Overview
Japanese Patent Law
1.Patentable Inventions and Eligible Patent Rights Holders
I Inventions
1 Definition of “invention”
(1) Introduction
“Inventions” are eligible for protections by patent rights. Japan's Patent Act defines an “invention” as “the highly advanced creation of technical ideas utilizing the laws of nature ” : Article 2(1). Almost no other country has a Patent Act that defines “ invention ” in this manner. A patent application for an invention that does not meet the requirements discussed below in this paper will be refused on the grounds that it is not an “ invention ” under the main sentence of Article 29(1) of the Patent Act .
(2) “ Utilizing the laws of nature ”
In order for an invention to be found to constitute an “invention,” it must firstly have “utilized the laws of nature. ” The “ laws of nature ” mean those fundamental rules and general principles having the nature of a law existing in the natural world. The laws of nature themselves will not constitute patentable inventions as they do not “ utilize ” the laws of nature, and since examples such as the activities of a person ' s mind (such as a method of writing a book or a method of selling goods), artificial arrangements (such as the rules of a game or a sport) or scientific laws (such as laws of economics or mathematical rules) have no connection with the “ laws of nature, ” these inventions are not patentable inventions. [1] Furthermore, inventions that defy the laws of nature (such as a ‘ perpetual motion machine ' ) will also not be recognized as patentable inventions.
The sole issue that has come up for debate in connection with the patentability requirement of “ utilizing the laws of nature ” concerns inventions relating to computer programs. Whilst programs came to be protected under amendments made to the Patent Act in 2002 as the “ invention of a product ” (Article 2(1)(iii) of the Patent Act ), this did not mean that programs would always be recognized as having utilized the laws of nature. Chapter 1 “ Computer Software-Related Inventions ” of Part VII of the Japan Patent Office's Examination Guidelines for Patents & Utility Models in Japan states that “‘where information processing using software is specifically realized using hardware resources ' , the software will constitute a ‘ creation of technical ideas utilizing the laws of nature'.” Since a program language, however, is no more than an artificial arrangement, it will be denied status as an “ invention”. Alternatively, as will be discussed below, since the mere display of information is not a “ technical idea,” a program list that consists of just programs printed on paper will similarly be denied status as an “ invention”.
In addition, whilst “ business-related inventions” have attracted much public comment in recent years , since as stated earlier the activities of a person's mind cannot be described as having utilized the laws of nature, something that is purely a business method will not be recognized as an invention. If, however, this condition is met, including by conducting processing using a computer's hardware resources in order to solve issues relating to a business method, the invention may be eligible for patent protection as a software-related invention. However, attempts to systematize particular business tasks that have been performed to date by expending time and costs in manpower and achieve the same by means of a program may lead to the denial of inventive step in the kinds of cases where those aims can be achieved by means of work of a day-to-day nature using ordinary system analysis and system design methods. Accordingly, unless the actual realization of a business method by means of a program is original, it will not be recognized as being novel or non-obvious in nature.
(3) “ Technical idea”
A patentable invention must be a “technical idea” if it is to be recognized, and for that purpose, it must be a concrete means of achieving a certain aim or aims, and must be capable of being reproduced or repeated. It follows that a simple knack, technique for an artistic performance or sporting skill are not patentable inventions because they will not deliver the same result if performed by another person . Furthermore, cases where the means provided by the invention for solving a problem have been indicated , but it is clearly not possible to solve the problem through those means, the technical content will not have been made concrete or objective, and so a person skilled in the art will not be able to reproduce or repeat the invention, with the result that it will not be recognized as an “invention”. [2] For example, it is possible to imagine a case involving more than a mere safety issue, where the safety device is the necessary art and it will be entirely impossible to work the technical content without the safety device. [3] In addition, with respect to methods of breeding new plant varieties, even if a similar breeding method is used, the same new variety may not necessarily ensue. However, once a new variety is bred, it will be possible to reproduce it through propagation, so even if it is not possible to repeat the breeding of the new variety with a high degree of probability, if the new variety can be generated repeatedly through propagation, its status as an “ invention” will be affirmed. [4] The decision as to whether or not an invention can be repeated is to be made on the basis of the application documents. That in turn means there will be some cases where a person skilled in the art may not be able to work an invention simply because of inadequate disclosure of the technical details in the description. In that event, the application will be refused on the ground of the description failing to comply with requirements ( Patent Act Article 36(4)(i)), with the tentative possibility of an amendment remaining. Since, however, the addition of new matters is prohibited in practice, the room for amendment is not that significant: Patent Act Article 17-2. Under current examination practices , the Patent Office will, in many cases, not deny the status of an “ invention ” but will carry out an examination of the elements of the description, such as for an invention in a scientific field where there is no proof of operation and effect through experimentation, [5] or for an invention pertaining to a microorganism, where a person skilled in the art could not easily obtain the microorganism from elsewhere and, in cases where the microorganism has not been deposited with a Patent Office-designated institution (see Article 27-2 of the Ordinance for Enforcement of the Patent Act ), it is not possible to generate that microorganism in accordance with the statements in the description. Denial of status as an “ invention” for failure to constitute a “technical idea” will be limited to where it is clear that it is entirely impossible to repeat the invention at the technical level at the time of the application.
The mere display of information is not a technology, if there is no special technical feature present in the display of the information (such as in the display itself, the means of display, or the method of display). For example, the display of the simple recording of a new composition onto an existing medium (such as a manual or a compact disk) about a method of operating a machine or a method of using a chemical substance, or a program list mentioned earlier, will not be recognized as an “ invention”.
(4) “ Creation ”
An invention is required to have been “created;” merely discovering something that already exists is not regarded as an invention. For example, the mere finding of a chemical substance or a microorganism already present in the natural world will not be recognized as an invention. However, cases such as the artificial production of a hitherto unknown substance, or the artificial isolation of a chemical substance or microorganism that does not exist independently in the natural world should no doubt be regarded as satisfying this requirement of “ creation, ” provided that some sort of human intervention is found to have been involved.
(5) “ Highly advanced ”
Lastly, Article 2(1) of the Patent Act stipulates that an invention be a “ highly advanced ” creation. Given, however, the presence of the patent requirements of novelty and inventive step (both discussed below), this issue does not function as a requirement in practice, and exists only for the purpose of drawing a terminological distinction with “ devices, ” which are protected by utility models.
2 Invention Categories
The Patent Act classifies inventions as “ inventions of a product ” and “ inventions of a process. ” It further classifies the latter into “ inventions of a process for producing a product, ” and inventions of other straightforward processes: Patent Act Article 2(3). The matter of which category of invention a creation will fall under will be decided based on the statements in the claim, [6] and each is granted its own particular legal effect: Patent Act Articles 101, 104, 112-3, 175 and 187.
An “ invention of a product ” refers to an invention that is a technical idea embodied in a product which can be manufactured, used and assigned . Following amendments to the Patent Act made in 2002, “ inventions of a product ” came to include computer programs. By contrast, an “ invention of a process ” refers to an invention that incorporates the element of the passage of time and comes into effect by means of a process aimed at a specific target. Among these, a process that accompanies the manufacturing of a product is an “ invention of a process for producing a product. ”
II Patent Requirements
1 Industrial applicability
In order for an “ invention ” discussed in Section I to be granted a patent, it must first be “ industrially applicable ” : proviso to Patent Act Article 29(1). In particular, with respect to inventions such as those concerning genes, chemical substances or organisms, a concrete applicable use (usefulness) must be specified.
“ Industry ” is a broad concept that includes manufacturing industries, agricultural, fishing and forestry industries, mining industries, commercial industries, and service industries. Medical industries are excluded from “ industries, ” however, and grants of patents for inventions of acts of medical treatment are not recognized, on the ground that they are not industrially applicable. This exclusion stems from the ethical consideration that diagnoses and treatments available to medical practitioners in their treatment of patients must not be limited in any way by the presence of any kind of patent rights, and it is a legal construction adopted due to the lack of any statutory provision expressly denying the validity of patent rights vis- à -vis acts of medical treatment. [7] However, patent rights can be obtained over aspects of medical treatment including pharmaceuticals and medical devices, and the methods of their manufacture (note that Article 69(3) of the Patent Act however stipulates certain limitations on the effect of patent rights obtained for pharmaceuticals).
Whilst an argument has been made that that “ industrial applicability ” may not be recognized for an invention that is unsafe, this does not hold up for the reasons argued in Note 3 supra .
2 Novelty
(1) Introduction
The purpose of the Patent Act is to contribute to the development of industry by generating an abundance of technology. The Act should not, therefore, grant exclusionary rights to existing technologies. For that reason, Article 29(1) of the Patent Act stipulates that an inventor may not obtain a patent for inventions that were known to the public ( “ publicly known ” ) (Item (i)) ‚ inventions that were publicly worked ( “ publicly used ” ) (Item (ii) or ƒ inventions that were described in a distributed publication or made publicly available through an electric telecommunication line (Item (iii)), in Japan or a foreign country prior to the filing of the patent application. Being publicly known or publicly used in a foreign country became grounds for lack of novelty in amendments to the Patent Act made in 1999.
(2) “Known to the public”
“ Publicly known ” (or “ known to the public ” ) in Article 29(1)(i) of the Patent Act means that it has become possible for the public to learn of the details of an invention as a result of the disclosure of that invention to persons who are not required to keep the invention confidential. Even if the invention is disclosed to numerous persons, provided that those persons are under a confidentiality obligation, or even if there is no express confidentiality agreement, provided that according to general expectation or business custom they would be naturally expected to keep the details of the patent confidential, there will be no lack of novelty. [8]
(3) “ Publicly used ”
“ Publicly worked ” (or “ publicly used ” ) in Article 29(1)(ii) of the Patent Act means that the invention has been worked in conditions where it is accessible to the public. This would include the situation where the invention is worked in a factory that is open to inspection tours by outsiders, or where worked products circulate among persons who are not required to keep the invention confidential. Even if the invention is not directly visible to outsiders, if it is being used in a situation where an outsider could easily learn about the invention, such use will fall under “ being publicly worked. ” [9] Whilst it may be difficult to draw a distinction in some cases between this and “ known to the public ” in Item (i), since they are both identical as elements leading to a lack of novelty, there is no practical benefit to be gained from drawing a sharp distinction between them.
(4) “Described in a publication,” etc.
In addition to hard copies such as documents and drawings, a “ distributed publication ” in Article 29(1)(iii) of the Patent Act will also include media for transmitting information such as CD-ROMs and optical disks. In addition, where the original of the publication is itself made public and arrangements are in place for copies of that original to be issued on request, such copies will also constitute “distributed publications.” [10] If a copy of an original that has been made public is prepared and that copy can in turn be made public or reproduced, that copy will also be held to constitute a “distributed publication.” [11] However, now that being known to the public in a foreign country has been recognized as a ground for lack of novelty, this can probably be covered by Item (i), even without straining the interpretation of that provision.
(5) Exceptions to lack of novelty
Article 30 of the Patent Act stipulates that even if there are grounds for lack of novelty, in certain events it will be deemed that there is no lack of novelty. These certain events are where there is a lack of novelty by reason of the fact that the inventor or other person with the right to obtain a patent has conducted an experiment; has made a presentation in a printed publication; [12] has made a presentation through electric telecommunication lines; or has made a presentation in writing at a study meeting (the foregoing are stipulated in Article 30(1)); or that such person exhibited the invention at an exhibition ( Patent Act Article 30(3)), and where lack of novelty has arisen against the wishes of the inventor or other person with the right to obtain a patent: Patent Act Article 30(2) . In the latter case, however, the patent application must be filed within six months from when the facts that came within grounds for lack of novelty arose, and in the former cases, in addition to that requirement, a document stating that these provisions are to apply must be submitted at the time of filing of the patent application, and a document proving the application is eligible to receive the benefit of these provisions must be submitted within thirty days of the date of filing of the patent application: Patent Act Article 30(4).
Article 30 of the Patent Act is a provision that merely deems that there is no lack of novelty – the application date is not made retroactive. Even if the application is made within six months of the day on which the grounds for lack of novelty arose, if another separate ground for lack of novelty unrelated to Article 30 has arisen during that period, the application will be refused, and if another person has filed an application for the same invention, the application will become a subsequent application, and will therefore not receive patent protection.
3 Inventive step
Where at the time of the application a person ordinarily skilled in the field of art to which the invention belongs (a “person skilled in the art”) would have been able to easily make the invention based on a technology falling under any of the items under Article 29(1) of the Patent Act (that is, an invention involving prior art or that is publicly known), the invention cannot be patented: Patent Act Article 29(2). For this decision to be made, in the abstract, an accurate assessment is firstly to be made of the standard of art in the field of art to which the invention belongs as at the time of the application , [13] and the points where the application invention varies from the prior art are to be made clear . Then, while making allowance for the purpose and effect of the invention, a decision is to be made depending on whether or not it is possible to logically support a person skilled in the art having been easily able to achieve the application invention by altering the prior art. For example, random arrangements of prior art will not be recognized as non-obvious unless an effect that could not have been expected is produced, over and above the mere random arrangement, and where the invention is an appropriation or permutation of prior art, inventive step will be affirmed only if the appropriation or substitution is difficult for a person skilled in the art and an unexpected effect arises . The courts and the Patent Office have each accumulated a long history of rulings and examinations in practice relating to more specific determinations. [14]
4 Grounds for Non-Patentability (Compliance with Public Policy)
Article 32 of the Patent Act stipulates that any invention that is likely to harm public policy or public health cannot be patented. Whilst there are many cases where it would be more desirable to leave the regulation of the use of such technology to other laws or regulations, by and large technology that clearly offends bioethical or similar standards, and technology that does not offend those standards but for which no mode of working is possible will probably fall under this provision.
At the time the current law was passed, it was also stipulated that patents could not be obtained for food and drink or for luxury goods, medicines or methods of mixing medicines, chemical substances, and nuclear transmutation products. These prohibitions were abolished, however, in subsequent amendments to the Patent Act .
5 “ Enlarged ” Prior Applications
(1) Prior applications
Under Japan 's Patent Act , the first applicant to file with respect to the same invention is entitled to obtain a patent for the invention (the “first-to-file principle”): Patent Act Article 39(1). Further, pursuant to that provision, if the same applicant files overlapping applications in respect of the same invention, the patent will only be granted for the first application. Whether inventions are identical will be decided based on the statements in the claims. The standard for an application to be a prior application is the date of the application, unlike for novelty, which is to be decided on the basis of time ( Patent Act Article 39(1)). Where two applications have been filed on the same date, the applicants will be narrowed down through consultations to the one applicant entitled to obtain a patent, and if no agreement is reached through consultations, both applications will be refused: Patent Act Article 39(2). However, an application that has been withdrawn or waived, or an application in respect of which the examiner's decision of refusal has become final and binding, is deemed never to have been filed, and thus loses its status as a prior application: Patent Act Article 39(5). Usurped applications (discussed further below) are not deemed to be prior applications: Patent Act 39(6).
(2) “ Enlarged ” prior applications
It follows that Patent Act Article 39(1) excludes a subsequent application that is identical to an invention disclosed in a claim for which a prior application has been filed. Therefore, this being the case, a person filing a subsequent application may be entitled to obtain a patent for an invention that is identical to an invention disclosed in the description and drawings of a prior application but which is not disclosed in the claim in the prior application. For that reason, although an applicant may not wish to obtain patent rights, the applicant will nevertheless instead feel compelled to file a defensive application even for technology that they intend to release universally through disclosing the same in the description. That is because a subsequent applicant will be granted the patent rights, and the technology in question will be subject to a monopoly. On the other hand, since an invention disclosed in the description and drawings of a prior application will be laid open one year and six months from the filing of the application ( Patent Act Article 64), a subsequent applicant will have nothing to contribute to society. Furthermore, if the effect of excluding subsequent applications is granted solely to inventions disclosed in claims, this means that the examination of subsequent applications will be delayed until the scope of the prior application ' s claims are fixed (and furthermore, under the system for requesting an examination ( Patent Act Article 48-3), a prior application will not necessarily be examined prior to a subsequent application.)
Next, Patent Act Article 29-2 stipulates that a patent shall not be granted for an invention identical to an invention disclosed in the claims, description or drawings originally attached to a laid open prior application. As well as being different to Patent Act Article 39 in terms of the scope within which it excludes subsequent applications, Article 29-2 differs from Article 39 in that: it does not apply to applications filed on the same date; it does not apply where the prior applicant and subsequent applicant are one and the same person; it applies only where the prior application has been laid open; and it also applies where, for example, the prior application is withdrawn or an examiner ' s decision of refusal has become final and binding.
III Inventions by Employees
1 Basic idea behind inventions by employees
According to Article 35 of the Patent Act , an “employee's invention” means an invention made by an employee “ which, by the nature of the said invention, falls within the scope of the business of the said employer, etc. and was achieved by an act or acts categorized as present or past duties of the said employee, etc. performed for the employer, etc. ” Article 35, while premised on the fact that the right to obtain a patent for an employee's invention (being one of the rights vesting in an inventor as a result of completing the invention, such as the right to file a patent application) belongs originally to the inventor – employee, grants a gratuitous statutory non-exclusive license over the patent rights to the employer: Patent Act Article 35(1). In addition, it is possible that the right to obtain a patent, or the patent rights in respect of an employee's invention will vest in the employer in advance pursuant to an agreement or employment regulations: reverse interpretation of Article 35(2). If rights vest in the employer, it is provided that the employee will have the right to receive “reasonable value”: Article 35(3). Whilst on the one hand the Patent Act gives fulfillment through employee's inventions to the “inventor principle” (under which the invention belongs to the inventor) in order to encourage the creation of inventions (a process that entails a heavy burden on an individual's abilities and gifts), on the other hand, since an employee completes an employee's invention only after being supplied by the enterprise where he or she is employed with, for example, funds, equipment, materials and know-how, there is also a need to provide an incentive to employers to invest in research and development. In addition, rather than granting employees ownership of inventions in a scattered manner, allowing a unified management to be conducted under the aegis of the employer better enables transaction costs to be reduced when negotiating licenses with third parties. For these reasons, the Act permits the vesting of rights in an employer in advance. This is the reason that payment of “reasonable value” is stipulated as a condition of this succession to rights, in order to provide an appropriate incentive for employees to create inventions. The Patent Act may therefore be described as an effort to harmonize the interests of employers and employees by vesting rights in the employer while guaranteeing compensation to the employee.
2 Employee invention requirements
(1) “Business of the employer”
In order for a particular invention to be recognized as an “employee's invention,” the invention in question must firstly fall within “ the scope of the business of the employer, etc. ” “ Employer ” includes the employer in an individual enterprise, a juridical person, or a national or local government entity. “ Business ” is not related to the purposes of a company recorded in its articles of incorporation – “ business ” is considered to be business that the employee currently engages in, or is planning to engage in.
(2) “Duty of the employee”
One more requirement for an employee's invention is that the invention was achieved by an act or acts categorized as present or past duties of the said employee, etc. performed for the employer, etc. An “employee” is a company employee or director, or a public officer, and may or may not be full-time. Furthermore, whilst “duties” will be easy to recognize where an employer has given specific directions or orders, in the event, for example, in a case at a manufacturing company where raising productivity is a company policy and the chief officer of an engineering or technical department makes a technical improvement that serves as a basis for raising productivity, not in response to receiving a specific instruction but in accordance with that policy, the chief officer's action will be categorized as his or her duties. [15] Whilst an invention that was achieved by acts categorized as the past duties of the employee will be included, inventions made after an employee's retirement will not. In cases where the framework of an invention was completed to some extent during an employee's time of employment, but the invention was completed in the course of performing the business of another company following the employee's retirement, the invention will become an employee's invention belonging to that new company. [16]
3 Employer's statutory non-exclusive license
If an employee creates an employee's invention for which that employee, or his or her successor, receives a patent, the employer acquires a gratuitous non-exclusive license over the patent rights: Patent Act Article 35(1). This license may be asserted against third parties even if not registered ( Patent Act 99(2)), and is unlimited in scope.
4 Succession to rights
For an employer to acquire a right to obtain a patent, a patent right or a right greater than a statutory non-exclusive license, such as an exclusive license (which would also be regarded as including a sole license), “ an agreement, employment regulation or any other stipulation ” is required. In practice, the arrangements for this kind of succession to rights are often stipulated in employee's invention regulations or employment regulations. The employer must, in addition, pay the employee “reasonable value” for the employee's invention ( Patent Act Article 35(3)), and a restriction is imposed with respect to inventions other than employee's inventions to the effect that any clause that provides in advance that the employer obtains these rights shall be null and void: Patent Act Article 35(2). These restrictions were created from the standpoint of harmonizing the interests of employers and employees and of protecting employees.
5 “ Reasonable value ”
( 1) Accrual of right to “reasonable value”
The filing of an application is not stipulated as a requirement for a right to “reasonable value” to accrue under Article 35(3) of the Patent Act , – it is sufficient if there is an invention, and even the obtaining of patent rights is not required. It follows that if it is agreed that the employer will keep an employee's invention confidential as ‘knowhow', and that only the employer will work the invention, the right to compensation will accrue on the basis that the right to obtain a patent was succeeded to at the time of this agreement. [17]
(2) Regulation and intervention in employer's setting of compensation
According to the decision of the Supreme Court of 22 April 2003, Minshu Vol. 57 No. 4: 477 ( Olympus - Supreme Court decision) , in the event also where an employment regulation or the like contains a clause on the compensation to be paid to an employee, if the amount of compensation applicable under this clause is not “ reasonable, ” an employee may demand that the employer pay the shortfall. The right to claim “ reasonable value ” is a statutory right expressly sanctioned in the Patent Act , to harmonize the interests of an employer and employee concerning an employee ' s invention and, in particular, for the protection of the employee. An employer is therefore not permitted to use an arbitrary determination of the amount of compensation that, in effect, takes this right away. In other words, the purpose of Article 35 can be seen to be the protection of employees against the arbitrary setting of compensation by an employer. Patent Act Article 35 may be categorized as the cornerstone of the regulation of compensation, in the form of a mandatory provision imposed on one side that denies validity to any arrangement that disadvantages an employee. However, the binding effect of a determination on compensation will not be completely denied on the grounds that it was made arbitrarily by an employer (the courts themselves need not always independently calculate an unequivocal and certain amount for the “reasonable value” [18] ). An employer is allowed a certain degree of discretion when determining compensation, and at the same time, working from the purpose of Article 35, intervention will be sanctioned only if the compensation in question was not calculated in a reasonable manner (“reasonable value” being a concept of some breadth). The gist of the above Supreme Court decision was also taken up by the current Article 35(4) of the Patent Act , following amendments made in 2004. That paragraph provides that where an agreement, employment regulation or other stipulation provides for the amount of compensation, “ the payment of value in accordance with the said provisions shall not be considered unreasonable in light of circumstances where a negotiation between the employer, etc. and the employee, etc. had taken place in order to set standards for the determination of the said value, the set standards had been disclosed, the opinions of the employee, etc. on the calculation of the amount of the value had been received and any other relevant circumstances.”
It can therefore be seen from Paragraph (4) that, working from the purpose of Article 35 (namely, the protection of employees from arbitrary determinations of compensation made by employers), importance has been placed on participation by employees in the value determination process as the test for “ reasonable value. ” Whilst the Patent Act certainly recognizes the validity of provisions in such as those in employers' employment regulations, it imposes, at the least, a requirement of disclosure of the content of those provisions to employees. Furthermore, even if a determination was made on succession to rights and compensation without reference to employment regulations but by means of an individual agreement between the employer and employee, such circumstances alone would not establish a basis for the “reasonableness” of the value determination process. Given the power imbalance between the parties, there is a risk that an agreement that unilaterally favors the employer will be entered into. The execution of an agreement in a manner such as one that wrongfully encroaches on an employee's decision making cannot be described as reasonable as a process for determining value. Conversely, however, where value has been determined by consent in circumstances where effective equality between the employer and employee has been ensured, on the basis of adequate information given to the employee on matters including the basis for the price calculation, even a low amount of compensation ought to be regarded as “reasonable value” and therefore valid. Approval of an extremely low amount of compensation, however, would require at least full agreement between the employer and employee based on individual negotiations where equality between the parties had been secured, and in that regard, the mere presence of a general provision in employment regulations (with that also disclosed to the employee) would probably be inadequate.
( 3) Calculation of “reasonable value”
If the amount of value stipulated in an agreement or employment regulations is “ unreasonable ” in the foregoing sense, or if there was no such stipulation to begin with, the amount of the value “ shall be determined by taking into consideration the amount of profit to be received by the employer, etc. from the invention, the employer, etc.'s burden, contribution, and treatment of the employee, etc. and any other circumstances relating to the invention ” : Patent Act Article 35(5).
Specifically, “ the amount of profit to be received by the employer, etc. ” is the license fee where the invention is licensed to others (where the employee ' s invention is licensed along with many other patented inventions, this profit will be the total license fee multiplied by the percentage of the contribution of the employee's invention). If the employer itself works the invention, the profit the employer should earn through the succession to rights will be the profit earned by excluding others from using the invention – specifically, the excess profits derived from monopolistic use of the invention. (Since the actual working of the invention by the employer itself is possible under the gratuitous statutory non-exclusive license in Paragraph (1), all the profits earned by the employer working the invention itself will not constitute “ profit to be received by the employer. ” ) Furthermore, with respect to the matters including the employer ' s burden and contribution and the treatment of the employee, consideration will be given to matters such as equipment, research expenses and support staff provided by the employer; increases in the employee ' s salary owing to the completion of the invention; and circumstances subsequent to the invention such as the processing of a patent application, the maintenance, commercialization and licensing of the patent, and sales efforts.
( 4) Extinctive prescription of right to reasonable value
According to Article 166(1) of the Civil Code , extinctive prescription commences to run “ when it has become possible to exercise the right. ” It follows that if there is no provision in an employment regulation or the like concerning the time of payment of value, because the right to reasonable value accrues at the time of succession to rights such as the right to obtain a patent, and because it becomes possible to exercise this right from the time of this succession to the rights, extinctive prescription commences from the time of succession to the rights. [19] In contrast, where there is a provision in an employment regulation or the like concerning the time of payment of value in the shape of, for example, compensation for filing an application, compensation for registration or compensation for business results, although the right itself to claim reasonable value will accrue upon the succession to rights such as the right to obtain a patent, since it will not be possible to claim value until the time of payment arrives, extinctive prescription will commence from the stipulated time of payment. [20]
Finally, the period of prescription will probably be ten years, which is the period for civil claims under Article 167 of the Civil Code (although some commentators hold different views on this point).
The only persons who may file a patent application are the inventor or a person who has succeeded to the right to obtain a patent from the inventor. An application by a person who is not this sort of genuine rights holder (that is, a person not entitled to obtain a patent) is called a “usurped application.” There are two kinds of usurped application. The first is where an application is filed without the permission of the genuine rights holder (this will be referred to here as the “application type”). The other is where an application was filed by the genuine rights holder itself, but there is a defect in subsequent succession to the status of the applicant (for example, where there is a change of applicant, to the effect that the applicant is changed from the genuine rights holder to the usurping applicant, on the basis of a forged deed of assignment of the right to obtain a patent. This will be referred to here as the “succession type”).
Under the Patent Act , usurped applications are not recognized as prior applications ( Patent Act Article 39(6)), and if a usurped application is made it will be refused: Patent Act Article 49(vii). Furthermore, if a usurping applicant is granted registration, that usurped application will be grounds for invalidation: Patent Act Article 123(1)(vi). It follows that if registration is recognized for a usurped application, whilst the genuine rights holder will be able to have the patent, etc. invalidated by filing a request for a trial for invalidation, in that event the world will be able to freely exploit the invention, etc. For that reason, it has become an issue as to whether a genuine rights holder will be permitted to demand the transfer of rights against a usurping applicant.
One decision has allowed a request for transfer and registration even after the patent was registered, provided there was an agreement for the return of the right to obtain a patent from the usurping applicant to the genuine rights holder. [21] Other decisions for both the application type and the succession type of usurped application allowed a change of name of applicant, upholding claims for declarations of rights to obtain patents, provided it was prior to registration. [22] In contrast, with respect to requests for transfers following registration, although there is a decision of a lower court involving the succession type of usurped application that denied the transfer, [23] such a claim was subsequently allowed in the decision of the Supreme Court, 12 June 2001, Minshu Vol. 55 No. 4: 793 (Raw waste treatment device) . Among the reasons that the Supreme cited for its decision in that case were the fact that since the establishment of the patent rights had been registered after the genuine rights holder filed an application for a patent, there was a connection between the established patent rights and the right held by the genuine rights holder to obtain a patent, and that since there was no wrongdoing on the part of the genuine rights holder, there were no valid means of redress to protect that person other than allowing the request for a transfer. As a question arose as to whether the range of applicability of this decision of the Supreme Court would be limited to cases involving succession-type usurpation applications where the genuine rights holder has filed an application, a judicial precedent appeared with respect to an application-type usurped application, placing this type of usurped application outside the range of applicability of the Supreme Court decision. [24] The structure adopted under the Patent Act specifies the scope for requesting protection for interests as one's own interests, and for granting exclusive rights to only the person who has filed a patent application, an act that objectively demonstrates the protection of one's own interests. This can no doubt be described as a legal determination made in respect of a person who failed to file an application despite having created an invention, to the effect that there is no need to grant that person exclusive rights, by virtue of the mere fact that a usurped application has been made by chance by another person. Since the opportunity has been ensured (in the form of the application process) for allowing a person to establish patent rights in connection with his or her own right to obtain a patent, there is no need to allow those patent rights to vest in a person who fails to make use of that opportunity. Court decisions that deny a request to transfer an application-type usurped application are regarded as taking this sort of legal construction as their premise.
[1] See for example the Tokyo High Court, 28 February 1950, Gyosei Jiken Saiban Reishu Vol. 1 No. 7: 1066 ( European Alphabet Unicode Method Case); Supreme Court, 30 April 1953, Minshu Vol. 7 No. 4: 461 (Final appeal in above High Court case) , Tokyo High Court, 14 November 1953, Gyosei Jiken Saiban Reishu Vol. 4 No. 11: 2716 ( Japanese Character Unicode Method Case); Tokyo High Court, 25 December 1956, Gyosei Jiken Saiban Reishu Vol. 7 No. 12: 3157 ( Utility Pole Advertising Method Case); Tokyo District Court, 20 January 2003, Hanrei Jiho No. 1809: 3 ( Balance Sheets Categorized by Funds Type Case); and Intellectual Property High Court, 26 August 2008, Case No. 10001 (Gke) of 2008 ( Bilingual Dictionary Case).
[2] Supreme Court, 13 October 1977, Minshu Vol. 31 No. 6: 805 ( Veterinary Composition Case) ; Tokyo High Court, 30 November 1977, Mutai Saishu Vol. 9 No. 2: 738 ( Float for Course Ropes Case).
[3] Supreme Court, 28 January 1969, Munshu Vol. 23 No. 1: 54 ( Nuclear Reactor Case) . Whilst the invention could be reproduced in that case, it is correct to think that patentable invention status will not be denied by just saying that there are safety issues remaining . This is because once even an invention of this sort may be reproduced or repeated, laying it open better serves the legislative purpose of the Patent Act of prompting the development of improved inventions incorporating safety. It follows that safety ought not to be treated as an issue in relation to “industrial applicability,” which is discussed below.
[4] Supreme Court, 29 February 2000, Minshu Vol. 54 No. 2: 709 ( Breeding and Propagating Method for New Yellow Peach Variety Case)
[5] In its decision of 27 January 1977 however ( Mutai Saishu Vol. 9 No. 1: 16; Vinyl Acetate Manufacturing Method Case), the Tokyo High Court denied status as an “invention” in a case of this type.
[6] Supreme Court, 16 July 1999, Minshu Vol. 53 No. 6: 957 ( Bioactive Substance Measurement Method Case)
[7] Tokyo High Court, 11 April 2002, Hanrei Jiho No. 1828: 99 ( Optical Display Method and Surgical Device Case).
[8] Tokyo High Court, 25 December 2008, Case No. 368 (Gke) of 1999 ( Method of Construction and Use of 6-roll Calendars Case) .
[9] Tokyo High Court, 6 December 1962, Gyosei Jiken Saiban Reishu Vol. 13 No. 12: 2299 ( Lubricant Controller Case).
[10] Supreme Court, 4 July 1980, Minshu Vol. 34 No. 4: 570 ( Single-lens Reflex Camera Case ).
[11] Supreme Court, 17 July 1986, Minshu Vol. 40 No. 5: 961 ( Hakojaku Rod Case)
[12] For a decision of the Supreme Court which held that publication in the patent gazette does not fall under “presentation in a printed publication ” under Article 30(1), see 10 November 1989, Minshu Vol, 43 No. 10: 1116 ( Tertiary Cyclic Amine Case) . Note that there is no objection to this being included in “described in a publication” in Article 29(1)(iii) of the Patent Act .
[13] There is no difficulty even if the standard of the art is recognized by a distributed publication after the application: Supreme Court, 30 April 1976, Hanrei Taimuzu No. 360: 148 ( Gas Laser Discharge Device Case) .
[14] One example is Tokyo High Court, 13 December 1988, Hanrei Jiho No. 1311: 112 ( Buffer Circuit Case) [15] Supreme Court, 13 December 1968, Minshu Vol. 22 No. 13: 2972 ( Lime Nitrogen Production Furnace Case)
[16] Nagoya District Court, 21 December 1992, Hanrei Taimuzu No. 814: 219 ( Floor Structure in Automated Multi-storey Car Park with Sloping Floor Case)
[17] Tokyo District Court, 23 December 1983, Mutai Saishu Vol. 15 No. 3: 844 ( Continuous Cladding Device Case)
[18] The Tokyo District Court gave such a ruling in its decision of 16 April 1999 ( Hanrei Jiho No. 1690: 145: Olympus Case - at First Instance) and its decision of 19 September 2002 ( Hanrei Jiho No. 1802: 30: Blue Light Emitting Diode Case - Interlocutory Judgment).
[19] Continuous Cladding Device case , supra ; Osaka District Court, 4 March 1993, Chiteki Saishu Vol. 26 No. 2: 405 ( Ghosn Case - at First Instance); Olympus Case - at First Instance, supra ; Supreme Court of 20 January 1995, Hanrei Kogyo Shoyukenho (2-ki Ban) [Decisions on Industrial Property Rights Law (2nd Term Edition)] 1297, p. 43 ( Ghosn Case; Final Appeal: decision of lower court upheld; no particular reasons given); Floor Structure in Automated Multi-storey Car Park with Continuous Sloping Floor Case , supra .
[20] Olympus Case - Final Appeal decision, supra .
[21] Tokyo District Court of 29 May 1987, Hanrei Jiho No. 1240: 130 ( Fastener Case ).
[22] For an application-type usurped application, see Tokyo District Court, 30 October 1985, Hanrei Taimuzu No. 576: 88 ( Plastic Element Manufacturing Method Case). For succession-type usurped application, see inter alia Tokyo District Court, 5 June 1963, Kakyu Saibansho Minji Saiban Reishu Vol. 14 No. 6: 1074 ( Automatic Continuous Powder Feeder Case) and Yokohama District Court, 29 March 1985, Mutai Reishu Vol. 17 No. 1: 116 ( Heated Quick-setting Hydraulic Cement and Forming Method Case ).
[23] Automatic Continuous Powder Feeder decision , supra .
[24] Tokyo District Court, 17 July 2002, Hanrei Jiho No. 1799: 155 ( Brassiere II Case). For the general theory, see Tokyo District Court, 26 July 2007, Case No. 1623 (wa) of 2007 ( Powder Transfer Device Case) as a decision that ruled to similar effect .
I Applications
1. Significance of specification and scope of claims
The purpose of the patent system is to encourage inventions through promoting the protection and the utilization of inventions, and thereby to contribute to the development of industry: Patent Act Article 1. When a person invents a new technology and lays it open for public inspection, the patent system will promote the protection of that invention by granting that person a monopoly right (namely, a patent right) over that invention, for a set period and on certain conditions. At the same time, the patent system provides for opportunities for the utilization of that invention by allowing third parties to learn the technical details of that invention when it is laid open in this manner. This protection and utilization of the invention will be realized through the medium of the invention's specification, ‘scope of claims' and drawings (here and below referred to collectively as the “Description”), which serve as the technical literature for laying open the technical content of the invention, and as a certificate of title that clearly indicates the technical scope of the patented invention.
The Patent Act prescribes requirements for the statements in the specification of the detailed explanation of the invention (in Article 36(4)) and for the ‘scope of claims' (Article 36(5) and (6)). A Description will properly achieve its functions as technical literature and as a certificate of title only after fulfilling the requirements in these provisions.
2. Requirements for the statements in the ‘scope of claims'
The statements in the ‘scope of claims' have major significance in that the technical scope of the patented invention is determined on the basis of these statements. Where the ‘scope of claims' does not meet those requirements for these statements, not only might third parties be wrongfully subjected to restrictions based on rights to that patented invention, but the patentee itself will also have to deal with unnecessary disputes. For these reasons, proper consideration must be given to this aspect in any examination of the requirements for the statements in the ‘scope of claims'.
When a patent applicant specifies the invention for which the applicant wishes to obtain a patent, nothing more and nothing less than those matters necessary to specifying the invention for which the patent is sought are to be stated in the scope of claims, in order that the applicant does not state any matters that are entirely unnecessary, and also does not fail to state any necessary matters: Article 36(5). Since the issue of for which invention a patent is sought is for the patent applicant to decide, all matters that the applicant itself considers necessary for specifying the invention for which a patent is sought are to be stated. Furthermore, matters such as that the technical scope of the patented invention is to be determined pursuant to each of the claimed matters, and that the invention determined pursuant to each of the claimed matters is to be subject to examination are made clear by an express indication that the applicant's statement of the matters considered necessary for specifying the invention for which a patent is sought will comprise the claimed matters.
In addition, the invention stated in the ‘ scope of claims' must not exceed the scope stated in the detailed explanation of the invention: Article 36(6)(i). This is because if an invention not stated in the detailed explanation of the invention were to be stated in the ‘scope of claims', rights would be claimed with regard to an invention that had not been laid open.
Finally, the statement of the ‘ scope of claims' is of major significance because it is the basis on which patent requirements such as novelty and non-obviousness are decided, and on which the technical scope of the patented invention is determined. The invention must be clearly ascertainable from one claim (Article 36(6)(ii)), and ought to be concisely stated for the better understanding of third parties (Article 36(6)(iii)). This is because if the invention for which a patent is sought is not clearly ascertainable, it will not be possible to make an accurate decision on patent requirements such as novelty and non-obviousness, and it will also be difficult to comprehend the technical scope of the patented invention. The statements in the ‘ scope of claims' are regarded as determining the invention in the claims that will be the object of the decisions made on the patentability requirements (such as novelty and non-obviousness) and the fulfillment of the requirements for the statements, and securing the Description's role as a certificate of title that clearly indicates the technical scope of the patented invention.
3. Requirements for the statements in the specification
The role of the specification is that of technical literature for disclosing the details of the invention to be patented. The explanation of the invention must be stated in such detail that would allow a person exhibiting ordinary creative ability (a “person skilled in the art”) to work the invention claimed, based on the matters stated in the specification and drawings and on common technical knowledge at the time of the application, using ordinary technical means for research and development (including, for example, analysis of the literature, experimentation, analysis and production) in the technical field to which that invention pertains: Article 36(4)(i) (the “enablement requirement”).
Finally, where the applicant has knowledge at the time of the patent application of an invention related to the invention for which a patent is sought, which has been known to the public through publication (that is, an invention under Article 29(1)(iii)), in the specification the applicant must state in the detailed explanation of the invention the name of the publication where that related invention is described, along with the source of the information concerning that invention that has been known to the public through publication (“information on prior technical literature”): Article 36(4)(ii)). Information on prior technical literature is necessary for ascertaining the nature of the technical significance of the invention for which a patent is sought in view of the state of the art at the time of the application, and the nature of the technical contribution it has made, and for making a decision on factors such as the novelty and non-obviousness of the invention for which a patent is sought. It follows that if the applicant states information on the prior technical literature in the detailed explanation of the invention, this will not only contribute to a speedy examination, but will also enable an accurate assessment of the relationship between the invention for which a patent is sought and the prior art, which can be expected to also contribute to greater certainty of parties' rights.
4. Unity of inventions
When an inventor has inventions that are closely related to each other in a technological sense, filing a single application request for these inventions makes for a simpler and more rational application process for the applicant, makes it easier for third parties to utilize patent information and to deal in patent rights, and also enables the Patent Office to conduct examinations more efficiently. For these reasons it is possible to file an application for two or more inventions that meet certain requirements by way of a single request: Article 37.
5. Division of applications
Where a patent application includes an invention that does not meet the requirements for unity of invention, or where an invention is included that is not stated in the ‘scope of claims' but is stated in the specification or drawings when the relevant application is initially filed, reasoning from the purpose of the patent system (namely, to grant an inventor a monopoly right for a set period of time as compensation for the inventor laying open the inventor's inventions to public inspection), an avenue ought to be available for giving the maximum possible protection to these inventions as well when they are laid open as a result of the filing of the application. This is the intent behind the creation of the statutory provisions on the division of applications, under which applicants are given an opportunity to file a new patent application for part of a patent application that contains two or more inventions, and provided that the new patent application is a valid application, it will be recognized as having effect as if it had been filed at the time of the original patent application: Article 44.
6. Priority claim applications under the Paris Convention
Filing patent and related applications in multiple countries for the same invention at the same time represents a major burden for an applicant, because translations and other documentation will need to be prepared and different procedures will need to be followed in each country. As an attempt to reduce this burden for applicants, the Paris Convention allows applicants to claim priority for certain patent applications in that situation. Specifically, where a person files a patent application in one country of the Union of the Paris Convention (the first country) and then files a patent application in another country of the Union of the Paris Convention (the second country) with regard to details stated in the application documents for the patent application in the first country, that person has the right to receive the same treatment with respect to decisions on requirements such as novelty and non-obviousness for the patent application in the second country as if that application had been filed on the date of filing of the application in the first country (but only where it is less than twelve months between the date of filing in the first country and the date of filing in the second country). Applicants must follow certain procedures in order to claim priority: Article 43.
II Examinations
1. Substantive examination system
While applicants requesting the grant of a patent submit their requests to the Commissioner of the Patent Office, the Commissioner does not personally conduct examinations, which he or she entrusts to an examiner: Article 47. Examination by an examiner is a substantive requirement prior to the pendency of a trial: Article 49.
There are two different systems of procedures for determining whether or not a patent ought to be granted on the basis of a particular application: the substantive examination system, and the non-substantive examination system. Many countries including Japan employ the substantive examination system, under which an inquiry is conducted prior to a grant of a patent as to whether or not a patent application possesses all the requirements required for the granting of the patent, and the result of that inquiry determines whether or not to allow a patent. Under the non-substantive examination system, of the requirements needed to obtain a patent, a check is performed of only those requirements needed to obtain a patent that are formal or procedural in nature. This is comparatively easy to conduct, and a patent may be granted without any examination of substantive patent requirements (a “substantive examination”) that require time for an investigation and a decision, such as novelty and non-obviousness, and identity. Under this system, the validity or invalidity of a patent will be tried by a court only where a dispute arises after the patent is granted.
2. Laying open of applications
When a certain period of time has lapsed following the filing of an application, the details of the patent application are disclosed to the public, regardless of the stage the application has reached in the examination process. The purpose of laying open is to eliminate adverse consequences in the form of the destabilizing of business activities or the duplication of research and investment that would ensue where the content of an invention applied for is not published for a long period of time as a result of a delay in the examination process. Accordingly, all pending applications are, in principle, laid open where one year and six months had lapsed from the date of filing of the application, or where the applicant requests accelerated laying open: Article 64. Since laying open involves making the details of a patent application known to the general public, third parties will gain knowledge of and be able to work that content. For that reason, in order to compensate an applicant for losses caused if a third party works the applicant's invention, applicants are granted a right to claim compensation, on certain conditions, against a person who worked their invention: Article 65(1). This right may not be exercised prior to registration establishing the relevant patent right (Article 65(2)), and the exercise of that right does not preclude the exercise of patent rights (Article 65(3)). Finally, an application that has been laid open has the status of an “enlarged” prior application (under Article 29-2), and as a publication, it constitutes evidence for the purposes of denying novelty and non-obviousness.
3. Request for examination of an application
Not all patent applications that are filed are examined: the Patent Office waits to receive a request for examination of a patent application before conducting an examination: Article 48-2. The system of requests for examination of applications is premised on the existence of substantial differences between applications in terms of applicants' purposes in filing their applications and in terms of the economic and technological value of inventions for which applications are made. At the core of this system is that an applicant may choose whether or not to request an examination, depending on the purpose and value of the applicant's application, and if the applicant does so choose, the time at which it is appropriate to do so. If an applicant chooses not to request an examination, the applicant's economic burden (including payment of the fee for requesting an examination and patent fees) will of course be reduced, and after an application is laid open the applicant also enjoys advantages such as being granted the status of an “enlarged” prior application. Accordingly, since some applicants do not request an examination because they have ventured to decide that they do not need to obtain patent rights for a particular application, a considerable number of applications drop out of line for examinations, which can assist overall in facilitating the processing of examinations. A request for examination must be made within three years of the date of filing of the application: Article 48-3. This period was selected with reference to, among other factors, making a decision on the economic value of the invention, the adverse consequences of prolonging the period before the invention can be patented, and examples on the statute books in other leading countries. While it is the applicant who ought to decide whether to request an examination or not, the Patent Act provides that anyone may request an examination: Article 48-3. This is because if the issue of whether the right to claim compensation accruing as a result of the laying open of an application could be exercised was left unresolved, this would be unsettling for a person who is already working or intends to work the same or similar technology in future, and so needs to know as soon as possible whether or not the application invention will receive patent protection.
4. Preferential examination system
Under the preferential examination system, where necessary, the Commissioner of the Patent Office causes the examiner to examine a patent application in preference to other patent applications, regardless of the order of requests for examination: Article 48-6. While an applicant will receive a right to claim compensation after the applicant's application is laid open, since that right may not be exercised prior to registration establishing the relevant patent rights, when a long period of time follows after an application is laid open and ‘before it can be examined, it sometimes happens that during that period the invention will be affected enormously by third party copies, and the applicant's right to claim compensation is made meaningless. On the other hand, where a third party has received a warning from an applicant (under Article 65(1)) but the worked technology is no more than conventional art, that third party may, through the provision of information, endeavor to obstruct the application invention from being patented. However, when after receiving a warning a long period follows before the application is examined, the risk arises that the third party's working will be restrained or obstructed by the applicant for that period. The preferential examination system was introduced for this purpose. Finally, while the Patent Act contains no provision on this issue, in order to minimize the adverse consequences of delays to examinations of recent years, a procedure has been introduced to allow applications for accelerated examinations for patent applications that meet certain specific conditions.
5. Notice of reasons for refusal
When as a result of the examination of a patent application the examiner finds there are reasons for refusal (Article 49), the examiner must give notice of the reasons for refusal in advance to the applicant immediately, without rendering a decision of refusal. In addition, the examiner must give an opportunity to submit a written opinion, designating an adequate time limit: Article 50. Since the Description may be amended within the time limit for submitting a written opinion (under Article 17-2(1)), the reason for this process is to avoid an applicant receiving an incorrect decision of refusal by giving the applicant the opportunity to use an amendment to avoid the reasons for refusal, and having the applicant point out any misunderstandings on the part of the examiner. The examiner will further examine the submitted written opinion, and if he or she finds that the claims in the written opinion are baseless, he or she must render a decision to the effect that the application is to be refused: Article 49. If the examiner finds that there are grounds for the claims in the written opinion, or if he or she finds, based on a written amendment submitted by the applicant (under Article 17(4)), that the original reasons for refusal have ceased to apply, unless the examiner finds other reasons for refusal, he or she must render a decision to the effect that a patent is to be granted: Article 51.
III Amendments
1. Significance of amendments
In order to promote the efficient and speedy conduct of procedures , whilst it is desirable to submit from the outset a Description that is complete in its details, as a practical exercise a complete application may often not be desirable from the beginning. For that reason, it will be necessary to allow a Description to be amended, within the limitations of the fixed scope for amendments.
However , if amendments that exceeded the scope of the matters stated in the Description initially attached to the relevant application request were permitted after an application was filed, since an amendment takes effect retroactively from the time of the application, this may well result in unforeseen disadvantage to third parties who relied on the details stated in the initial Description.
Therefore , from the perspective of harmonizing the interests of applicants and third parties, amendments must be made within the scope of the matters stated in the initial Description, and amendments that add a new matter are not permitted: Article 17-2.
Notice of reasons for refusal will be given for an amendment that adds a new matter (Article 49), and where determined after registration of establishment, the amendment will be grounds for invalidation of the patent: Article 123(1)).
2. Amendments following notice of reasons for refusal
Under Article 53(1), an amendment is to be dismissed where it is found to be an amendm ent in response to the last notice of reasons for refus al, or an amendment in response to the first notice of reasons for refusal, which was also a notice given under Article 50-2, where the amendment:
- adds a new matter;
- alters the special technological features of the invention;
- is not for the purpose of the deletion of a claim, the limited restriction of the ‘scope of claims', the correction of errors, or the clarification of an ambiguous statement; or
- is an amendment for which a patent cannot be obtained independently.
Rulings to dismiss an amendment are to be made in writing, and are to state reasons: Article 53(2). While rulings to dismiss an amendment are not subject to appeal, an appeal may be added to a trial against an examiner's decision of refusal: Article 53(3).
Finally, where after the service of the certified copy of the examiner's decision to the effect that a patent is to be granted, it is found that an amendment made after the receipt of the final notice of reasons for refusal is unlawful, only cases where this amendment adds a new matter will constitute grounds for invalidation (Article 123(1)(i)), and no other amendments will constitute grounds for invalidation.
3. Amendment at time of trial against examiner's decision of refusal
When filing a request for a trial against an examiner's decision of refusal, amendments may be made to the Description of the patent application to which that request pertains: Article 17-2(1)(iv)). Where an amendment is made at the time of a request for a trial, as a pretrial examination and prior to any proceedings by a trial panel, the examiner is to examine in advance whether or not a patent may be granted, based upon the Description amended at the time of the request for a trial: Article 162.
In view of the situation th at many trials against an examiner's decision of refusal where the examiner's original decision is rescinded, are cases where amendments were made after the decision of refusal, including to the ‘scope of claims', pretrial examinations were introduced with the aim of reducing the number of cases to be handled by trial examiners and therefore facilitating trials, through causing the examiner who made the decision of refusal to re-examine his or her handling of the case. A re-examination by the examiner who made the decision of refusal allows full use to be made of the examiner's knowledge of that application, and compared to where a case is re-tried from scratch after appointing a new trial examiner, this process allows the case to be processed with greater ease and speed.
Where the examiner decides as a result of the pretrial examination that his or her original decision cannot be confirmed as a result of an amendment to the Description made at the time of the request for a trial (that is, when the reasons for refusal in the examiner's original decision cannot be supported), if the new examination cannot find new reasons for refusal, the examiner is to rescind his or her original decision and make a decision to the effect that a patent is to be granted: Article 164(1)).
On the other hand , where the examiner decides that his or her original decision can be supported, even where a re-examination is conducted based upon the amended specification, ‘scope of claims' or drawings, the reasons for an result of that pretrial examination (additional cited references may also be given) are to be reported to the Commissioner of the Patent Office: Article 164(3). In this event, the Commissioner of the Patent Office has the trial examiner hear the trial case: Article 137(1)).
Where a decision is made that an amendment made at the time of the request for a trial was not lawfully made, the examiner may not dismiss the amendment unless he or she makes a decision to the effect that a patent is to be granted (Article 164). The examiner is to report to the Commissioner, and as well as the reasons for finding that the amendment made at the time of the request for a trial ought to be dismissed, all the reasons for confirming the examiner's original decision are to be stated (if other reasons for refusal are found, those reasons are also to be stated).
O n the other hand, where the examiner finds at a pretrial examination that whilst the reasons for the decision of refusal were removed by a lawful amendment made at the time of the request for a trial, if the examiner finds new reasons for refusal of the amended application differing from those for the decision of refusal, the examiner is to give notice of reasons for refusal.
IV Trials
1. Trials against an examiner's decision of refusal
Although actions for an appeal against an administrative disposition, such as a decision of refusal, are to be instituted in court , the Patent Act adopts the trial system as the means for rectifying a defect in the result of an examination. Where an applicant wishes to enter an appeal against the details of a decision of refusal that the applicant considers to be defective in some way, the applicant may not institute an action directly in court, but is to make a request of the Patent Office for a trial against the examiner's decision of refusal. A trial against an examiner's decision of refusal is conducted using quasi-judicial procedures that resemble a judicial trial. On the other hand, when an appeal is filed against the trial decision in a trial against an examiner's decision of refusal, judicial proceedings at first instance are omitted, and the appeal is filed in the Tokyo High Court (specifically, the Intellectual Property High Court).
The trial panel conducts a hearing after having undertaken an investigation on its own authority as to whether or not the decision of refusal rendered by the examiner was appropriate. The trial panel then renders a decision as to whether or not the request for the trial, to the effect of “the examiner's original decision ought to be rescinded,” was valid or not. This trial decision has the status of an administrative disposition.
A trial decision is a specific and authoritative official judgment by an administrative agency (the trial panel), and is the final judgment by the trial panel, which has the status of the final appeal body in the examination process. The result of a trial in response to a request will be either “Request established (upheld)” or “Request not established (unsuccessful)”.
Where the trial panel rules that the decision of refusal can be supported (that is, where the examiner's original decision is to be confirmed), the panel is to issue a trial decision indicating a conclusion to the effect of “The request in this trial is unsuccessful,” along with the reasons that led to that conclusion. If the trial decision becomes final and binding, the disposition of the decision of refusal also becomes final and binding. Where the trial panel rules that the decision of refusal cannot be supported, it is to render a trial decision indicating a conclusion to the effect of “The examiner's original decision is to be rescinded, and the invention in this application is to be granted a patent” (if a patent is to be granted), along with the reasons that led to that conclusion. It is also possible for an examiner's original decision to be rescinded and sent back for further examination: Article 160.
A trial against an examiner's decision of refusal may be requested within three months from the date of service of the certified copy of the decision of refusal: Article 121. If a request for a trial is not made within the time limit, the decision of refusal becomes final and binding, and no appeal may be entered subsequently (where the person who requests a trial is unable to file that request within the above time limit for reasons not attributable to that person, that person may file such a request within 14 days from the date on which the reasons ceased to be applicable, but not later than six months following the expiration of that time limit: Article 121(2)). “Reasons not attributable” is construed to mean an inability to file a request within the time limit owing to an incident, such as a natural disaster or other unavoidable unforeseen circumstances, of a sort that prevents the person requesting a trial or their agent from avoiding the lapse of the time limit, notwithstanding the exercise of care that it is generally be expected will be used.”
The persons who may request a trial against an examiner's decision of refusal are the applicant who received the decision of refusal, or the applicant's successor. In the case of a joint application, all the joint owners must jointly request a trial: Article 132(3).
2. Trials for correction
A trial for correction is a trial where the patentee may personally correct the specification, ‘scope of claims' or drawings after the patentee's rights have been registered. The content of patent rights become final and binding upon registration, and the details of the description that determines the scope of that content is not to be altered after registration without good reason. However, it is sometimes discovered following the registration of patent rights that there are grounds for the invalidation of those rights, that there were errors in a statement, or that a statement was ambiguous. It would be harsh for a patentee if patent rights were invalidated in their entirety owing to a defect in part of the content of the rights. Moreover, the presence of an ill-defined part concerning a patent renders the scope of those rights uncertain, which may produce an outcome contrary to the public interest, such as where a third party incurs trouble and inconvenience over a dispute regarding an issue arising out of the existence of ill-defined rights. For these reasons a statutory regime of trials for correction was instituted to harmonize the interests of patentees with those of society in general.
A trial for correction is a procedure that involves asking the Patent Office for corrections to the specification, ‘scope of claim' or drawings of patent rights (here and below referred to as the “Patent Description”). In principle, one request for a trial for correction is to be filed per case, and even a corrected specification, ‘scope of claims' or drawings (here and below referred to as a “Corrected Description”) that covers several points in the statements in the Patent Description attached to the correction request will be treated as a request for a trial for correction involving a single, whole and indivisible matter for correction. When a request is filed for a trial for correction with several Corrected Descriptions attached from the outset with regard to one case, one of those Corrected Descriptions will be specified before proceedings are progressed.
If corrections are approved in a trial for correction, the correction of the patent Description will be registered in the patent register by the Commissioner of the Patent Office acting under its own authority, and the filing of the patent application; the laying open of the application; the examiner's decision or the trial decision to the effect that the patent is to be granted; and the registration of the establishment of the patent right, will be deemed to have been made based on the corrected Patent Description: Article 128.
A trial for correction may be requested at any time other than “from the time the relevant trial for patent invalidation is pending before the Patent Office to the time the trial decision has become final and binding” with regard to the patent right for correction: main clause of Article 126(2). “From the time the relevant trial for patent invalidation is pending before the Patent Office to the time the trial decision has become final and binding” means firstly, of course, the period when the trial for invalidation is pending before the Patent Office. But where litigation to rescind the trial decision has been instituted even after that trial decision is handed down, it also means the time when that litigation is pending – that is, until the time after the litigation has terminated when the trial decision finally becomes final and binding.
After a trial for invalidation is instituted, while the need will arise while that trial is pending to create a defense based on corrections of the Patent Description in order to avoid any assertion of grounds for invalidation by a person who requests a trial for invalidation, in this event, in principle, a “request for correction” is to be made during proceedings for the trial for invalidation, within the time limit that the chief trial examiner designates, and a request for a trial for correction may not be filed.
After litigation to rescind a trial decision is instituted, a request for a trial for correction may be filed and corrections mad e in response to the trial decision that is the trial examiner's final judgment, limited to within ninety days from the day when an action against the trial decision in the relevant trial for patent invalidation is instituted (including the day on which the litigation is instituted): proviso to Article 126(2). Requests for a trial for correction will be permitted during this period even where a separate trial for invalidation is pending before the Patent Office.
Prior to amendments made to the Patent Act in 2003, Article 126(1) provided that a trial for correction could be requested “excluding where the relevant trial for invalidation is pending before the Patent Office.” This meant that it was permitted to file a request for a trial for correction at any time after litigation to rescind the trial decision had been instituted. On the other hand, in a 1999 decision (Case No. 204 (Gtu) of 1995: Large-Diameter Square Steel Pipe Case), the Supreme Court expressed the view that where litigation to rescind a trial decision is pending before a court and where a correction restricting the ‘scope of claims' of the relevant patent has become final and binding, it is not appropriate for the courts to examine the resulting corrected patent – the primary course of action in that event should firstly be the examination of the corrected patent in a trial for invalidation. The Supreme Court went on to rule that in such an event, the trial decision ought to be rescinded before the Patent Office conducts proceedings for another trial for invalidation. Following that judgment, the practice took hold whereby the courts would almost automatically rescind the trial decision in a trial for invalidation if the trial for correction decision had become final and binding. The result of this Supreme Court decision was not only a rapid increase in the number of situations where patentees, having received a decision in a trial for patent invalidation, instituted court action while at the same time filing a request for a trial for correction aimed at the automatic rescission of the trial decision, but also a rapid increase in the number of situations where a request was filed for a trial for correction at the extremely late point in time of just before the termination of litigation to rescind the trial decision before the Tokyo High Court, or of petitioning for acceptance of a final appeal to the Supreme Court.
For that reason , in addition to a limitation on the time when a trial for correction may be requested after the institution of litigation to rescind the trial decision in a trial for invalidation, the current Patent Act also stipulates a general rule to the effect that no trial for correction may be requested after the institution of an action, while as an exception to that general rule, a trial for correction may be requested only within ninety days following the institution of an action. By placing a limitation on the time for requesting a trial for correction following the institution of an action, the problem has been resolved where after a trial for invalidation was pending again before the Patent Office following litigation over a long period of time, the period until a final conclusion in a trial for invalidation proceedings would be protracted over an exceedingly lengthy period of time. On the other hand, the option of filing a request for a trial for correction following the institution of an action was not completely shut off, and the step of allowing these requests for just a certain period was made in recognition of the significant need for the making of corrections in response to the decision made by the trial examiner.
It is possible to file a request for a trial for correction even after the extinction of patent rights: main clause of Article 126(6). It is not possible, however, to file a request for a trial for correction after the patent right has been invalidated in a trial for invalidation, because that right is deemed to have never existed: proviso to Article 126(6).
The person who is to file a request for a trial for correction is the patentee: Article 126(1). When a joint owner or owners of patent rights file a request for a trial for correction with respect to their jointly owned rights, all joint owners must file the request jointly: Article 132(3). Where there is an exclusive licensee, pledgee or non-exclusive licensee under Articles 35, 77 or 78, the patentee may file a request for a trial for correction, limited to with the written consent of the said person: Article 127(1).
A request for a trial for correction may only be filed where the purpose is to correct the following matters (Article 126(1)):
- the restriction of the scope of claims (Item (i));
- the correction of errors or incorrect translations (Item (ii));
- the clarification of an ambiguous statement (Item (iii)).
Corrections must remain within the scope of the matters stated in the specification, ‘scope of claims' or drawings attached to the application request: Article 126(3). “Specification, ‘scope of claims' or drawings attached to the application request” means the specification, scope of claims or drawings at the time of the registration of the establishment of the patent rights (alternatively, where the trial decision in another trial for correction prior to the trial decision in the trial for correction in question becomes final and binding; where the trial decision in a trial for invalidation allowing a request for correction becomes final and binding; or where the ruling on a patent objection allowing a request for correction becomes final and binding, the specification, ‘scope of claims' or drawings as corrected on that occasion).
Corrections must not substantially enlarge or alter the scope of claims: Article 126(4). Where the ‘scope of claims' has been restricted or an error or incorrect translation has been be corrected, the invention constituted by the matters constituting the invention in the corrected claim must itself meet patent requirements such as novelty and non-obviousness: Article 126(5).
3. Trial for invalidation
Where an invention that ought to have been refused a patent in law is in fact granted a patent, that patent comprises rights wrongfully given to the patentee, and notwithstanding that by rights any person is able to work that invention, such working will be obstructed by the grant of the patent, which in turn will have adverse consequences such as hindering the development of industry. The trial for invalidation procedure exists as a means for invalidating a patent in such a case, so that the right will never have existed in the first place. A trial panel will conduct a trial for invalidation where a request is filed on an assertion of statutory “grounds for invalidation,” and if, as a result the trial determines that there are “grounds for invalidation” and renders a trial decision to “invalidate” the rights, the rights are deemed to have never existed, and the effect of the patent rights will be extinguished (retroactively) from the time that the rights arose.
Because the legitimate interests of the patentee will be harmed if a trial decision is made in error in a trial for invalidation to invalidate patent rights, for the purpose of achieving a fair hearing in a trial for invalidation, the adversarial system is adopted for the trial panel's proceedings, under which both the person filing the request for the trial and the patentee are allowed to submit arguments and evidence, and where the panel rules on the validity of the rights after considering both parties' arguments and the evidence. Furthermore the “oral proceedings” method is adopted, as a general rule, whereby both parties are made to attend the trial and submit arguments.
A request for a trial for invalidation may be filed for each claim: Article 123. A trial panel will examine only those claims for which a trial has been requested, and it may neither examine nor decide on a claim for which a trial has not been requested: Article 153(3).
The object of a request for a trial for patent invalidation is a patent disposition, which has the status of an administrative disposition: Article 123(1). The grounds for invalidation of a patent are limited to those listed in Article 123(1), and no request may be filed to invalidate a patent on any ground other than these.
A request may be filed for a trial for invalidation at any time after the registration of establishment of the patent rights, and a request may be filed even after patent rights are extinguished: Article 123(1) and (3). When a final and binding trial decision in a trial for invalidation has been registered, no request for a trial may be filed based on the same facts and evidence: Article 167. Furthermore, since it is possible to withdraw a trial until a trial decision becomes final and binding, a trial instituted and pending before the Tokyo High Court may also be withdrawn: Article 155.
Any person (whether a natural person or a juridical person) may file a request for a trial for invalidation on grounds for invalidation for the public benefit (such as a lack of novelty or non-obviousness), but not on grounds for invalidation pertaining to the ownership of rights (such as a breach of the requirement for a joint application, or a usurped application): Article 123(2). Even an industry association or like organization without juridical personality will be recognized as having capacity to file a request for a trial for invalidation, provided that it is an association or foundation for which a representative or administrator has been designated: Article 6(1). A request for a trial for invalidation on the ground of infringement of the requirement for a joint application (Article 38) or of a usurped application (Article 123(1)(vi)) may be filed only by an interested person.
An “interested person” is not limited to a legitimate rights holder such as the true joint owner of the right to obtain a patent, or the true inventor – it is a person who has an interest in the patent in question itself, such as a person who works a device or process that is the same as or similar to the patented invention in question.
Where two or more persons file a request for a trial for invalidation with regard to the same patent right, these persons may file a request jointly: Article 132(1). It follows that several persons may from the outset file a request for a single trial for invalidation jointly, and similarly after a request has been filed, may intervene in the relevant trial: Article 148.
4. Advisory opinion system
Under the advisory opinion system, the Patent Office is to indicate a judgment on the technical scope of a patented invention from an impartial and neutral standpoint, as to the possibility that the object of the advisory opinion might constitute an infringement of rights: Article 71. Since there is no provision making an advisory opinion legally binding on any party or a third party, the result of an advisory opinion does not constitute a disposition by an administrative agency or any other act amounting to an exercise of public power. However, since an advisory opinion is an official opinion of the Patent Office, which is the government agency that grants rights with regard to the technical scope of the patented invention, it therefore corresponds in status to a written expert opinion, and in practice in the eyes of society it will be fully respected as the authoritative judgment that it is.
Ⅴ Litigation to rescind a trial decision
1. Litigation to rescind a trial decision
”Litigation to rescind a trial decision” is litigation where the court (a judicial organ) adjudicates on a trial decision or specific ruling made by the Patent Office (an administrative organ).
Actions against a trial decision or a ruling dismissing a written request for a trial or retrial are subject to the exclusive jurisdiction of the Tokyo High Court. Specifically, these actions are heard by the Intellectual Property High Court, a special division of the Tokyo High Court: Patent Act Article 178(1), Act on the Establishment of the Intellectual Property High Court Article 2.
2. Parties
A plaintiff in litigation to rescind a trial decision may be a person who has received a trial decision, a person who has received a ruling dismissing a written request for a trial or retrial, a successor of such a person, an intervenor, or a person who has been refused intervention: Article 178(2).
The Commissioner of the Patent Office will be the defendant in litigation involving a trial decision in a trial against a decision of refusal or a trial for correction, or in a trial against a ruling dismissing a written request for a trial or retrial . The defendant in any other proceedings will be the person who requested the trial, the person who requested the retrial, or the person who received the request: Article 179.
3. Period for instituting action
Actions may be instituted within thirty days from the date of service of the certified copy of the trial decision or ruling, and this period is unextendable: Article 178. The chief trial examiner may act on his or her own authority to designate an additional period extending that unextendable time limit for a person in a remote area or an area with transportation difficulties: Article 178(5).
4. Judgment
Where the court finds as a result of its inquiry that there are grounds for a claim , the trial decision or ruling must be rescinded (Article 181(1)), and with respect to that case, the judgment of the court rescinding the disposition or ruling is binding on the administrative agency that was a party and any other relevant administrative agencies: Administrative Litigation Act Article 33(1). When this judgment of rescission becomes final and binding, the trial examiner must conduct proceedings again and render a trial decision or ruling: Article 181(2). Where the court finds the claim to be baseless, it is to dismiss the claim.
5. Final appeals
Where a party objects to a judgment of the High Court, it may bring a final appeal in the Supreme Court.
A petition for final appeal is to be submitted to the Tokyo High Court: Code of Civil Procedure ( CCP ) Article 314(1). A final appeal may be filed within two weeks from the date of service of the judgment ( CCP Article 285 applied mutatis mutandis under CCP Article 313), and this period is unextendable : CCP Article 285.
The reasons for a final appeal are limited to absolute reasons for a final appeal, such as constitutional violation ( for example where the High Court has misconstrued the Constitution in its judgment ), or a contravention of laws and regulations that represents a major breach of procedural law .
In a case in which the judgment in prior instance is found to involve material matters concerning the construction of laws and regulations such as a breach of precedents, a procedure has been created whereby the Supreme Court may accept a final appeal by order on a discretionary basis : CCP Article 318.
With regard to orders and directions, in order to redress a situation where it is not possible to achieve uniformity in the interpretation of laws and regulations, an “appeal with permission” is available against an order or direction of a High Court, whereby a party may appeal to the Supreme Court with the permission of the relevant high court : CCP Article 337.
3. Effects and Infringement of Patent Rights
I. Working
(1) Introduction
A patentee has the exclusive right to work the patented invention as a business: Article 68. Since a patent right is an exclusive monopoly right to work a patented invention, where a third party works a patented invention as a business without proper authority, the patentee may demand remedies such as injunction and damages caused by such working.
(2) “As a business”
A patent right extends to acts of working performed “as a business.” Any activity pertaining to industry is broadly included in working “as a business.” Non-profit acts of working at medical institutes, universities and public research facilities also fall under working “as a business.” Acts of working need not be repetitive or ongoing. Just a single act of working, such as in a public works project, will still constitute working “as a business.”
On the other hand, since personal or household working will not constitute working “as a business,” these forms of working fall outside the effect of patent rights. The minor nature of any economic harm caused to a patentee from personal or household acts of working means there will be little of the need for making those acts subject to the exercise of patent rights. On the other hand, the view was taken that the effect of patent rights ought not to extend to such acts out of respect for freedom of personal activity in the private domain. [1]
(3) “Work the patented invention”
A Patent right extends to acts of “working” the patented invention. Article 2(3) of the Patent Act provides definitions of “working” in respect of each of the different classes of invention. The purpose of these provisions is to clearly set out the scope of effect of a patent right.
〈1〉The “working” of the invention of a product ( Article 2(3) (i))
The w orking of the invention of a product means any act of producing, using, assigning, leasing, exporting or importing the product or offering it for assignment or lease, or displaying it for the purpose of assignment or lease: Article 2(3)(i). In the case of the invention of a computer program, etc., an act of providing a product through an electric telecommunication line or an act of offering to provide it is also included in the definition of “working.”
〈2〉The “working” of the invention of a process (Article 2(3)(ii))
The w orking of the invention of a process means any act of using that process.
〈3〉The “working” of an invention of a process for producing a product (Article 2(3)(iii))
In addition to using the process, the working of an invention of a process for producing a product means any act of using, assigning, leasing, exporting or importing, or offering for assignment or lease the product produced by the process, or any act of displaying the product for the purpose of assignment or lease.
Whilst an invention of a process for producing a product is one kind of invention of a process, it is to be distinguished from an invention of a mere process, in that its purpose is to acquire something produced by that process, which in turn may be assigned or leased. [2] There is a considerable difference in the effect of the patent rights involved: whilst in the case of an invention of a mere process, the effect of the patent right extends only to that process, in the case of an invention of a process for producing a product, the patent right also extend to the matters such as the assignment or leasing of the product that is produced as a result of the use of that process.
Accordingly, the scope of effect of a patent right will vary greatly depending on the kind of the invention, and for that reason, the type of the invention must be determined objectively based upon the statements in the scope of claims. In the Supreme Court case, [3] , where the patentee of a patented invention that was described as a “method of measuring chemicals” in the scope of claims, sought an injunction against the sale of medicines which had been tested with the patented method by a third party, the Court ruled that since it was clear from the statements in the patentee's scope of claims that its invention was the invention of a process, the patentee plaintiff could not demand an injunction against the sale of the medicines, unlike an invention of a process for producing a product.
2 ． Limitations on A Patent Right
(1) Introduction
Since the Patent Act endeavors to strike a balance between both the protection of patented inventions and its utilization for the purpose of “contributing to the development of industry” (Article 1), limitations can also be placed on the effect of a patent right from the standpoints of industrial policy and the public interest. Specific limitations are found in Article 69 of the Patent Act , which provides that patent rights are limited in case of : 〈1〉 working for experimental or research purposes (under of Article 69(1)); 〈2〉 vessels or aircraft merely passing through Japan, or machines, apparatus, equipment or other products used therefor (Paragraph (2)(i); 〈3〉products existing in Japan prior to the filing of the patent application (Paragraph (2)(ii); and 〈4〉acts of preparation of a medicine based upon a prescription from a physician or a dentist (Paragraph (3)).
(2) “Working for experimental or research purposes” (Article 69(1))
The Patent Act provides that a patent right is limited in case of working for experimental or research purposes. One reason given for this particular limitation is that since working for experimental or research purposes doesn't bear the directly competitive relationship with the working of the patentee, it causes no direct harm to the patentee's economic interests. Another reason given is that it would hinder technological progress if the effect of a patent right extend to acts of working performed as part of experimentation or research, which would undermine the development of industry.
Whilst the Patent Act does not place any particular limits on the scope of the “experimental or research” purposes covered by Article 69, we can't support the interpretation that this Article can apply to all acts of working under the name of an experimental or research working.This is because some of them, like working for studying the marketability of the invention, lack necessity of the limitation of right considering the purpose of the Patent Act , whilst they will compete with a patentee's own working and are therefore highly likely to harm the patentee's interests. The question as to which experimentation or research the application of Article 69 should cover is to be determined on an individual basis, by weighing up the level of disadvantage from such experimentation or research to the patentee, against the benefits to third parties and society in general to be gained by ensuring the freedom of experimentation and research. The application of Article 69 will be allowed in regard to experimentation or research for the purpose of improving or developing a patented invention, since that will be an act that contributes to the purpose of the Patent Act , namely the development of industry. The application of Article 69 will also be allowed for experimentation or research for the purpose of ascertaining the patentability of a patented invention (such as its novelty and non-obviousness), since an invention that is not patentable ought to be promptly invalidated in a trial for invalidation, and because this kind of experimentation or research is to be indispensable for conducting a trial for invalidation. In addition, in the Supreme Court case, [4] , where a generic drug manufacturer conducted necessary experimentation and research that involved working the patented invention of an originator medicine in order to file a manufacturing approval application under the Pharmaceuticals Affair Act in advance for the purpose of selling a medicine of the same type as the originator medicine immediately after the expiration of the right, the Court ruled the manufacturer's acts were held to constitute “experimentation or research” under Article 69, on the grounds that it was necessary and indispensable to ensure working by the manufacturer promptly after the expiration of the term of the patent right.
3 ． Term
Patent rights arise upon registration of the rights (Article 66(1)), and are extinguished upon the expiration of the term of twenty years from the filing date of the application: Article 67(1).
Like in case of a medical invention, where Cabinet Orders stiputates the approval procedure for making and selling materials in order to ensure people's safety, and it takes a considerable time to do the procedure, thereby yielding a period during which the patented invention is unable to be worked, the term of the patent right may be extended, upon the filing of a request for the registration of extension, by a period not exceeding five years: Article 67(2).
Ⅱ Exhaustion
1 ． Introduction
The Patent Act provides for acts such as the assignment or use of the product as acts of working of an invention of a product: see Article 2(3)(i). It follows that where an infringing product is placed in distribution, the patentee may exercise its patent rights against not just the person who manufactured the infringing product, but also against any person who receives and re-sells the infringing product, as well as any person who uses the infringing product. This is because the patentee has never been compensated for the infringing product, so it is necessary to give the patentee an opportunity to exercise the patent right against the infringing product, irrespective of the stage of market distribution of the product, so that the patentee can receive compensation for it.
However, from a literal interpretation of the Patent Act , since the “products” to which the effect of a patent right extend to are not limited to infringing products, the effect of a patent right appear to extend not only to infringing products, but also to acts of assigning or using a patented product that has been assigned by the patentee, or by a licencee who gets the patentee's authorization (hereinafter in this article referred to as the “patentee, etc.”). However, if the patentee's consent were required for every subsequent assignment or use of a product that had been lawfully assigned by the patentee, etc., the result would be to obstruct the efficient distribution and utilization of the patented product and, moreover, to impede the development of industry. Since the patentee is guaranteed one opportunity (at the point of the patentee's assignment of the patented product) to receive compensation for the invention under the protection of the patentee's patent rights, there is no need to grant the patentee repeated opportunities to receive compensation in respect of that product. The courts and academic commentators have accordingly taken the view that since patent rights achieve their purpose when a patentee, etc. lawfully assigns its patented product in Japan, the patent rights in respect of that product are exhausted, and accordingly, any person who acquires that product may freely re-assign, use or take any similar action in respect of that product, free from any exercise of rights by the patentee. [5] This view is called the “exhaustion doctrine,” which is a legal concept common to intellectual property law in general, with the Copyright Act , Semiconductor Integrated Circuit Design Act , and Seeds and Seedlings Act each containing an express provision on exhaustion (see Article 26-2(2), Article 12(3) and Article 21(4) respectively). Whilst the Patent Act contains no similar express provision for the exhaustion doctrine, the doctrine is also acknowledged in the area of patent law considering the purpose of the Patent Act
2 ． Applicable scope of exhaustion
The above discussed exhaustion doctrine assumes that a patented product is reassigned or used with the same qualities as at the time of assignment. However, since a patented product will require some maintenance or repairs in the course of using it, an assignee of a patented product ought to be freely allowed to repair the patented product or replace its components to a certain extent. Nevertheless, if a product were to be repaired or its components were to be replaced without limitation, thereby allowing the product to be used ad infinitum , this would depress the demand for new purchases of the patented product, thereby making it difficult for the patentee to obtain the appropriate compensation for its invention. For this reason, the repair or the replacement of components of patented products cannot be permitted indefinitely, and a need arises to limit the scope of the exhaustion doctrine.
On this point, the recent Supreme Court [6] ruled that since the rights that are restricted by the exhaustion doctrine are limited to the rights to the patented product itself, which the patentee, etc. assigned within Japan, when as a result of the repair or replacement to the patented product assigned by a patentee, etc. within Japan, a new patented product that is not the same as the original patented product is deemed to be reconstructed, the patentee can exercise the patent right against the patented product. The courts have furthermore held that the decision as to whether or not reconstructing of a new patented product has occurred is to be made after comprehensive consideration, such as the properties of the patented product in question, the features of the patented invention, and the mode of the repair or replacement of components, and transactional circumstances.
For example, where the components of a patented product that constitute an essential part of the patented invention are repaired or replaced, since this will mean that the principal features of the patented invention will appear afresh in the product, it will be easy to make the assessment that a new product that is not the same as the original product has been reconstructed. However, even where components that constitute an essential part of the patented invention are repaired or replaced, in cases such as where these components account for only a very small part of the value of the product as a whole, it cannot be said that ‘identity' with the original product will have been lost as a result of such repair or replacement, so that the assessment may be made that no new product has been reconstructed. Further, since consumable components can generally be expected to be replaced in the course of using the product, in many cases ‘identity' with the original product will not be lost, even if consumable components are repaired or replaced, and the acts will no doubt not be held to constitute the reconstruction of a new product.
3 ． Parallel imports and the operation of international exhaustion
If a patented product has been lawfully assigned within Japan , the patentee becomes unable to exercise the patentee's rights against re-assignment or use etc.in respect of that product under the exhaustion doctrine. Then, How should we think if a patented product has been lawfully assigned by a patentee, etc. outside Japan and has been imported and sold in Japan ? From a literal interpretation of the Patent Act , since “importing” is included in the definition of acts of working (Article 2(1)(i)), it would seem that patent rights will also extend to the importing and sale of products sold by a patentee, etc. outside Japan . However, since patented products are, as with products in general, widely and frequently distributed across national borders, there is a need to secure the stability of trade in cases where patented products are assigned outside Japan as well, just as in cases where patented products are assigned within Japan .
The view that formerly prevailed on this point held that as with the case where a patentee, etc. assigned a patented product within Japan, exhaustion of the patentee's Japanese patent rights would also be upheld where assignment took place outside Japan, with the result that the patentee, etc. would not be able to exercise Japanese patent rights against importing into and selling the product in Japan (the “international exhaustion doctrine”). [7] The supporter of this view insists that it is required to ensure the stability of trade for the patented product assigned outside Japan, as well as for the patented product assigned within Japan, while the patentee had been guaranteed one opportunity to profit in respect of the product in question when it assigned the product outside Japan, and there was no need to allow the patentee, etc. to profit again by allowing it to exercise its Japanese patent rights in respect of the product in question. By contrast, the Supreme Court has held [8] that although where a patentee, etc. assigns a product outside Japan without any reservations whatsoever, the patentee, etc. will be construed as having impliedly granted, to the assignee or subsequent purchaser of the product, a right to control the product free from any exercise of patent rights and the patentee, etc. will not be permitted to exercise its Japanese patent rights in respect of the product in question (the “implied license theory” ). However, where the patentee, etc. enters into an agreement with the assignee of the product in question to exclude Japanese parties and territory from the parties to whom and the territories where the product in question may be sold or used, and that agreement is clearly indicated on the patented product, the patentee may exercise its rights against acts of importing the product into and selling the product in Japan. The Supreme Court gave the following as the reasons for its decision. In view of the advances in international business transactions in recent times, where a patentee assigns a product without any reservations whatsoever, the expectation will arise that the product in question may be freely imported into Japan . Accordingly in such cases, from the standpoint of promoting stability in international trade in patented products, there is a need to deny the exercise of the patentee's rights in respect of the product in question. However, since each country has its own patents regime, the exercise of Japanese patent rights against the product sold by a patentee, etc. outside Japan will not mean that the patentee has been allowed to profit twice. Where a patentee, etc. enters into an agreement with the assignee of the product in question to exclude Japanese parties and territory from the parties to whom and the territories where the product in question may be sold or used and indicates that agreement clearly on the product, it is reasonable to allow the patentee to exercise its rights.
According to the above mentioned supreme Court, where a patentee, etc. assigns a product outside Japan without any reservations whatsoever, the assignee or subsequent purchaser of the product will be construed as having been impliedly granted a right to control the product in question, but such an implied license will be limited to the product in question assigned by the patentee, etc. Therefore, if the patented product assigned by the patentee, etc. outside Japan is repaired or its components are replaced and as a result, a new product that is not the same as the original product is deemed to be reconstructed, the patentee will be able to exercise its rights against importing into and selling the product in Japan . [9]
III Scope of Protection of Patent Rights
1 ． Determination of technical scope of a patented invention
The technical scope of a patented invention is determined based upon the statements in the scope of the claims (the claims): Article 70(1). Since a patented invention is an intangible and therefore its scope is likely to be obscure , the Patent Act mandates the submission of certain documents that specify the patented invention's technical content at the time of the application, so that the content of a patented invention may be clearly identified by a third party: Article 36(2). The ‘scope of claims' is a document that states all the matters necessary for the patentee to specify the invention (Article 36(5)), which functions to give external public notice of the features of the patented invention. For that reason, the technical scope of a patented invention will be determined primarily by the scope of the claims. It is not permitted to include any technology that is not stated in the ‘scope of claims' in the technical scope of a patented invention.
Of course, since the ‘ scope of claims' is the written expression of a technical idea, it is undeniable that there will be room for interpretation in specifying that scope. Where a question arises over the interpretation of a ‘scope of claims', this means that the meaning and content of the wording are to be specified by considering the description and drawings : Article 70(2). The description and drawings play a significant role as technical documents enabling third parties to understand the features of the invention stated in the ‘scope of claims', and are therefore important reference materials in determining the technical scope of a patented invention. It is not permitted, however, to take into consideration information in the description and drawings in order to form an interpretation that would include matters not stated in the ‘scope of claims' in the technical scope of the patented invention.
In addition, prior art at the time of the patent application and the prosecution history of the relevant patent will also be taken into consideration in interpreting the ‘ scope of claims'. Since a patented invention is an invention that is novel and non-obvious (Article 29), it is useful to make comparison with prior art in order to come to a better understanding of the technical characteristics of the patented invention, where the statements in the ‘ scope of claims ' have multiple meanings. Furthermore, an applicant makes various claims concerning the invention in the course of the application, including making amendments, or submitting written opinions, and these claims form clues for learning about how the applicant perceived the nature and content of the invention. The courts have held that where a patentee acquires a patent right by making claims in the course of the application that restrict the interpretation of the ‘scope of claims', the making of a claim in an infringement suit that contradicts that restrictive interpretation is not permissible in light of the doctrine of estoppel . [10]
Finally, in the past, whenever prior art was included in a ‘scope of claims', the part concerning prior art was excluded before a determination of the technical scope of the patent invention was made, because prior art was something for which no person was permitted to obtain a patent. [11] However, since statutory amendments made in 2004 (see Article 104-3) made it possible to claim patent invalidation in an infringement suit, [12] where a ‘scope of claims' includes prior art, it is now sufficient if an invalidation claim is made by the defendant on the grounds that the patent in question contains grounds for invalidation, and there is no longer any need to adopt an interpretation of excluding the part of prior art when the technical scope of the patent invention is determined.
2 ． Doctrine of Equivalents
(1) Introduction
Because the technical scope of a patented invention is to be determined based upon the statements in the ‘scope of claims' (Article 70(1)), patent right protection does not, in principle, extend to technology that is not included in the ‘scope of claims'. However, although the other party's worked technology might not strictly match the details in the statements in the ‘scope of claims', in some cases the relevant difference is extremely minor, and the other party's worked technology can be assessed as utilizing the same technical idea in a substantive sense. Given that it is difficult for a patentee to flawlessly predict future infringements when stating the ‘scope of claims' at the time of the application, notwithstanding that the other party is utilizing technology that is in substance the same as the patented invention, a ruling that the patentee will not be permitted to exercise its rights due to lack of a strict match with the statements in the ‘scope of claims' would produce a result contrary to the effective protection offered by patent rights. For that reason, as a matter of interpretation, the view emerged that where the other party is utilizing technology that is in substance the same as the patented invention, the other party's worked technology ought to be included in the scope of protection under the patent right, even where the other party's worked technology is not included in the ‘scope of claims'. This view is called the doctrine of equivalents in scholarly circles.
Since the doctrine of equivalents includes technology not stated in the ‘scope of claims' within the scope of protection under patent rights, the result of loose application of this doctrine would be to hamper the external public notice function of the ‘scope of claims', which in turn would undermine the trust of third parties who act in reliance on the statements in the scope of claims. This gives rise to the question as to in which cases the doctrine of equivalents is to be applied.
(2) Requirements for establishing equivalency
The courts [13] have indicated the following five requirements for the doctrine of equivalents to apply. In other words, even where there is a difference between a constituent part stated in the scope of claims and the relevant part of the third party's products or process, the products or process shall be regarded as an equivalent to the constitution stated in the ‘scope of claims' and falling within the technical scope of the patented invention, if the following requirements are met: (1) the differing part is not an essential part of the patented invention; (2) even if the differing part were replaced by a relevant part in the product or process, it would still be possible to achieve the purposes of the patented invention, and the same operation and effect would be attained (the requirement of “substitutability”); (3) the replacement in (2) can be easily done, at the time of manufacturing of the products or process, by a person having ordinary skilled in the art to which the invention pertains (the requirement of “ease of substitutability”); (4) the relevant products or process is neither the same as prior art at the time of the patent application for the patented invention nor something that a person skilled in the art could easily have conceived of at the time of the application; and (5) there are no special circumstances, such as that the relevant products or process was something deliberately excluded from the ‘scope of claims' during the application procedures for the patented invention.
The requirements in (1) and (2) are intended to confirm whether the relevant products or process utilizes the same technical idea as the patented invention in a substantive sense. Since a patented invention describes a concrete means for achieving a certain purpose (namely, an operation and effect of natural science), in order to say that the same technical idea as the patented invention was utilized in a substantive sense, the relevant products or process must be possessed of substantively the same concrete means as the patented invention and must produce an operation and effect which substantively amounts to that of the patented invention. The requirement in (1) asks whether or not the relevant products or process utilizes substantively the same ‘means for solving' as the patented invention, [14] whereas the requirement in (2) asks whether the relevant products or process produces an operation and effect substantively equivalent to that of the patented invention.
The purpose of the requirement in (3) is to secure predictability for third parties who act in reliance on the statements in the ‘scope of claims', by allowing the application of the doctrine of equivalents only where a person skilled in the art would be able to recognize that the relevant products or process are substantively the same as the patented invention. The reason that the standard time for making a determination on the requirement in (3) is the time of the infringement (that is, the time of the manufacture of the products or the time of the use of the process) is to allow the doctrine of equivalents to apply even in cases of replacement with a new part that appears after the application but before the time of the infringement. Since it is, after all, impossible for a patentee, when stating the ‘scope of claims' at the time of an application, to assume the replacement with a part appearing after the application, there can be said to be a strong need to apply the doctrine of equivalents in such a case. In contrast, in case of the replacement with the part that already exists at the time of the application, it is theoretically possible to assume such a replacement when stating the ‘scope of claims' at the time of the application, but since it is actually hard for the patentee to write the best ‘scope of claims' without any tiny omissions by assuming all possible infringements at the time of an application,. the doctrine of equivalents should also be allowed to apply to the replacement with a part that already exists at the time of the application. [15]
The requirement in (4) is based on the view that where the relevant products or process are, at the time of the application for the patent in question, either prior art or technology that is easily conceived of from prior art, it would not be appropriate to allow the assertion of the doctrine of equivalents against them, since the patentee would not normally have been able to obtain a patent right in a form that included it (see Article 29).
The requirement in (5) is based on the thought that, where the applicant by himself either acknowledged that the relevant products or process does not fall within the ‘scope of claims' or took such action that outwardly may be construed in that manner, for example the applicant made an amendment that excludes the relevant products or process from the ‘scope of claims' in the course of the application , the third party will have the expectation that the applicant has no intention of exercising its rights against them, and therefore in order to protect such third party expectations, it should not be permitted to exercise the patent right against them. The thought expressed in this requirement is a kind of the doctrine of estoppel . However applicants will have a variety of purposes for making amendments restricting the scope of claims in the course of an application: while some may do so with the intention of circumventing a reason for refusal, others may do so simply with the intention of clarifying the features of the invention. Opinion on this point has been divided in subsequent lower court decisions, with some courts holding that regardless of the applicant's reason for the curtailment, once a new outward form is created that excludes the relevant products or process from the ‘scope of claims', the fulfillment of the fifth requirement should be denied, regardless of the reason for the curtailment, [16] while in other judgments the view has been that whilst the fifth requirement will be lacking where the purpose of the curtailment was to avoid a reason for refusal since in this case the relevant products or process can be described as having been consciously excluded, the satisfaction of the fifth requirement may not be denied if the restriction is made for any purpose other than to avoid a reason for refusal (for example to clarify the constituents of the invention), since it cannot be said that the relevant products or process was consciously excluded. [17]
IV. Indirect infringement
1. Introduction
Since a patent right is a monopoly right to work a patented invention (Article 68), as a general rule the effect of a patent right will extend to where a third party works a patented invention as a business without the patentee's consent (see each of the items of Article 2(3)). However, like supplying implements or raw materials indispensable to working an invention, there are some acts that largely contribute to acts of working a patented invention, although they themselves do not constitute direct acts of working. Since the performance of such indirect acts without a patentee's consent will increase the probability that direct acts of working will subsequently ensue, these acts carry a risk of major disadvantage to the patentee. The Patent Act therefore also extends the effect of patent rights to certain prescribed types of acts where there is a strong probability that they will lead to direct acts of working of a patented invention. These acts are specifically described in Article 101 of the Patent Act , under which the following acts are “deemed to constitute infringement” of patent rights: 〈1〉 for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business” (under Item (i)), and “for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the use of the said process as a business” (Item (iv));〈2〉 for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used for the producing of the said product and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and that the said product is used for the working of the invention, and for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be utilized for the use of the said process and indispensable for the resolution of the problem by the said invention, knowing that the said invention is a patented invention and that the said product is used for the working of the invention as a business; and 〈3〉 for an invention of a product, acts of possessing the said product for the purpose of assigning, etc. or exporting the product as a business, and for an invention of a process of producing a product, acts of possessing the product produced by the said process for the purpose of assigning, etc. or exporting the product as a business.
These types of acts are called “indirect infringements” in scholarly circles , in contrast to directs acts of infringement that result from the working of an invention. In addition to the remedies available in the form of injunctions and damages (Article 100; Civil Code Article 709), indirect infringements are also subject to criminal sanctions (Article 196-2). It should be noted that as acts of inciting, or of being an accessory to, acts of infringement constitute joint tortious acts at civil law ( Civil Code Article 719(2)) they will be the subject of damages, even if they do not fall under acts of indirect infringement.
2 ． Types of acts of indirect infringement
(1) Acts of providing products with no other use (Items (i) and (iv))
Items (i) and (iv) of Article 101 deem acts of providing products with no use other than “the producing of the said product” and “ the use of the said process” respectively as infringements. An act of providing a third party with a product with no use other than the working of an invention is an act with an immediate and direct connection to the working of an invention, and since deterrence against acts of providing such products provides effective deterrence against acts of direct working, the effect of patent rights was extended to acts of providing such products.
Having no other use does not have the strict meaning of being utterly incapable of use for any other purpose. It means that no other use may be generally envisaged from an economic, commercial or utility standpoint. [18] It follows that the more unreasonable an envisaged use for a particular product, the less that the product may be described as having another use.
(2) Products indispensable for the resolution of the problem by the invention
Items (ii) and (v) of Article 101 deem acts of providing any product “ indispensable for the resolution of the problem by the said invention” to be infringements. A product “indispensable for the resolution of the problem by the invention” means “such parts, implements, raw materials and the like that the problem that the invention seeks to resolve can only begin to be resolved with the use thereof.” Such a product need not be a constituent element of the invention. Raw materials and implements used for the producing of the said product and the use of the said process, etc., are included, even though it is not stated in the scope of claims, whilst a constituent element of the invention stated in the scope of claims, which has always been regarded as necessary for uses unrelated to the problem that the invention seeks to resolve, is not included. [19] The reason why the effect of apatent right is extended to the provision of any product “indispensable for the resolution of the problem by the invention” is because such a product fulfils an important role in the producing of the said product, or the use of the said process, and therefore, there will be an increased probability that the invention in question will be worked.
Unlike the products in Items (i) and (iv), the ones covered by Items (ii) and (v) have other uses. It is therefore not desirable for the extension of the effect of a patent right to these products to result in any restraints on the use of such products in a manner unrelated to the patented invention. The Patent Act therefore excludes from the operation of those items products that are “widely distributed within Japan ” (in the bracketed text in those items). Products that are “widely distributed within Japan ” mean products such as screws, nails and transistors that are in broad and varied use – standard and low-end products that are commonly available within Japan . [20] Since the high market availability of these products means there is an intense need for them in order to ensure the stability of trade, it has been held that they ought not to be subject to exercises by a patentee of patent rights, even if these products are indispensable for the resolution of a problem by the patentee's invention.
Finally, in order for an indirect infringement under Item (ii) or (v) to be established, the relevant act must be carried out “knowing that the said invention is a patented invention and that the said product is used for the working of the invention.” Actual knowledge is necessary – lack of knowledge due to negligence is not included. Given that products falling under Item (ii) or (v) will have uses other than for the working of a patented invention, it is considered that predictability would be undermined if the exercise of the right was also allowed where a product was provided by a person skilled in the art who did not know that the product was used for the working of a patented invention.
(3) Acts of possessing for the purpose of exporting or assigning (Items (iii) and (vi))
Acts of possessing for the purpose of assigning or exporting the worked product of a patented invention are deemed to be infringements. The purpose of allowing the exercise of rights retroactively to acts of possessing at the preliminary stages of export or assignment is to prevent direct acts of infringement from occurring in the first place.
3 ． Need for direct acts of infringement
In order for indirect infringement to be established, a question arises as to whether direct infringement needs to be established. For example, although working a patented invention for a personal or household purpose, or for an experimentation or research under Article 69(1) doesn't constitute direct infringement, will indirect infringement be established in case a third party does the act prescribed in Article 101? The courts and academic commentators are divided in opinion on this point. Since from the wording of the provision a direct infringement is not set down as a condition of the establishment of indirect infringement, one view holds that indirect infringement will always be established even where a direct infringement is not present (the “independent theory”). An alternative view holds that since indirect infringement was created in order to deter direct acts of infringement before they occur, if there is no direct infringement then indirect infringement will not be established, either (the “dependent theory”). However, the currently accepted view holds that whether or not indirect infringement has been established ought to be determined by taking into separate consideration each reason that infringement is not established in respect of direct acts of working. For example, whilst the reason that personal or household working does not constitute an infringement is because the effect on the patentee is minor, if a rival company of the patentee were providing implements or the like for personal working, the consequent increase in the scale and frequency of the personal working would mean that the effect on the patentee would no longer be described as minor, and so for that reason it has been held that indirect infringement ought to be recognized as established in respect of acts of providing implements or the like as a business for personal working. [21] On the other hand, since the reason that working for experimentation or research purposes will not constitute an infringement is because experimentation and research will lead to the improvement and development of a patented invention and is therefore for the purpose of contributing to the development of industry, it has been held that acts of providing implements or the like for working for such experimentation or research purposes ought not to be construed as indirect infringement, since these acts ought to be encouraged as contributions to the development of industry.
V. Licenses
1 ． Introduction
A license is the right of a person other than a patentee to work the patentee's patented invention. There are voluntary licenses that a patentee grants voluntarily, statutory licenses that arise where certain requirements are satisfied (see Articles 35, 79, 80, 81, 82 and 176), and compulsory licenses that are granted by the nation for reasons such as the public interest irrespective of the intention of the patentee (see Articles 83, 92 and 93).
2 ． Voluntary licenses
The licenses voluntarily granted by a patentee comprise exclusive licenses and non-exclusive licenses.
(1) Exclusive licenses
An exclusive license is the right to be able to work a patented invention exclusively, within the extent stipulated in the grant contract: Article 77(2). Similarly to patent rights, an exclusive license is a license with exclusivity, and an exclusive licensee may demand an injunction or damages against persons who commit acts of working without the exclusive licensee's consent, to the extent permitted by the contract establishing the license: Articles 100 and 102. However if an exclusive licensee wishes to grant a sublicense to a third party, the consent of the patentee is required: Article 77(4).
After the patentee grants an exclusive license, the patentee may no longer work the invention itself, let alone grant a license to another , subject to the terms of that license. However even after granting an exclusive license, a patentee is also entitled to demand an injunction against anyone who commits an infringement, [22] and where the patentee sustains losses as a result of an act of infringement, that patentee may also demand damages.
Since an exclusive license is a powerful right the impact of which extends to third parties, registration is a requirement for it to take effect: Article 98(1)(ii).
(2) Non-exclusive licenses
A non-exclusive license is a right to work a patented invention. The legal nature of a non-exclusive license is no more than a contractual right to require the patentee not to exercise the patent right against his act of working,and therefore it does not have such an exclusive nature as an exclusive license. [23] Even after granting a non-exclusive license to work, a patentee is still able to grant overlapping non-exclusive licenses to other persons, and may also work the invention itself. Since an act of infringement will therefore not prevent a non-exclusive licensee from working the relevant invention, a non-exclusive licensee may not demand an injunction or damages against the infringer. [24]
Registration is a requirement for countering third parties regarding a voluntarily non-exclusive license: Article 99(1). Given that – unlike an exclusive license – a non-exclusive license will be validly established even if unregistered, a patentee will not automatically also have an obligation to agree to registration where it grants a non-exclusive license. [25] Statutory non-exclusive licenses may be asserted against third parties without registration.
In practice, patentees sometimes grant a license to a licensee subject to the special provision that no grant of license is to be given to a person other than that licensee. Such a license is called a monopolistic non-exclusive license. A monopolistic non-exclusive licenses may be complete sole non-exclusive licenses (where the patentee itself also promises not to work the invention), or incomplete sole non-exclusive licenses (where the patentee reserves its own working of the invention).
Where an act of infringement occurs, the problem of whether a monopolistic non-exclusive licensee may demand an injunction or damages against the infringer. Since as with a monopolistic non-exclusive license, a monopolistic position is guaranteed by no more than the special provision with the patentee, and it is not the case that exclusivity is recognized by the Patent Act – as with an exclusive license – a monopolistic licensee may not be recognized as having an inherent right to demand an injunction. [26] Opinion is divided, however, on the question of whether a monopolistic non-exclusive licensee may exercise a patentee's right to demand an injunction by way of subrogation (under Article 423 of the Civil Code ). One view holds that since a monopolistic non-exclusive license is essentially a non-exclusive license, and the licensee's own acts of working will not be obstructed by an act of infringement, there is no necessity to recognize such exercise by way of subrogation. [27] On the other hand, another view holds that where a monopolistic non-exclusive license is granted, since the patentee will have an obligation to take care to ensure that the licensee has a monopoly on the working of the invention, the licensee ought to be allowed to exercise the patentee's rights by way of subrogation where the patentee does nothing about the acts of an infringer. [28] On the question of damages, the predominant view affirms the right to damages on the basis that a third party's infringement of this interest through unauthorized working will constitute a tort, since the market benefit that a monopolistic non-exclusive licensee obtains through monopolistic working of the invention is an interest deserving of legal protection. [29]
3 ． Licenses based on prior use (Article 79)
(1) Introduction
A “license based on prior use” is a statutory non-exclusive license to work an invention obtained where a person who independently completed an invention identical to a patented invention, or a person who learned the features of the invention from that person, has been working the invention or preparing for the working of the invention prior to the time of the application for the patented invention: Article 79. Since Japan 's Patent Act employs the first-to-file rule, even if an invention identical to a patented invention is completed first, unless the application for that invention is filed first, no patent rights may be obtained for it. However, it is a harsh outcome even for the inventor that he or she is unable to work the invention created by him or herself, even though another person were to obtain a patent for the same invention. Considering this situation, an inventor would have little alternative but to apply for a patent right just to ensure that he or she could work the invention, even if the inventor actually had no intention of obtaining a patent right and engaging in the monopolistic working of the invention – and this could lead to a situation in practice where all inventors would feel compelled to file an application. The Patent Act therefore recognizes that a person who independently completed an invention identical to a patented invention, or a person who learned the features of the invention from that person, and who is working the invention or preparing for the working of the invention to the time of the application for the patented invention, has a statutory non-exclusive license to work the invention. This statutory non-exclusive license is called a “license based on prior use.”
Licenses based on prior use are gratuitous, and may be asserted against third parties without registration: Article 99(2).
(2) Requirements
In order for a license based on prior use to be upheld, it is not enough to simply say that an invention identical to the patented invention has been completed – it is necessary to be working the invention or preparing for that working at the time of the application for the patented invention. Since a license based on prior use will limit the patentee's monopolistic and exclusive working of the invention, in order to recognize a license based on prior use, it ought to be construed that the person claiming a license based on prior use – a claim that will result in the sacrifice of the relevant patentee's own interests – must have an interest that warrants protection.That is to say, the situation is needed where a person claiming a license based on prior use has already made a large investment for the working of the invention, and if the license based on prior use were not recognized, that entire investment would be wasted, which would be an exceedingly harsh outcome. In this regard, the Patent Act assumes that an inventor's interest is thought to deserve protection under a license based on prior use, at least at the stage where he or she has engaged in preparations for the working.
W ith respect to the meaning of “preparing for the working” under Article 79, the courts have held [30] that it is not enough to engage in mere experimentation or research for the purpose of working an invention , and that there must have been an intention of immediately working the invention and an objective conditions that enables the invention to be worked.
(3) Scope of establishment of license based on prior use
A license based on prior use will be recognized to the extent of the invention that the licensee was working, or preparing to work, at the time of the application for the patented invention. It follows that if the licensee was working or preparing for the working of the entire patented invention at the time of the application, a license based on prior use will cover the patented invention as a whole. But if the licensee was working or preparing for the working of only part of the technology belonging to the patented invention at the time of the application, the license based on prior use will cover only that technology. Of course, this does not mean that the scope of establishment of a license based on prior use will be limited to concrete forms of working that the licensee was actually engaged in or preparing for. Since a license based on prior use will be recognized for an invention embodied in the concrete forms of working that the licensee was working or preparing for, the licensee will be able to make amendments to the concrete forms of working within the limit of identity of the invention after an application. [31]
VI. Remedies
1 ． Injunctions
(1) Right to demand an injunction (Paragraph (1))
Where a patent right is infringed, the patentee may exercise a right to demand an injunction against the person who infringes or is likely to infringe its rights: Article 100(1). A “person who infringes or is likely to infringe the patent rights” in that paragraph means a person who works (see Article 2(3)) a patented invention without the patentee's permission, or a person who commits an act of indirect infringement. [32]
Since patent rights comprise an exclusive monopoly right to work a patented invention, where another person commits any act of infringement, a patentee is permitted to demand an injunction to stop the act of infringement in order to recover its monopolistic working of the invention. If an infringement is currently ongoing, the patentee will demand that the infringement be stopped; if an infringement has not yet arisen at the present time but there is a risk that an infringement will be committed in the future, the patentee will demand the prevention of the infringement.
In Japan , the right to demand an injunction based on patent rights is constituted legally as analogous to the right to claim real rights based on ownership. It follows that if there is objectively an infringement or the likelihood of an infringement, the right to demand an injunction will accrue automatically, unless it constitutes an abuse of right – it is not something set in motion according to the court's discretion.
(2) Right to demand measures including disposal (Paragraph (2))
In making a demand for an injunction under Paragraph (1) of Article 100, the patentee may demand measures necessary for the prevention of an act of infringement, including the disposal of products constituting the act of infringement and the removal of facilities used for the act of infringement: Article 100(2). (Here and below this is referred to as the “right to demand measures including disposal”.) Even if a demand for an injunction under Paragraph (1) is upheld, since there is a high risk of giving rise to further acts of infringement in a situation where infringing products or infringing facilities are left in the hands of the infringer, in order to achieve the purpose of the right to demand an injunction (namely, to deter future acts of infringement), patentees are permitted to demand action including the disposal of products and the removal of facilities. As indicated by the wording “In making a demand … under (Paragraph (1)), … may demand…”, the right to demand measures including disposal under Paragraph (2) is a right that is ancillary to the right to demand an injunction under Paragraph (1), and may not be exercised independently of that right to demand an injunction. [33]
Since, unlike the right to demand an injunction under Paragraph (1), the right to demand measures including disposal under Paragraph (2) is a right to demand certain measures that are irreversible –namely the disposal of products and the removal of facilities – which will have a significant impact on the infringer, where a demand for measures including disposal is to be allowed, care is needed to ensure that the disadvantage imposed on the infringer is not excessive in proportion to the circumstances and degree of the acts of infringement. On this point, the courts have stipulated that “measures necessary for the prevention of such infringement” in Paragraph (2) means the measures that are required to make the exercise of the right to demand an injunction effective, and that are within the limit necessary for realizing that right, based on such factors as the features of the patented invention, the circumstances of the acts of infringement currently being committed or likely to be committed in the future, and the specific nature of the right to demand an injunction that the patentee will exercise,” Besides this, the court has held that where the patented invention is the invention of a process, it is not permitted to make a demand for measures including disposal of medicines the quality of which has been certified using that process. [34]
2 ． Damages
(1) Introduction
Since a patent right is also a kind of property right, an act of infringement of a patent right constitutes a tort, and a patentee who sustains damages as a result of an act of infringement may demand damages from the infringer in tort: Article 709 of the Civil Code . Unlike an ordinary tortious act however, in the case of the infringement of a patent right, it is often difficult to prove the amount of the loss, as well as intent or negligence on the part of the infringer. For that reason, the Patent Act contains a special provision for calculating the amount of loss (Article 102), a provision on the presumption of negligence (Article 103), and a provision permitting the determination of a reasonable amount of loss (Article 105-3).
(2) Special provision pertaining to calculation of amount of damage (Article 102)
The core of damages in an infringement of patent rights is compensation for “lost profits” – namely, the profit that the patentee or exclusive licensee (here and below, collectively referred to “Patentees”) would have received if there had been no act of infringement. However, even if there has been a decline in sales of the patentee's products during the period of an infringement, various factors may be conceived of quite apart from the act of infringement as the cause of that decline, such as added value peculiar to the infringing product (such as the strength of its technology or its brand power), the infringer's advertising and publicity capabilities and selling power, the presence of third party substitutes, and changing consumer tastes. The result is that it is difficult for Patentees to specifically prove the amount of loss linked by legal causation to the act of infringement. The Patent Act therefore stipulates a special rule for calculating the amount of loss in terms of lost profits, in order to reduce the Patentees' burden of proof. Specifically, Paragraphs (1), (2) and (3) prescribe, respectively, a method for calculating the amount of loss based on the quantity of infringing products assigned; a method for calculating the amount of loss based on the amount of profits earned by the infringer from the acts of infringement; and a method for calculating the amount of loss based on an amount corresponding to a license fee. Paragraphs (2) and (3) have been in place since the current Patent Act was enacted in 1959, and Paragraph (1) is a new provision introduced in amendments made in 1998.
Patentees may choose any of the paragraphs in Article 102 viewed as fitting for asserting the amount of loss, and may also claim an amount of loss based on Article 709 of the Civil Code without reliance on Article 102 at all. Finally, because the provisions of Article 102 stipulate the calculation of the amount of loss for lost profits, any demand that is made for damages other than lost profits is to be made pursuant to Article 709 of the Civil Code .
[1] Method of calculating amount of damage based on the assigned quantity of infringing products (Paragraph (1))
Paragraph (1) states that the amount of loss is the quantity of products assigned by the infringer multiplied by the amount of the Patentee's profit per unit, subject to the capacity of the Patentee to work the invention. However, if there are circumstances due to which the Patentee would have been unable to sell a quantity of articles equivalent to the assigned quantity of infringing products in whole or in part, the amount calculated as the number of unsold articles due to those circumstances is to be deducted.
Paragraph (1) is a provision for calculating the amount of loss in terms of lost profits owing to a decline in sales of the Patentee's products. Since it is possible to conceive of a variety of causes other than an act of infringement that might be responsible for a decline in the sales of a Patentee's products during a period of infringement, whilst it normally cannot be said that the Patentee would have been automatically able to sell a quantity equivalent to the entire assigned quantity of infringing products, as long as the Patentee has the capacity to manufacture and sell a quantity equivalent to the assigned quantity of infringing products, it is stipulated that the Patentee will be able to assert and prove the amount of loss on the premise that it would in fact have been able to sell a quantity equivalent to the entire assigned quantity of infringing products. However, where an infringer asserts and proves that the decline in sales of the Patentee's products was caused by a variety of factors other than the act of infringement, and that even without the act of infringement, the Patentee would not have been able to sell a quantity equivalent to the infringing product, the amount of loss will be reduced to that extent.
Since Paragraph (1) is a provision for determining the amount of loss in terms of lost profits owing to a decline in sales, in order for Paragraph (1) to be applicable, at minimum Patentees must currently manufacture and sell a product that competes with the infringing product – Paragraph (1) cannot apply if the patentee does not work the invention. There is also the question of whether the product that the Patentee sells needs to be a worked product of the patented invention. Some courts and academic commentators hold the view that Paragraph (1) can only apply where the Patentee currently sells a worked product of the patented invention. [35] The accepted view, however, is that even if the Patentee does not currently sell worked products of the patented invention, reasoning from the fact that loss in the form of lost profits owing to a decline in sales may occur to the Patentee as long as it sells a product that competes with the infringing product, the Patentee is not required to sell worked products of the patented invention. [36]
[２] Method of calculating amount of damage based on infringer's profits (Paragraph (2))
Paragraph (2) prescribes a presumption to the effect that the amount of profits earned by the infringer from its act of infringement will be the amount of the Patentee's loss. As has already been stated, since it is difficult for a Patentee to specifically prove the degree of loss that it has sustained by an act of infringement, Paragraph (2) states that if a Patentee asserts and proves the amount of profits earned by the infringer from the act of infringement, that amount of profits is presumed to be the amount of the Patentee's loss. The aim of Paragraph (2) is to make proof easier for the Patentee. Since Paragraph (2) is a provision of presumption of the amount of loss, if the infringer asserts and proves that the actual amount of the Patentee's loss is less than the amount presumed by the operation of Paragraph (2), to that extent the presumption will be overturned and the amount of loss reduced. [37]
An issue arises as whether the Patentee needs to be working the patented invention for Paragraph (2) to apply. Similar to Paragraph (1), for the purposes of Paragraph (2) also, even if the Patentee is not working the patented invention, as long as it is working technology that competes with the infringer's worked technology, lost profits will arise. As a result, there is one view that states that Paragraph (2) can also apply where the Patentee is not working the patented invention. [38] The predominant view, however, holds that since Paragraph (2) presumes the infringer's profits to be the amount of the Patentee's loss, the Patentee's loss must in substance be of the same nature as the profits that the infringer earns from its act of infringement, [39] and for that reason, the application of Paragraph (2) can be upheld only where the Patentee is working the patented invention. [40]
“Profits earned by the infringer” in Paragraph (2) are construed not as the infringer's net profits from the proceeds of its sales of infringing product after the deduction of all expenses involved in the manufacture of the infringing product, but as the infringer's marginal profits from the proceeds of its sales of the infringing product after the deduction of the additional costs required for the infringer's manufacture and sale of the infringing product. [41]
[３] Method of calculating amount of damage corresponding to license fee (Paragraph (3))
Paragraph (3) allows a Patentee to claim compensation by regarding the amount that the Patentee would have been entitled to receive for working the patented invention as the amount of loss. Since the patentee has a monopoly on the working of its patented invention, if the invention is worked by someone other than the patentee, under the protection of the patent rights the patentee is guaranteed to receive an economic benefit in the form of license fees, and it is also allowed to demand reasonable compensation for an infringer's acts of working. Unlike Paragraphs (1) and (2), the application of Paragraph (3) will also be upheld where the Patentee is not selling a product that competes with the infringing product. [42]
Because the old Act provided that “ the amount the patentee or exclusive licensee would have ordinarily been entitled to receive for the working of the patented invention as the amount of damage”, many earlier court decisions calculated a standard license fee such as the industry market fee as the amount of loss under Paragraph (3). Using this sort of calculation method, however, results in an amount of compensation under Paragraph (3) that is no different from a license fee where a grant of license is sought lawfully, and taking into consideration the possibility of an infringement going undiscovered, it would give rise to an illogical outcome where it was more profitable to commit an infringement, which would only encourage that misconduct. The word “ordinarily” was therefore deleted in amendments made in 1998. Under the current law, the expectation is that the appropriate amount of loss is to be calculated by taking into consideration factors peculiar to the individual case, such as the value and features of the particular patented invention. [43]
[４]Taking consideration of minor negligence (Paragraph (4))
A Patentee may demand compensation for the amount of loss that exceeds the amount prescribed in Paragraph (3): Article 102(4). In addition to a demand under Paragraph (1) or (2), a Patentee may demand compensation exceeding the amount of damage in Paragraph (3) pursuant to Article 709 of the Civil Code .
Where a Patentee makes a demand for damages other than under Paragraph (3), if the infringer is without intent or gross negligence, the court may take this into consideration in determining the amount of loss. This is because since it is often a delicate decision as to whether or not there has been infringement, there are thought to be cases where it would be harsh to impose liability for a large sum of compensation on an infringer in cases where the negligence is minor.
(3) Presumption of negligence (Article 103)
Since damages based on infringement of patent rights are also one kind of claim for damages in tort, there must be intent or negligence on the part of the infringer in order for a Patentee to seek damages. Be that as it may, in order to reduce a patentee's burden in proving an infringer's negligence, the Patent Act contains a provision of presumption of an infringer's negligence: Article 103. The presumption under this Article has been held to extend to not just a lack of knowledge of the existence of patent rights, but also to a lack of knowledge that the infringer's acts fell within the patent right's scope of protection. One ground given for making this presumption of negligence is that patent rights are rights established through the creation and registration of the patent rights following a substantive examination, and since the details of those rights are made known to the public through the Patent Gazette, anyone can easily confirm the existence of patent rights. The second reason given is that because the effect of patent rights extend only to working as a business (Article 68), and because infringers are limited to persons skilled in the art, the imposition of an obligation to search and check in advance to ascertain whether or not one's own worked technology is in conflict with another's patent rights is not an excessive burden.
Article 103 is a provision that presumes negligence, and whilst an infringer will be able to escape liability for damages by proving no negligence on its part, this is quite difficult to prove in reality. [44]
(4) Calculation of reasonable amount of damage (Article 105-3)
Where a court has determined that loss arose, where it is extremely difficult for the court to prove the amount of loss due to the nature of the loss, the court may calculate a reasonable amount of damage by comprehensive consideration of the entire import of oral argument and the results of the examination of evidence: Article 105-3.
[1] See Osaka District Court, 24 October 2000, Hanrei Taimuzu No. 1081: 241 ( Breadmaking Device Case).
[2] See Tokyo District Court, 26 November 2003, Case No. 3764 (wa) of 2001 ( APM Case), and Osaka District Court, 27 April 2004, Case No. 860 ( wa ) of 2003 ( Method of Mounting Access Port Cover Case ).
[3] Supreme Court, 16 July 1999, Minshu Vol. 53 No. 6: 957 ( Method of Measuring Bioactive Substance Case - Final Appeal Decision ).
[4] See Supreme Court, 16 April 1999, Minshu Vol. 53 No. 4: 627 ( Guanidino Benzoic Acid Derivative Case - Final Appeal Decision ).
[5] See Supreme Court, 1 July 1997, Minshu Vol. 51 No. 6: 2299 ( BBS Case - Final Appeal Decision), and Supreme Court, 8 November 2007, Hanrei Jiho No. 1990: 3 ( Canon Ink Tank Case - Final Appeal Decision). For a case involving copyright, see Supreme Court, 25 April 2002, Minshu Vol. 56 No. 4: 808 ( Secondhand Game Software Case ( Osaka ) - Final Appeal Decision).
[6] See Supreme Court, 8 November 2007, Minshu Vol. 61 No. 8: 2989 ( Canon Ink Tank Case - Final Appeal Decision). For lower court decisions on this issue prior to this Supreme Court decision, see Tokyo District Court, 6 June 2000, Hanrei Jiho No. 1712: 175 ( Konica Disposable Camera Case), Tokyo District Court, 31 August 2000, Case No. 16782 ( wa ) of 1996 ( Utsurundesu Case), Tokyo District Court, 18 January 2001, Hanrei Jiho No. 1779: 99 ( Acyclovir Case - Decision at First Instance), Tokyo District Court, 29 November 2001, Hanrei Jiho No. 1779: 89 ( Acyclovir Case - Intermediate Appeal Decision), Tokyo District Court, 8 December 2004, Hanrei Jiho No. 1889: 110 ( Canon Ink Tank Case - Decision at First Instance), and Intellectual Property High Court, 31 January 2006, Hanrei Jiho No. 1922: 30 ( Canon Ink Tank Case - Intermediate Appeal Decision).
[7] For a representative precedent, see Tokyo High Court, 23 March 1995, Chiteki Saishu Vol. 27 No. 1: 195 ( BBS Case - Intermediate Appeal Decision).
[8] Supreme Court, 1 July 1997, Minshu Vol. 51 No. 6: 2299 ( BBS Case - Final Appeal Decision).
[9] Supreme Court, 8 November 2007, Minshu Vol. 61 No. 8: 2989 ( Canon Ink Tank Case - Final Appeal Decision).
[10] Tokyo High Court, 1 February 2000, Hanrei Jiho No. 1712: 167 ( Blood Serum CRP Case). Similarly under the doctrine of estoppel, a patentee will not be permitted to engage in statements or actions in litigation concerning infringement that contradict the patentee's statements or actions in the trial for invalidation procedures: Tokyo District Court, 30 March 2001, Hanrei Jiho No. 1753: 128 ( Continuous Wall Development and Construction Method Case).
[11] Supreme Court, 7 December 1962, Minshu Vol. 16 No. 12 : 2321 ( Coal Tub Truck Derailment Prevention Device Case), Supreme Court, 4 August 1964, Minshu Vol. 18 No. 7 : 1319 ( Liquid Fuel Combustion Device Case) and Supreme Court, 28 June 1974, Saiko Saibansho Saibanshu Minji No. 112 : 155 ( Shutter Case).
[12] Prior to these statutory amendments in 2004, one court decision appeared where the patentee was denied the exercise of its rights on the grounds that the exercise of a patent right that incorporated a clear ground for invalidation would have been an abuse of right: Supreme Court, 11 April 2000, Minshu Vol. 54 No. 4 : 1368 ( Kilby Case - Final Appeal Decision).
[13] Supreme Court, 24 February 1998, Minshu Vol. 52 No. 1 : 113 ( Ball Spline Bearing Case - Final Appeal Decision). As examples of lower court decisions prior to this Supreme Court decision, see Osaka District Court, 24 October 1967, Hanrei Jiho No. 521 : 24 ( Polyester Fiber Case), Tokyo High Court, 3 February 1994, Chiteki Saishu Vol. 26 No. 1 : 34 ( Ball Spline Bearing Case - Intermediate Appeal Decision), and Osaka High Court, 29 March 1996, Chiteki Saishu Vol. 28 No. 1 : 77 ( t-PA Case - Intermediate Appeal Decision).
[14] See for example Osaka District Court, 17 September 1998, Chiteki Saishu Vol. 30 No. 3 : 570 ( Sustained Released Diclofenac Sodium Formulation Case I), Tokyo District Court, 28 January 1999, Hanrei Jiho No. 1664 : 109 ( Sustained Released Diclofenac Sodium Formulation Case II), Osaka District Court, 27 May 1999, Hanrei Jiho No. 1685 : 103 ( Method of Preparing Injection Solution Case - Decision at First Instance), Tokyo District Court, 23 March 2000, Hanrei Jiho No. 1738 : 100 ( Raw Laver Foreign Substance Decomposition and Removal Device Case I ), and Osaka High Court, 19 April 2001, Case No. 2198 (ne) of 1999 ( Method of Preparing Injection Solution Case - Intermediate Appeal Decision).
[15] The cases where lower courts allowed the doctrine of equivalents to apply principally involved substitution by products already in existence at the time of the application.
[16] Tokyo District Court, 28 January 1999, ( Sustained Released Diclofenac Sodium Case), Tokyo District Court, 29 June 1999, Hanrei Jiho No. 1686 : 111 ( Sweat Absorption Pad Case), and Tokyo District Court, 30 June 1999, Hanrei Jiho No. 1696 : 149 ( Alternating Current Source Device Case).
[17] Osaka District Court, 27 May 1999, ( Method of Preparing Injection Solution Case Decision at First Instance), and Osaka District Court, 23 May 2000, Case No. 1110 ( wa ) of 1995 ( Magic Hinge Case).
[18] Tokyo District Court, 25 February 1981, Mutai Saishu Vol. 13 No. 1 : 139 ( Interchangeable Lens Case), and Osaka District Court, 24 October 2000, Hanrei Taimuzu No. 1081 : 241 ( Breadmaking Device Case).
[19] Tokyo District Court, 23 April 2004, Hanrei Jiho No. 1892 : 89 ( Jig for Printed Circuit Board Case).
[20] Intellectual Property High Court, 30 September 2005, Hanrei Jiho No. 1904 : 47 ( Ichitaro Case - Grand Collegiate Decision).
[21] Osaka District Court, 24 October 2000 ( Breadmaking Device Case).
[22] Supreme Court, 17 June 2005, Minshu Vol. 59 No. 5 : 1074 ( Method of Searching for Stable Complex Structures Case - Final Appeal Decision).
[23] Supreme Court, 20 April 1973, Minshu Vol. 27 No. 3: 580 ( Construction Method for Tunnel Pipes Using Punching Method Case), and Osaka District Court, 26 April 1984, Mutai Saishu Vol. 16 No. 1: 271 ( Structural Material Attachment Bracket Device Case).
[24] Osaka District Court, 26 April 1984, ( Structural Material Attachment Bracket Device Case).
[25] Supreme Court, 20 April 1973, ( Construction Method for Tunnel Pipes Using Punching Method Case).
[26] Osaka District Court, 26 April 1984 ( Structural Material Attachment Bracket Device Case), and Osaka District Court, 20 December 1984, Mutai Saishu Vol. 16 No. 3 : 803 ( Hairbrush Case).
[27] Osaka District Court, 20 December 1984 ( Hairbrush Case).
[28] Whilst an obiter dictum , see Tokyo District Court, 31 August 1965, Hanrei Taimuzu No. 185 : 209 ( Cam Device Case).
[29] Osaka District Court, 20 December 1984 ( Hairbrush Case).
[30] Supreme Court, 3 October 1986, Minshu Vol. 40 No. 6 : 1068 ( Walking Beam Furnace Case - Final Appeal Decision)
[31] Supreme Court, 3 October 1986, ( Walking Beam Furnace Case - Final Appeal Decision).
[32] A person who incites or is an accessory to acts of infringement is not included in “infringer”: Tokyo District Court, 17 August 2004, Hanrei Jiho No. 1873 : 153 ( Method of Construction of Cutting Overlay Case). Such a person however will be liable for damages as a joint tortfeasor.
[33] Supreme Court, 16 July 1999 ( Method of Measuring Bioactive Substance Case - Final Appeal Decision).
[34] Supreme Court, 16 July 1999 ( Method of Measuring Bioactive Substance Case - Final Appeal Decision).
[35] Tokyo District Court, 19 March 2002, Hanrei Jiho No. 1803 : 78 ( Slot Machine Case).
[36] Tokyo High Court, 15 June 1999, Hanrei Jiho No. 1697 : 96 ( Heat Storage Material Sumithermal Case - Intermediate Appeal Decision).
[37] Tokyo District Court, 16 July 1999, Hanrei Jiho No. 1698 : 132 ( Rough Road Escape Device Case).
[38] Tokyo District Court, 17 September 1997, Hanrei Jiho No. 1697 : 104 ( Sumithermal Case - Decision at First Instance) .
[39] Osaka District Court, 27 March 1981, ( Electronic Surveillance Device Case).
[40] Tokyo High Court, 15 June 1999 ( Heat Storage Material Sumithermal Case - Intermediate Appeal Decision).
[41] Tokyo District Court, 27 April 2000 ( Wooden Signboard for Special Family Ceremonies Case), and Osaka District Court, 19 September 2000 ( Collapsible Movable Gate Case).
[42] Since like Paragraphs (1) and (2), Paragraph (3) is a provision for determining the amount of loss in terms of lost profits, an infringer may dispute damages based on Paragraph (3) by asserting and proving that no loss has occurred to the patentee, etc. : Supreme Court, 11 March 1997, Minshu Vol. 51 No. 3 : 1055 ( Kozosushi Case - Final Appeal Decision). However, since a patented invention itself has some sort of value, and a person who works it has some benefits from it, one cannot ordinarily imagine that absolutely no loss to the Patentee would be conceived of notwithstanding the third party has worked the patented invention without his authorization. Therefore it would almost never happen that a demand for damages based on Paragraph (3) would be dismissed.
[43] Osaka District Court, Case No. 12586 (wa) of 1999, 29 October 2002 ( Method of Manufacturing Muscular Tissue-Like Konnyaku Case).
[44] Osaka District Court, 30 October 1984, Hanrei Taimuzu No. 543 : 263 ( Handbag Handle Case).