Japan has made ‘innovation in science and technology' as one of its central pillars to ensure high growth in its next stage of economic development and its life sciences market which hosts regenerative medicine was proclaimed to be ‘the best market in the world right now.' Although life science therapeutic inventions are patentable subject matter under Japanese patent law, there are nuanced obviousness and enablement challenges under Japanese patent law that can be surmounted in view of some encouraging Japanese court developments in fostering a pro-patent applicant environment in the life sciences therapeutic patent field. Nevertheless, great care must be taken when drafting and prosecuting such patent applications in the world's second most important life sciences therapeutic market.

John A. Tessensohn and Shusaku Yamamoto

Japan fine tunes its patent, trademark and design laws to further IP creation and protection. The legal changes include an introduction of a post-grant opposition system, non-traditional trademarks and expanded protection for design rights.

John A. Tessensohn and Shusaku Yamamoto

In a landmark pro-patentee decision, the Intellectual Property High Court of Japan (IPHCJ) applied a more generous approach in determining patent infringement damages and increased the damages suffered by a foreign patentee by seven times, Sangenic International Limited v. Aprica Children's Products Inc., Case No. 2012 (ne) 10015 dated February 1, 2013.

John A. Tessensohn and Shusaku Yamamoto

Any third party challenger should consider carefully whether a multi-million dollar technology space is worth risking on utilizing the pre-issuance submission procedure and inadvertently ‘strengthening' the patent with an abortive pre-issuance submission of prior art. The challenger is better served by keeping his powder dry and use the post-grant inter partes Invalidation Appeal procedure to fully engage all patentability issues before the JPO and IP High Court.

John A. Tessensohn and Shusaku Yamamoto

This latest statutory amendments to Japan’s patent and intellectual property laws is to manage the recent acceleration of open innovation, technological innovation, shortening life cycle of products and to improve convenience for users of Japan’s intellectual property system. These welcomed but incremental changes to Japan’s patent and intellectual property laws will enhance protection to patentees and provide greater certainty and clarity in the innovation marketplace.

John A. Tessensohn and Shusaku Yamamoto

Eliminating examination backlogs to accelerate patent grants will allow companies to attract capital and generate jobs thereby boosting the current struggling world economy. By analyzing increased allowance rates, shortened pendency periods and encouraging user data of the Patent Prosecution Highway (PPH), the accelerated examination initiative of the Japanese Patent Office (JPO) and United States Patent & Trademark Office (USPTO), this article will illustrate certain promising advantages of the PPH.

PPH utilization should increase significantly after the game changing development to allow the use of Patent Co-operation Treaty (PCT) search and examination results accelerate examination under the PPH. However, accelerated examination may not be consistent with the commercial gamesmanship inherent in modern patent strategies so savvy innovators must navigate the Scylla of risks associated with accelerated examination & the Charybdis of inadequate competitor coverage in addition to other procedural nuances in Japanese amendment and divisional practice in order to prosper when using the PPH.

John A. Tessensohn and Shusaku Yamamoto

By allowing businesses to save or defer spending money on patent examination fees, the Japanese government has a created stimulus plan meant to incentivize companies to invest in R&D and pave the way to revive an ailing economy.

John A. Tessensohn and Shusaku Yamamoto

The Intellectual Property High Court of Japan issued two landmark decisions - Japan’s first ever biopharmaceutical patent term extension (PTE) judicial appellate proceedings — represent good news for biotech innovators. As such, companies with brand products should avail themselves to Japan’s biotech savvy courts, accelerated patent examination and PTE regimes so that valuable patent terms and profits can be optimized and protected. With increasing follow on biologic competition, the innovator biotech industry has little choice but to ensure smoother co-ordination with their research, patent and regulatory strategies to optimize all available patent and extended terms from regulatory delay; thereby securing dominance in the world’s second largest national healthcare market, Japan.

John A. Tessensohn and Shusaku Yamamoto

Japan has several systems to accelerate prosecution and obtain an expedited patent. The three most common procedures are (a) Accelerated examination (b) Super Accelerated Examination and (c) Patent Prosecution Highway (PPH). Patent applicants should be very familiar with the various accelerated examination procedures and utilize the one that is most appropriate or complementary with their commercial goals.

John A. Tessensohn and Shusaku Yamamoto

The article explores biotech patent life cycle management and follow on biologics in the Japanese market.

John A. Tessensohn and Shusaku Yamamoto