Patents
On February 25, 2020, in the second year of the Reiwa era, the Intellectual Property High Court of Japan (IPHCJ) issued two appellate decisions relating to the groundbreaking, Nobel Prize–winning, genome-editing technology, CRISPR. This article will outline the IPHCJ decisions' interpretative scope of the Japanese patent law novelty bar (secret prior art) where an earlier-filed, but subsequently published, patent application is regarded as prior art against a later-filed patent application. This analysis is topical in view of the vigorous first-to-file patent filing race amongst various CRISPR research and commercial interests, since Japan is one of the world's most important biotech and health care markets. The article will also provide a snapshot review of CRISPR, university-related biotech start-ups, and biotechnology in Japan during the global COVID-19 pandemic.
John A. Tessensohn and Shusaku Yamamoto
On June 7, 2019, the Grand Panel of the Intellectual Property High Court of Japan (IPHCJ) issued a landmark pro-patentee decision that provided greater clarity and flexibility on how Japanese patent infringement courts will calculate patent infringement damages on the basis of “infringer’s profits” and “reasonable royalty” under Japan’s Patent Law: NeoChemir Inc v Medion Research Laboratories Inc, Case No. Heisei 30 (Ne) 10063 (7 June 2019).
John A. Tessensohn and Shusaku Yamamoto
Steak Preparation is Recognized as Eligible Subject Matter by IP High Court of Japan: Review of Business Method Patents in Japan
On October 17, 2018, the Intellectual Property High Court of Japan (IPHCJ) reversed the decision of the Board of Appeals of the JPO and ruled in favor of restaurant food company that had sought to patent a steak preparation method in a subject matter eligibility case, Pepper Food Service Co., Ltd., v. Commissioner of Japan Patent Office, Heisei 29 (gyo-ke) 10232. This is an interesting pro-owner decision because the IPHCJ set a flexible and pro-applicant approach in determining what constitutes eligible statutory subject matter in terms of business methods. This article will also provide an updated review of the current position of business method patents in Japan.
John A. Tessensohn and Shusaku Yamamoto
The statutory changes to Japan's design law will ensure that owners are able to protect their design rights in a modern digital economy and also strengthen owners' registered design rights with a lengthened registration term and broader infringement rights.
John A. Tessensohn and Shusaku Yamamoto
According to the latest Japan Patent Office Status Report 2019, the number of accelerated examination requests have reached an all-time high of 21,137 in 2018. This article explains the various options and requirements how an applicant can accelerate or expedite patent examination in Japan.
John A. Tessensohn and Shusaku Yamamoto
The extended grace period to 12 months is a helpful development that will ensure that inventors’ patent rights that are lost by a pre-filing novelty-destroying disclosure can be salvaged by effectively using the extended 12-month grace period.
John A. Tessensohn and Shusaku Yamamoto
This article reviews the self-evident trends from the JPO’s latest patent opposition outcomes data and statistics, and provides some guidance to users of Japan’s patent system in reaping the greatest benefits of the post-grant opposition and co-existing post-grant invalidation appeal systems while ameliorating their risks in implementing their patent enforcement and defense strategy in one of the world’s most important economic markets, Japan.
John A. Tessensohn and Shusaku Yamamoto
Litigants in Japan can count on reasonable legal costs for protecting their IP in the world’s third largest economy. Japan’s cost-friendly and expeditious IP dispute resolution system should therefore play a central role in any global, IP-centered business strategy.
John A. Tessensohn and Shusaku Yamamoto
The Supreme Court decision has upended Japanese patent prosecution and enforcement practice of product by process claims. Companies looking to prosecute such product of process claims should carefully monitor the new upcoming JPO examination guidelines when they issue and reconsider its specification and claim drafting strategies.
John A. Tessensohn and Shusaku Yamamoto
The procedures of the new post-grant opposition system vis-à-vis the invalidation appeal system are explained. Practice tips for the strategic use of Japan’s opposition and invalidation appeal system are provided for opponents and patentees. The new post-grant opposition procedures offer new opportunities for third parties to challenge patents and for patentees to strengthen the defense of their patent portfolios.
John A. Tessensohn and Shusaku Yamamoto
