Japan is throwing off its reputation as a hostile litigation environment. John Tessensohn and Shusaku Yamamoto provide a guide to the latest changes and take a look at what the future holds

"Enact strategy broadly correctly and openly" - Miyamoto Musashi 1584-1645 AD.

Musashi, one of Japan's most celebrated samurai warriors, penned this conclusion to his classic text, The Way of the Sword. It would be timely for foreign patentees to remember Musashi's words when implementing their Japanese patent litigation strategy in order to compete effectively in Japan and the overall global markets.

The JPO's efforts to sow the seeds of a pro-patentee tradition in Japanese industry were manifest in the seminal policy recommendation report dated April 7, 1997 'Toward the Era of Intellectual Creation - Challenges for Breakthrough'. The Report that served as a blueprint for action by the JPO called for a paradigm shift in Japan's intellectual property system to protect the fruits of research and development. As well as these official moves, there is an appreciable recent increase in patent litigation as competition in high-technology industries has become more intense, and so has the need for private parties to go to court to resolve their IP disputes.

John A. Tessensohn and Shusaku Yamamoto

This article discusses the encouraging Japanese judicial trend to award more generous patent infringement damage verdicts, which culminated in an October 1998 surprise of the largest ever patent infringement damages award in Japanese patent litigation history in SmithKline v. Fujimoto dated October 12, 1998, Tokyo District Court.

John A. Tessensohn and Shusaku Yamamoto

Parallel importation will not constitute patent infringement unless the patentee agreed or indicated on the goods that distribution into Japan was prohibited and Japan has accepted the doctrine of international exhaustion of patent rights, BBS Kraftfahrzeugtechnik AG v. Racimex Japan Corp., & Jap Auto Products Co., Case No. H-7 (o) No. 1988 dated July 1, 1997, Supreme Court of Japan.

John A. Tessensohn and Shusaku Yamamoto

The Supreme Court of Japan issued a landmark decision on parallel imports ruling that parallel importation does not constitute patnet infringement unless the patentee agreed or indicated on the goods that distributin into Japan was prohibited and dismissed the appeal for a foreign patentee's patent infringement suit requesting the prohibition of unauthorized parallel importation of patented products into Japan.

John A. Tessensohn and Shusaku Yamamoto

In the Fujitsu Case, the Tokyo High Court illustrated the clear and present danger of how a patentee may lose the benefit of proper claim coverage owning to errors that were not corrected at the prosecution stage before the JPO. It also highlights the restrictive nature of post-grant claim amendments. This comment will show the Fujitsu case's impact on the strategy for filing amendments and divisional applications in Japan.

John A. Tessensohn and Shusaku Yamamoto

Genentech v. Sumitomo is the first major Japanese appellate biotechnology/pharmaceutical decision expressly to apply and use the doctrine of equivalents to find patent infringement. Another revolutionary feature of this seminal Osaka High Court decision is that the DOE infringement was found even though Genentech had narrowed the claims during prosecution and Sumitomo's file wrapper estoppel arguments were denied. This is a landmark pro-patentee decision that signals Japan's increased protection for patentees. (N.B. This Osaka High Court decision has been superseded by the 1998 Supreme Court DOE decision)

John A. Tessensohn and Shusaku Yamamoto

The perils of enforcing a utility model registration without paying careful attention to its validity was demonstrated in this important Osaka District Court decision. Such utility model registrants or patentees should not enforce their IP rights indiscriminately, and the validity of the patent should always be checked and verified before enforcement and execution against third parties as the consequences of having one's patent/utility model right invalidated after successful enforcement are manifestly displayed in this decision.

John A. Tessensohn and Shusaku Yamamoto

Patent owners have a more flexible and expeditious approach to obtain and enforce their patent rights in Japan. The obvious strategy for a patent owner is to secure the allowance of the broadest possible claims that can cover the accused product/process as expeditiously as possible. After the patent is allowed, the patent owner needs to navigate through the patent enforcement regime and successfully enforce the patent right. This article will describe how corporations should fashion their patent procurement strategy to complement their patent enforcement strategy.

John A. Tessensohn and Shusaku Yamamoto

On March 23, 1995, the Tokyo High Court jettisoned a generation-old Japanese precedent on the prohibition of parallel imports of patented products in the case of Jap Auto Products v. BBS No. 3272 of 1994. Parallel importers can now purchase a patented product abroad from a patent owner and import it into Japan without the Japanese patent owner's consent, immune from any patent infringement suit.

John A. Tessensohn and Shusaku Yamamoto

Japan's patent law was amended to implement the TRIPs agreement and facilitate the January 20, 1994 Japan-US agreement for acceptance of English language patent applications (only Paris Convention or non-Convention cases) for filing at the JPO. The new law manifests a pro-patentee emphasis with the abolition of the pre-grant opposition system, allowing broader claim scope, easier restoration of patents that lapsed by non-payment of annuities, expedited examination & expansion of opportunities to file divisional applications.

John A. Tessensohn and Shusaku Yamamoto