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 […]
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) 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 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 […]
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, […]
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 […]