corporation’s goods or services bearing the “Jimny” trademark and that it does not fall under Item 15 of the same Paragraph.

Trademark in the Application   Cited Trademark１　　　　　　　　Cited Trademark２   ◆Main text of the case   Summary of the Judgment 1. Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Items 11 and 15 of the Trademark Act (1) Concerning the “actual circumstances of transaction” when interpreting Article 4, Paragraph 1, Item 11 of […]

[Patent★] Patent Administrative Litigation “Gas-System Extinguishment Facility”: A case in which the Intellectual Property High Court reversed a JPO decision on patent opposition in which a sub-citation was excessively abstracted (high-level conceptualization), and recognized inventive step.

Intellectual Property High Court Case No.10009 (Gyo-ke) 2022, March 27, 2023 “Gas-System Extinguishment Facility” Case (Presiding Judge Otaka)   [Excerpts from the Judgment and Some Considerations]  1. Highlights of the Judgment In the judgment, the court reversed the JPO decision on patent opposition, finding that the JPO decision ignored “rupture disk” from the technical matter […]

[Patent★] Patent Infringement Litigation “A composition containing 2,3-dichloro-1,1,1-trifluoropropane, 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 held that for inventions that identify impurities or byproducts for which there is no description of effects in the specification, support requirements were violated due to the lack of a description of the issue, etc.

Intellectual Property High Court Case No.10094 (Ne) 2022, October 5, 2023 (Presiding Judge Shimizu)   1. Claim 1 of the Patented Invention A composition comprising HFO-1234yf, HFC-143a, and HFC-254eb, wherein the composition contains no more than 0.2 weight percent HFC-143a and no more than 1.9 weight percent HFC-254eb.   2. Excerpts from the Judgment (Judgment […]

【Unfair Competition Prevention Act・Copyright Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that although the form of the Plaintiff’s goods is recognized as indication of the Plaintiff’s goods, the form of the Plaintiff’s goods is not similar to that of Defendant’s goods; thus, manufacture and sale of the Defendant’s goods does not fall under Article 2, Paragraph 1, Item 1 or 2 of the Unfair Competition Prevention Act; furthermore, the form of the Plaintiff’s goods is not recognized as a copyrighted work, and therefore manufacture and sale of the Defendant’s goods does not fall under copyright infringement.

Defendant’s Goods     Defendant’s Goods 1     Defendant’s Goods 2       Intellectual Property High Court Decision of September 25, 2024 (Case No. 10111 [Ne] 2023―Presiding Judge Shimizu)   ◆Main text of the case   Summary of the Judgment 1. Concerning whether the form of the Plaintiff’s goods falls under Article 2, […]

[Patent★★] Patent Infringement Litigation “5-aminolevulinic acid phosphate salt” Case: A case in which the Tokyo District Court denied the eligibility of the cited invention yet approved the novelty of the present invention because the substance name of the invention was mentioned in the cited document, even though it was not feasible for a person skilled in the art at the priority date to carry out the invention without trial and error.

Tokyo District Court Case No.9716 (Wa) 2022, July 28, 2023 (Presiding Judge Shibata)   Summary of the Judgment and Some Considerations   1. Scope of the Claim (Claim 1) “5-aminolevulinic acid phosphate salt represented by the formula …”   2. Concerning the Satisfaction of Constituent Requirements for the Patented Invention: Invention of a new substance […]

[Patent★★] Patent Administrative Litigation “Aminosilane” Case: A case in which the Intellectual Property High Court recognized novelty and inventive step on the grounds that the substance name was listed in the cited reference, even though at the time of priority date, it was not possible for a person skilled in the art to manufacture or obtain the substance without trial and error.

Intellectual Property High Court Case No.10097 (Gyo-ke) 2022, January 16, 2024 “Aminosilane” Case (Presiding Judge Honda)   Excerpts from the Judgment, and Some Considerations 1. Scope of the Claim (Claim 1) “Aminosilanes represented by the following formula:” [Chemical formula 1]   2. Excerpts from the Judgment (1)  Novelty “… In the field of chemistry, at […]

【Trademark act★】A case in which, with respect to a trademark determined to fall under Article 3,paragraph (1), item (iii) of the Trademark Act in the initial decision of refusal but subsequently determined to fall under item (vi) of the same paragraph in a trial decision, the court held that, although a separate notice of grounds for refusal under Article 55-2, paragraph (1) and Article 15-2 of the same Act was required as a general rule, and the trial proceedings not complying with this procedural requirement contain a defect (a violation of the law), such defect is not a ground for rescission as it is not found to affect the result of the trial decision. A case in which the court found that the trademark, “奇跡のラカンカ (kiseki-no rakanka),” written in horizontal direction (the “Trademark”), falls under Article 3, paragraph (1), item (vi) of the Trademark Act for “confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based)” etc. in Class 30 and the decision to maintain the trial decision is finalized.

August 20, 2024 ＜Trademark＞ (kiseki-no rakanka) ＜Designated Goods＞ Class: 30 Confectionery flavored with siraitia (other than fruit-based, vegetable-based, bean-based or nut-based), Coffee flavored with siraitia, Intellectual Property High Court Judgement 　April 24, 2024 Case number : 2023 (Gyo-Ke) 10109 Presiding judge: Masatoshi MIYASAKA ◆ Full text of the Judgement https://www.courts.go.jp/app/files/hanrei_jp/984/092984_hanrei.pdf 【Summary of the Judgement】 1. […]

【Trademark Act★】 A case in which the Intellectual Property High Court determined that the registered trademark, which the Defendant owns, for the designated goods of class 30 “Gummi Candy” and indicating the Japanese characters “地球グミ” [chikyu gumi] in standard characters falls under Article 4, Paragraph 1, Item 10 of the Trademark Act, holding that the term “地球グミ” of the cited mark is widely recognized among consumers of gummi candies, including young people, as indicating the gummi candies “Trolli”, “Planet Gummi” or “Blue Planet” related to the business of the Plaintiff, who is an importer and distributor in Japan, or of the foreign manufacturer, by the date of the examination decision at the latest (February 22, 2022), and that there were no arguments or evidence that the trademark fell under the same item as of December 16, 2021, the filing date of the application (Article 4, Paragraph 3 of the Trademark Act), and rescinded a JPO decision that dismissed the request for a trial for invalidation of a trademark registration.

Intellectual Property High Court Decision of December 26, 2023 (Case No. 10079 [Gyo-ke] 2023―Presiding Judge Shimizu)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the well-known characteristics of the cited mark The term “地球グミ” of the cited mark is not present on “Trolli”, “Planet Gummi” or “Blue Planet” (the Plaintiff’s […]

【Trademark Act★】A case in which the Intellectual Property Hight Court determined as similar (falling under Article 4, Paragraph 1, item 11 of the Trademark Act) comparing the following cited trademark with the part “Ｏ！Ｏｉ” of the following registered trademark by separating and observing the main elements of a composite trademark, and revoked the JPO’s decision which determined as dissimilar (not falling under the above provision).

Registered Trademark   Cited Trademark   Intellectual Property High Court Decision of December 4, 2023 (Case No. 10067 [Gyo-ke] 2023―Presiding Judge Honda)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the method of determining whether trademarks are similar or dissimilar The similarity of trademarks should be determined by whether or […]

［Patent★★] Patent Administrative Litigation “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)”: A case in which the Intellectual Property High Court rejected the logic that the support requirement is satisfied by reciting a particular effect in the claim concerning a functionally expressed reach-through claim unlike the final judgment in the previous case.

Intellectual Property High Court Case No.10093 (Gyo-ke) 2022, January 26, 2023 “Antigen Binding Proteins to Proprotein Convertase Subtilisin Kesin Type 9 (PCSK9)” Case (AMGEN v. REGENERON) (Presiding Judge Kanno) (The final judgment in the previous case was Intellectual Property High Court Case No. 10225 (Gyo-ke) 2017 and the petitioner for invalidation trial was Sanofi.)   […]

[Patent★] Patent Administrative Litigation “Marine Vessel” Case: The fourth case in which the Intellectual Property High Court recognizes an inventive step through a “Disclaimer”．

Intellectual Property High Court Case No.10151 (Gyo-ke) 2021, August 23, 2022 “Marine Vessel” Case (Presiding Judge Shoji) = Case No.10150 (Gyo-ke) 2021   Excerpts from the Judgment, and Some Considerations   1. Scope of the Claim (Claim 1) “At least one watertight compartment (excluding tanks)”   2. Concerning “Disclaimer” and Addition of New Matters (Requirements […]

【Trademark Act★★】A case in which the Intellectual Property High Court upheld a decision for rejection on the application for a trademark consisting only of the combination of a shade of orange (RGB combination: R221, G103, B44) for the entire box and a shade of brown (RGB combination: R94, G55, B45) for its upper perimeter, denying the acquisition of the ability to distinguish one’s own and other goods and services through the use and advertising of packaging boxes (commonly known as “orange boxes”) bearing the trademark applied for in relation to the designated goods and services in general, including goods and services not using the trademark applied for, based on the ability of general consumers to recognize the goods or services, and maintaining in its decision that Article 3, Paragraph 2, of the Trademark Act was not applicable.

Figure 1. Trademark as applied for   Intellectual Property High Court Decision of March 11, 2024 (Case No. 10095 [Gyo-ke] 2023―Presiding Judge Miyasaka)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding acquisition of distinctiveness of one’s own goods and services by using the trademark applied for When considering general consumers, […]

[Patent★] Patent Infringement Litigation “Massage Machine” Case: A case in which the decision of the Osaka District Court was reversed and the alleged infringing products were determined to be included in the technical scope of the patented invention. A case in which the court held that Article 102, Paragraph 2, of the Patent Act is applicable when the patentee’s products and the infringing products compete abroad. A case in which the court indicates the norm regarding the overlapping application of Article 102, Paragraph 3, of the Patent Act in relation to the portion of the presumption overturned by Article 102, Paragraph 2, of the Patent Act.

Intellectual Property High Court Grand Panel Case No.10024 (Ne) 2020, October 20, 2022   〈phase for examination on damages (Excerpts from the general theory part of the judgement)〉 1. Concerning Application of Article 102, Paragraph 2, of the Patent Act to the sale and export of “competing products” by the patentee (1) The judgment follows […]

[Patent★] Patent Infringement Litigation “Bone Fracture Fixation System” Case: A case in which the Intellectual Property Court approved the application of Article 102, Paragraph 2, of the Patent Act based on the fact that a group company which is a wholly owned subsidiary of a common ultimate parent company embodies the patent right when said group company sells products.

Intellectual Property High Court Case No.10091 (Ne) 2021, April 20, 2022 (Presiding Judge Honda)   1. Summary of the Judgment In the Judgment, with regard to the scope of application of Article 102, Paragraph 2, of the Patent Act, based on the established decisional framework in preceding cases that the provision is applicable “where circumstances […]

【Unfair Competition Prevention Act★】A case in which the Intellectual Property High Court maintained the District Court’s decision, holding that the form of the Appellee’s goods has so-called special distinctiveness and is well-known, and thus falls under the category of well-known indications of goods, etc., and since the form of the Appellant’s goods 1 and 2 is similar to that of the Appellee’s goods in such a way that is likely to create confusion with the Appellee’s products, it is judged to fall under Article 2, paragraph 1, item 1 of the Unfair Competition Prevention Act.

Appellee’s goods               Appellant’s goods 1          Appellant’s goods 2 　 　　 　   Intellectual Property High Court Decision of November 9, 2023 (Case No. 10048 [Ne] 2023―Presiding Judge Miyasaka)   ◆Main text of the case   【Summary of the Judgment】 1. Concerning whether the form of the Appellee’s goods falls […]

【Trademark Act★★】A case in which the Intellectual Property High Court held that the defendant’s following indications 1 and 2 which consist of the words “バレナイ” and “二重” in two columns above and below on a black background are not similar to the plaintiff’s trademark 1 which consists of “バレないふたえ” in standard characters and the plaintiff’s following trademark 2 which consists of the words “バレない” and “二重” in two columns above and below. A case in which given the above, the IP High Court dismissed the appeal against the original judgement in which the district court dismissed the plaintiff’s assertion of trademark infringement on the ground that the defendant’s indications are not used as a trademark (Article 26, Paragraph 1, Item 6 of the Trademark Act).

  defendant’s indications 1 and 2 　   plaintiff’s trademark 2   Intellectual Property High Court Decision of December 26, 2023 (Case No. 10011 [Ne] 2023―Presiding Judge Shimizu)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the method of determining whether trademarks are similar or dissimilar The similarity of trademarks […]

Outline of the Trademark Act, Design Act and Unfair Competition Prevention Act as amended in 2023 (Supplement)

1　Process of Amendment Act for Partial Amendment of the Unfair Competition Prevention Act, etc. (Act No. 51 of 2023) was enacted on June 7, 2023 and promulgated on June 14, 2023. The major amendments and the effective date are explained in 2 below.   2　Major Amendments and Effective Date     2-1  Enhanced brand and […]

【Trademark Act★★】A case in which the Intellectual Property High Court held that the applied trademark which consists of standard character “VENTURE” is dissimilar to the following cited trademark which consists of a large Chinese character “遊” in brush-style typeface at the top center and the Roman characters “VENTURE” in Gothic-style typeface at the bottom and not applicable to Article 4, Paragraph 1, Item 1 of the Trademark Act, and reversed a trial decision of rejection by JPO which decided them to be similar and applicable to the said provision.

  Intellectual Property High Court Decision of November 30, 2023 (Case No. 10063 [Gyo-ke] 2023―Presiding Judge Miyasaka)   ◆Main text of the case   【Summary of the Judgment】 1.  Regarding method of determining whether trademarks are similar or dissimilar The similarity of trademarks should be considered as a whole, taking into account the impression, memory, […]

[Patent★] Patent Infringement Litigation “Device for displaying ladder circuits in the event of an abnormality in a programmable controller” Case: A case in which the Intellectual Property High Court held that each existing component was considered an essential component for the solving the problem of the invention. A case in which the Intellectual Property High Court held that it is sufficient for the defendant to recognize and acknowledge that there is high probability that persons within the range of non-exceptional cases will use the accused product to infringe the patent.

Intellectual Property High Court Case No.10007 (Ne) 2019, August 8, 2023 (Presiding Judge Kanno)   [Summary of this Judgement] 1. Concerning Indirect Infringement (Article 101, Item 2 of the Patent Act) (1) Combination of existing components and recognition of “products essential to solve the problem” In this judgement, the court held as follows and recognized […]

[Patent★] Patent Infringement Litigation “Electroformed Tube” Case: The first and only lower court case to require “impossible or impractical circumstances” with respect to clarity requirement of a product invention specified by a manufacturing method, and to hold that the clarity requirement was violated.

Intellectual Property High Court Case No.10140 (Gyo-ke) 2021, November 16, 2022 (Presiding Judge Kanno)   [Summary of this Judgement] 1. Excerpts from the Judgement (Clarity requirement for product by process claims (PBP claims)） “Even in the case where a manufacturing method of a thing is described in the claims of a patent for an invention […]

[Patent★★] Patent Infringement Litigation “Image Forming Apparatus” Case (A case in which a divisional application was filed from a parent application to a child application and then to a grandchild application, the court held that the filing date of the grandchild application was retroactive only until to the actual filing date of the child application on the grounds that the child application was illegal for violation of divisional filing requirements and addition of new matter, and denied inventive step based on publicly known documents after the filing date of the parent application but before the actual filing date of the child.)

Tokyo District Court Case No.23164 (Wa) 2019, November 11, 2021 (Presiding Judge Tanaka)   [Summary of this Judgement, and Relevant Court Cases on Incidental Issues] 1. Excerpts from the Judgement (the “Image Forming Apparatus” case Judgement ) （the normative judgement part + the judgement part of application to the case） “Since the specification at the […]

【Unfair Competition Prevention Act★】A case in which the Intellectual Property High Court held that the “GODZILLA” indication (plaintiff’s indication) is a famous trademark of the appellee (plaintiff), and held that the appellant’s (defendant’s) indication for goods or business “GUZZILLA” (defendant’s indication 1) is similar to the plaintiff’s indication and the use of the defendant’s indication 1 by the appellant falls under Article 2, Paragraph 1, Item 2 of the Unfair Competition Prevention Act, and then, the appellant (defendant) has infringed on the plaintiff’s business interests.

Intellectual Property High Court Decision of July 19, 2023 (Case No. 10063 [Ne] 2022―Presiding Judge Shoji)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding whether or not the plaintiff’s indication constitutes an appellee’s (plaintiff’s) famous indication of goods or business. The plaintiff’s indication not only refers to the monster “GODZILLA” […]

[Patent★★] Grand Panel Decision of the Intellectual Property High Court (foreign server issues and contrast with prior case decisions are included)

―(Following Case) Intellectual Property High Court Case No.10046 (Ne) 2022, May 26, 2023 (Presiding Judge Otaka) A case in which the act of “production” by FC2 in the U.S. of a “(comment distribution) system” that includes servers located outside of Japan was evaluated as an act in Japan. The Patentee prevailed in a reversal.   […]

As of October 1, 2023, right holders of patent rights, utility model rights, design rights, and trade secrets can stop the counterfeit products through simplified identification procedures based on the revision of the Order for Enforcement of the Customs Act in March 2023.

1. Background of the law revision In recent years, with the development of cross-border e-commerce, the number of applications for import seizures against patent and design rights (over 150 cases in 2009) and the number of import seizures (over 450 cases in 2021) have been increasing. In addition, since October 1, 2022, as the Customs […]

[Patent★] “Solenoid Actuator” Patent Infringement Injunction Appeal Court Case: The case in which the Intellectual Property High Court changed the claim interpretation of whether the solenoid needs to be “sealed” by the end member itself, and the patentee won a reversal.

Intellectual Property Hight Court Case No. 2018 (Ne) 10034, March 14, 2022 (Presiding Judge Kanno)   [Summary of the Judgement and Comments] 1. Claim 1 “A solenoid stored in a fitting hole provided in a counter housing member, the solenoid comprising: a case member configured to be inserted into the fitting hole; a coil member […]

Outline of the Trademark Act, Design Act and Unfair Competition Prevention Act as amended in 2023

1  Process of Amendment Act for Partial Amendment of the Unfair Competition Prevention Act, etc. (Act No. 51 of 2023) was enacted on June 7, 2023 and promulgated on June 14, 2023. The major amendments and the effective date are explained in 2 below.   2  Major Amendments and Effective Date   2-1   Enhanced brand […]

Outline of the Copyright Act as amended in 2023

1　Process of Amendment Act for Partial Amendment of the Copyright Act (Act No. 33 of 2023) was enacted on May 17, 2023 and promulgated on May 26, 2023. The major amendments and the effective date are explained in 2 below.   2　Major Amendments and Effective Date 　2-1　Establishment of a new adjudication system for the use […]

[Patent★] “Light Source, Backlight Unit Including Light Source and Liquid Crystal Display Device” Case: The case in which the Intellectual Property High Court denied the inventive step on the grounds that it was possible to extract a coherent technical idea from multiple paragraphs in the cited reference and that the numerical limitation without data was a design matter.

Intellectual Property Hight Court Case No. 2021 (Gyo-ke) 10096, June 15, 2022 (Presiding Judge Honda)   [Summary of the Judgement and Comments] 1. Excerpts from the Judgement on inventive step (① It is possible to extract a coherent technical idea from multiple paragraphs in the cited reference.) “…Whereas paragraphs [0012], [0013], and [0015] of the […]

【Trademark Act★】A case in which the Intellectual Property High Court held that concerning the trademark consisting solely of the color red (PANTONE 18-1633TP) applied to the sole portion of women’s high-heeled shoes, the trademark cannot be said to acquire the high degree of distinctiveness required under Article 3 Paragraph 2 of the Trademark Act.

Intellectual Property High Court Decision of January 31, 2023 (Case No. 2022 [Gyo-ke] 10089―Presiding Judge Kanno)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding whether or not a trademark consisting solely of a single color corresponds to Article 3 Paragraph 2 of the Trademark Act The intent of Article 3 […]

【Trademark Act★】A case in which the Intellectual Property High Court held that the “朔北” part of the trademark “朔北カレー” is dissimilar (not applicable to Article 4(1)(11) of the Trademark Act) to the cited trademark “サクホク” by separating and observing the elements of the composite trademark and reversed a refusal decision which decided them to be similar (applicable).

Intellectual Property High Court Decision of March 9, 2023 (Case No. 2022 [Gyo-ke] 10122―Presiding Judge Honda)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding criteria for determining whether product trademarks are similar or dissimilar The similarity of product trademarks should be determined based on “likelihood of confusion” as to the […]

Supreme Court 2012 (ju) 1204 PATENT

The Supreme Court decision on interpretation of Product-by-process claims (Case No. 2012 (ju) 1204; Date of judgement: June 5, 2015)   December 16,2016 1. In Japan, a product invention can be identified in a claim by its production process (product-by-process claim). In this case, the Supreme Court judged an interpretation of a technical scope of […]

【PATENT ★】IP High Court 2016 (Gyo-Ke) 10278

【PATENT ★】IP High Court Case No. 2016 (Gyo-Ke) 10278; January 15, 2018 (Presiding Judge Takabe)   “Novel crystalline form of Pitavastatin calcium” Case:   A case in which, by understanding the problem to be solved by the invention abstractly and conceptually, the support requirement for specifications was found to be satisfied. In order for a […]

【PATENT★】IP High Court 2017(Gyo-Ke)10006, 10015

【PATENT ★】IP High Court Case No. 2017 (Gyo-Ke) 10006, 10015; August 22, 2017   “Run-flat tire” Case:　A case in which (i) numerical limitations on temperature was not found to be in breach of the clarity requirement even if difference of 1℃ is caused depending on how it is measured, and (ii) an invention of a […]

Tokyo District Court Case No. 2017 (Wa) 40337

Tokyo District Court Case No. 2017 (Wa) 40337 of July 22, 2020 (Presiding Judge SATO) 【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 […]

IP High Court Case 2020 (Gyo-ke) 10005 (TAKABE)

IP High Court Case No. 2020 (Gyo-ke 10005) on November 10, 2020 (Presiding Judge TAKABE)   [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 […]

[Patent★] “Retroreflecting sheet having printed layer” Patent Infringement Injunction Case: A case in which the Intellectual Property High Court considered the royalty rate (5%) proposed by the patentee during pre-litigation negotiations as one factor and decided that the royalty rate to be determined ex post facto would be twice that rate (10%).

Intellectual Property Hight Court Case No.1130 (Wa) 2018, August 31, 2021 (Presiding Judge Tanaka)   [Summary of the Judgement, Introduction of the IP High Court’s Grand Panel Case and Some Consideration (Trends After the Grand Panel Case)]   1. Intellectual Property Hight Court Case No.1130 (Wa) 2018, August 31, 2021 (Presiding Judge Tanaka) ～This Judgement～ […]

【Intellectual Property Law ★】A case in which the Intellectual Property High Court held that a provision in an exclusive management agreement between a music agency and performers prohibiting the performers from entering into contracts with third parties for the purpose of performing without permission for a period of six months after the termination of the agreement (the provision in question) is invalid in violation of public order and morals as unreasonably restricting the performers’ freedom to choose their occupation. A case in which the court held that publicity rights and moral rights (rights of attribution) pertaining to the group name (the group name in question) attached to the group of performers shall be held by each member and cannot be exercised by the music agency after the termination of the agreement.

Intellectual Property High Court Decision of December 26, 2022 (Case No. 2022 [Ne] 10059―Presiding Judge Honda)   ◆Main text of the case   【Summary of the Judgment】 1. Validity of the provision in question 1) The provision in question broadly restricts the performers’ activities using their acquired skills and experience after the termination of the […]

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark consisting of the words “おんじゃくきゅう” and “温石灸” in two columns, which is used for the designated services of “Massage and therapeutic Shiatsu massage; moxibustion; acupuncture; chiropractic; providing medical information; dietary and nutritional guidance” in Class 44, merely describes the quality of the designated services, and therefore falls under Article 3, para.1, item 3 of the Trademark Act. In addition, if the trademark is used for the designated services other than “moxibustion (treatment) using warm stones”, it may be liable to be misleading of the quality of services, and therefore also falls under Article 4, para.1, item 16 of the Trademark Act.

April 10, 2023 Intellectual Property High Court Decision of June 16, 2022 (Case No. 2022 [Gyo-ke] 10002―Presiding Judge Tamotsu SHOJI) ◆Main text of the case 【Summary of the Judgment】 １．Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

[Patent★★]“LASER BEAM WORKING MACHINE” Case: A case in which the Intellectual Property High Court found the absence of grooves from the drawings in the specification and allowed the correction of the claims excluding the grooves. A case in which the court found inventive step because the grooves were essential to the cited invention, and therefore, there were grounds for hindrance.

Intellectual Property Hight Court Case No.10111 (Gyo-ke) 2021, June 22, 2022 (Presiding Judge KANNO)   [Summary of the Judgement and Comments] 1. Scope of the Patent Claims “…A laser processing apparatus comprising a silicon wafer in which the slot along the aforementioned scheduled cutting line is not formed in the silicon single crystal structure portion…” […]

[Patent★★] “Wiring Box” Case: Litigation of Rescinding the Trial Decisions Made by the JPO on a Patent Case.A case in which the Intellectual Property High Court held that when a divisional application was filed with a parent, child, and grandchild applications …, the filing date of the grandchild’s application was not retroactive to the filing date of the parent’s application if the child application violated the divisional requirement/added new matter.

Intellectual Property Hight Court Case No.10263 (Gyo-ke) 2016, September 26, 2017 (Presiding Judge Takabe)   [Summary of the Judgement and Comments]   1. Excerpts from the decision (“Wiring Box” case decision) “The following are the substantive requirements to find the divisional application to be legal: [i] the description or drawing of the original application includes […]

【Trademark Act ★】A case in which the court maintained the trial decision to dismiss the plaintiff’s request for invalidation, finding that the registered trademark of the defendant (the subject trademark) consisting of the words “sweets/party in Katakana” and the cited trademark of the plaintiff consisting of the words “sweet party in Katakana / SWEET PARTY” are not similar and that the registration of the subject trademark was not made in violation of Article 4(1)(xi) of the Trademark Law.

＜The Subject Trademark＞ ＜The Cited Trademark＞ January 19, 2023 Intellectual Property High Court Decision of October 6, 2021 (Case No. 2021 [Gyo-ke] 10036―Presiding Judge Tamotsu SHOUJI) ◆Main text of the case https://www.courts.go.jp/app/files/hanrei_jp/617/090617_hanrei.pdf 【Summary of the Judgment】 1．Regarding the criteria of Article 4, para.1, item 11 of the Trademark Act The similarity of trademarks should be […]

【Trademark Act ★】A case in which the Court affirmed the Japan Patent Office’s decision which refused an application for registration of a composite trademark composed of a figure part and a word part on the grounds that the trademark falls under Article 4, Paragraph 1, Item 11 of the Trademark Act in view of separate observation/essential part observation, general and constant state of transactions, and similarity between services.

＜Subject Trademark＞ ＜Cited Trademark＞ KANGOL (in standard characters) January 17, 2023 Intellectual Property High Court Decision of June 16, 2021 (Case No. 2020 [Gyo-ke] 10148―Presiding Judge Toshihiko TSURUOKA) ◆Main text of the case 【Summary of the Judgment】 1. Similarity of trademarks (1) Regarding the general theory of similarity of trademarks Similarity of trademarks should be […]

[Patent★] Litigation Seeking of Rescinding the Trial Decision Case: A case in which a general problem that could be recognized by a person skilled in the art on the filing date of the patent application is also applicable to the cited invention, although there is no reference to the cited reference, therefore, the motivation is admitted. A case in which the Intellectual Property High Court denied the inventive step and rescinded the JPO decision.

 Intellectual Property Hight Court Case No.10120 (Gyo-ke) 2019, May 19, 2021 Presiding Judge TSURUOKA   [Summary of the Judgement and Comments] 1. Summary of the Judgement The court held that“the problem of the occurrence of adverse thrust force (adverse thrust load condition)”was not directly mentioned in the primary reference (Ko 1), but was described in […]

[Patent★] “Equol-containing extract, method for production thereof” Patent infringement Appellate Court Case: A case in which the Intellectual Property High Court presumed the method for producing the Appellee’s products by applying Article 104 of the Patent Act. A case in which the Intellectual Property High Court granted a priority claim and determined the Original Filing Date as “the date of the patent application”. A case in which the Patentee won a reversal in the Intellectual Property High Court.

Intellectual Property Hight Court Case No.10059 (Ne) 2020, February 9, 2022 (Presiding Judge Honda)   [Summary of the Judgement and Comments] 1. The biggest issue in this case ~Article 104 of the Patent Act The biggest issue in this case is “whether the Appellee’s material is presumed to have been produced using the method of […]

【Trademark Act ★】A case in which the Intellectual Property High Court held that the registered trademark (the trademark in question) owned by the plaintiff, which consists of “スマホ修理王” in standard characters and whose designated service is “repair or maintenance of telephone equipment” in Class 37, is a “trademark that is likely to negatively affect public policy” in light of the purpose and background of the application for registration, therefore, it falls under Article 4, paragraph 1, item 7 of the Trademark Act and the court maintained a trial decision of invalidation made by the Japanese Patent Office (the “JPO Decision”) to the same effect.

Intellectual Property High Court Decision of September 14, 2022 (Case No. 2022 [Gyo-ke] 10034―Presiding Judge Kanno)   ◆Main text of the case   【Summary of the Judgment】 Regarding whether or not the trademark in question corresponds to Article 4, paragraph 1, item 7 of the Trademark Act The application for registration of the trademark in […]

【Trademark Act ★】A case in which the Intellectual Property High Court maintained a cancellation decision made by the Japanese Patent Office (the “JPO Decision”), defendant, in a case of opposition filed by the defendant’s supporting intervener, on the ground that the registered trademark owned by the plaintiff which consists of words “hihachi” standard characters (the trademark in question), which designates “Household electrothermic appliances, non-electric cooking heaters for household purposes” etc. in Class 11, corresponds to a trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” in relation to the cited trademark consisting of “HITACHI” in standard characters for which the defendant’s supporting intervener has obtained trademark registrations, and falls under Article 4, paragraph 1, item 15 of the Trademark Act.

Intellectual Property High Court Decision of January 27, 2022 (Case No. 2021 [Gyo-ke] 10092―Presiding Judge SHOJI)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the criteria of the trademark which “is likely to cause confusion in connection with the goods … pertaining to a business of another person” as prescribed […]

[Patent★] “Mounting Structure for Circuit Breaker” Case: A case in which the Intellectual Property High Court found that the divisional application in which the specific description in the original specification with respect to a configuration not directly related to the problem of the invention was abstracted and generically conceptualized and added to the scope of the claims does not fall under the addition of new matters. A case in which the Intellectual Property High Court denied the easily-conceived property for one of the reasons that the parts are small.

Intellectual Property Hight Court Case No.2019 (gyo-ke) 10046, July 22, 2020 (Presiding Judge Ohtaka)   1. Concerning Inventive Step Concerning inventive step (easily-conceived property), the Intellectual Property High Court found that “it is difficult to consider that it was easy to conceive of adopting a configuration of small parts such as a leaf spring or […]

＜IP High Court＞ 2019(Gyo-Ke)10136 (Date) December 15, 2020 “LIQUID PHARMACEUTICAL FORMULATIONS OF PALONOSETRON” Case

Support Requirement (Conclusion) Support Requirement is Not admitted. [Claim 1] recites: “…Solutions with storage stability of at least 24 months…” “The present specification does not describe a paronosetron preparation which satisfies the requirements of 24 months, and in light of the common general knowledge as of the filing, it cannot be said that a person […]

Strengthening of Regulations on Personal Import of Counterfeit Goods
～The regulations come into effect as of October 1, 2022～

Ⅰ.　Introduction In recent years, as shown in the figure below, the import of counterfeit goods for personal use has been increasing along with the development of cross-border e-commerce via the internet and international parcel post. In order to strengthen regulations on the import of counterfeit goods for personal use, the Trademark Act and Design Act […]

【Trademark Act ★】A Case in which the Intellectual Property High Court partially rescinded a decision made by the Japanese Patent Office (the “JPO Decision”), which partially maintained a request for a trial for trademark invalidation, on the ground that the registered trademark which consists of words “Scrum Master” written horizontally in standard characters is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, education and training, planning, operation or conducting of qualifying examination, planning, operation or holding of seminars” in Class 41 and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers and therefore falls under Article 3, para.1, item 3 of the Trademark Act.

Intellectual Property High Court Decision of May 19, 2022 (Case No. 2021 [Gyo-ke] 10100―Presiding Judge Ichiro OTAKA)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

【Trademark Act ★】The following registered trademark, which designates “T-shirts and hats” in Class 25, is not similar to the following cited trademark and has not been registered for “unfair purposes”. Therefore, the portion of the plaintiff’s request for invalidation trial based on Article 4(1)(xv) of the Trademark Act is dismissed (Article 47(1) of the Trademark Act) due to the passing of the period of exclusion. The trial court’s decision to dismiss the portion based on Article 4(1)(vii) of the Trademark Act was not erroneous, and the decision of the invalidation trial was affirmed.

＜The Registered Trademark＞   ＜The Cited Trademark＞   Intellectual Property High Court Decision of February 22, 2022 (Case No. 2021 [Gyo-ke] 10104―Presiding Judge Ichiro OOTAKA)   ◆Main text of the case   Summary of the Judgment 1.Whether the trademark is registered for “unfair purposes” (Article 47(1) of the Trademark Act in parentheses) In light of […]

[Patent★] “X-ray Fluoroscopic Imaging Apparatus”Case: A case in which the Intellectual Property High Court emphasized that the present invention newly took up a task in question as the problem to be solved, and denied easily-conceived property (recognized inventive step) on the ground of the difference between the problem to be solved by the present invention and the problem to be solved by the main cited invention.

Intellectual High Court Case No. 2019 (Gyo-ke 10159) April 15, 2021 (Presiding Judge Kanno)   1. Difference between the present invention and the main cited invention The claimed invention “comprises an image rotating mechanism, which rotates only the X-ray image displayed on said display part, from among said X-ray images,” whereas the cited invention has […]

[Patent★] Patent Infringement Appellate Court Case demand for injunction: A Case in which, concerning the interpretation of the claim language of a plurality of “chambers”, the Intellectual Property High Court found that the defendant’s products do not satisfy the constituent elements of the patented invention of a product with the limitation “can be communicated with each other”. On the other hand, the defendant’s methods satisfy the constituent elements of the patented invention of a method without limitation. A Case in which the Intellectual Property High Court reversed the prior instance judgement which found that both defendant’s products and defendant’s methods did not satisfy the constituent elements of the patented invention.

 Intellectual Property Hight Court Case No.2021 (Ne) 10007, November 16, 2021 (Presiding Judge Honda) (Prior Instance: Tokyo District Court Case No. 2018 (Wa) 29802, December 24, 2020 (Presiding Judge Tanaka）   1. Interpretation of the claim language in the prior instance judgement: Tokyo District Court Case No. 2018 (Wa) 29802 (Excerpt from summary of the […]

[Patent★★] A Case in which the Intellectual Property Hight Court acknowledged joint direct infringement even if some part of the method invention was worked by another entity.

 Intellectual Property Hight Court Case No.2021 (Ne) 10029, September 21, 2021(Presiding Judge Shoji) （Osaka District Court Case No. 2017 (Wa) 10716, February 18, 2021（Presiding Judge Sugiura), the same conclusion）     1. Excerpt from the Judgements Concerning Theory of Fulfillment of Patentability Conditions among Multiple Entities “…The defendant sold the defendant’s products and carried out […]

[Patent★] “Vinylidene chloride system resin wrap film” Patent infringement Case: A case in which the Tokyo District Court acknowledged inventive step by denying the ease of focusing on the “parameter” when it was not known whether the physical property value was satisfied even if the composition value was satisfied. Moreover, the Tokyo District Court recognized the support requirement and found that the defendant’s products fall within the technical scope of the invention.

Tokyo District Court Case No. 2019 (Wa) 31214, November 5, 2020 (Presiding Judge Tanaka)   Excerpt from the Judgement (Section on the inventive step of the parameter invention) * The Tokyo District Court denied the ease of focusing on the parameters and acknowledged inventive step. * The Tokyo District Court acknowledged the significance of the […]

【Trademark Act ★】A case in which the Court maintained the Japan Patent Office’s decision of refusal of a trademark application on the ground that the trademark which consists of the words “睡眠コンサルタント” written horizontally is a necessary and appropriate indication for the transaction as describing the quality of the designated services such as “teaching of art, sports or knowledge, planning, operation or holding of seminars, provision of electronic publications, production of books,” in Class 41, and is generally recognized as indicating the quality of services when used for such designated services by traders and consumers, and therefore falls under Article 3, para.1, item 3 of the Trademark Act

Intellectual Property High Court Decision of January 25, 2022 (Case No. 2021 [Gyo-ke] 10113―Presiding Judge Tamotsu SHOJI)   ◆Main text of the case   【Summary of the Judgment】 1. Regarding the purport and evaluation criteria of Article 3, para.1, item 3 of the Trademark Act The purport of Article 3, para.1, item 3 of the […]

＜IP High Court＞ 2007 (Ne) 10032（July 20, 2010）”Container for Molten Metals ” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is Similar to the registered design. (Design right owner won.) Even if a registered design includes public designs in part of it, it is assumed that it will coexist with other featuers and constitute a different design. Therefore, the inclusion of well known or publicly known designs […]

＜Supreme Court＞ 1970(Gyo-Tsu)45（March 19, 1994） “Flexible and elastic hose” Case

Novelty (related to Prior designs) Easiness to create the design (Conclusion) Novelty should be found. The registered design is not easy to create based on Prior designs. (Design right owner won.)   “Similarity” of novelty should be judged from the standpoint of general consumers. In order to refuse on grounds of lack of novelty, the […]

＜Supreme Court＞ 1973(Gyo-Tsu)82（February 28, 1975） “Cap” Case

Novelty (related to Prior designs) (Conclusion) Novelty should NOT be found. (Applicant lost.) Difference of colors might contribute to “Novelty,” but denid in this case. The combination of colors as pointed out as a difference between the two designs in the court of prior instance (black and yellow in the applied design, dark red and […]

＜Supreme Court＞ 1991 (Gyo-tsu) 139 （February 24, 1995）”Embedded light for ceiling” Case

Prior application (Design Act Article 9(1)) (Conclusion) Rejected as Prior application (Design Act Article 9(1)). In cases where the design in the application for design registration of similar design is similar to another person’s design for which an application for design registration has been filed on an earlier date, except where the application for design […]

＜Osaka District Court＞ 2004 (Wa) 1099（January 17, 2005） “Yukazuka (floor post)” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) The essential parts of the design should be identified by observing the design as a whole and taking into account the nature, use, etc. of the article to which the design relates. Although some of the […]

＜IP High Court＞ 2005 (Gyo-ke) 10134（September 15, 2005） “Postbox” Case

Novelty (related to Prior designs) (Conclusion) Novelty should NOT be found. (Design right owner lost.) The court affirmed that the Handouts fell under the category of “publications distributed”. When the resistered design and the prior design are observed as a whole, the difference is a partial and weak difference that is limited to “a difference […]

＜IP High Court＞ 2005 (Ne) 10079（ October 31, 2005） “Carabiner” Case

Similarity of “article (goods)” (Infringement case) (Conclusion) Defendant’s “article” is NOT Similar to the registered design. (Design right owner lost.) There may be no design separated from an article. Simirality of articles means that when a registered design or a design similar thereto is applied to an article, confusion may occuer. In this case, the […]

＜Osaka District Court＞ 2004 (Wa) 8657（November 24, 2005） “Infusion solution bag” Case

Prior use right (Japanese Design Act, Article 29) (Conclusion) Prior use right was admitted. (Design right owner lost.) The defendants had started making preparations for the production of its products before the plaintiff’s filling of an application for registration of the design, and by concluding that the defendants had a non-exclusive license based on prior […]

＜Osaka District Court＞ 2004 (Wa) 6262（December 15, 2005） “Face puff” Case

Similarity of “article (goods)” (Infringement case) (Conclusion) Defendant’s “article” is Similar to the registered design. (Design right owner won.) Whether articles are similar each other or not should be judged based on the simirality of the “purposes” and “functions”. Even if the “function” is different, as lon as the “purpose” is the same, it is […]

＜Osaka District Court＞ 2004 (Wa) 14355（January 17, 2006） “Shopping basket” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is Not Similar to the registered design. (Design right owner lost.) The persons in the purchasing division of a supermarket or a department store, etc. should be regarded as consumers of such shopping baskets and therefore as observers of them. Observers would observe a shopping basket by […]

＜IP High Court＞ 2005 (Gyo-ke) 10679（March 31, 2006）”Connector terminal” Case

Novelty (related to Prior designs) (Conclusion) Novelty should Not be found because the applied design is too small to be invisible to the naked eye. (Applicant lost.) Even if a small size is invisible to the naked eye, the design is accepted if it is usually observed in a magnified manner at the time of […]

＜IP High Court＞ 2006 (Gyo-ke) 10136（August 24, 2006）”Piano pedal extender platform” Case

Divisional application (Japanese Design Act, Article 10bis(1)) (Conclusion) Divisional application based on the “reference drawing” was rejected. (Applicant lost.) *Under the Japan Design Act, applied design which is not registerd as design right would not be published. “Two or more designs” as used in Article 10-2(1) of the Design Act shall be limited to “designs […]

＜IP High Court＞ 2006 (Gyo-ke) 10088（September 20, 2006） “Metal blind louver” Case

Easiness to create the design (Conclusion) The registered design is NOT easy to create based on Prior designs. (Design right owner won.) In determining whether or not it is easy to create a design, the field to which the design belongs shall be considered. The article related to the prior design is used as a […]

＜Osaka District Court＞ 2006 (Wa) 3563 （November 30, 2006）”Metal product to support concrete frame” Case

Novelty (Infringement case – Invalid) (Conclusion) Novelty should NOT be found. (Applicant lost.) There are no dofferences between the prior Plaintiff’s product #100 shown in the brousher and the registered design.  <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/517/000517.pdf

＜IP High Court＞ 2006 (Gyo-ke) 10337（December 11, 2006） “Car stopper block” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) Since the cited defendant’s brochure was a mere color-printed document, the defendant could have made the brochure with a false preparation date, and therefore that the preparation date printed on the document was insufficient to prove the date when it was actually prepared. […]

＜Osaka District Court＞ 2006 (Wa) 7014（December 21, 2006） “Block mat” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) Consumers (contractors) select products by looking at catalogs or actual products. The catalogs show front-view drawings as product drawings. Whereas the resistered design provides an orderly aesthetic feel, in Defendant’s Block mat, the quarter-circle notches provide […]

＜IP High Court＞ 2007 (Gyo-Ke) 10119（September 10, 2007） “Craft puncher” Case

Novelty (related to Prior designs) Novelty should NOT be found. (Applicant lost.) It is not reasonable to compare the publicly known design with older existing publicly known designs and to recognize essential features for the purpose of determining similarity between the prior designs and the applied design. The judgment on similarity should be based simply […]

＜IP High Court＞ 2007 (Gyo-Ke) 10107 （November 29, 2007） “Elastic damper” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) A combination of common points between the applied design and the prior design does not have a significant design effect on the determination on similarity. In the additional consideration of several differences between them, when the whole of the designs in the present […]

＜IP High Court＞ 2007 (Gyo-Ke) 10209（December 26, 2007） “Packaging container” Case

Easiness to create the design (Conclusion) Novelty should be found. (Applicant won.) Since the applied design was created with creative ingenuity from various design choices, it is not easy for a person skilled in the art to create the applied design on the basis of the Prior design 3 by appling the Prior design 1 […]

＜Tokyo District Court＞ 2007 (Wa) 1972 （February 19, 2008）”Bucket tip shroud” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) The resistered design has a considerably lower top of the fitted portion as compared with the position of the upper side portions of the left and right tooth plate portions, when mounted on the bucket, closes […]

＜IP High Court＞ 2008 (Gyo-Ke) 10069（August 28, 2008） “Polishing pad” Case

Easiness to create the design (Conclusion) The registered design is not easy to create based on Prior designs. (Design right owner won.) Among the triangular wave zigzag line patterns, there are various line thicknesses and lengths and forming angles of respective linear portions, and there is room for selection, and the width of the groove […]

＜Osaka District Court＞ 2007 (Wa) 1411 （September 11, 2008）”Coupling horn” Case

Similarity of design (Infringement case) (Conclusion) Basically, the hidden shape shall not be taken into consideration when considering similarity.  Defendant’s design is not Similar to the registered design. (Design right owner lost.) “Use relationship” when only part of the product is visually recognizable from the outside. Since Defendant’s horn is contained in spindle, it does […]

＜Tokyo District Court＞ 2008 (Wa) 1089（October 30, 2008）”Clothes hanger)” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) In the resistered design, a semicircular thin plate is attached to a wire-like line on the upper side of the front side of the neck, whereas in the design of the Defendant’s Clothes hanger, the thin […]

＜IP High Court＞ 2008 (Gyo-Ke) 10184（November 26, 2008） “Wristwatch side” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) <Prior design> ① Mounting portion of the belt connecting portion is planar, ② no pattern on the thickness portion of the outer peripheral edge portion of the glass pressing substantially circular ring-shaped portion + 8 fixing screw portions having one groove therein hexagonal […]

＜IP High Court＞ 2008 (Gyo-Ke) 10185（November 26, 2008） “Wristwatch” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) <Prior design> ① Mounting portion of the belt connecting portion is planar, ② no pattern on the thickness portion of the outer peripheral edge portion of the glass pressing substantially circular ring-shaped portion + 8 fixing screw portions having one groove therein hexagonal […]

＜IP High Court＞ 2008 (Gyo-Ke) 10251（December 25, 2008）”Beer pitcher” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) The applied design is basically formed by a straight line in both the folded portion and the pouring spout, the whole length is long, the pouring spout is large and deep, and has a double substantially V-shaped shape in front view, and when […]

＜IP High Court＞ 2008 (Gyo-Ke) 10401（May 28, 2009） “Fluid pressure cylinder” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) The most common form attracts the attention of the consumer when the aesthetic feeling caused by a form other than the common form is not sufficient to exceed the aesthetic feeling caused by the common form. It is not immediately possible to judge […]

＜IP High Court＞ 2009 (Gyo-Ke) 10036（July 21, 2009）”Rubber band” Case

Novelty (related to Prior designs) (Conclusion) Novelty should be found. (Applicant won.) When considering similarity, it is considered the shape when the applied design is used. Submission of a certificate of exception to lack of novelty of design does not constitute an admission of similarity. <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/424/001424.pdf

＜Osaka District Court＞ 2008 (Wa) 13282 （July 23, 2009）”Cell container for medical testing” Case

Similarity of design (Infringement case) (Conclusion) Defendant’s design is not Similar to the registered design. (Design right owner lost.) The essential feature of the registered design is a step which is provided in a manner that it projects nearly perpendicular to the side surface at the level around one-fourth of the height of the container […]

＜Osaka District Court＞ 2008 (Wa) 5712 （September 10, 2009）”Golf ball” Case

Novelty (related to Prior designs) (Conclusion) Novelty should NOT be found.  (Design right owner lost.) *12/362 of the dimples in the registered design are not hexagon but pentagon. Differences in the specific constitution of the design, such as that there is a small number of pentagonal dimples … do not cause any difference that is […]

Amendment to Limit the Scope of the Claim During the Proceedings and Application of the Doctrine of Equivalence (International Trend in Case Law and Overview of Japanese Case Law)

Japanese case law has established the following five requirements for finding patent infringement under the doctrine of equivalents (see Ball Spline Bearing Case, Supreme Court decision of February 24, 1998, and Maxacalcitol Case, Supreme Court decision of March 24, 2017). (1) An element of a patented invention that is different from the alleged infringer’s product […]

【PATENT★】”LEARNING IMPLEMENT” Appeal Case: A case in which the Court found that the plaintiff’s (appellant’s) product merely produces an additional effect in addition to producing the effect of the patented invention, and acknowledged the existence of the second requirement of the doctrine of equivalents.

―Intellectual Property High Court Case No. 2021 (Ne) 10040 of October 14, 2021 (Presiding Judge Masayuki KANNO) [CS related invention] ― (The court of first instance also found that the plaintiff’s product constitutes patent infringement under the doctrine of equivalents [the Osaka District Court Case No. 2019 (Wa) 3273 of March 25, 2021 (Presiding Judge […]

[Patent★★] “LINE Furufuru” Patent Infringement Case: ① A case in which the Tokyo District Court recognized the invention step on the following ground. The court denied the defendant’s logic that only the “GPS search function” should be extracted from the secondary reference and applied to the primary reference. Thus, the court recognized a hindrance to apply the “GPS search function” to the primary reference. ② A case in which the Court found that the defendant’s services which were not examined at the phase for examination on infringement were not subject to the compensation for damages; the defendant’s sales which were regarded as remotely related to the “Furufuru” function have no causal relationship, thus, were not subject to compensation for damages under Article 102, paragraph (3) of the Patent Act.

–Tokyo District Court Case No. 2017 (Wa )36506 May 19, 2021 (Presiding Judge SATO)   1. Excerpt from the Judgement (Part of the judgment on “sales” at the phase for examination on damages) (C)  The defendant’s sales related to the registration of friends and exports to overseas companies other than the “Furufuru” function. The plaintiff […]

Increase in Patent Annuities And Trademark Registration Fees on April 1, 2022　

In accordance with the 2021 amendment to the Patent Act, patent annuities will be increased for the first time in about 30 years. Trademark registration fees, etc., will be also raised. The new fee schedule is effective on April 1, 2022. It may be advisable for you to pay before March 31, 2021 to save […]

2019(Gyo-Ke)10060 (January 14, 2020) “METHOD FOR MANUFACTURING SOAP SCRUB” Case

Inventive step (Conclusion) Inventive step is found. It was possible to add a Shirasu Balloon to an alkaline solution containing a surfactant, or to change the timing of such addition to either before or after the addition of a fatty acid as is appropriate.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/673/002673.pdf

2017(Wa)6334 (January 16, 2020) “Non-aqueous hair cosmetics” Case

Damages calculated by Article 102, paragraph (2) of the Patent Act (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act. The amount of the Defendants’ expenses that should be deducted from the sales amount of the infringing products is judged.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/962/002962.pdf  

2017(Wa)28189 (January 17, 2020) “LAMINATED BODY OF SEAL SHAPED ARTICLE” Case

Infringement (Conclusion) Infringement is NOT found. The claim phrase “approximately 1/2” was considered non-infringement. Some of the defendant’s products were within the technical scope of the invention, but were judged to be non-infringing.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/894/002894.pdf

2016(Wa)4815 (January 20, 2020) “Oil-cooled screw compressor)” Case

Damages calculated by Article 102, paragraph (2) of the Patent Act (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act is partially (90%) deducted. The degree of reduction is 90% in consideration of the fact that there is a qualitative difference in demand between the Defendant’s products and Plaintiff’ products. Calculated damages […]

2019(Gyo-Ke)10042 (January 21, 2020) “MASSAGING MACHINE” Case

Lack of proper procedure (Conclusion) Lack of proper procedure. The JPO decision does not describe a part of the matters specifying the invention in relation with judgment on clarity requirement and is not evaluated as a substantial judgment.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/649/002649.pdf

2019(Gyo-Ke)10054 (January 21, 2020) “MASSAGING MACHINE” Case

Clarity Requirement (Conclusion) Clarity Requirement is admitted. The claim language “a side wall integrally forming” is interpreted by considering the description in the Description, and it was decided that there was no lack of clarity requirement.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/650/002650.pdf

2019(Ne)10036 (January 21, 2020) “BEAM REINFORCING METAL FITTINGS” Case

Damages (Article 102, paragraph (2) of the Patent Act) (Conclusion) Damages calculated by Article 102, paragraph (2) of the Patent Act is not partially deducted. The court denied the infringer’s assertion that the presumption should be overturned at least by 70% by taking into consideration the percentage of the value of the implementing part of […]

2018(Gyo-Ke)10163 (January 21, 2020) “BEAM REINFORCING METAL FITTINGS” Case

Inventive step (Conclusion) Inventive step is found. It is not easily conceivable to apply well-known techniques which belong to a different technical field from the main cited invention to the main cited invention.   <Writer: Hideki Takaishi (Attorney-at-law licensed in Japan and California)> https://www.ip.courts.go.jp/app/files/hanrei_en/675/002675.pdf