This article examines Japanese legal position on the scope of research tool patents, focusing on their patentability and enforceability. It also shows that the Japanese patentability position on such reach-through claims is consistent with that of the United States and Europe. As to enforcement, the Supreme Court in Japan and some lower United States District Court decisions appear to take a dim view on the asserted expansive scope of such reach-through patent claims.

John A. Tessensohn and Shusaku Yamamoto

Japanese Courts have responded to the recent trend of Japanese companies using patent litigation to protect and advance their business interests by granting big damage awards (at least by Japanese standards) and this is ostensibly to serve as a deterrent against future infringers.

John A. Tessensohn and Shusaku Yamamoto

In order to enhance the protection of patents and trademarks in Japan, the Japanese Government has expanded the scope of indirect infringement for patents, amended PCT Japanese National Phase practice and expand the scope of protection of trademarks on computer online networks.

John A. Tessensohn and Shusaku Yamamoto

The Japanese market is dishonorably regarded as lenient towards infringement. It is sometimes said that one may as well infringe on whatever patents he likes in Japan, because court proceedings are slow and compensation insignificant To many, Takeshi Isayama, the then Japanese Patent Office (JPO) commissioner was articulating long-held complaints that foreign companies had about Japan's IP system when he made this candid observation in November 1998. Since 1998, especially in 2000, Japan has taken positive steps to shed its image of being lenient on infringement.

John A. Tessensohn and Shusaku Yamamoto

Must Be Software-Related The JPO will usually recognize that most business-related inventions may be considered a form of software-related invention. It will not, however, recognize pure business methods per se.

John A. Tessensohn and Shusaku Yamamoto

The article discusses the consensus position adopted by the Trilateral Patent Offices comprising of the JPO, USPTO and EPO in connection with computer implemented business methods in that (1) a technical aspect is necessary for a computer-implemented business method to be eligible for patenting, however, the technical/computer-related aspect, must be described in the specification and expressed in the claim according to the JPO and EPO, whereas for the USPTO, "in the technological arts" feature may be implicitly recited in the claim; and (2) that to merely automate a known human transaction process using well-known automation techniques is not patentable.

John A. Tessensohn and Shusaku Yamamoto

In a transformative leading decision, the Supreme Court of Japan held: "If it becomes clear that the patent evidently has grounds for invalidation as a result of the court's consideration, then a request for injunction, compensation for damages, or the like based on that patent right shall be considered as constituting a misuse of the right and therefore shall not be permitted in the absence of special circumstances." /Texas Instruments v. Fujitsu /dated April 11, 2000. An innocent defendant should exercise enterprise and promptly initiate proceedings at the Japanese Patent Office to invalidate the alleged patent problem at the bud. This is far better than to react to patent litigation and argue invalidity in the defense since by then it will very much more expensive and also cause unnecessary disruption amongst the defendant's clientèle.

John A. Tessensohn and Shusaku Yamamoto

The Supreme Court of Japan handed down a milestone decision by recognizing the doctrine of equivalents under the Japanese patent infringement law and stated out the appropriate test for applying the doctrine of equivalents.

John A. Tessensohn and Shusaku Yamamoto

On November 26 1998, after receiving and reviewing comments from the public and industry, the Industrial Property Council (the Council) of the Japanese Patent Office (the JPO) issued a report recommending sweeping changes to Japan's IP laws. The recurring theme in the proposed changes was to grant "wide, strong and early" protection of intellectual property rights.

It is expected that these patent and trademark recommendations of the Council are likely to be submitted to the Japanese Diet sometime in February 1999 and it is hoped that these provisions will be passed by the Diet and enacted into Japanese law in order to improve the pro-owner paradigm of Japanese IP laws which has been evolving into shape in the last couple of years.

John A. Tessensohn and Shusaku Yamamoto