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Patent Litigation
2024
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Japan: Trends & Developments
Naoko Nakatsukasa, Katsuya Hongyo,
Tatsunori Enomoto
and Ronald Kaloostian
Chuo Sogo Law Office

JAPAN Trends and Developments

Trends and Developments
Contributed by:
Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto
and Ronald Kaloostian
Chuo Sogo Law Office

Chuo Sogo Law Office is an international business law firm founded in 1968. Within the scopeof its corporate, commercial and litigation practices, the firm assists clients with intellectual
property matters, including patent, trade mark,copyright, and unfair competition matters, aswell as related litigation and dispute resolution. The firm has offices in Osaka, Tokyo andKyoto. The protection of investment in intellectual property is essential to insure the sustained
success of many companies and Chuo Sogo
handles a range of litigation, negotiation andcontract drafting related to intellectual property law, unfair competition prevention law andcopyright law. With over ten lawyers in its IP
group, among a total of 80 lawyers at the firm,
its experienced IP attorneys offer guidance toprotect IP rights in a wide array of commercial
sectors. With the co-operation of its affiliatedpatent firms, the firm is part of a strong global legal network, allowing it to cater to clients’international IP needs with an innovative andcost-effective approach.

Authors
Naoko Nakatsukasa is a partner
at Chuo Sogo Law Office, P.C.,
admitted to practice in Japan
and New York. She assistsclients with litigation and dispute
resolution involving intellectual
property and general corporate matters, andcounsels clients concerning patent, trademark, copyright, design and unfair
competition-related issues. She has substantial
experience in domestic and international
business transactions. Naoko was admitted to
the Japanese Bar in 1994 and serves as adirector of listed companies in Japan. She
received an LLM degree from Northwestern
Pritzker School of Law, is fluent in both
Japanese and English, and has been widely
published on IP matters and infringement
issues.

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Katsuya Hongyo is a partner at
Chuo Sogo Law Office, P.C., andis admitted to practice in Japan
and New York. His practiceareas include IP, M&A,
international transactions,financial regulations, data privacy andcompliance. He represents Japanese andoverseas clients in IP litigation and dispute
resolution, He also advises Japanese start-ups
regarding patent, trade mark, and copyrightrelated issues. While working as a visiting
attorney at Kirkland & Ellis LLP in Chicago, he
represented a Swiss-American pharmaceuticaland medical device company in patent
litigation against a Japanese company. He
received an LLM degree with honours from
Northwestern Pritzker School of Law in 2022
and is fluent in both Japanese and English.

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office

Tatsunori Enomoto is anassociate lawyer at Chuo Sogo
Law Office, P.C. He handles awide range of legal matters,
including general corporate law,as well as specialised tasks
such as M&A and structured finance. In thefield of intellectual property rights, he isinvolved in multiple patent and trade markinfringement lawsuits, and handles legal
proceedings and negotiation cases. His routine
work includes providing legal checks for
consultations related to intellectual property
rights and licence agreements. He wasregistered as a lawyer in Japan in January
2019.

Chuo Sogo Law Office, P.C.
Kohda Building
2-10-2 Nishi-Tenma
Kita-ku, Osaka 530-0047
Japan
Tel: +81 6 6365 8111
Fax: +81 6 6365 8289
Web: www.clo.jp

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Ronald Kaloostian focuses hispractice on IP, M&A,
international transactions, data
privacy and global compliance.
Ron has extensive experienceadvising clients on a broad
range of matters relating to IP, corporate law
and compliance. For over 11 years Ron worked
in the in-house IP department of a major
Japanese innovator pharmaceutical company.
Ron specialised in IP licensing, IP due
diligence, joint research collaborations with US
universities, strategic biopharma alliances andspin-out of new companies with novel
technologies and inventions. Ron also
managed ANDA and patent litigations in theUSA, including negotiation of settlementagreements. He is a member of the State Barof California and a registered patent attorneywith the USPTO.

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office

Patent Litigation Before the Japan Intellectual
Property Courts
Intellectual Property High Court Grand Paneldecisions
The rulings of the Intellectual Property High Court(the “IP High Court”) have a major impact on
the interpretation of intellectual property rights
in Japan. In cases involving particularly important legal issues and where decisions could
have a significant impact on business activities
and industrial economy, the Grand Panel, which
is made up of five judges of IP High Court, isformed ad hoc to render its decisions. The following Grand Panel decisions were issued in
2022 and 2023.
DWANGO Co., Ltd. v FC2, Inc. and Homepage
System, Inc., Case No 2020 (Ne) 10024(decision rendered on 26 May 2023)
The plaintiff, DWANGO, had the patent right for
an invention titled “Comment Delivery System”.
The issue in the case was whether the defendantFC2’s act of distributing its files from a serverin the USA to user terminals in Japan, throughFC2’s systems for online video delivery services
with commentary (“FC2’s act”), falls under thedefinition of “production” in Article 2, paragraph3, item 1 of the Patent Act.
The Grand Panel of the IP High Court first
decided that the principle of territorial jurisdiction applies to the Patent Act of Japan. The
Court further ruled, however, that with regard
to whether or not the act of newly creating a
network-type system falls under “production”,
even in a case where a server which is a part ofthe elements constituting the system in question
exists outside Japan, if the act can be considered as having been performed within the territory of Japan, by comprehensively taking into
consideration factors such as the specific manner of the act, the function and role played by the
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elements which exist in Japan, the place where
the effect of an invention can be obtained fromthe use of the system, and the effect of such useon the economic interests of the patentee, thenthe act falls under “production.”In this case, the court considered the following
circumstances:• FC2’s files are sent by a server in the UnitedStates to the user terminals in Japan, and theuser terminals in Japan receive the files;• the transmission and receipt are performed
as a package;• if it is considered that FC2’s system is completed when the user terminals in Japan
receive the files, it can be said that the transmission and receipt are performed in Japan;• the user terminals in Japan perform the mainfunctions of the invention;• FC2’s system can be accessed from Japan
via a user terminal, so that the effect of theinvention, which is to use commentary incommunication to make the invention moreentertaining, is manifested in Japan; and• the use in Japan may affect the economic
interests which can be obtained by the plaintiff by using the system which pertains to theinvention in Japan.
FC2’s act was therefore regarded as taking placein the territory of Japan by the Court, so it concluded that FC2’s act falls under “production”
and constituted infringement of the patent right.
In a related case of DWANGO v FC2, Case No
2018 (Ne) 10077 (decision rendered on 20 July2022), the issue was whether the distribution of
FC2’s program constituted “provision through atelecommunication line” under the Patent Act.
The IP High Court held that even if a part of theworking of the patented invention is formally

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office

performed outside Japan, if the act of provision
can be regarded as substantially and totally performed in the territory of Japan, it constitutes“provision through a telecommunication line”.
The above cases are significant in that the Grand
Panel set forth the criteria for determining whether the “production” of a network system invention can be evaluated as having taken place inJapan. Both cases have been appealed to theSupreme Court and a petition for acceptanceof appeal has been filed, but the decision has
not (as of February 2024) been issued. Unlessthe conclusion reached by the Grand Panel ischanged by the Supreme Court, the criteria set
in the decisions will be referred to in future practice.
FUJI MEDICAL INSTRUMENTS MFG. CO.,LTD. v Family Inada Co. Ltd., Case No 2022
(Ne) 10046 (decision rendered on 20 October
2022)
I) Compensation for damages in Japan
When filing a patent infringement claim fordamages, the patentee must prove the value ofdamages caused by the infringing act. However,
because it is difficult to prove the specific extent
of damages, Article 102, paragraphs 1–3 of the
Patent Act provide for presumption of the damages.
Under Article 102, paragraph 2, the profit earned
by the infringer is presumed to be the value ofdamages incurred by the patentee. However, if(i) the infringer’s production capacity or sales
efforts exceed the patentee’s implementation
capabilities, (ii) the patented technology is used
only in part of the infringing product, or (iii) themarket where the patentee’s products are soldand the market where the infringing products
are sold are different, it may not be reasonable
to presume that the full amount of the profits
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earned by the infringer represent damages of thepatentee. Therefore, if the circumstances outlined above exist, the damages presumed under
Article 102, paragraph 2 will be overturned. Thisis called the “overturning the presumption”.
Also under Article 102, paragraph 3, if the amountof damages should be an amount equivalent to
the royalty that the patentee would receive forthe exploitation of the patented invention, thenthe amount of that royalty will be presumed to
be damages of the patentee.
II) Outline and significance of the case
The Grand Panel of the IP High Court first determined that in cases where the patentee had
exported or sold a competing product of thesame type that shares the same consumer as
the infringing product in the market, the infringing act has caused a decrease in the sales of thepatentee’s products, thus Article 102, paragraph
2 applies.
Where Article 102, paragraph 2 applies and if
there are circumstances that overturn the presumption, the entire amount of profits earned by
the infringer will not be fully considered as damages granted to the patentee. For example, if the
profit earned by the infringer is determined to be
JPY100 million and the overturned presumption
rate is 30%, damages granted to the patentee
will be JPY70 million. The issue here is whether
Article 102, paragraph 3 (the amount equivalent
to the royalty) applies to this overturned JPY30
million portion.
The Court stated that damages suffered by thepatentee due to the infringing act can be considered to be (i) a decrease in the sales of productsthat the patentee could have sold if there had notbeen the infringing act (where Article 102, paragraph 2 applies); and (ii) profits that could have

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Officebeen gained due to loss of licensing opportunity,
regardless of whether the patentee is actuallyworking the patented invention or has the ability to work the patented invention (where Article
102, paragraph 3 applies). Therefore, in a casewhere the presumption under Article 102, paragraph 2 is partially overturned and such overturned portion can be considered to be ‘‘the portion where the patentee could have been able togrant a licence’’, Article 102, paragraph 3 applies
to the overturned portion.
The Court further stated that, if the presumption is overturned due to (i) it being beyond theability of the patentee to carry out sales, etc;or (ii) the market for the patentee’s product andthe market for the infringer’s products being different, such overturned portion is considered tofall under ‘‘the portion where the patentee could
have been able to grant a licence’’, thus Article
102, paragraph 3 does apply to the overturned
portion. On the other hand, if the presumption is
overturned due to the patented invention being
practiced only in part of the infringing product,
then Article 102, paragraph 3 does not apply.
This decision by the Grand Panel provides animportant concept regarding the “damages” ofthe patent infringement.
Life sciences
In 2023, there have been several significant rulings by the IP High Court in the field of life sciences. The first case below shows the criteria
for determining the support requirement withregard to a patent relating to antibody drugs,
which have been attracting particular attention
in the pharmaceutical industry in recent years.
The second case showcases an interesting discussions regarding the patent linkage system inJapan.

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Regeneron Pharmaceuticals, Inc. v Amgen,
Inc., Case No 2021 (Gyo-Ke) 10093 (decision
rendered on 26 January 2023)
The plaintiff, Regeneron Pharmaceuticals, Inc.,
had filed with the Japan Patent Office a request
for a trial for invalidation of the patent ownedby the defendant, Amgen Inc. The invention inquestion is titled “ANTIGEN BINDING PROTEINTO PROPROTEIN CONVERTASE SUBTILISIN
KEXIN TYPE 9 (PCSK9)”. The Japan Patent
Office dismissed the request by the plaintiff
with the opinion that the said patent was valid. Accordingly, the plaintiff filed a suit to seek
rescission of such decision by the Patent Office.
Under the case brought before the IP High
Court, the issue was whether the said antibody
patent satisfied the support requirement. The IP
High Court first presented the same framework
to determine the support requirement in linewith prior precedents, then rendered its decisionthat the said patent did not satisfy the support
requirement based on the functional characteristics of the antibody patent.
The support requirement of the patent meansthat the invention for which the patent is sought
must be stated in the detailed explanation of theinvention (Article 36, paragraph 6, item 1 of the
Patent Act). This is because, if an invention thatis not stated in the detailed explanation were to
be claimed in the scope of claims, it would create an exclusive right for an unpublished invention.
The framework to determine the satisfaction of
the support requirement is:• to first make a comparison between thestatement of the scope of claims and thestatement of the detailed explanation of theinvention; thenJAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office• to examine whether or not the invention
stated in the scope of claims is materiallythe invention stated in the detailed explanation of the invention, by examining whether
or not the invention stated in the scope ofclaims falls within the scope where a personof ordinary skill in the art can recognise thatthe “problem of the invention” can be solvedby the statement of the detailed explanationof the invention.
The invention in the case is an isolated monoclonal antibody which can neutralise binding
between PCSK9 and LDLR protein, because itcompetes for binding to PCSK9 with the 21B12
antibody (the “reference antibody”). The Japan
Patent Office determined that:• the problem solved by the invention is toprovide a novel antibody and to produce
a pharmaceutical composition which neutralises binding between PCSK9 and LDLR
and increases the amount of LDLR, thereby
achieving an effect of causing a decrease
in serum cholesterol in a subject, treating or
preventing diseases related to elevated cholesterol levels, and reducing the risk of suchdiseases;• a person ordinarily skilled in the art canunderstand from the statement of the present detailed explanation that the antibodyof the present invention can solve the above
problem, thus the present invention can bedeemed to be stated in the detailed explanation; and• the said patent therefore satisfies the support
requirement.
However, the IP High Court reversed the decision by the Patent Office, giving the following
reasoning.

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CHAMBERS.COM• The technical significance of the said invention is that it is specified that an antibody
which competes with the 21B12 antibody
interferes with, blocks, reduces, or modulates
the interaction between PCSK9 and LDLR
protein by directly blocking a binding site of
LDLR protein by a mechanism similar to thatof the 21B12 antibody; however, this point
was not disclosed in the detailed explanation,
therefore the said invention does not satisfy
the support requirement.
• The range of antibodies having characteristics that mean they compete for binding to
PCSK9 with the reference antibody includes
a very wide variety of antibodies; furthermore,such a range would include antibodies which
prevent or reduce specific binding of the reference antibody to PCSK9 in various degrees;
however, the detailed explanation does notstate anything about such a mechanism, thus
this also means that the said invention does
not satisfy the support requirement.
This judgment is considered to be appropriate
as the scope of claims in the case would resultin granting exclusivity to inventions based on
characteristics that are different from the functional characteristics described in the detailed
explanation of the invention.
NIPRO CORPORATION v Eisai Co., Ltd., Case
No 2022 (Ne) 10093 (decision rendered on 10
May 2023)
I) Patent linkage system in Japan
The patent linkage system refers to a mechanism in which the regulatory authorities take into
account the infringement of patent rights related
to the original drugs in the procedures for theapproval of generics. The purpose of the patent
linkage is to realise the stable supply of generics by considering the patent right related to theJAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Officeoriginal drugs. The implementation of the system
and its contents differ from country to country.
In Japan, the patent linkage system has noclear basis under the law, and it is handled as
an administrative practice under the guidanceof the Ministry of Health, Labour and Welfare
based on two administrative notifications (bothare notifications by a section chief and are thus
collectively referred to as the “Two Section Chief
Notifications”). The details of the practice are as
follows.
• If a patent exists on the active ingredientof the original drug and the manufacturingof that active ingredient is not possible, thegeneric will not be approved.
• If a patent exists for part of the indications,dosage and administration (“indications,effects, etc”) of the original drug, and if it ispossible to manufacture a drug adopting
other indications, effects, etc, the genericdrug will be approved. However, the indications, effects, etc, for which a patent exists
are not approved.
• The existence or non-existence of a patent shall be determined on the scheduled
approval date of the generic.
In the procedure of the National Health Insurance (NHI) price listing of generic drugs, theTwo Section Chief Notifications require that matters with patent-related concerns be adjusted
between the parties in advance, and that listingprocedures be taken only for those items thatare considered to be capable of stable supply.
However, this preliminary adjustment between
the parties is to be made during the NHI pricelisting after obtaining approval for the generic,and the actual practice is that, even if discussions or adjustments between the parties are
unsuccessful, the Ministry of Health, Labour
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and Welfare permits the NHI price listing of thegeneric if there is an application from a genericdrug manufacturer. Also, as mentioned above,
although the Ministry of Health, Labour and Welfare is responsible for determining whether thegeneric drug infringes the patents of the original
drug, there is no mechanism in place for the Ministry of Health, Labour and Welfare to rely on any
judicial judgment.
2) Rulings
The plaintiff, NIPRO CORPORATION, was ageneric drug manufacturer, and it had filed an
application for approval for the manufacture andsale of its generic drug.
The plaintiff asked the Court to confirm that (i)the defendants, Eisai Co., Ltd., the manufacturer and seller of the original drug, and EISAI
R&D MANAGEMENT CO., LTD., the holder ofthe patent for the original drug, did not have theright to demand an injunction based on patent
infringement with respect to the manufactureand sale of its generic drug, and (ii) that they
did not have the right to claim damages. The
issue was whether or not the plaintiff would havestanding for a declaratory judgement in relation
to Japan’s patent linkage system.
The plaintiff’ arguments were as follows:• The fact that the patent linkage system wasactually being disputed in the case meantthat there was a legal dispute over the existence or non-existence of patent infringement,
and thus the plaintiff’s legal status (that its“own generic drug would not be approved by
the Ministry of Health, Labour and Welfare”)
was in danger, and if the Court determined
whether there was a patent infringement,such danger would be eliminated.

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office• Japan ratified the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (the “TPP11 Agreement”), and in orderfor the Japanese practice of patent linkage
based on the Two Section Chief Notifications
to comply with TPP11 Agreement, and if there
is any doubt as to whether the generic drug
infringes the patent of the original drug, it isnecessary that the Court render its judgment
by approving its standing for a declaratory
judgement.
• In the present practice based on the Two
Section Chief Notifications, the genericdrug manufacturer had no choice but to filea request at the Patent Office for a trial forinvalidation for the patent of the original drug;
however, this would only determine the validity of the patent, not the existence or nonexistence of infringement, thus the current
practice under the Patent Linkage, in which
the Ministry of Health, Labour and Welfare isin charge of the patent infringement determination, is inconsistent with the doctrine oflaw where the patent infringement is clearly amatter that should only be determined by the
Court.
After hearing these arguments, the IP High
Court ruled that whether or not the Ministry of
Health, Labour and Welfare would approve anapplication of the plaintiff for the manufactureand sale of a generic drug is a public law dispute between the plaintiff and the Minister of
Health, Labour and Welfare, not a legal dispute
between the plaintiff and the defendants, andthat if the plaintiff is dissatisfied with a dispute
under public law, the plaintiff should seek reliefby (i) filing an action to confirm the illegality of
the non-approval or (ii) filing an appeal against
the government. The standing for a declaratory
judgement cannot therefore be recognised in thecase.
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The above ruling of the IP High Court is consistent with the common understanding of thestanding for a declaratory judgement. However, as the plaintiff argued, there is a question
about the current practice that the Ministry of
Health, Labour and Welfare determines the patent infringement, and there is no mechanism forprior co-ordination between the parties at thestage of approval or prior approval. Future discussions on the Japanese patent linkage practice is therefore expected.
Technology
The following recent decisions by the IP High
Court also show important developments in thefield of technology IP.
Dai Nippon Printing Co., Ltd. v Commissioner,
Japan Patent Office Case No 2022 (Gyo-Ke)
10030 (decision rendered on 9 March 2023)
Under the Patent Act, anyone may file an opposition against a patent with the Japan Patent
Office within six months after publication of thepatent in the patent gazette. In the opposition
proceedings, when the administrative judge
intends to make a decision to revoke the patent,
the judge must give the patentee an opportunity
to submit a written opinion, and the patentee
may file a request for a correction of the patent
to eliminate the grounds for revocation.
In this case, a third party filed an opposition to apatent of Dai Nippon Printing (DNP) titled “LAMINATE OF POLYESTER RESIN COMPOSITION”.
During the patent opposition proceedings, DNP
filed a request for correction, but the Japan Patent Office refused to allow the correction andrevoked the patent.
The said patent had so-called open claims, andwhen the case was brought before the IP High
Court, the issue was whether the correction to

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office“exclude” matters not directly disclosed in theclaims or the specification or drawings (“excluded claims”) that are made in order to avoid
revocation of the patent, can be considered as“reduction of the scope of claims,” which is arequirement for the correction. The Court heldthat the correction fell within the scope of reduction of the claims and did not introduce any newtechnical matter, thus the correction was valid,
and reversed the revocation decision by theJapan Patent Office.
Specifically, the correction in this case was to
add a provision to exclude “the laminate with avapour-deposited film of inorganic oxide on thelaminate and a gas-barrier coating film provided
on the said vapour-deposited film”. However,the claims before the correction did not include
the words “vapour-deposited film of inorganicoxide” or “gas-barrier coating film.” Also, there
was no reference to a configuration in whichsomething was provided “on” the laminate.
The Court found that the claims before the correction simply specified “a laminate having atleast two layers,” and therefore, the patent wasa so-called open claim that included a laminate consisting of a “first layer,” a “second layer,” also a “vapour-deposited film of inorganicoxide,” and a “gas barrier coating film provided
on the vapour-deposited film”. Thus, the Court
concluded that the correction was intended toreduce the scope of the claims.
The decision in this case will be helpful in practice as a case decision that judges that a correction of open claims excluding matters notdescribed in the specification or drawings does
not substantially introduce new technical matter.

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Nanshin Co., Ltd. v Luz Com Co., Ltd. Case No
2022 (Gyo-Ke) 10140 (decision rendered on 16
November 2022)
This case was a lawsuit to seek rescission ofa decision made by the Japan Patent Office(the “JPO decision”) to the effect that a request
for a trial for invalidation of a patent relating toan invention titled “ELECTROFORMED TUBE
MANUFACTURING METHOD AND ELECTROFORMED TUBE” was groundless. The major
grounds for seeking rescission included an error
in the determination on the clarity requirement.
The claim of the invention was in the form of a
product-by-process claim. The Court ruled thatthe invention did not satisfy the clarity requirement for the following reasons:• Under the precedents, when a claim is a
product-by-process claim, the statement of
the claim should meet the clarity requirement
only if there are circumstances where it was
impossible or utterly impractical to directly
define the product of the invention by meansof its structure or characteristics at the timeof the application (2012 (Ju) 1204, the Second
Petty Bench of the Supreme Court, 5 June2015).
• However, even in a case where the claim of a
product recites the manufacturing process, if
the structure or characteristics of the productto be manufactured by that manufacturing
process are unambiguously clear at the timeof the application based on the statementsof the claim, the description and drawingsand common general technical knowledge,
the interests of third parties would not be
unjustly harmed; therefore, in such a case,the invention would not be considered to bein violation of the clarity requirement evenwhen there were no circumstances making
it impossible or impractical to directly define

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office

the product by means of its structure or characteristics.
The IP High Court has here limited the scopeof the Supreme Court decision and establisheda standard to function in practice. This caseis instructive as a specific case in which suchstandard was applied.
United Precision Technologies Co., Ltd. v
Commissioner, Japan Patent Office Case No
2022 (Gyo-Ke) 10164 (decision rendered on 16
November 2022)
The case is a suit against a decision dismissing the request for appeal against an examiner’s
decision of refusal of an invention titled “CONDUCTIVE MEMBER USING COPPER-SILVER
ALLOY, CONTACT PIN, AND DEVICE”. One of
the issues is the procedural violation during thedetermination of the inventive step by the Japan
Patent Office.
The Court first determined that differences
between the invention in question and the citedprior art were easily conceivable by those skilledin the art from the cited prior inventions, or only
related to a design matter which those skilled in
the art should have performed on the basis of
the common general technical knowledge, thus
it lacked the inventive step.
However, as to the issue of the procedural violation, the Court ruled that, the Japan Patent
Office’s decision that determined that the invention with “Cited Invention 5” as an additional primary cited reference lacked an inventive step
seemed to be reasonable, but since Cited Invention 5 is a document that had not been pointed
out in advance in the examination stage or evenin the appeal procedure but was pointed out for
the first time in the Japan Patent Office’s decision, and the plaintiff disputed by concentrating
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the assertion exclusively on the point that a difference related to the material of the alloy is present in other cited document in view of the specific history of the examination procedure andthe appeal procedure, it should be considered
that, if Cited Document 5 were presented in thenotice of reasons for refusal, the strategy of theplaintiff would have been seriously affected, andthus determination on the inventive step of theinvention with Cited Document 5 as the primarycited reference should not be allowed, from theviewpoint of the plaintiff’s procedure guarantee.
This ruling suggests that if it is found that an
applicant’s opportunity to defend is not substantially guaranteed, it should be considered that
non-service of the notice of reasons for refusal
can be found to be illegal for violation of procedures.
Recent law reforms
The 2023 Patent Act Amendments made thefollowing reforms from the perspective of (i)strengthening the protection of brands anddesigns in light of diversification of businessactivities due to digitalisation, and (ii) developing intellectual property procedures in responseto the coronavirus pandemic and digitalisation.
Strengthening the protection of trade secrets(Article 186 of the Patent Act)The award system in Japan is that, if certain
requirements are met, the Commissioner of
the Japan Patent Office may grant a compulsory licence. The 2023 Patent Act Amendments
made it possible to restrict the viewing of documents relating to the award system that containtrade secrets. It is now expected that documents
containing trade secrets will be submitted for theaward and the reasonable award judgments be
made.

JAPAN Trends and Developments

Contributed by: Naoko Nakatsukasa, Katsuya Hongyo, Tatsunori Enomoto and Ronald Kaloostian,
Chuo Sogo Law Office

Reform of the public notice and service system(Article 191 of the Patent Act)
When delivering patent examination results, etc,
to persons residing outside Japan, if a situationin which it is difficult to send documents persists
for six months, the notification shall be publishedin the official gazette, etc, and documents will
be deemed to have been served. Furthermore,a new system for delivery via the internet will beestablished.
Reform of document procedures for
digitalisation, etc (Article 43 of the Patent Act)In the procedure for claiming priority under theParis Convention, it will now be possible to submit the priority certificate online, and it will also
be acceptable to submit a copy of the certificate.
Thus it is no longer necessary to submit the original document via mail, making the procedure
under the Paris Convention much simpler.

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Reform of the examination fee reduction/
exemption system (Article 195-2, etc, of the
Patent Law)
In Japan, certain small and medium-sized enterprises are exempted from fees for patent examination requests in order to encourage inventions
by persons with high potential but limited financial or human resources. However, due to thefact that the system was in some cases being
wrongly used, there will be restrictions on thenumber of applications for which fees can be
reduced or exempted.

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