Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case

trustinip-maxacalcitol-case-supreme-court

In my previous post, I wrote about an IP High Court judgment (the Maxacalcitol case) regarding doctrine of equivalents in patent infringements in Japan. The defendants appealed against the IP High Court judgment and the Supreme Court handed down the final judgment on 24th March, 2017.  Continue reading “Recent development in Japanese patent case law; the doctrine of equivalents and the Supreme Court judgment in the Maxacalcitol case”

Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?

trustinip-stock

Car navigation systems, DVD players, liquid crystal displays, solar panels, DRAM memory and lithium ion batteries are products that have been invented and developed mainly by Japanese companies. The companies created new markets and got high market shares with many patents to exclude rival companies. Then the world’s markets expanded several times larger in scale. They kept investing high amounts in R&D for higher functionalities. Their world’s market shares recorded once more than 80% in all above-mentioned products except for DRAM memory (more than 40%). However, even though the market expanded, their shares have been drastically decreasing although they had developed cutting edge technologies with many patents related thereto. There is one report (Masahiro Samejima et al., Encouragement of IP Strategy, February, 2016), which analyzed the reason of their defeat in business and introduced a new interesting point of view. I would like to briefly discuss it here.

Continue reading “Why did Japanese electronics companies surpass rivals in technologies and number of patents, but lose in business?”

Revised Patent Examination Guidelines in China welcome more patents on business models

business-model-innovation

Last October, the State Intellectual Property Office of China (SIPO) released draft revisions to its Guidelines for Patent Examination for public consultation (see my earlier post). This month, SIPO published the final text of the revised Guidelines, which will enter into force on 1 April 2017. In comparison to the draft, the final version remains substantially unchanged. This may be a sign of support from the stakeholders. In fact, the proposed revisions received a quite good press immediately after their release, even when it comes to the part of revisions regarding patents on business models, which have been and probably are still one of the most controversial aspects of the IP system in many other countries such as the U.S.

As the SIPO explicitly stated, the planned revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data and to improve the IP protection system for business models. This emphasis reflects the state of innovation in China, where indigenous businesses have been so far quite successful in developing innovative services and products in these emerging fields. While it can be debated whether an expansion of patent protection into the arena of business models would indeed do more good than harm to the innovation, the objective of the Chinese policymakers is clear: to promote business model innovation through more IP protection.

While it remains to be seen in long term whether the above policy objective can be achieved, it is for individual inventors and businesses more interesting what immediate changes in practice will come out of the planned revisions. So, let’s first take a look at the revision itself. Continue reading “Revised Patent Examination Guidelines in China welcome more patents on business models”

The scope of patent with an extended term became clearer with three concrete standards provided by the IP High Court in Japan

A patent term may be extended if there is a period during which a patented invention is unable to be worked until a marketing authorization has been granted (For further information, see here). However, there was, until recently, no case law in Japan on the interpretation of the scope of patent with an extended term, and high uncertainty as to patent infringement by generic drugs was a big issue in the pharmaceutical industry. On 20th January, 2017, the IP High Court’s judgment (grand panel) was handed down, answering this issue by establishing three concrete standards. This judgment attracts great attention of generic companies and will boost their marketing of generic drugs because these standards contributed to clear away the uncertainty of patent infringement.

Continue reading “The scope of patent with an extended term became clearer with three concrete standards provided by the IP High Court in Japan”

Recent developments on the admissibility of patent term extension in Japan

Drugs are not allowed to be marketed without a marketing authorization. Taking into account the investment on R&D for a new drug and the necessity to recoup such investment, the patent term may be extended by a period not exceeding 5 years if there is a period during which the patented invention cannot be worked. Later in this post, I will discuss the judgment of the Japanese Supreme Court in 2015, which caused the guidelines on patent term extension to be significantly amended.

fig-1

Continue reading “Recent developments on the admissibility of patent term extension in Japan”

China’s Patent Boom

This post was originally published on The IPKat on 10 January 2017.

World Intellectual Property Organization recently published its annual World Intellectual Property Indicators report. This report states that, amid rising worldwide demand for intellectual property rights, a new record was set. Namely, with around 1.1 million new patent applications in 2015, the State Intellectual Property Office of China (SIPO) became the first patent office to receive more than a million applications in a single year. This was almost as many applications as the next three offices in the ranking combined (the patent offices of the U.S., Japan and South Korea). Some people are astonished and also confused about China’s patent boom in recent years: What drives such a strong growth in patent applications? How good is the quality of the massive applications? What impacts does the boom have on patent protection in China? This article briefly discusses some aspects of these questions. Continue reading “China’s Patent Boom”

Is the product-by-process claim “dead” in Japan?

trustinip-product-by-process-claim

After the Supreme Court in Japan handed down a very important judgment in 2015 on the scope of the Product-by-Process (“PBP”) claim, and its doubtful validity concerning the clarity requirement (Pravastatin sodium case, a drug lowering the cholesterol in blood), the authorities commented that the PBP claim is “dead” because almost all PBP claims would be fairly likely to be invalidated according to the Supreme Court’s strict judgment on its patentability. However, very recently, the IP High Court handed down a relevant judgment on this issue, wherein it basically followed the Supreme Court judgment but limited the application of the Supreme Court’s judgment to the “true” PBP claim.

Continue reading “Is the product-by-process claim “dead” in Japan?”

Chinese Patent Office proposed revisions to its Examination Guidelines

guidelines-for-patent-examination

On 27 October 2016, the State Intellectual Property Office of China (SIPO) released proposed revisions to its Guidelines for Patent Examination for public consultation. According to SIPO’s explanatory note, the proposed revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data etc., to improve the IP protection system for business models, to improve the post-grant patent documents amendment system and timely disclosure of procedural information on patent examination.

Mainly, the following revisions are proposed: Continue reading “Chinese Patent Office proposed revisions to its Examination Guidelines”

The strategies for patent litigation under the double track system in Japan

double-track (trustinip)trustinip-double-track-system

In my previous posting (here), I described advantages and problems in the two systems, i.e., the double track system and the bifurcation system in patent litigation. In this posting, I, as a Japanese patent litigator, would like to introduce several practical strategies for patent litigations under the double track system in Japan in the form of Q&A.

Continue reading “The strategies for patent litigation under the double track system in Japan”

A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination

common-knowledge

To determine whether an invention involves an inventive step, the Chinese Patent Office’s Guidelines for Patent Examination (the “Guidelines”) require the patent examiner, inter alia, to make a judgment, starting from the closest prior art and the technical problem actually solved by the invention, as to whether or not the claimed technical solution is obvious to a person skilled in the art in the light of relevant reference documents and common knowledge. As the Guidelines do not give a strict definition of “common knowledge” and, in practice, the examiner is not required to prove common knowledge when he/she first introduces it, what should be qualified as common knowledge in a particular case often becomes a subject of dispute.

Recently, the Beijing IP Court handed down a decision (No. 3495 [2015]) resolving such a dispute. In its decision, the Court reaffirmed the Patent Reexamination Board (PRB)’s burden to state reasons or provide corresponding evidence for proof, if the interested party has objections to the common knowledge introduced by it. The Court further clarified the relationship between the 3GPP (a telecommunications industry collaboration that organizes several important standards from GSM through UMTS and LTE to 5G) standards documents and common knowledge, considering the increasing frequency of these documents being cited as prior art in telecommunications area. Continue reading “A recent case in China concerning the Patent Office’s burden to prove common knowledge in patent examination”