In April, 2017, Ministry of Economy, Trade and Industry (METI) in Japan revealed a report on a new design of an IP system taking the 4th industry revolution into consideration. The report discloses the possibility of introduction of a compulsory license on SEPs (Standard Essential Patents) in upcoming several years.
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”
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.
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.
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.
The IP High Court in Japan has considered book scanning services to amount to copyright infringement. The judgment became final in March this year because the Supreme Court dismissed the appeal by the service provider. On 30th November, the police in Kyoto arrested a book scanning service provider, who scanned popular Japanese manga comics in response to its clients’ request. This is the first criminal case and could largely affect similar businesses in Japan. In this posting, I would like to briefly explain the reasoning of the IP High Court.
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.
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.
Double track system
If you are sued by a patentee for patent infringement, one of the options you often have would be to attempt to invalidate the patent on the ground that the patent lacks patentability. The issue here is whether you can assert invalidity of the patent at issue to an infringement court, or you need to initiate a separate proceeding at a national patent office or a specialized patent court in order to argue patent invalidity. As for Japan, in addition to an invalidation proceeding at the Japanese Patent Office (Track 1), Japanese patent law allows a defendant in an infringement court to assert patent invalidity within the same proceeding (invalidity defense), and the court can judge the validity on its own (Track 2). This legal system can be referred to as a “double track system”. Examples of jurisdictions with this system besides Japan are the U.S., the U.K., France and Korea.
In Japan, a very important judgment concerning the doctrine of equivalents has recently been handed down; i.e., the Maxacalcitol judgment by the IP High Court. Although the judgment was appealed and is currently pending at the Supreme Court, it is likely that the judgment of the IP High Court will be upheld. If the judgment becomes final, it would be much easier for a “significant” invention to be protected under the doctrine of equivalents.