Japan IP News Bulletin

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Issue #3 April 18, 2016

IP PROSECUTION AND PROCEDURES
Revised JPO Examination Guidelines for Patents and Utility Models
The JPO revised the Examination Guidelines for Patents and Utility Models, effective April 1,
2016. Major changes are summarized below. Details here.
(A) Use Inventions for Food Products
Recitations that specify a product by defining the manner of the use of the product (limitations ofuse) can now be recognized as technical features in food product inventions (but not forinventions relating to animals and plants).
(B) Extension of Patent Terms[Whether a disposition by Cabinet Order was necessary to practice a patented invention whenboth a present disposition and a prior disposition have been made]When manufacturing and distributing drug products or manufacturing and importing agriculturalchemicals subject to both a present disposition and a prior disposition correspond to practicing apatented invention pertaining to an application for patent term extension, such actions areconsidered as follows: It is not recognized that the present disposition was needed to practice thepatented invention pertaining to the application for patent term extension when the manufacturing
and sale of the drug products or agricultural chemicals subject to the prior disposition are foundto include the manufacturing or sale of the drug products or agricultural chemicals subject to thepresent disposition as a result of comparing the two dispositions with respect to the examination
matters related directly to substantial sameness as drug products or agricultural chemicals in thelight of the type and subject of the patented invention pertaining to the application for patentterm extension.
[Original Announcement: JPO Website, Mar. 23, 2016]

Decision in Trial for Correction for Product-by-Process Claims
The JPO announced that it has for the first time issued a decision approving a categorical changeof a Product-by-Process (PBP) claim from a product invention to a manufacturing method
invention for a trial for correction (Trial for Correction No. 2016-390005, in Japanese). Thisdecision opens the way to overcoming grounds for invalidity (failure to satisfy the clarity
requirement) in PBP claims that have already been granted. However, the JPO added that thisdecision does not apply to all such cases and that such corrections may be allowed depending onthe case.
[Original Announcement (in Japanese): JPO Website, Mar. 28, 2016]
Examination Handbook for Patents and Utility Models Revisions for
Product-by-Process Claims
The JPO revised the Examination Handbook for Patents and Utility Models regarding the clarity
requirement for Product-by-Process (PBP) claims, effective April 1, 2016. The Pravastatin
Sodium Case decisions (Cases Nos. 2012 (Ju) 1204 and 2012 (Ju) 2658) have been added to the“Basic Idea” of “Determination on Whether or Not ‘When a Claim for an Invention of a Product
Recites the Manufacturing Process of the Product’ is Relevant.” See details here.
[Original Announcement: JPO Website, Mar. 30, 2016]
Revised Examination Guidelines for Trademarks
The JPO revised the Examination Guidelines for Trademarks, effective April 1, 2016. Until now
in Japan, mottos (for example, catch phrases) could not normally be registered, but they can now
be registered under the following conditions:
If a trademark in an application is only recognized as a mark indicating, in a common manner,(1) an advertisement for goods or services or (2) a corporate identity or business policy, theapplication will not be considered to satisfy the requirements for registration (as in the past).
However, if it can be recognized that the trademark is not limited to (1) or (2) above, but is also
as a coined term or the like, the application will be considered to satisfy the requirements forregistration.
Whether a filed trademark is only recognized as (1) or (2) is determined based on the concept
derived from the entirety of the trademark, the actual state of transaction, and the form or overallcomposition of the mark.
For more details, see the revised Examination Guidelines here (to follow).
[Original Announcement: METI Website, Mar. 22, 2016]

LITIGATION
Chugai Also Wins Second Instance against Generic Drug Companies - Grand
Panel of IP High Court Finds Patent Infringement of Process Patent

Chugai Pharmaceutical has won a patent infringement lawsuit against four generic drug
companies in a second instance at the Japanese IP High Court (Case No. 2015 (Ne) 10014,
English to follow). The grand panel judgement made by the Special Division of the IP High
Court rejected the appeal by the generic companies, fully recognizing Chugai’s arguments. Thedrug in question is OXAROL Ointment, an agent for the treatment of keratosis. With thisdecision, the generic companies must now stop manufacturing and marketing their generic drugs,
which were determined as infringing Chugai’s manufacturing process patent.
The chief judge said that, when determining the first requirement/essential portion of a patentconcerning the doctrine of equivalents, the essential portion of the patent should be determinedon the basis of contribution over the prior art. At the Japanese IP High Court, the Grand Panelof five judges conducts proceedings in cases involving important issues. This is a landmark
decision in that it has clarified the Grand Panel’s standards for applying the “doctrine ofequivalents” to determine infringement.
[Original Press Release: Chugai Website, Mar. 25, 2016]
Settlement of Court Case Involving Mouthwash Package with “Kaba-kun,” a
Character Originating with Meiji Pharmaceuticals
Accompanying the sales transfer of the mouthwash “isodine,” a court battle had been fought
between the drug developer and former seller concerning the package design making use of ahippopotamus character that was well known for years in Japan, but a settlement has beenreached between the two companies (see the first issue of our News Bulletin). Meiji, which hasa registered trademark for the character and which has used it in sales in Japan for many years,
will continue to use the character in the future.
Through this settlement, the former seller, Meiji, will begin selling a new mouthwash making
use of the character “Kaba-kun (Mr. Hippo)”. Meanwhile, Mundipharma, developer of isodine
and engaging in sales of isodine, will continue to use an isodine package having a character
resembling “Kaba-kun” until the end of August this year, after which, from September, adifferent character will be used.
[Original Press Release (in Japanese): Mundipharma Website, Mar. 24, 2016]
Shimano Loses Patent Lawsuit to AppleA former supplier for Apple, Shimano Manufacturing, lost a patent infringement lawsuit (CaseNo. 2014 (Wa) No. 20422) it filed against Apple, seeking an injunction of sales andcompensation for damages, but in a ruling issued by the Tokyo District Court, Shimano’s
demands were rejected. Shimano argued that pins (spring pins) used in the power connector ofApple’s MacBook infringed its patent, in response to which, Apple argued that, though the probe
was co-developed by both companies, Shimano filed for and received a patent independently.
While the details of the decision have yet to be made public, Shimano said “we will be inconsultation with our legal team.”
Concerning this product, Shimano, in addition to the patent infringement lawsuit, also filed alawsuit alleging violation of the Anti-Monopoly Act, the latter of which was disputed as to thepropriety of jurisdiction, and in a tentative decision from February of this year, it was determined
this anti-monopoly case will continue in the Tokyo District Court (see the first issue of our News

Bulletin). A final decision has yet to be reached.
[Original Press Release (in Japanese): Shimano Website, Mar. 18, 2016]

OTHER IP-RELATED NEWS
Reduction in burden of proof in IP litigation - INPIT plans a time stampsaving service
The National Center for Industrial Property Information and Training (INPIT) plans to initiate aservice saving time stamp tokens imprinted with a clear time for the purpose of proving theexistence and identity of electronic documents from March 2017. By the public institution
saving time stamp tokens, it will be possible to prove the time the documents existed forevidence in court disputes and to prove that said documents have not been tampered with, thus
making it possible to reduce the burden of proof on litigants.
Specifically, INPIT will, free of charge, save time stamp tokens issued for electronic documents,
the time stamp tokens issued by an authorized time verification agent. This service is thought tobe useful in patent infringement lawsuits, in which a defendant accused of patent infringement
must prove prior use, or in trade secret infringement lawsuits, in which a trade secret holder must
prove leaked secrets were held and hidden prior to the leak of the trade secret.
[Original Announcement (in Japanese): INPIT Website, Mar. 25, 2016]

NEWS ABOUT SONODA & KOBAYASHI
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April 25-27, 2016, Nanjing, China
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