Contents & Abstracts
Note: These abstracts have been written in Japanese and the National Center for Industrial Property Information
and Training (INPIT) translated into English for reference. INPIT is entirely responsible for any errors inexpressions or descriptions of the translation. In the event of any discrepancy between the Japanese original
and the English translation, the Japanese text shall prevail.

■ For the Good of Everyone ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 2

NATSUME Ken-Ichiro■ Legal Issues of Standard Essential Patents (SEPs) in the Era of IoT ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ 6KIMIJIMA Yuko
With the spread of IoT, the holders of standard essential patents (SEPs) for mobile communication systems have begun to request licensing agreements not only from ICT competitors but also from manufacturersof different industries.
Standardization of technology spreads wider adoption of the technologies and creates and expands newmarkets. When the technology to be standardized is the subject of patent rights, it is necessary to create amechanism for non-enforcement of SEPs, or low-cost, non-discriminatory patent licenses that can promote
the use of the standard. Overly strong patent protection increases the cost of using a standard technologyand thus discourages its use. On the other hand, if too much emphasis is placed on reducing the cost of using
a standard, the proprietor of the technology to be standardized will not cooperate with the standardization.
In addition, if the proprietor of a technology does not expect profits from the technology, there would be noincentive for research and development, commercialization, and standardization activities of the technology
which should have been the next generation standard. As a result, it would be difficult to develop and disseminate technologies which would have contributed to create new markets.
Therefore, SEPs require a balance between an adequate protection of patent rights and limitation thereof.
Protection encourages R&D of possible future standard technologies and participation in its standardization,
while limitation promotes dissemination of the standardized technologies and its market expansion. Patentlaw and competition law should be construed and applied to SEP cases from the perspective of how far thepatent right, which is originally an exclusive right, should be limited for the purpose of promoting dissemination of standardized technologies and expanding its markets.
From this perspective, this article discusses the following recent legal issues on SEPs and examines
possible solutions: (1) the framework of the FRAND declaration, (2) global license negotiations and antisuit injunctions (ASI), (3) the latest development of the German automobile industry and injunctions in SEP
infringement cases, (4) licensing patents to supply chains and exhaustion of rights, (5) suppliers’ status incase end product manufacturers obtain licenses, and (6) calculation and apportionment of FRAND royalties
and damages inside the supply chain.

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■ Anticompetitive Product Design: Antimonopoly Regulations and Patent Law ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ19

WAKUI Masako
In Japan, the antitrust community is engaged in heated discussion regarding whether product designs
that inhibit competitors from supplying products that complement the primary good constitute a violation of
the Antimonopoly Act (AMA). The issue is particularly serious where suppliers of durable products (e.g.,printers and elevators) try to exclude those offering complementary products and services (e.g., ink cartridges and spare parts) in order to earn profits in the aftermarket. Recently, the Tokyo District Court foundin Ricoh (2020) and Brother (2021) that printer manufacturers violated the AMA by manipulating the designof their ink cartridges to eliminate the use of their rivals’ remanufactured/compatible ink cartridges. In Ricoh,
the printer manufacturer argued their patent encompassed remanufactured cartridges and thus those products
could not be sold by competitors. The court determined that such product manipulation constitutes an AMA
violation and therefore the patent could not be exercised against the remanufactured cartridges.
This article reviews these cases as well as the Japan Fair Trade Commission’s (JFTC) relevant guidelines,
and explains key questions the court examines; namely, whether the products created have a legitimate technical or commercial purpose. In Ricoh and Brother, the court found these purposes absent, and noted AMA
violations caused by the exclusionary effect the printer manufacturers’ designs had on competitors. Havingassessed the economic impact on both competition and innovation, I argue such evaluations are reasonable;
product designs created with the sole purpose of eliminating a company’s aftermarket rivals should beviewed as unfair trade practices under Paragraphs 10 (tie-in sales) and 14 (interference with a competitor’stransactions) of the General Designation of Unfair Trade Practices. As such, they likely constitute unfair
trade practices as prohibited by AMA Article 19. This conclusion is based on recent findings related to exploitation in the aftermarket, the consumer’s bounded rationality and bias, and the minimal probability thata violation of Article 19 will lead to substantial penalties.
The article also examines the relationship between the AMA and the Patent Act in the context of exclusionary product design. Having noted Ricoh is based on the established principle that the patent holder
should not be allowed to interfere with the transaction and use of patented products once a patentee has
earned income from their invention, I contend the conclusion in Ricoh will henceforth navigate designing
activities in line with social welfare.

■ Claim Construction of Use Invention and Availability of Injunction and Scope of Damages

on the Basis of Patent of Use Invention - Conversion of Indirect Infringing Products underProcess Invention into Direct Infringement of Product Invention and Restriction of Enforcement Derived from Patentability Relying on Use in Future ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ28
SUEYOSHI Tsuyoshi
Claims for inventions of products (use inventions) with a constituent feature of “for …” can be interpreted in the usual way, taking into account the description and the state of the art, without relying on any
special norms in either the claim construction for patentability/invalidity and that for infringement. In otherwords, if there is no special explanation in the specification, the constituent feature of “for …” is usuallyinterpreted as an explanation of the nature of the product. However, if, in light of the state of the art, novelty
and inventive step are affirmed only by specifying of a method to be used in the future, and the right holder
claims patentability on the basis of such specified method, then the constituent feature of “for …” means
specifying of a method to be used in the future.
If patentability is based on “for … “, “for …” means that a future usage method is used to specify apresent product. In other words, a use invention is a technique for converting an indirect infringement in a特許研究PATENT STUDIES

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process invention into a direct infringement. However, there are circumstances in which a direct infringement of a use invention as an invention of a product is different from indirect infringement of a process
invention. In the case of indirect infringement, the alleged infringing products are categorized into an exclusive product type or a multifunctional type, whereas claims for use inventions generally do not make such
categorization. For this reason, use inventions require unique considerations.
Due to the uncertainty of future uses of use inventions, the right holder is forced to identify the defendant’s product as a collection of products with the same model number (at the time of manufacture and sale,each individual product will, at a certain probability, be used for the use “for …” in the future, and ex post
facto, the collection includes items having been used for “for …” at a certain percentage). The availabilityof injunction should depend on a comparative weighting of the patentee’s protection with respect to the newuse and the third party’s protection of the non-infringing use. In doing so, consideration should also be given
to whether it is possible to adopt measures to prevent the infringing use, and whether the alleged infringer
has already taken appropriate measures. Meanwhile, the amount of damages is calculated by taking into
account the percentage of actual usage in said method as a monetary settlement after the fact.

■ The Support for Waiving Intellectual Property Protections and the US Domestic Politicsꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ42NISHIMURA Momoko
On May 5, 2021, the Biden administration of the United States announced a temporary waiver of intellectual property rights related to vaccines against the new coronavirus. It is well known that the pharmaceutical industry in the U.S. has been strongly lobbying the U.S. government. This paper explores the politicalfactors that allowed the United States to choose the policy of the temporary waiver.
Within the Biden administration, opinions on the temporary waiver are sharply divided. On the one hand,
there are those who fear a backlash from the pharmaceutical industry, and on the other hand, there are those
who claim that the United States has a moral mission to save the global community in this coronavirus
pandemic. The later, who led the current U.S. administration to support the temporary waiver, has actually
been seen since the Clinton administration. Due to the epidemic of HIV/AIDS infections, anti-patent advocacy opposing a stronger protection of intellectual property rights regarding access to medicines was gaining
strength in the international society. Consequently there was a growing movement within the U.S. Democratic Party to discuss that through trade policies the problems of poor working conditions and a deteriorationof the global environment should be solved. The protection of intellectual property rights was also discussed
in the same context. The idea that trade policies should be promoted to secure the medicines needed to savethe lives of people in developing countries became the majority view in the U.S. Congress. Under the influence of this anti-patent advocacy, the U.S. industry is not necessarily insisting on the protection of intellectual property rights related to new technologies, and there is a growing movement to open intellectual property rights free of charge among certain companies. The U.S. decision on the temporary waiver does notmean that the U.S. government suddenly changed its intellectual property policy in response to the extraordinary circumstances of the pandemict It rather means that the U.S. has changed its trade policy in intellectual property rights as a result of changes in the U.S. Congress and industry that have continued since theenactment of the TRIPs Agreement.

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■ How to Judge the Inventive Step of a Corrected Invention? - Especially under Binding
Force of a Judgement Preceding the Correction ꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏꞏ52
KAWADA Atsushi
In this case, the first trial decision of the examiners at the Japanese Patent Office (JPO) has not admitted
the lacking of the inventive step of the patented invention. After an appeal to the Japanese IP-High Court, aprevious court decision has revoked this first trial decision, and has sent the case back to the examiners atthe JPO. After the return of the case to the examiners at the JPO, the patentee has demanded a correction ofthe patent. The examiners have acknowledged the correction, and have decided again that the patented invention did not lack the inventive step. After the second appeal to the Japanese IP-High Court, a subsequent
court decision has revoked the second trial decision of the examiners at the JPO.
Firstly, taking the subsequent court decision as a subject, the paper will discuss whether the binding force
of a previous court decision can be blocked by a demand for correction of the patent after the previous court
decision.
In this case, the subsequent court decision did not discuss especially whether the binding force of theprevious court decision could be blocked or not, but simply affirmed the binding force of the previous courtdecision to the features which were not affected by the correction after the previous court decision. Theauthor finds it reasonable that the subsequent court decision has affirmed the binding force of the previousdecision. The author believes that the binding force of the previous decision should not be blocked regardlessof whether the demand for correction becomes final and binding after the previous decision, but just loses
its substantial meaning with respect to the corrected features.
Secondly, taking the subsequent court decision as a subject, the author will discuss how the inventivestep should be judged, when a demand for correction has been made.
The author believes that, if a patented invention before a correction is almost the same as a prior art, theinventive step of the patented invention after the correction should be judged by accurately recognizing thetechnical meaning of the corrected features of the invention, while taking into account common technicalknowledge and other relevant prior arts. The subsequent court decision has judged appropriately the inventive step of the corrected invention, because the decision has recognised the technical meaning of thecorrected features on the basis of common technical knowledge and other relevant prior arts, even thoughsuch technical meaning were not explained in the description of the invention.
The author believes that the inventive step based on the corrected features should be examined deliberately, if the technical meaning of the features are not clear even after the efforts to clarify the technicalmeaning. It is normal that such features lacking clear technical meaning would be neither disclosed norsuggested in prior arts. If the technical meaning of the corrected features is not clear, the fact that suchfeatures are not disclosed or suggested in any prior arts should not be a ground to affirm the inventive stepof the corrected invention.

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