Japanese Patent Law: Cases and Comments

List of Authors and Editors

Preface: On Contributors and Decisions

PART I
Introduction: History and Economic Importance of the Patent System
for Japan

by Christopher Heath and Atsuhiro Furuta

PART II: REQUIREMENTS OF PATENTABILITY

Case No. 1: Definition of an Invention – Mental Activity

Case No. 2: Definition of an Invention – Repeatability

Case No. 3: Novelty – Novelty Destroying Prior Application – Double Patenting

Case No. 4: Novelty – Grace Period – Combination with Priority

Case No. 5: Inventive Step – Problem Solution Approach and Ex Post Analysis

Case No. 6: Inventive Step – Assessment of Prior Art

Case No. 7: Inventive Step of New Medical Indications and Dosage Regimes

Case No. 8: Technical Effect – Late Filed Experimental Results

Case No. 9: Enabling Disclosure and Support

Case No. 10: Support Requirement – Parameter Invention

Case No. 11: Industrial Application – Medical Treatment

Case No. 12: Priority – Added Subject Matter

PART III: INVENTORS AND INVENTORS’ RIGHTS

Case No. 13: Rights over the Invention – Inventorship

Case No. 14: Rights of Co-Inventors – Action by One Co-Inventor against Revocation

Case No. 15: Rights over the Invention – Transfer of a portion of Patent Right against Misappropriation

Case No. 16: Employees’ Inventions – Company Rules – Reasonable Remuneration

Case No. 17: Employees’ Inventions – Reasonable Remuneration for Profits made Abroad

PART IV: PROCEDURES BEFORE THE PATENT OFFICE

Case No. 18: Right to be Heard – Addition of Well-Known Prior Art

Case No. 19: Right to be Heard – Right to Oral Proceedings in Invalidation Trials

Case No. 20: Possibility of Claim Amendment before Grant

Case No. 21: Possibility of Claim Correction after Grant

Case No. 22: Disclaimer, Correction and Amendment

Case No. 23: Advisory Opinion about the Technical Scope of a Patented Invention

Case No. 24: Invalidation Trial – Ne Bis In Idem

Case No. 25: Correction Trial – Revocation Proceedings

Case No. 26: Scope of Cancellation Process in Court against Decision of Patent Office

Case No. 27: Appeal to the High Court and Inventive Step Assessment

Case No. 28: Liability of the Patent Office for Mistakes, e.g. the Omission of Registering a Pledge

PART V: THE SCOPE OF PATENT RIGHTS

1. Rights of Exclusive Use

Case No. 29: Exclusive Rights – Offer for Sale, Manufacture, Export

Case No. 30: Direct and Indirect Infringement

Case No. 31: Patent Infringement – Distinction between Repair and Reconstruction

2. Limits of Exclusive Use

Case No. 32: Limits of Patent Rights – National and International Exhaustion

Case No. 33: Clinical Trials – Research Exception

Case No. 34: Defence of Prior Use

3. The Scope of Protection: Interpreting Patent Claims

Case No. 35: Interpretation of Patent Claims – Interpretation with Reference to the Description

Case No. 36: Interpretation of Patent Claims – Literal Infringement – Disclaimed Element

Case No. 37: Interpretation of Patent Claims – Product by Process Claims

Case No. 38: Interpretation of Patent Claims – Doctrine of Equivalents

Case No. 39: Interpretation of Patent Claims – Doctrine of Equivalents

Case No. 40: Interpretation of Patent Claims – Doctrine of Equivalents

PART VI: THE ENFORCEMENT OF PATENT RIGHTS

1. Jurisdiction, Procedure and Applicable Law

Case No. 41: National Jurisdiction – Exclusive Jurisdiction in Patent Matters

Case No. 42: International Jurisdiction in Patent Matters

Case No. 43: International Jurisdiction in Patent Matters – Offer on the

Case No. 44: Arbitration Law – Separability and Arbitrability – Estoppel of Invalidity

Case No. 45: Infringement of a US Patent and Applicable Law

Case No. 46: International Civil Procedure, Recognition of Foreign Judgements, Punitive Damages

Case No. 47: Discovery – Order of Documents – Defence of Secrecy

Case No. 48: Interim Procedures and Protective Orders

2. Defence of Invalidity

Case No. 49: Defence of Invalidity

Case No. 50: Patent Infringement – Defence of Invalidity

Case No. 51: Defence of Invalidity – Correction of Patent Claim – Late Filing

3. Remedies

Case No. 52: Injunctive Relief – Exception for Standard Essential Patents

Case No. 53: Scope of Injunctive Relief – Method Patent

Case No. 54: Damage Calculation – Presumption of Damages

Case No. 55: Damage Calculation – Presumption of Damages

4. Wrongful Enforcement

Case No. 56: Threats – Warning Letter alleging Patent Infringement – Standard of Liability

Case No. 57: Re-Trial due to Revocation after Successful Infringement Suit

PART VII: SPECIFIC ISSUES

1. Patent Extensions

Case No. 58: Requirements for a Patent Term Extension of Pharmaceutical Patents

Case No. 59: Requirements for a Patent Term Extension of Pharmaceutical Patents – Second Marketing Approval for the Same Patent

Case No. 60: Scope of Extended Patent

2. Licensing and Antitrust

Case No. 61: Exclusive Registered Licensee – Standing to Sue

Case No. 62: Licensing Agreement – Patent Subsequently Reduced in Scope

Case No. 63: Licensing Agreement over Foreign Patent – Royalties not Taxable in Japan

Case No. 64: Antimonopoly Act – Patent Licensing Agreement – Vertical Restraints – Maximum Output Restriction

Case No. 65: Patent Pools, Refusal to License and Abuse of a Dominant Position

3. Utility Models

Case No. 66: Utility Model – Technical Assessment Report

Index of Japanese Decisions in Chronological Order

Alphabetical Keyword Index