The Intellectual Property High Court rendered a landmark patent infringement decision in Canon Co. Ltd., v. Recyle•Assist Co. Ltd.. Case No. Heisei 17(ne)10021 dated January 31, 2006 (hereinafter Recyle•Assist decision) by ruling that the importation and sale of recycled ink cartridges for ink-jet printers infringe a patented product claim covering the ink cartridge. In overturning a District Court decision, the I.P. High Court ruled that, because the recycled ink cartridges were reconditioned by modifying and changing the parts of used ink cartridges, which parts correspond to the essential parts of the patented ink cartridge invention, the act of importation and sale of these recycled ink cartridges amounts to an impermissible working of the patented invention. This was the 3rd case which the full Bench (five High Court judges) of the IP High Court issued the decision in view of the great importance of the subject matter.

John A. Tessensohn and Shusaku Yamamoto

In an important pro-patentee decision handed down in June, Japan's Supreme Court affirmed a patent holder's right to seek an injunction against an infringer, even if the patentee has granted an exclusive licence over the invention.

John A. Tessensohn and Shusaku Yamamoto

The April 1, 2005 establishment of the Intellectual Property High Court of Japan is another landmark development in Japan's shift to a pro-patent policy which will greatly strengthen IP rights in Japan.

John A. Tessensohn and Shusaku Yamamoto

As of April 1, 2005, Japan's Utility Model system will undergo user-friendly changes to improve its appeal to those seeking early and effective IP protection.

John A. Tessensohn and Shusaku Yamamoto

A recent settlement in a dispute over inventor compensation together with certain statutory amendments in Japan's patent law and the judicial trend to capping inventor's awards to a percentage of the company's profits are welcomed by Japanese industry. However, certain remaining ambiguities in the new statutory language may lead to future litigation.

John A. Tessensohn and Shusaku Yamamoto

While there are some positive commercial results from the blossoming Japanese university-industry collaboration efforts, recent inventor/employee compensation patent litigation decisions may have an unsettling effect on the considerations of potential licensing & research partners in future Japanese university-industry collaborations.

John A. Tessensohn and Shusaku Yamamoto

In Japanese patent litigation, one must remember Sun Tzu's Art of War, which counselled: "those who do not use local guides are unable to obtain the advantages of the ground." Retaining capable and aggressive Japanese patent litigation counsel will obtain advantages for a company to achieve its business goals in Japan.

John A. Tessensohn and Shusaku Yamamoto

As of January 1, 2004 Japan will abolish its opposition system and broaden the scope of an existing Invalidation Appeal procedure at the JPO and such new procedure system is likely to be more effective in the quicker resolution of patent disputes in Japan.

John A. Tessensohn and Shusaku Yamamoto

The ability to harness scientific breakthroughs through the establishment of patent rights is fundamental to the competitiveness of the world's biotechnology industry. Recently, Japan witnessed a pair of landmark patent developments that will affect the biotechnology industry in Japan - the world's second largest modern economy. This article discusses these developments and summarizes Japanese Patent Office's position on reach-through claims of so-called research tool patents thereby providing important signposts on the scope of patentable biotechnology inventions in Japan.

John A. Tessensohn and Shusaku Yamamoto

New provisions on disclosing prior art will be applicable to Japanese patent applications with a filing date on or after September 1, 2002. The new prior art disclosure requirement are less onerous that the United States' legal "duty of candor and good faith" in dealing with the USPTO. More importantly, a breach of the Japanese duty of disclosure cannot be used as a ground of invalidity against the resulting Japanese patent.

John A. Tessensohn and Shusaku Yamamoto