Legal Updates

Legislative Bill for Partial Revision of the Plant Variety Protection and Seed Act

[Note: This is a legislative bill and is not promulgated. We will provide further information after promulgation of the act.]   1.　Outline of the registration of plant varieties for the protection of new plant varieties The Plant Variety Protection and Seed Act stipulates the registration of plant varieties for the protection of new plant varieties. […]

Overview of Revised Design Act 2019 (Effective April 1, 2020)

1. Expansion of the subjects of protection (Articles 2, 8 and 8-2)     1-1 Graphic Image Designs (Article 2)   (1-1-1) Graphic Image Design itself, separated from the article (New) It is required that:  (i) the subject matter be used for operation of an equipment (“Operation Image”), and/or  (ii) the subject matter be displayed […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-ke) 10117; November 6, 2018 (Presiding Judge TSURUOKA)

“Immunochromatography test device and kit for mycoplasma pneumoniae detection” Case: A case in which the Court denied the eligibility for a cited reference on the grounds that the cited reference does not contain the description of a cited invention in such a manner as to enable a person skilled in the art to manufacture it, […]

【Unfair Competition Prevention Act ★★】 A case in which the Court affirmed the typical and substantial increase of an amount of a reasonable royalty as a premium to damages to be paid for misappropriation of a famous indication, and awarded a high royalty rate.

The Intellectual Property High Court Decision of January 29, 2020 (Case No. 2018 (Ne) 10081 — Presiding Judge MORI)   ◆ Main text of the case   【Summary of the Judgment】 In calculating an amount of a reasonable royalty based on the provision of Article 5, Paragraph 3 of the Unfair Competition Prevention Act which […]

【PATENT ★★】Osaka District Court Case No. 2016 (Wa) 6494; December 18, 2018 (Presiding Judge TANI)

“Roll Paper for Medicine Packaging” Case: A case in which the court found, regarding the wording of “(a product) used in XXX” in the claims, that whether or not the product is actually used in XXX does not influence the decision on whether or not the product belongs to the technical scope of a patented […]

【Patent ★★★】 In the “Beauty Instrument” case, the Grand Panel of the IP High Court determined the appropriateness and approach of considering the contribution rate of the patented invention for the calculation of damages under Article 102, Paragraph 1 of the Patent Act in the case where a characteristic part of the patented invention is implemented for part of the patentee’s product.

The Intellectual Property High Court Grand Panel Decision of February 28, 2020 (Case No. 2019 (Ne) 10003 — Presiding Judge TAKABE)   ◆ Main text of the case   【Summary of the Judgment】 1.  The phrase “articles which would have been sold by the patentee…if there had been no such act of infringement” set forth in […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-ke) 10200; February 18, 2019 (Presiding Judge TSURUOKA)

“Power transmitting device comprising rotation-number adaptive type dynamic vibration reducer” Case: A case in which conformity with the support requirement was denied since the claims contain a statement from which the problems of the invention cannot be solved.   【Summary of the Judgment】 The detailed description of the present invention … states to the effect […]

【PATENT ★】Tokyo District Court Case No. 2017 (Gyo-ke) 16468; January 17, 2019 (Presiding Judge SHIBATA)
＊(Intellectual High Court Case No. 2017 (Gyo-ke) 10226; December 27, 2018 in which the court rendered the decision to the same effect)

“ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE (PCSK)” Case: Infringement, inventive-step, and support requirements in the case of reach-through claims in which an invention is defined in functional terms.   (1) Infringement (technical scope of the invention) In this case, the court found that “… each of the present patent specifications state a […]

【Copyright Act ★】 A case in which the Court found that, with respect to a photographic work whose subject is a pair of penguins, each one of the penguin pictures in the work can be considered to be independently copyrightable, and affirmed that acts of reproducing and transmitting publicly the respective pictures of the two penguins separately constitute infringements of copyrights of the respective penguin pictures.

The Intellectual Property High Court Decision of December 26, 2019 (Case No. 2018 (Ne) 10048 — Presiding Judge Otaka)   ◆ Main text of the case 【Summary of the Judgment】 In the case of reproducing part of a work in a physical form, if such part contains creative expressions and can be considered to be […]

【Trademark Act ★】 A case in which the Court affirmed the use of a registered trademark in Japan based on the intention of a foreign holder of the registered trademark located abroad, and revoked a decision of the Japan Patent Office which had cancelled the registered trademark by reason of non-use.

The Intellectual Property High Court Decision of January 28, 2020 (Case No. 2019 (Gyo-Ke) 10078 — Presiding Judge Tsuruoka)   ◆Main text of the case 【Summary of the Judgment】 The foreign holder of the trademark at issue located abroad transfers products bearing the trademark at issue to an online shop operated in Japanese for Japan […]

【Trademark】 Fast-track examination (Changed from February 1, 2020)

Due to the increase in the number of trademark applications, the regular term for examination of a trademark application at the Japan Patent Office (JPO) would be around 10 to 14 months, on average, from filing of the trademark application. Under this situation, the JPO has introduced the examination operation called “fast-track examination” since October […]

【Trademark Act ★】 A case in which the court affirmed the Japan Patent Office’s decision which dismissed a request for trial on the invalidation of a registered trademark for a three-dimensional shape of a “lamp shade”, which is the designated goods of the registered trademark, stating that the registered trademark (the “Trademark”) corresponds to a “trademark [that] consists solely of a mark indicating, in a common manner, in the case of goods, …shape” set forth in Article 3, Paragraph 1, Item 3 of the Trademark Act; however, it corresponds to a “trademark that…may be registered if, as a result of the use of the trademark, consumers are able to recognize the goods…as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act; and it further does not correspond to a “trademark [that] consists solely of features…that are naturally provided to goods…” set forth in Article 4, Paragraph 1, Item 18 of the same Act, nor a “trademark [that] is likely to negatively affect public policy” set forth in Article 4, Paragraph 1, Item 7 of the same Act; and therefore, the Trademark cannot be invalidated pursuant to the provision of Article 46, Paragraph1 of the same Act.

The Intellectual Property High Court Decision of November 26, 2019 (Case No. 2019 (Gyo-Ke) 10086 — Presiding Judge Otaka) ◆ Main text of the case   【Summary of the Judgment】 The defendant’s Trademark for the three-dimensional shape of “lamp shade”, which is the designated goods of the Trademark, corresponds to a “trademark [that] consists solely […]

【PATENT ★★】IP High Court Case No. 2017 (Gyo-Ke) 10121; February 14, 2018 (Presiding Judge Mori)

“Solder Alloy” Case:　A case in which the court found that the dependent claims do not involve an inventive step; however, the independent claim involves an inventive step because a person skilled in the art could not easily conceive the idea of changing an essential component of the cited invention to an optional component of the […]

IP High Court Case No. 2017 (Gyo-Ke) 10210; September 6, 2018 (Presiding Judge Tsuruoka)
First Judgment: IP High Court Case No. 2016 (Gyo-Ke) 10005; January 18, 2017 (Presiding Judge Shidara)

“REFRESHING COMPOSITION FOR OPHTHALMOLOGY” Case [Second Judgment]:　A case in which the court affirmed conformance of clarity requirement by the correction to delete the statement which was found to be in non-compliance with the clarity requirement for claims.     In the first judgment, with regard to the statement of claims before the correction “a refreshing […]

【PATENT ★★】IP High Court Case No. 2017 (Ne) 10090; April 4, 2018 (Presiding Judge Takabe)

“MEDICINE” Case [Towa Pharmaceutical v. Kowa]:　A case in which the court denied the establishment of a prior user right, stating that even if a content of a sample drug fells within a numerical range of the invention, there would be no technical idea that the sample drug should contain the content in a limited numerical […]

【PATENT ★】IP High Court Case No. 2017 (Gyo-Ke) 10129; May 24, 2018

“Foods comprising a rice saccharified material and a rice oil and/or inositol (rice milk)” Case:　A case in which the court suggested that a “problem to be solved by the invention” could be interpreted differently in the case of determination of support requirement and in the case of determination of inventive step.   This is a […]

【PATENT ★】IP High Court Case No. 2017 (Ne) 10033; May 24, 2018

“Repair sliding door device” Case:　A case in which interpretation of the phrase “substantially the same height” in claims became an issue in relation to the determination of fulfillment of the constituent features of the plaintiff’s invention. The court of first instance held that the defendant’s product fulfills the constituent feature of the plaintiff’s invention, however, […]

【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 particular type of tire was found to have an inventive step by placing importance […]

【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 grandchild application to be deemed as having been filed at the time of filling of a parent application, […]

【Trademark Act ★★】 A case in which the court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “EQ” on the grounds that the mark “EQ” corresponds to a “trademark which consists solely of a very simple and common mark” set forth in Article 3, Paragraph 1, Item 5 of the Trademark Act, and it does not correspond to a “trademark which, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person” set forth in Article 3, Paragraph 2 of the same Act.

  The Intellectual Property High Court decision of July 3, 2019 (Case No. 2019 (Gyo-Ke) 10004 — Presiding Judge Takabe)   ◆ Main text of the case   【Summary of the Judgment】  The mark in question consists of the alphabetical letters “E” and “Q” written horizontally in the commonly used font style, and the form […]

【Unfair Competition Prevention Act ★★】 A case in which the court found that the configuration of the plaintiff’s product is considered a well-known indication of goods or business, the configuration of the plaintiff’s product and that of the defendant’s product are similar to each other as an indication of goods or business, and the sale of the defendant’s product is likely to mislead the public as to the source of product, and held that the defendant’s act of selling its product falls under Article 2, paragraph (1), item (i) of the Unfair Competition Prevention Act, and the court issued an injunction against assignment of the defendant’s product and ordered the defendant to destroy its product.

The Intellectual Property High Court decision on August 29, 2019 (Case No. 2019 (Ne) 10002 – the presiding judge Otaka) (The original decision rendered by the Tokyo District Court on December 26, 2018 [case No. 2018 (W) 13381] – the presiding judge Yamada)   ◆ Main text of the case   【Summary of the Judgment】 […]

Big Data Protection under Unfair Competition Prevention Act has just started in Japan

  The Unfair Competition Prevention Act (“Act”) was revised in 2018, and came into effect on 1st of July, 2019. The revised Act is said to be the first law in the world which tries to protect “big data” itself.   Background of the Revision Data is becoming more and more valuable under The Forth […]

The Copyright Act revised in 2018 will further improve the machine learning environment in Japan.

The amendment of the Copyright Act, which was enacted in the ordinary session of the Diet in 2018 and came into force on January 1, 2019, is the largest amendment of the Copyright Act in recent years.   Among the various revisions, the most notable point is that the following were stipulated as the “development […]

Recent Trends in Japan relating to SEPs

Since last year the commissioner Ms. Naoko Munakata of the Japan Patent Office (“JPO”) has engaged in discussions of a rapid and effective means of international dispute resolutions and model licensing negotiation processes regarding the standard essential patents (“SEPs”). In consideration with the discussions and the opinions of key industry organization, (1) the JPO has […]

Fast-track examination

 Japan Patent Office (JPO) announced that they will introduce a “fast-track examination” as a pilot program for the examination of trademark applications.    I. Overview If an application is subject to a fast-track examination, a first official action (either of refusal or grant) will be issued approximately two months earlier than an application under normal […]

Amendment of practice about a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1)

Amendment of practice about a preliminary notice of rejection based on the Principal Paragraph of Article 3 (1)    Under the Japan Patent Office’s practice, in a case where a trademark application covers a broad range of goods and services in a Class, the Examiner will issue a preliminary notice of rejection based on the […]

“Steel Pole” Case (Patent)

“Steel Pole” Case Case No.  Heisei 29 (gyo-ke) 10001 Decision date:  August 29, 2017 Court:  IP High Court (http://www.courts.go.jp/app/files/hanrei_jp/077/087077_hanrei.pdf) 1. Background The plaintiff filed a patent application (2014-116674), but received a decision of rejection from the Examiner. The plaintiff filed an appeal against the Examiner’s decision of rejection, but the Japanese Patent Office (JPO) decided […]

Recent Developments on Software-related Patents in Japan

1. Outline The Ministry of International and Economics and the JPO (Japan Patent Office) have been developing an intellectual property system in response to innovations such as IoT (Internet of Things) and AI (Artificial Intelligence). As part of the development, the JPO published case examples on technologies relating to IoT, AI, 3D printing, etc. in […]

Case of “Frozen Dessert with Container” (Design Right)

Case of “Frozen Dessert with Container” Case No. Heisei 28 (gyo-ke) 10034 Decision date: September 21, 2016 Court: IP High Court (http://www.courts.go.jp/app/files/hanrei_jp/156/086156_hanrei.pdf) 1. Background The plaintiff filed a design application with the drawings below representing the subject design as the article “Frozen Dessert”, but received a decision of rejection from the Examiner. The plaintiff filed […]

The Supreme Court decision on interpretation of Product-by-process claims (Case No. 2012 (ju) 1204; Date of judgement: June 5, 2015)

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 the product-by-process claim in patent-infringement litigation. Furthermore, the Supreme court decision had an important impact on the prosecution of the product-by-process claim. 2. […]

Case of “Packaging Box” (Design right)

Case of “Packaging Box” (Design right) Case No. Heisei 27 (ne) 10077 Decision date: January 27, 2016 Court: IP High Court (http://www.courts.go.jp/app/files/hanrei_jp/632/085632_hanrei.pdf) (1) Overview The plaintiff, who holds a design right for a partial design of an article “Packaging Box” (Design Registration No. 1440898; the “Design Right”), alleged against the defendant that the defendant infringes […]

New Legislation for the Unfair Competition Prevention Act

I. Background of the legislation Many incidents have recently been reported concerning misappropriation of Japanese companies’ trade secret, especially by foreign entities. To take some examples: i)　Nippon Steel and Sumitomo Metal (“NSSM”) v. Posco Posco, a Korean steel giant company, allegedly misappropriated NSSM’s trade secrets related to manufacture of steel. A civil litigation was brought […]

Copyrightability of Applied Arts in TRIPP TRAPP Appeal Case

On April 14, 2015, the 2nd Division of the IP High Court rendered a decision as to whether a famous high chair for children named “TRIPP TRAPP” is protected under the Japanese Copyright Law. This decision set a new standard as to the copyrightability of applied arts. Up to this decision, Japanese courts have required […]

Amendment of Trademark Act Registration of Non-traditional Trademarks

I. Date the Amended Act Comes into Effect The amended Japanese Trademark Act, which provides that a trademark registration for a non-traditional mark is accepted, came into effect on April 1, 2015. Non-traditional marks which can be registered are as follows: 1. Color marks (a single color or a combination of colors) 2. Sound marks […]

Recent Progress for Introducing a Registration System for Non-traditional Marks in Japan

Adoption of Non-traditional Marks (i) Current Situation The Bill for partial amendment of the Trademark Act, which enables non-traditional marks to be registered, was just enacted by the Diet on April 25, 2014. It is likely that the date when trademark applications for the non-traditional marks are accepted under the amended new Trademark Act (hereafter, […]

Patent Term Extensions: Grand Panel Decisions of Intellectual Property High Court Contrary to the Examination Guidelines

Under the Examination Guidelines of the Japan Patent Office (JPO), an application for patent term extension based on a drug approval will be rejected when the drug product that is the subject of the drug approval is not different from that of the prior approval in elements (features) recited in the patented claim. The English […]

FRAND defense (Apple v. Samsung)

On May 16, 2014, the Intellectual Property High Court rendered a decision regarding “FRAND defense” in the Apple v. Samsung case , numbered Heisei 25 (Ne) No. 10043. The following gist of the judgment is regarding the part of FRAND defense. (1) A license agreement has NOT been concluded by the relevant FRAND declaration “ It […]

Fifth requirement of the doctrine of equivalents

On December 27, 2013, the Intellectual Property high court rendered a decision, numbered Heisei 25 (Ne) No. 10002, regarding doctrine of equivalents using the basis sentenced by the Supreme Court in 1998. The first decision by the Supreme Court regarding doctrine of equivalents (The Ball Spline Bearing case), at present, makes up the basis of […]

Tokyo District Court issued a first judicial ruling for the book scanning service

1. Factual background In recent years, many people have become accustomed to reading or browsing electronic books and web pages on their mobile terminal such as a smartphone and a tablet PC in Japan. With the rapid spread of such mobile terminals, book scanning gradually becomes popular among users of mobile terminals. The act of […]

Decision of the Tokyo District Court in the FRAND Defense Case

On February 28, 2013, the Tokyo District court held that an alleged infringer of a standard essential patent may provoke FRAND defense according to Article1(3) of Japanese Civil Code which provides prohibition of abuse of right and therefore may block exercise of such patent. This case is between Apple Japan Godo Gaisha, a Japanese subsidiary […]

Decisions of the Tokyo and Osaka District Courts in the Drug Combination Patent Cases

Both Tokyo and Osaka District Court denied indirect infringement of a patent provided under Japanese Patent Act by pharmaceutical companies who manufactured and sold compound A where a patent at issue claimed the combination of compounds A and B. Patents at issue here are JP 3148973 and 3973280 (“Subject Patents”). Representative claim is Claim 1 […]

Decision of IP High Court of Japan in Case of “A GLUCOSAMINE-CONTAINING CATAPLASM”

The specific problems to be solved by cited inventions influence the decision for lack of an inventive step differently depending on the circumstances in each case. The IP High Court provided a judgment as to whether it is obvious for a person skilled in the art to replace an essential feature which causes the specific […]

Grand Panel Decision of IP High Court of Japan in Case of “Waste Storage Device”

It is difficult for a patentee to prove the amount of damage caused by infringement in a patent infringement case. In Japanese Patent Law, Article 102 is provided to reduce the patentee’s burden of proof for the amount of damage. Article 102 (2)1 provides for rebuttable presumption of the amount of damage as “profits gained […]

Copyright Law amended to make illegal downloads incur criminal penalty

Overview The Japanese Diet just passed an amendment to the copyright law on June 20, 2012. There are several revisions to be made to the copyright law by this amendment and the revised copyright law will take effect on January 1, 2013. According to one of these revisions, a person who illegally downloads copyrighted contents […]

Decision of the Supreme Court in the Winny criminal case

Winny is a peer-to-peer file-sharing program developed by a certain Japanese individual. According to the 2006 report by the Recording Industry Association of Japan, more than three million people had tried Winny, and it had become the most popular file-sharing program in Japan. In 2003, two Japanese users of Winny were arrested and accused of […]