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Y u s u k e I c h i k a w a Patent Attorney (benrishi) TEL: 81-3-6775-1416 Tokyo Office FAX: 81-3-6775-2416 Dr. Ichikawa is a registered and qualified patent attorney (benrishi) at Anderson Mori & Tomotsune. He has been involved with various patent matters, conducting research, litigation and licensing, and is well versed in international and domestic application and registration procedures and intermediate procedures. He is specialized in the fields of electronics technologies as well as technologies applicable to computer software, semiconductors, telecommunications and mechanical devices. Practice Areas Intellectual Property/Life Sciences/TMT Patent IP Disputes Prosecution IP Licensing and Transactions Topics Books Japanese Patent Law: Cases and Comments Jun 2019 External Seminars Recent Trends in Japanese Patent Practice Jul 5, 2018 External Seminars Recent Trends in Japanese Patent Practice Jul 6, 2018 Practice Groups Intellectual Property Law Group Technology & Information Practice Group Background Mar 2001 Waseda University (Bachelor of Science) Mar 2003 Waseda University (Master of Engineering) Mar 2007 Waseda University (Doctor of Engineering) Apr 2006 - Oct 2008 Research Associate, Waseda University Nov 2008 - Sep 2015 Worked for Hitachi High-Technologies Corporation Sep 2011 Qualified as a Litigating Patent Attorney ("Fuki-Benrishi") Publications Japanese Patent Law: Cases and Comments Wolters Kluwer Jun 2019 Lectures Recent Trends in Japanese Patent Practice Electronics and Telecommunications Research Institute(ETRI) Jul 6, 2018 Recent Trends in Japanese Patent Practice Korea Invention Promotion Association(KIPA) Jul 5, 2018 Report on Berkheimer v. HP, Inc. and MEMORANDUM issued on April 19, 2018 by USPTO AIPPI Software Patent Research Group Jun 6, 2018 Professional Admissions Japan Patent Attorneys Association (2008) California (2016) Professional and Academic Associations Japan Patent Attorneys Association California State Bar Association Languages Japanese (first language) English.

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"Reasonably" Compensate Employee Invento Rs in Japan
By Calvin GRIFFITH, MICHIRU Takahashi & Nobutaka KOMIyAMA bly" Compe ona nsat as e E "Re m o pl t o g ye n e i il In a v F e f n o t o s r l s l i a n f J t i a P p a e N h : T EMPLOYERS BEWARE The United States is generally considered a more litigious paying seven-figure sums in compensation for employee country than Japan, where customs traditionally favor a less inventions, having expected that the compensation provided confrontational approach to dispute resolution. But there is in the ordinary employment contract or internal employment one exception—employee invention lawsuits. A recent series regulations would be accepted by courts as reasonable. of lawsuits filed by aggrieved employee inventors against This stunning development in Japanese courts is based on their employer companies, demanding “reasonable remu- Japan’s unique employee invention system under Article neration” for the employees’ inventions, has brought atten- 35 of the Japan Patent Law, and foreign companies doing tion to this unique area of Japanese patent law—and raised business in Japan, especially those with R&D facilities there, concern in the business community. Japanese companies should be familiar with the provisions of Article 35 and the were shocked to find themselves facing the possibility of case law applying it. 14 orIgIn oF thE FUss—ArtIclE 35 AnD thE olyMPUs CasE be entitled to remuneration based on income from the pat- Article 35 of the Japan Patent law. Japan has a unique ents. Pursuant to those regulations, Olympus acquired a pat- employee invention system under Article 35 of the Patent ent on employee Tanaka’s invention.
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The Benefits of Japanese Patent Law System Over Those of the US in the Pharmaceutical Area
The Benefits of Japanese Patent Law System Over those of the US in the Pharmaceutical Area What can we do to maximize the benefits? William Han (GlaxoSmithKline) Japan Patent Attorneys Association International Activities Center 1 “Long Long Time Ago” • Poor Prosecution • Slow, Claim scope narrow if granted at all, claim types not sufficient • Weak Enforcement • Court proceedings took forever; Infringement/damages hard to prove; Damages minimal Regarding Enforcement: October 1994 – US Commissioner of Patents Bruce Lehman: “…the relative nonlitigiousness of Japanese society tends to minimize the importance of enforcement...US citizens holding Japanese patents should be able to rely on those patents more than their US patents…” Circa late 1990’s, JPO Commissioner Tekashi Isayama admitted: “The Japanese market is dishonorably regarded as ‘lenient towards infringement’. It is sometimes said that one may as well infringe whatever patents he likes in Japan, because court proceedings are slow and compensation insignificant” (taken from Mr Shusaku Yamamoto’s post) 2 • Aging population and attendant increase in healthcare cost, Japanese government started to aggressively promote the use of generic drug since 2007 • More numbers: • Sept 2016 – about 60% (by volume) • Japanese government wants to increase the use to 80% in fiscal year 2018-2020! • Patents are the only effective tools available to prevent the entry of generics 3 • Unlike in prior to 2007, opportunity cost of “not getting things right” in Japan could be enormous Comparison Between US v Japanese Patent Term Extension System • Both in Japan and US, if a drug undergoes clinical trial and review period, the patent which covers the drug can be extended up to 5 years.
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Best Mode Disclosure for Patent Applications: an International and Comparative Perspective
Journal of Intellectual Property Rights Vol 16, September 2011, pp 409-417 Best Mode Disclosure for Patent Applications: An International and Comparative Perspective Bingbin Lu† Nanjing University Law School, No 22, Hankou Road, Nanjing, 210 093, China Received 13 June 2011, revised 13 July 2011 The best mode disclosure requirement helps to ensure that the public receives a full and honest disclosure in return for the grant of patent. It has a profound theoretical basis and foundation. The best mode disclosure requirement is an optional obligation under the TRIPS Agreement in its Article 29. Among the most important developed countries that have implemented this disclosure requirement are the US and Japan; however, there are certain differences in their national laws and practices, especially with regard to the legal effect of this requirement. In the US, patent reform is tending towards removing the best mode disclosure from the list of reasons to invalidate a granted patent; although, the requirement will still apply to all patent applications during patent prosecutions. Developing countries are recommended to consider adopting the best mode disclosure requirement in their patent laws. It is proposed that patent applicants be required to disclose the best mode which shall be a substantive condition for patent grant; however, the failure to disclose the best mode may not constitute a reason to invalidate a granted patent. The objective of this article is to study the best mode disclosure requirement from an international and comparative perspective, and suggest how developing countries should implement this disclosure requirement. The article also seeks to answer to two questions: whether a developing country should implement the best mode disclosure requirement, and if so, how to best implement it? Keywords: Patent, best mode, disclosure requirements, TRIPS Agreement Disclosure is one of the key issues in the patent requirement is the first paragraph of Section 112, Title system.
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Finnegan Japan RT 07
JAPAN ROUNDTABLE: Avoid invalidity risks in court IN ASSOCIATION WITH: 2007 JAPAN: ROUNDTABLE Many companies fear that initiating a patent infringement lawsuit in Japan is tantamount to inviting the courts to invalidate their rights. MIP and Finnegan Henderson jointly hosted a roundtable in Tokyo to consider inventive step, invalidity and successful litigation techniques in one of the world’s most important markets Avoid invalidity risks In association with: in court PO: What are the factors that make it difficult for plaintiffs to win still not brought to the court – that only happens at stage three. Of patent litigation in Japan? course, the defendant would want to avoid the risk of an injunc- NY: There are a lot of good reasons to file patent litigation in tion and therefore they will try their best to reach some kind of res- Japan. It is very, very fast, and injunctions are available. You could olution, so only those cases where such resolutions were not pos- even say it is easier than in the US. Also, judges are very experi- sible would be taken to court. enced. But the major concern that many companies have is that in AI: The viewpoint of Mitsubishi Heavy Industries on patents more than 80% of cases – of course you can dispute the statistics and, I suppose, of Japanese companies in general is that of course – but in more than 80% of cases the patentee loses, and I think if your technical development has a positive outcome you would when you have such a low success rate you will think twice before want to protect it.
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Do Fixed Patent Terms Distort Innovation? Evidence from Cancer Clinical Trials
NBER WORKING PAPER SERIES DO FIXED PATENT TERMS DISTORT INNOVATION? EVIDENCE FROM CANCER CLINICAL TRIALS Eric Budish Benjamin N. Roin Heidi Williams Working Paper 19430 http://www.nber.org/papers/w19430 NATIONAL BUREAU OF ECONOMIC RESEARCH 1050 Massachusetts Avenue Cambridge, MA 02138 September 2013 Financial support from NIA Grant Number T32-AG000186 to the NBER, NSF Grant Number 1151497, the Chicago Booth Initiative on Global Markets, the NBER Innovation Policy and the Economy program, and the Petrie-Flom Center at Harvard Law School is gratefully acknowledged. We thank Meru Bhanot, David Burk, Toby Chaiken, Brian Cordonnier, Greg Howard, Niels Joaquin, Megan McGrath, and Ana Medrano-Fernandez for excellent research assistance. Daron Acemoglu, David Autor, Raj Chetty, Joe Doyle, Dan Fetter, Amy Finkelstein, Ray Fisman, Alberto Galasso, Amanda Kowalski, Anup Malani, Matt Notowidigdo, Felix Oberholzer-Gee, Ariel Pakes, Al Roth, Jon Skinner, Alan Sorensen, Scott Stern, Glen Weyl, and seminar participants at BEA, Carnegie Mellon, the CBO, the Cornell Empirical Patent Law Conference, Georgia Tech, Harvard Law School, MIT, the NBER (Industrial Organization, Law and Economics, Productivity, and Public Economics), the Northwestern Kellogg Healthcare Markets conference, Toulouse, UC-Berkeley Haas, UIUC, UVA, Wellesley, and Yale Law School provided very helpful comments. The views expressed herein are those of the authors and do not necessarily reflect the views of the National Bureau of Economic Research. NBER working papers are circulated for discussion and comment purposes. They have not been peer- reviewed or been subject to the review by the NBER Board of Directors that accompanies official NBER publications. © 2013 by Eric Budish, Benjamin N.
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Of Japanese Patent Prosecution
The ‘Endless Loop’ of Japanese Patent Prosecution By Samson Helfgott and Paula E. Hopkins Katten Muchin Rosenman LLP First published in the May 2006 issue of World Intellectual Property Report Commentary The ‘Endless Loop’ of Japanese Patent Prosecution By Samson Helfgott and Paula E.Hopkins.Samson Helfgott During the course of the appeal trial, the Trial Examiners are is a Partner and Director of Patents, and Paula E. Hopkins is allowed to find a new reason and/or new prior art to reject the an associate in the IP Department of Katten Muchin patent application other than those stipulated in the decision of the Rosenman LLP, New York. The authors can be contacted examiner (Section 150, subsection 1 and Section 153, subsection by e-mail at: [email protected] and 1). In such case, the Board has to notify the new reason and/or [email protected] prior art to the applicant and allow the applicant to make counter-arguments against that reason and/or prior art before Patent prosecution in any patent system has its normal course of issuance of the decision of the Board (Section 159, subsection 2 delays. In significant cases, especially when broad claims are and Section 50). Accordingly, by way of example, although the being prosecuted, even more time may be required until a examiner may have only rejected the claim based upon certain resolution of the patent issues is reached. However, within the sections, such as lack of novelty, the Board of Trial Examiners can Japanese Patent System peculiarities within the law make such reject those claims for other reasons, such as indefiniteness, lack delays indefinite, resulting in an “endless loop” of prosecution of support, etc.
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Japan Patent & Trademark Update
TMI Associates Issue7 (July 2017) Japan Patent & The reason for this misconception could be that some in the below graph, in 70% of patent infringement lawsuits First, as shown in the below graph, the number of patent In sum, the decrease in the total number of patent applications by 2007; however, the Defendant continued using the articles discuss statistics regarding Japanese patent the judges did not make any decisions on the validity of the applications filed from the other IP5 countries does not show seems to have mostly come from the change in patent filing trademark “Eemax”. The Plaintiff sued the Defendant for Unfair Trademark Update lawsuits based only on those cases which have reached a patents. Further, in 43% of patent infringement lawsuits, such a decrease. Rather, the number of patent applications filed policy, i.e., shifting the focus from quantity to quality Competition asserting that the Defendant’s use of “Eemax” was judgment. The information on settled cases, as shown in even though the plaintiffs made invalidation arguments, the by U.S. entities has actually been increasing since 2013. of patents, and not as a result of any decrease in the impermissible given that it is a well-known trademark of the the above graph, was not announced before, and such judges still did not make any decisions with respect to validity. importance of obtaining patent protection in Japan. Plaintiff, even if the Plaintiff had not registered the mark. In success rate could previously only be examined based on In other words, it is inappropriate to derive any significant Number of patent applications filed by foreign entities response, the Defendant filed a counterclaim asserting that the cases in which judgments were rendered.
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Role of Patent Attorney 2009.Pdf
CONTENTS Page I. Patent·······················································································································································1 1. General Views ·································································································································1 2. The Role of a Patent Attorney ·······································································································3 3. The Dialogue with Applicants·······································································································4 (1) Approach by Applicants··········································································································4 (2) Conflict of Interest ···················································································································5 (3) Responsibilities of Patent Attorneys······················································································8 4. Search ···············································································································································9 5. Preparation and Filing of Patent Applications·············································································9 (1) Documents Required···············································································································9 (2) The Task of a Patent Attorney ······························································································11 (3) Order
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February 25, 2015 Office of Policy and International Affairs Attention To: Ms. Soma Soha Mr. Edward Elliot United States Patent
Lion Building 1233 20 th Street N.W., Ste. 501 Washington D.C. 20036 Tel: (202) 955-3750 Fax: (202) 955-3751 Yoichiro Yamaguchi (202) 955-8788 [email protected] February 25, 2015 Office of Policy and International Affairs Attention to: Ms. Soma Soha Mr. Edward Elliot United States Patent and Trademark Office 600 Dulany Street Alexandria, VA 22314 Re: Comments on International Issues Related to Privileged Communication between Patent Practitioners and Their Clients Dear Ms. Soha and Mr. Elliot: In response to the Request for Comments on International Issues Related to Privileged Communication between Patent Practitioners and Their Clients, published on January 26, 2015, at 80 Fed. Reg. 3953, I respectfully submit the following comments which are focussed on international issues only. Question 4. Explain how U.S. stakeholders would be impacted by a national standard for U.S. courts to recognize privilege communications with foreign patent practitioners, including potential benefits and costs. In a foreign country where no discovery in civil action is available, the national standard for U.S. courts to recognize privilege communications with a foreign patent practitioner in the foreign country has no impact, because there is no way for a civil court in the foreign country to require a party to force a testimony or to produce a document in that country concerning contents of a confidential communication. See Astra Aktiebolag v. Andrx Pharmaceuticals Inc. , 64 USPQ2d 1331 (DC S.D.N.Y. 2002) in connection with South Korea. In this context, the communications of the U.S. stakeholders with the foreign patent practitioners are privileged under the national standard for U.S.
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Will Increased Patent Infringement Damage Awards Revive the Japanese Economy?
View metadata, citation and similar papers at core.ac.uk brought to you by CORE provided by Washington University St. Louis: Open Scholarship Washington University Journal of Law & Policy Volume 2 Re-Engineering Patent Law: The Challenge of New Technologies January 2000 Patent Infringement Damages in Japan and the United States: Will Increased Patent Infringement Damage Awards Revive the Japanese Economy? Toshiko Takenaka Center for Advanced Study and Research on Intellectual Property Follow this and additional works at: https://openscholarship.wustl.edu/law_journal_law_policy Part of the Comparative and Foreign Law Commons, and the Intellectual Property Law Commons Recommended Citation Toshiko Takenaka, Patent Infringement Damages in Japan and the United States: Will Increased Patent Infringement Damage Awards Revive the Japanese Economy?, 2 WASH. U. J. L. & POL’Y 309 (2000), https://openscholarship.wustl.edu/law_journal_law_policy/vol2/iss1/11 This International and Comparative Law Issues is brought to you for free and open access by the Law School at Washington University Open Scholarship. It has been accepted for inclusion in Washington University Journal of Law & Policy by an authorized administrator of Washington University Open Scholarship. For more information, please contact [email protected]. Patent Infringement Damages in Japan and the United States: Will Increased Patent Infringement Damage Awards Revive the Japanese Economy? Toshiko Takenaka, Ph.D.* INTRODUCTION Since the Japanese economy plunged into its current, deep
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Novelty and Inventive Step
1 NOVELTY AND INVENTIVE STEP Introduction If you wish to obtain a patent right in Japan, your claimed invention has to fulfill certain requirements as stipulated in the Japanese Patent Law. The major requirements include: - [Industrial Applicability] Claimed invention has to be industrially applicable (Japanese Patent Law, Article 29, Paragraph 1, Main Paragraph); - [Novelty] Claimed invention has not been publicly known in Japan or elsewhere (Japanese Patent Law Article 29, Paragraph 1 (and Article 29bis)); - [Inventive Step] Claimed invention could not have been easily conceived of (Japanese Patent Law, Article 29, Paragraph 2]; - [First-to-File System] Claimed invention has not been filed by third parties (Japanese Patent Law, Article 39 (and Article 29bis)) - [Description Requirements] Description of specification and recitation of claims have to satisfy certain description requirements (Japanese Patent Law, Article 36) In particular, reasons for rejection about novelty and inventive step are often listed in Office Actions, and they also become issues of contention at the court. NOVELTY The judgement regarding novelty is based on the timing of the filing of a patent application (international filing date for PCT- based applications, and priority date for Paris Convention-based applications). Please note that not only the date but also the exact time of filing a patent application is considered to be the subject for the judgement. Therefore, it is very important to conduct a thorough prior art search before filing a patent application. Inventions which lack novelty include: 1. Those publicly known in Japan or in overseas countries prior to filing (for example, TV broadcasting) 2. Those publicly worked in Japan or in overseas countries prior to filing (for example, in-store sales, factory tour) 3.
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Substantial Identity Rule Under the Japanese Novelty Standard
UCLA UCLA Pacific Basin Law Journal Title The Substantial Identity Rule under the Japanese Novelty Standard Permalink https://escholarship.org/uc/item/7xz0478c Journal UCLA Pacific Basin Law Journal, 9(1-2) Author Takenaka, Toshiko Publication Date 1991 DOI 10.5070/P891-2021976 Peer reviewed eScholarship.org Powered by the California Digital Library University of California THE SUBSTANTIAL IDENTITY RULE UNDER THE JAPANESE NOVELTY STANDARD Toshiko Takenaka* I. INTRODUCTION Under both Japanese and United States patent law, to obtain a must satisfy the requirements of "novelty" ' and patent an invention' 2 "nonobviousness." Although the terms differ, it is commonly ac- cepted that the novelty and inventive step requirements3 under Jap- anese patent law correspond to the novelty and nonobviousness requirements under United States patent law. 4 However, it has been argued that the patentability standard is lower under Japanese law than under American law; as a result, Japanese companies have encroached on American inventions by obtaining patents for trivial improvements. At least one American company has strongly op- posed this practice in the Japanese patent system, emphasizing the threat of Japanese competition. 5 The patentability standard is closely related to a country's in- dustrial and economic policies, and to the protection of pioneer in- ventions and their improvements. In general, the patentability standards of developing countries tend to be lower than those of industrialized countries, so that improvements made by the domes- * Ph.D. candidate, University of Washington. The author thanks Professor Chisum, who suggested the Japanese novelty standard as a research topic and who gave valuable assistance. The author also thanks Professor Henderson, Professor Monya, Andrea Oakley, and Erik Utgaard for their helpful comments.
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