The information found or referenced herein is not intended to be legal advice or a substitute for obtaining legal advice from a licensed attorney.
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On 21st November 2008, Nichia Corporation and Sharp Corporation announced a patent cross-licensing agreement which enables each of them to use inventions related to LEDs and laser diodes covered by numerous patents in Japan and overseas.
Here Japan's administrative decision to shift all terrestrial broadcasting to terrestrial "digital" broadcasting in 2011 plays an important role. Regardless of global economic situation, the Japanese are unique in a sense that they are concerned with quality images aired, as well as their electricity bills and cost efficiency of products that are destined for aging.
In a recently reported intellectual property news the Tokyo District Court ruled in favour of an individual inventor (plaintiff), putting an end to a patent infringement suit that lasted for almost three years.
"Preparing for working the invention" as stipulated in article 79 should be understood to mean that "a person who made or learned an identical invention without knowledge of the content of an invention claimed in a patent application must have an intention to work the invention immediately as well as such an intention being observable to an extent that it is objectively recognised".
In this respect, the court held that from evidences provided by Foster, no communication with possible clients at the CEATEC JAPAN 2001 initiating a mass-production of AV Tower can be found, and Foster's preparation only began when they received orders from Alpine in December 2001, two months after the filing date of the plaintiff's application (5th October 2001). Moreover, although they began providing prototypes to Sony in June 2001, no contract was made and AV Tower never became a product in the end.
The Intellectual Property High Court ruling of 26th February 2008 on copyright infringement revealed a rather upsetting fact that government institutions did not respect the Copyright Law. The court acknowledged that an infringing act was conducted by an employee of the Social Insurance Agency and upheld the plaintiff’s claim for damages, elimination of reproduced works and preventive injunction.
The plaintiff is a journalist whose subject matters include recent national pension scheme fiasco. Four works in question were published in a weekly magazine with an intention to compile them into one book in the future.
The accused employee had scanned the works and submitted them for viewing on the electrical bulletin board in the intranet of the Social Insurance Agency.
As the case concerns a reproduction of copyrighted materials on the intranet, the author's "exclusive right to effect a public transmission of his work (including, in the case of automatic public transmission, making his work transmittable)" under article 23 paragraphs 1 and 2 of the Copyright Law became a centre of disputes, together with the author’s exclusive right to reproduce pursuant to article 21.
The defendant, i.e. the state, argued that the reproduction in this case should be regarded as an admissible reproduction for the purpose of "internal use" stipulated in article 42 paragraph 1, and therefore such a conduct should not be applicable to the provision under article 49 paragraph 1 item (i) relating to the public transmission of reproduction for purposes other than those made admissible by provisions including article 42.
However, the High Court judged that the provision under article 42 cannot and should not be extended to protect such reproduction being publicly transmitted, and dismissed any discussions relating to article 49 paragraph 1 item (i):
Article 42 paragraph 1 makes reproduction admissible with a certain limit such as a reproduction necessary as an internal material for the purpose of administration. As such, it is obvious that extending the application of article 42 paragraph 1 is unnecessary and there is no reason to protect recording of the plaintiff’s works in the intranet system in question and making an automatic public transmission to a considerable number of people in the internal subdivisons of the Social Insurance Agency, Social Insurance College, Social Insurance Operation Centres, Regional Social Insurance Bureau and Social Insurance Offices.
It is worth noting that these reproduced works of the plaintiff were not only accessible from the electrical bulletin board; those who had an access to the system could store and print reproduced works― a fact that alarms us of a possible situation where reproductions are being distributed to populations outside the boundary of administration.
In this sense, although the court's order that the defendant is to delete all reproduced works and injunction preventing further reproduction were appropriate and creditable, its decision regarding the calculation of damages under article 112(3) may be disappointing. Moreover, it is doubtful whether the actual damages that came out of this calculation, 430,500 yen (almost eighth of the claimed amount, 3,740,000 yen) can be punitive enough to serve as a deterrent to copyright infringements.
On 12th June 2008, the Osaka District Court admitted a claim for damages regarding a wrongful acquisition and use of a website-constructing program and user information data for online dating service based on the Unfair Competition Prevention Law.
Of the four accused, three were found to be have taken part in wrongful acquisition, disclosure and use of trade secrets and so forth defined under Article 2 paragraph 4 items (iv) to (viii) of the Unfair Competition Prevention Law.
The term "trade secret" as used in this Law means technical or business information useful for commercial activities such as manufacturing or marketing methods that is kept secret and that is not publicly known.
However, the crux of this case is that the secrecy of the program and the user information data were kept rather "sloppily", as argued by the defendants; it is all too easy to conclude that it is due to this carelessness that the defendants managed to steal.
Nevertheless, the Osaka District Court in its decision held that both the program and the user information data must be regarded as trade secrets of the plaintiff, as they have been "useful for the business that the plaintiff pertains" (obviously, the court has taken into account that these were for online dating services), were "not made known to the public" and "kept secret" by means of online protection which required an ID and a password to gain access.
The defendants were charged with damages which included an amount corresponding to lost profit; the court had held that they had not only spilled the beans but also their use of these trade secrets affected the business operation of the plaintiff in one way or the other.
On 30th May 2008, the Grand Panel of the Intellectual Property High Court rejected a suit seeking a cancellation of the JPO decision.
An issue under attack was the “excluding claim” used by Taiyo Ink to avoid invalidation of claims 1 and 22 of their patent (#2,133,267 entitled “Photosensitive thermosetting resin composition and method of forming solder resist pattern by use thereof”).
The court addressed that Tamura Kaken’s interpretation of the Examination Guidelines regarding “excluding claim” as an exceptional amendment was inappropriate.
...description in Note 1 of Explanation in the Examination Guidelines [Part III Chapter 1 Article 3-2(4)] that “invention substantially different in technical ideas and having an inventive step but coincidently overlaps with the description of the relevant prior art” indicates a case where an amendment using excluding claim render the invention in question a grant of a patent, and is not about requirements that need to be met for the admission of excluding claim. Therefore, the plaintiff’s interpretation of the above description that it indicates requirements for the admission of excluding claim as an exception is misguided.
The High Court further stated that the Examination Guidelines are made to help examination of applications to be in compliance with the Patent Law, not to determine what is exceptional in view of the Patent Law.
The fact that a registered trademark was added in the description of the excluding claim also invited several disputes.
Consequently, all the corrections made by Taiyo Ink were found to be “for the purpose of restriction” and “clarifying some ambiguous statements in the original descriptions,” therefore did not violate Patent Law and Regulations.
This case involved a suit for cancellation of the JPO's decision that a patent application for a computer software invention does not satisfy the condition of a statutory invention.
According to the examination guidelines by JPO for inventions relating to computer software, a statutory "invention" is a highly advanced creation of technical ideas utilizing a law of nature, and when an information processing by software is concretely realized by hardware resources, the software is a "a creation of technical ideas utilizing a law of nature". And the phrase "information processing by software is concretely realized by hardware resources" means that when a computer reads software therein, the computer and software cooperate with each other as concrete means for realizing a computing or processing of information for an application purpose, and as a result, a specific information processing apparatus (machine) or its operation method is provided.
Lucent Technologies, Inc. filed a patent applicationen titled "Method For Generating Compacted Representation Of Group Of Bits" on 18 October 1999 (Japanese Patent Application No. 2000-122538). Lucent submitted an amendment once, which was rejected by the examiner. Again, Lucent made an amendment and at the same time brought a suit for cancellation of the examiner's decision, which was also rejected by the JPO.
The application after the amendments claimed an apparatus for generating a group of bits into which a group of n bits are inputted to output a compacted representation of a group of ℓ bits as a computation result using a hash function. The hash function is accompanied with a mathematical problem to reduce the probability of collision, and thereby the invention includes calculations as an algorithm to solve the problem. That is, the claims of the invention can be expressed by a hash function, such as the expression for claim 1: h(m) = ((m+a)2 mod p) mod 2ℓ.
Such calculations (algorithm) themselves are laws of science which do not utilize a law of nature. In addition, Lucent admitted that the apparatus itself does not have any novel structure based on a technical idea. The description of the application also reveals that the apparatus is defined as a simple apparatus for calculations of any given mathematical algorithms. As a result, the application does not add a new creation to the existing apparatus, and is substantially a mathematical algorithm itself, which does not fall in the statutory "invention".
On 27 July 2008, the Tokyo District Court dismissed an appeal by a Swiss corporation (plaintiff) against the Commissioner of the Japanese Patent Office (defendant).
The plaintiff originally filed an application for design registration on 29 March 2006 in Switzerland (File No. 132745), and then filed another application for the same design at 3:49 PM on 28 September 2006 in Japan. At the time of filing in Japan, they did not implement a procedure for taking advantage of the priority of the original filing under the Paris Convention. Later at 6:06 on the same afternoon, the plaintiff made an amendment to add necessary matters to claim the priority through an electronic data processing system. Then on 28 December 2006, the plaintiff submitted a document including a priority certificate and its translation about the original filing from the Swiss Intellectual Property Organization.
However, the Commissioner of the JPO disapproved both of the amendment and the later submission, stating that the procedure for claiming priority of an original filing for design registration under the Paris Convention has to be done simultaneously with the next filing of the application. The use of the computing system for a procedure for a priority under the Paris Convention can be approved only when the application document includes a written record of necessary information about the original filing.
The plaintiff argued that the Paris Convention for the Protection of the Industrial Property (Article 4, D-(1)) includes the following sentence:
Any person desiring to take advantage of the priority of a previous filing shall be required to make a declaration indicating the date of such filing and the country in which it was made.
The word "date" is used in the above sentence in English and, in the French and Spanish versions of the article, the words "moment" and "plazo" are used, respectively, which means that the term for claiming a priority should be determined on a daily basis.
The Tokyo District Court denied the argument, pointing out that the Article 43-1 of the Japanese Patent Law (application mutatis mutandis of Article 15-1 of the Japanese Design Law) includes the phrase "the same time of the filing of the application", which is completely different in meaning from the expression "on the same day".
Each country shall determine the latest date on which such declaration must be made. Accordingly, the Japanese Patent Law includes the above phrase, that is, it should be taken into consideration that the interpretation of the Japanese Patent Law is an issue of an interpretation of a national law. The time difference of 2 hours and 17 minutes extinguished the possibility to take advantage of the priority of the original filing from the plaintiff.
In this case, the plaintiff, whom we will refer to as person X, owns and maintains a blog and often posted his reports on the Internet about cases in public trials he attended as a court spectator. Person X is one of the victims of the violation on the Securities and Exchange Law by Livedoor Co., Ltd. The defendant is Yahoo Japan Corporation.
Originally, this case started when the defendant, without permission from person X, placed on a page of "Yahoo! JAPAN" some articles, which the latter had written and posted on the Internet. Person X claimed that the action by Yahoo infringed the copyright of his work.
However, similar to the judgment by the Tokyo District Court, the Intellectual High Court ruled on 17 July 2008 that there was no infringement, adopting the same reasoning as in the original judgment.
A literary work should include "a creatively expressed thought or feeling" to be protected by the Copyright Law. That is, a written work having some unique characteristics of the person who wrote it can be called a creative expression. But sentences that describe only facts and without any personal thoughts or opinion of the writer cannot be considered creative expression.
The sentences in question are descriptions as heard by person X, or the summaries of verbal evidences that person X had seen, heard, and written down during the trials, factual sentences such as "This was the first budget of the third period in 2004" and "He was told to change the value of ordinary income into 5 billion yen".
Person X argued that he arranged the text in a hierarchical structure for clearer understanding. He also changed the order of the evidences to post them on the Internet in accordance with time series facts.
However, the court rejected the argument, stating that there was nothing extra ordinary about how the arrangement was done and that no originality can be found in the short sentences that state only facts.
On 17 October 2007, the Intellectual High Court dismissed an appeal from a person, Mr. Kanemitsu Yamaoka, who runs a processed food import company.
Mr. Yamaoka brought a suit to the High Court after JPO had rejected his request for reversal of the examiner's decision on a patent application he had filed entitled "Method for Processing Tuna Meat For Preservation" (Japanese Patent Laid-Open Application No. 2002-204650).
The application claimed a method for processing tuna meat for preservation which includes: contacting a CO gas-containing smoke with fresh tuna meat by inserting a plurality of injectors arranged in parallel into the tuna meat, blowing out the smoke from the tips of the injectors into the tuna meat, pulling the injectors out of the tuna meat, and intermittently repeating the insertion and the pulling-out, so that the smoke bubbles are injected into the tuna meat and the tuna meat has a residual CO concentration of 1500-2400 g/kg therein; and refrigerating the processed tuna meat at a temperature of around -18 degrees C.
JPO rejected the application because the invention was obvious to those skilled in the art from the prior art such as Japanese Patent Nos. 8-168337 and 6-292503. Against the rejection, Mr. Yamaoka asserted that the method in the prior art used a "CO gas"; and the method, according to the application, used a "CO gas-containing smoke". Moreover, the prior art has showed no specific range of a residual CO concentration.
The Intellectual High Court expressed opposition to the plaintiff, stating that, at the time the application was filed, it had been well known that CO gas binds to myoglobin in tuna meat and this prevents browning of the meat, and keeps its fresh red color. Even when a CO gas-containing smoke, which consists of CO gas and trace elements, is used and the browning is prevented, the prevention effect is obtained through the action mechanism of the CO in the smoke. The application has a description about the trace elements that says: "the trace elements other than the CO gas impart additional effects such as preservation, disinfection, and improved flavor in the smoke process". But this sentence is the only explanation about the trace elements, which does not support the appeal of the plaintiff on the difference between the "CO gas" and the "CO gas-containing smoke".
Also, there had already been a known problem that if a tuna meat, after CO gas treatment, keeps its fresh color for a very long period of time, it misleads consumers about its freshness. Thus, it was obvious for those skilled in the art to try to solve the problem by repeating experiments to determine a range of a residual CO concentration and finding a method for dissipating the browning preventing effect after the thawing of tuna meat in an appropriate time that does not mislead consumers about its freshness. However, in the description of the application, there is not any written reason for the claimed specific range of a residual CO concentration. The Court does not support any appeal that is not supported by description. Furthermore, the application that relates to a process using a smoke- containing CO gas may possibly offend public order or morals under the Food Sanitation Law.
TANITA Corporation brought actions twice for injunction and damages against OWA Medical (hereinafter, referred to as JAWON), a subsidiary of JAWON Medical Corporation (a Korean company), both of which were dismissed.
TANITA is a manufacturer of measuring instruments, and owns Japanese Patent No. 3830255 entitled "Body Fat Scale" (registered on 21 July 2006). The application was patented after corrections for an invention, which was deemed novel because the scale includes an attachment for foot as one element. The said attachment includes an electrode for foot therein which enables body fat scaling of a person with socks and/or shoes on, while the electrode is brought in contact with the skin of the foot and positioned above the sock or shoe. The attachment for foot can be used as a separate component or by being attached to the main body of the scale. The main body of the scale includes an electrode for sole therein, and is used in the conventional manner, that is, a person may step on it with his/her bare feet.
To the contrary, JAWON imports and sells another type of body fat scale having an electrode for foot, which is fixedly attached to the top surface of the main body of the scale, and also enables a body fat scaling of a person with socks and/or shoes on.
On 5 June 2008, the Intellectual Property High Court completely held the decision as the Tokyo District Court had ruled on 17 July 2007, stating that the structure of scales imported and sold by JAWON is different from what had been claimed in the TANITA Patent. TANITA insisted that the presence of an electrode for foot is the key in the patent, and the position (whether it is permanently placed on the body of the scale or it is incorporated in an attachment component) is not a major point. However, the attachment for foot is a removable accessory that even when attached to the main body of the scale it does not form as a fixed member of which. In addition, the patent is characterized by an electrode for foot provided only in an attachment for foot that can be attached to and removed from the main body of the scale. Such a difference in its structures eliminates any reason for recognizing infringement by the JAWON scales against the TANITA Patent.
The Coca-Cola bottle is now registered as the first 3D trademark of a bottle shape in Japan (see the previous related articles below: "A Bright Guiding Light For A Three Dimensional Trademark" and "Birds Chirp Across the Nation").
Coca-Cola Co. Ltd., a beverage company in the U.S., which had been demanding registration for its so-called "contour bottle" since 2003, finally won the suit for cancellation of the decision JPO had made to reject the registration application which stated that the bottle was used together with the Coca-Cola label, and that a trademark with the label cannot be regarded as the same as the trademark without the label.
The company had appealed to the Intellectual Property High Court, and on 29 May 2008, the Court ruled in favor of the company and recognized the contour bottle as a 3D trademark because it is instantly distinguishable from other products.
The Court listed the facts to support the distinct nature of the contour bottle:
(1) The company has consistently used the same unique design for the glass bottle since the start of the product in 1916;
The application for the Coca-Cola bottle relates to a container which can be expected as a beverage bottle. However, when the shape acquired distinctiveness through its use, it can be registered as a trademark. JPO claimed that the opening form of the bottle in the application is different from that of the bottle actually used, but it is natural to change the shape of a container to maintain its quality and function in response to the changes in technical advancement and social environment. Even if any lettering, manufacturer's logo, or graphics are used on the container, or minor changes are made to the size or configuration of the container, it is not right to deny the distinctiveness acquired through its use. And actually the Coca-Cola bottle shape has acquired its outstanding distinctiveness based on the facts listed above, which are enough to recognize the product container as a trademark.
In this case, a demand for trial for invalidation of a trademark right was admitted, and a suit for cancellation of the admission was filed.
Le Freak Corporation owns Japanese Trademark No. 4832063 for "Shoop" (registered on 12 July 2004) for designated goods belonging to Class 25.
Crown Creative Co., Ltd., who owns Japanese Trademark No. 4545251 for "CHOOP" (registered on 22 February 2002) for designated goods also belonging to Class 25, demanded the trial. The two trademarks actually have the same sound and are pronounced as "shu-u-p".
The trial was made based on the similarity between the two trademarks, and the trademark for "Shoop" became invalidated for goods including sweaters, Y-shirts, night-clothes, underwear, swimming costumes, swimming caps, and any goods similar to these as Le Freak Corporation demanded.
However, the Intellectual Property High Court overturned the trial decision relating to the similarity on 28 November 2007. "Shoop" promotes a casual fashion brand for teenage girls who like cute clothes, while "CHOOP" promotes sexy fashion brand for women in their 20s and 30s. There are differences in the concept of clothing (preference and taste) and motives (purpose for wearing the clothing, and place to go wearing the clothing) in the two consumer groups. In addition, the word "CHOOP" is pronounced as "chu-u-p" (with the beginning "ch" sound) by people other than teenagers without the knowledge of it being a fashion brand, while the word "Shoop" is pronounced as it is read by anyone. This means there is no possibility that the two trademarks can cause confusion and misidentification among consumers.
The Intellectual Property High Court also pointed out that the trial proceeding had been illegal, stating the description "any goods similar to these" for the goods to be invalidated had obscured the range of designated goods over which the decision would be effective, but no appropriate action was taken to correct it during the proceeding. The content and range of designated goods and services for a registered trademark have to be clear and specific.
In this case, an action for declaratory judgment was filed by YAMATO-SCALE Co., Ltd. demanding a court confirmation, which was rejected by the Intellectual Property High Court.
YAMATO-SCALE Co., Ltd. demanded to obtain a confirmation that with respect to the sale of an automatic weight measuring apparatus which is a product manufactured by YAMATO-SCALE, ISHIDA Co., Ltd. does not have a right to seek injunction based on EP 0268346 owned by the latter.
On 20 September 2007, the Intellectual Property High Court overruled the demand as unlawful because ISHIDA admitted themselves that they did not have the right to an injunction as far as the patent was concerned, which expired on 15 May 2007.
Generally, in a declaratory judgment, the existence of a right related to a subject matter should be affirmed to determine the benefit rights of the parties involved in the dispute, and it is also necessary to ensure that the declaratory judgment is the appropriate approach for the solution of the dispute. However, in a case where a defendant does not challenge the existence of the right, unless there are special circumstances, there is no necessity for the declaration, which makes the demand unlawful.
In this case, ISHIDA (the defendant) admitted that they did not have a right to an injunction on the sale by YAMATO-SCALE, and there exist no special circumstances that require the court to confirm the fact again.
IRIS OHYAMA Co., Ltd. filed a patent infringement litigation against PLACOM Co., Ltd. who imported and sold a product called Full Cover Hose Reel Set. IRIS OHYAMA claimed that the product literally infringed their Japanese Patent No. 3901855, entitled "Hose Reel" registered on 26 January 2007.
On 31 March 2008, the Tokyo District Court concluded that an injunction should be granted to prohibit any transfer, exhibition, and import for the purpose of transfer of the product by PLACOM.
The PLACOM's reel has elements which meet every element included in the above claim 1, but a side-step of the PLACOM's reel which corresponds to the foot in the IRIS OHYAMA patent is removably mounted to a frame. PLACOM asserted that the removable structure is different from that in the patent, which is integrally formed with the frame and substantially limited to rotate around a supporting point. Moreover, the underlined part of Claim 1 was originally written as "a foot which closes the opening formed in the bottom surface" before amendment, and the Claim 1 after amendment includes the term "movable" although the description only discloses a structure rotatable between a folded position and an extended position. The amendment that has been done in the Claim 1 above has broadened the scope of the invention, which is against the requirement for an amendment.
However, the Court rejected the assertion stating that there is no word in Claim 1 indicating the limitation to rotation; and the foot may be slidable or removable, for example. This can be seen from both of the terms "rotatably" and "movably" used in Claim 1. In addition, it is readily envisioned that the rotatable structure in the description was explained as one embodiment to achieve one object of the invention: a stable stand in the extended position and a compact size in the folded position of the reel. The description includes no suggestion that the rotatable structure is essential to the invention, and also there is no reason for the structure to be essential. Rather, a person skilled in the art naturally understands the structure may include a slidable foot or a removable foot to achieve the above object. This means the amendment does not include a new matter.
In this case, a claim for cancelling a rejection of an application for trademark registration was approved by the Intellectual Property High Court.
Aston Martin received a final rejection from JPO on a trademark application for "DB9" - consisting of two letters and one number - when they made an amendment on 1 October 2004 so that it would belong to Class 12: "Automobiles, bicycles, motorcycles, parts and fittings therefor", and Class 37: "Repair, restoration, maintenance, polishing services of land vehicles, parts and fittings therefor".
On 25 November 2004, JPO rendered the rejection stating that the "DB9" falls in the range of the Japanese Trademark Law Article 3(1)-(v), that is, it "consists solely of a very simple and common mark".
On 31 October 2007, the Intellectual Property High Court supported the JPO decision for the part although the "DB" stands for David Brown who is the founder of the company and "9" indicates one of the classic series of cars bearing the initials "DB". However, the Court reversed the JPO decision based on the Japanese Trademark Law Article 3(2) which says "a trademark may be registered under any of items (iii) to (v) of the preceding paragraph if, as a result of the use of the trademark, consumers are able to recognize the goods or services as those pertaining to a business of a particular person".
In the "automobiles" field, the number of famous automobile manufacturers is not large and new cars are not actually often released, thereby a certain amount of people in the world closely watch newly launched automobiles and their names. Only a small number of advertisements and newspaper articles were made for the car "DB9" and its sales volume was not significant in Japan, but the DB series were known among the Japanese people who had shown interest in automobiles during the above rejection date.
Also, there is no problem with the amended Classes. "Bicycles" and "motorcycles", like automobiles, are also vehicles and automobile manufacturers often produce these goods, and the dealers and consumers of automobiles often deal or purchase bicycles and motorcycles as well. In addition, the manufacturing of automobiles, repair, restoration, and maintenance services are quite involved with each other. That is, when any designated services are accompanied by the mark "DB9", dealers and consumers understand that the services are made for "DB9" by Aston Martin.
Furthermore, there is no evidence that proves that the mark "DB9" is used for any product names or services provided by people other than Aston Martin which is the only one who exclusively used the said mark.
Therefore, the short mark "DB9" can be protected as a registered trademark.
NIITAKA Co., Ltd. owns Japanese Patent No. 3609532 entitled "Dishwasher Detergent Powder". Claim 1 of the patent had a description that read: "0.5% by weight or less of KOH" as one of the essential elements of a detergent powder according to the invention.
NIITAKA demanded a trial to correct the said description to read: "from 0.5% to 5% by weight or less of KOH", as NIITAKA alleged that they had eliminated a part of description of Claim 1 by mistake for amendment of the patent upon receipt of rejection by an examiner. However, JPO denied the demand on 1 May 2006, stating that the correction substantially expanded or altered the claim scope. NIITAKA brought a suit for cancellation of the decision.
On 28 November 2007, the Intellectual Property High Court supported NIITAKA and cancelled the decision made by JPO.
The amended description that reads: "0.5% by weight or less of KOH" was included in Claim 1 in the phrase "from 0.5% to 5% by weight or less of NaOH and/or 0.5 % by weight or less of KOH". The description indicates no lower limit, and means that the detergent may contain 0% KOH by weight. Also, although it is naturally understood that either NaOH or KOH is included as one essential element, the conjunction "and/or" indicates that there might be a case where neither NaOH nor KOH is included in the detergent.
Referring to the examples described in the patent for confirmation, among ten examples in the described invention, only Example 8 corresponds to the case where 0.5 % by weight or less of KOH is included. JPO appealed that NIITAKA had only eliminated the original three words of "from", "to", and "5%" to exclude a part of the described invention from the claim scope. But if so, because the invention has been consistently explained that having included either NaOH or KOH therein, NIITAKA would lose most of the claim scope by the amendment, which contradicts any reasonable economic activities.
Moreover, the fact that 0% by weight of KOH is included in the detergent and the fact that NaOH and/or KOH are one essential element literally conflict with each other, it requires a certain logic operation to construe the claim. As any scope of claims should be easily understood through the description itself, the description "0.5% by weight or less of KOH" is inappropriate as claim words. As a result, based on the statement that NaOH and KOH have similar properties and activities as compounds, it is apparent that the description "from 0.5% to 5% by weight or less of KOH" was an error.
A former employee of Mitsubishi Chemical Corporation, whom we will refer to here as person A, made a claim for further consideration of patents of inventions. Based on Article 35 of the Japanese Patent Law (see below), the Tokyo District Court partly dismissed the case on 29 February 2008.
The patents: Japanese Patent No. 1466481, entitled "(3-Aminopropoxy)Benzyls"; and Japanese Patent No. 1835237, entitled "Serotonin Antagonist" cover a drug product which has been marketed under a brand name of ANPLAG Fine Granules/Tablets, and have considerably contributed (and will supposedly contribute) to the sales amount of 1800 million dollars in total during its sales period of 16 years since 1993.
In Japan, the right to obtain a patent right of an invention created by an employee is usually assigned to the employer through a contract, employment policy, or other agreement, so that the employer can file a patent application in its own name as applicant. And the employer is supposed to remunerate the employee for the employee invention in accordance with the agreement by means of compensations for application, implementation, and assignment of the invention, respectively. Specifically, a compensation for application should be paid in ten years from the date when the application is filed. That is, a 10-year statute of limitations ("extinctive prescription") for claiming for a reasonable amount of remuneration begins to run from the said date.
As for JP 1466481, the payment date of compensation for application was 20 August 1981, that of compensation for assignment was 10 December 1988, and that of compensation for implementation was 7 October 1993 when the patent was implemented, from which a 10-year extinctive prescription began to run for each remuneration. However, Mitsubishi Chemical paid about 10 dollars to person A as compensation for application in November 1981, and thirty dollars as that for assignment for the former patent in February 1989, which means the extinctive prescription resumed to run from these dates. Similarly, as for JP 1835237, the latest payment date of compensation was 11 April 1994.
It was 1 February 2007 when person A claimed for further consideration of the two patents, revealing that ten years have elapsed counting from the starting point of extinctive prescription for each of the compensations. Person A appealed that five years to evaluate the outstanding effect of the inventions onto the drug product should be counted in before the extinctive prescription for compensation for implementation begins to run. However, the Tokyo District Court denied the appeal, and ruled that the employee claim was barred.
Article 35 of the Japanese Patent Law: Employee Inventions
(1) An employer, a legal entity or a state or local public entity (hereinafter referred to as the "employer, etc.") shall have a non-exclusive license on the patent right concerned, where an employee, an executive officer of a legal entity or a national or local public official (hereinafter referred to as the "employee, etc.") has obtained a patent for an invention which by reason of its nature falls within the scope of the business of the employer, etc. and an act or acts resulting in the invention were part of the present or past duties of the employee, etc. performed on behalf of the employer, etc. (hereinafter referred to as an "employee invention") or where a successor in title to the right to obtain a patent for an employee invention has obtained a patent therefor.
(2) In the case of an invention made by an employee, etc. which is not an employee invention, any contractual provision, service regulation or other stipulation providing in advance that the right to obtain a patent or the patent right shall pass to the employer, etc. or that he shall have an exclusive license on such invention shall be null and void.
(3) The employee, etc. shall have the right to a reasonable remuneration when he has enabled the right to obtain a patent or the patent right with respect to an employee invention to pass to the employer, etc. or has given the employer, etc. an exclusive right to such invention in accordance with the contract, service regulations, or other stipulations.
(4) The amount of such remuneration shall be decided by reference to the profits that the employer, etc. will make from the invention and to the amount of contribution the employer, etc. made to the making of the invention.
This case involved a suit for cancellation of the examiner's decision affirming a final rejection of a patent application.
In this case, the Intellectual Property High Court ruled against the party to the suit, stating that an amendment for changing the subject matter of a patent application from a product to a method substantially claims a right having a law effect different from the original before the amendment.
Specifically, Shimadzu Corporation filed a patent application entitled "Holographic Grating" on 25 February 2000. After receiving a final rejection from the examiner, Shimadzu requested examination, and also submitted an amendment on 8 April 2004. Unless the amendment was approved, the claimed product would still be considered part of the products that belong to the prior art. However, the amendment was dismissed.
Before the amendment, the application contained three claims for "a holographic grating", including Claim 1 in form of a product-by-process claim. After the amendment, two of the three claims were eliminated, and the application was defined by one claim for "a method for fabricating a holographic grating".
A product-by-process claim is one in which a product is defined at least in part in terms of the method or process by which it is made. That is, the invention written in form of a product-by-process claim falls in a category of "an invention of a product", not a category of "an invention of a method" or "an invention of a product and a method". An applicant is able to choose from either "an invention of a product" or "an invention of a method" to claim, and the choice is stated in the claims of the application. The distinction between the two categories appears in the claim descriptions. With reference to the claims of the Shimadzu application, the claim 1 before amendment started with a phrase, "A holographic grating" which obviously falls in the category of "an invention of a product", while the claim 1 after amendment started with a phrase, "A method for fabricating a holographic grating" which falls in the category of "an invention of a method".
On 20 September 2007, the Intellectual Property High Court reckoned that Shimadzu had made an amendment to change the subject matter of the patent application, which changed the scope of claims of the application, as a result of that the examiner's decision was supported and agreed upon.
This is a case of unfair competition and name right infringement on the Internet.
Unit Japan Co., Ltd. is a company that sells beauty machines and runs an esthetic salon, the director of which is a certain person X from Taiwan who teaches beauty techniques at the salon.
TOPLASER JAPAN Co., Ltd. (the name was changed in 2007 and now called "MUSE") is a Chinese company that manufactures and sells beauty machines including those that Unit Japan sells.
The action of TOPLASER at issue was as follows: they had a website in Japanese version (already eliminated from the Internet) and without permission from Unit Japan, they listed the name of the latter under the title "Introduction of Our Agents and Subsidiaries", and also made a link to the Unit Japan's homepage. In addition, the name of person X was posted above the name and address of the Unit Japan's salon so that inquiries would be directed to the salon. Against the action, Unit Japan sued TOPLASER seeking compensation for the damage under Unfair Competition Law.
Person X has been internationally famous as a skilled make-up artist, and through her instruction to other salon managers, Unit Japan only sells beauty machines they examined and recommended. Unit Japan also has gained considerable fame and reliability as a company providing a certain degree of advanced skills in the make-up art field. To the contrary, TOPLASER was not known and had a relatively lower reliability than Unit Japan as TOPLASER admitted. Moreover, a certain person B who substantially holds the management of TOPLASER once took a seminar course at Unit Japan's salon to learn the skills that the latter offers, this could mean that person B had acquired enough knowledge about the position of Unit Japan and aware of TOPLASER's illegal use and abuse of the fame and reliability of Unit Japan by displaying its name as their subsidiary on the Internet.
On 26 July 2007, the Osaka District Court ruled that the action of TOPLASER constituted defamation and harmed the interest of Unit Japan because the display of the latter's name on the Internet was misleading and had given the impression that Unit Japan was one of TOPLASER's underlying companies. Some consumers have actually purchased the beauty machines directly from TOPLASER, being a parent company, at a lower price, and not from Unit Japan, a subsidiary. The court also admitted that the name right of person X, a part of a personality right, was infringed by the posting of false information. As a result, TOPLASER paid around four thousand dollars to Unit Japan.
This is a case wherein Hoei Shokai Co., Ltd. requested an injunction and monetary damages against Yohki Co., Ltd., one of the affiliated companies of Daiki Aluminium Industry Co., Ltd., for infringement of patents and a design, which was partly granted.
Hoei holds Japanese Patent Nos. 3323489, 3489081, 3489678, 3506137, 3492677, 3492680, and 3574128 and Japanese Design Registration No. 1137667 for a ladle. Hoei appealed that Yohki had infringed these patents and the design upon using them for the latter's product, that is, a pressurized ladle for transporting molten aluminium alloy.
On 23 March 2007, the Tokyo District Court partly accepted the appeal, and ordered Yohki to pay around $670,000 for damages to Hoei. Yohki had claimed that they had a right of prior use for all of the patents and the design, but the Court did not approve the claim for Japanese Patent Nos. 3323489 and 3492677, and the design.
The Hoei's ladle is a pressure type ladle and a modification of an incline type ladle. The modification is easy for a skilled person in the art, but it requires a through hole for pressure adjustment, which can be provided in the upper lid or body of the ladle. When a ladle has double lids of a larger fixed one and a smaller openable one, usually the hole is designed and formed in the fixed lid because the hole is connected to a piping. However, according to the JP No. 3323489, Hoei's ladle has a through hole in the smaller openable lid at the central part of the larger fixed lid, to provide an effect of reducing splash of a liquid therein, which was an unknown design.
As to the specification of JP No. 3492677, Yohki alleged that they had completed their product corresponding to the patent before its application date, 28 December 2004. On 9 December 2004, there was an accident that aluminium leaked from Yohki's ladle and caused damages to a truck on which the ladle was mounted. Then, on 14 December 2004, Yohki had a meeting with their client to improve the product and proposed a relief valve for pressure relief, but it is not clear if they had included a plan to add a vent to the product or not, which corresponds to elements of No. 3492677: a member for pressure relief in a ladle, and a member for transmission of gases and limitation of a molten metal in a ladle. In January 2005, Yohki finished their experiments to examine the effect of a vent. This means Yohki had not completed their supposedly improved product before the application date of JP No. 3492677.
A ladle is a device for transporting a hot molten metal between factories using vehicles such as trucks on public roads, so that workers can generally see such devices at a certain distance from them. In consideration of the application, the differences between the two designs in detail are not significant enough to change their similar impressions as a whole, as shown below (left: Hoei's design, right: Yohki's product).
Carl Co. Ltd. filed an application for a design patent of a punching tool for arts and crafts on 20 December 2005, but the application was rejected. Carl's appeal against the rejection was ruled inadmissible by JPO due to similarity to the design of Japanese Design Patent No. 736935 (cited design). Both of the designs include a generally rectangular housing with edges having a rounded profile, an operation button, and a horizontal slit in which sheet materials are inserted.
Carl brought a suit and challenged the reasons for the ruling. Carl claimed that their tools for arts and crafts are used by consumers who are engaged in art activities and have a keen sense for aesthetic appearance as compared to the consumers of ordinary office tools, thereby the cubic housing of the Carl's design is not similar to the flat rectangular housing of the cited design. Also, the curvature at the edge and the mark at the bottom surface of the housing included in the Carl's design are different from those of the cited design. The color tones of the two designs are also different from each other. Carl further appealed that their design has contributed to an expansion of demand for the said tools and achieved a commercial success; and the ruling from JPO is against the spirit of the Design Law. Moreover, for an effective assessment of similarity of a filed design, a detailed comparison of previously made designs should be done to identify the substantial parts of the designs to be judged.
On 10 September 2007, the Intellectual Property High Court supported JPO and explained their concept of design patent. The two designs are different from each other only in the details including the housing shape and curvature. The details do not give the impression that they are distinctive as a whole even to those who are engaged in art activities. The Carl's design does not include any specification of color tone, and the color of the cited design is not unique enough to attract people's attention: the color tone does not have effect on the similarity. Also, no commercial success of a product due to its design gives an influence on the determination of similarity. Furthermore, it is not reasonable to identify the substantial part by comparing the past designs; and the similarity should be determined by considering the totality of the common feature and distinctive feature of the designs to be judged. Indeed, the essential configuration to secure the function of the article to which a design is applied has to be excluded from the substantial part in consideration of similarity. However, punching tools having various shapes are already known, and the generally rectangular housing and the edges with rounded profile are not essential to the tool function. Based on the consideration including these details, still, the two designs substantially give the same impression to people.
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