ISBN: 978-90-411-9419-0 | Price: € 181.00 2019, 738pp, Hardback

Max Planck Series on Asian Intellectual Property Law Japanese Law Cases and Comments

Edited by Christopher Heath Atsuhiro Furuta

This first comprehensive work in English on all aspects of  defence of invalidity; presents 66 cases with an expert  damage calculation; explanatory commentary from academics, attorneys,  patent term extension system; and judges and members of the Japanese . This  models. book deals with the whole range of Japanese patent law – requirements of , inventorship and ownership Each case commentary follows a uniform structure, issues, procedures before the Patent Office, scope of including background, summary of the facts, analysis and protection and interpretation of claims, enforcement and comparative remarks. The latter allows the reader to put infringement procedures, patent term extensions, developments in in an international context. licensing and antitrust issues, utility models and more. Many of the cases appear in English for the first time. With the wealth of knowledge it makes available – leading Japanese patent cases in English translation, comparative Following an informative introduction explaining the case commentaries by leading experts on Japanese patent economic importance of the patent system for Japan, the law, comprehensive analytical coverage of all aspects of cases cover such specific issues as the following: Japanese patent law and coverage of related fields such as licensing, antitrust and civil procedure – this easy-to-use  definition of an ;  assessment of , and inventive book will be warmly welcomed by patent attorneys and step; other practitioners (including Japanese patent  rights of co-inventors; practitioners advising foreign clients), patent academics  disclaimers, corrections and amendments; and patent offices worldwide.  scope and limits of patent protection;  distinction between repair and reconstruction;  ;  domestic and international jurisdiction in patent matters;  interim proceedings and measures;

Order your copy at lrus.wolterskluwer.com Table of Contents

List of Authors and Editors Case No. 38: Interpretation of Patent Claims – Doctrine Preface: On Contributors and Decisions of Equivalents PART I Case No. 39: Interpretation of Patent Claims – Doctrine Introduction: History and Economic Importance of the of Equivalents Patent System Case No. 40: Interpretation of Patent Claims – Doctrine for Japan of Equivalents by Christopher Heath and Atsuhiro Furuta PART VI: THE ENFORCEMENT OF PATENT RIGHTS PART II: REQUIREMENTS OF PATENTABILITY 1. Jurisdiction, Procedure and Applicable Law Case No. 1: Definition of an Invention – Mental Activity Case No. 41: National Jurisdiction – Exclusive Jurisdiction Case No. 2: Definition of an Invention – Repeatability in Patent Matters Case No. 3: Novelty – Novelty Destroying Prior Case No. 42: International Jurisdiction in Patent Matters Max Planck Series on Application – Double Patenting Case No. 43: International Jurisdiction in Patent Matters Asian Intellectual Case No. 4: Novelty – Grace Period – Combination with – Offer on the Priority Case No. 44: Arbitration Law – Separability and Property Law Case No. 5: Inventive Step – Problem Solution Approach Arbitrability – Estoppel of Invalidity and Ex Post Analysis Case No. 45: Infringement of a US Patent and Applicable Japanese Patent Case No. 6: Inventive Step – Assessment of Prior Art Law Case No. 7: Inventive Step of New Medical Indications Case No. 46: International Civil Procedure, Recognition Law and Dosage Regimes of Foreign Judgements, Punitive Damages Case No. 8: Technical Effect – Late Filed Experimental Case No. 47: Discovery – Order of Documents – Defence Cases and Comments Results of Secrecy Case No. 9: Enabling Disclosure and Support Case No. 48: Interim Procedures and Protective Orders Case No. 10: Support Requirement – Parameter 2. Defence of Invalidity Invention Case No. 49: Defence of Invalidity Edited by Case No. 11: Industrial Application – Medical Treatment Case No. 50: – Defence of Invalidity Christopher Heath Case No. 12: Priority – Added Subject Matter Case No. 51: Defence of Invalidity – Correction of Patent Atsuhiro Furuta PART III: INVENTORS AND INVENTORS’ RIGHTS Claim – Late Filing Case No. 13: Rights over the Invention – Inventorship 3. Remedies Case No. 14: Rights of Co-Inventors – Action by One Co- Case No. 52: Injunctive Relief – Exception for Standard against Revocation Essential Case No. 15: Rights over the Invention – Transfer of a Case No. 53: Scope of Injunctive Relief – Method Patent portion of Patent Right against Misappropriation Case No. 54: Damage Calculation – Presumption of Case No. 16: Employees’ – Company Rules – Damages Christopher Heath is a Reasonable Remuneration Case No. 55: Damage Calculation – Presumption of Case No. 17: Employees’ Inventions – Reasonable Damages judge at the European Remuneration for Profits made Abroad 4. Wrongful Enforcement PART IV: PROCEDURES BEFORE THE PATENT OFFICE Case No. 56: Threats – Warning Letter alleging Patent Patent Office and Case No. 18: Right to be Heard – Addition of Well-Known Infringement – Standard of Liability former head of the Max Prior Art Case No. 57: Re-Trial due to Revocation after Successful Case No. 19: Right to be Heard – Right to Oral Infringement Suit Planck Institute’s Asian Proceedings in Invalidation Trials PART VII: SPECIFIC ISSUES Department. Case No. 20: Possibility of Claim Amendment before 1. Patent Extensions Grant Case No. 58: Requirements for a Patent Term Extension Case No. 21: Possibility of Claim Correction after Grant of Pharmaceutical Patents Atsuhiro Furuta is an Case No. 22: Disclaimer, Correction and Amendment Case No. 59: Requirements for a Patent Term Extension Case No. 23: Advisory Opinion about the Technical Scope of Pharmaceutical Patents – Second Marketing Approval administrative judge at of a Patented Invention for the Same Patent the Japanese Patent Case No. 24: Invalidation Trial – Ne Bis In Idem Case No. 60: Scope of Extended Patent Case No. 25: Correction Trial – Revocation Proceedings 2. Licensing and Antitrust Office. He graduated Case No. 26: Scope of Cancellation Process in Court Case No. 61: Exclusive Registered Licensee – Standing to against Decision of Patent Office Sue with a Master’s in Case No. 27: Appeal to the High Court and Inventive Step Case No. 62: Licensing Agreement – Patent Subsequently Physics from the Assessment Reduced in Scope Case No. 28: Liability of the Patent Office for Mistakes, Case No. 63: Licensing Agreement over Foreign Patent – University of Tokyo and e.g. the Omission of Registering a Pledge Royalties not Taxable in Japan for two years was a PART V: THE SCOPE OF PATENT RIGHTS Case No. 64: Antimonopoly Act – Patent Licensing 1. Rights of Exclusive Use Agreement – Vertical Restraints – Maximum Output guest researcher at the Case No. 29: Exclusive Rights – Offer for Sale, Restriction Manufacture, Export Case No. 65: Patent Pools, Refusal to License and Abuse Max Planck Institute for Case No. 30: Direct and Indirect Infringement of a Dominant Position Patent, and Case No. 31: Patent Infringement – Distinction between 3. Utility Models Repair and Reconstruction Case No. 66: Utility Model – Technical Assessment Competition Law in 2. Limits of Exclusive Use Report Munich. Case No. 32: Limits of Patent Rights – National and Index of Japanese Decisions in Chronological Order International Exhaustion Alphabetical Keyword Index Case No. 33: Clinical Trials – Research Exception Case No. 34: Defence of Prior Use 3. The Scope of Protection: Interpreting Patent Claims Case No. 35: Interpretation of Patent Claims – Interpretation with Reference to the Description Case No. 36: Interpretation of Patent Claims – Literal Infringement – Disclaimed Element 2019, 738pp, Hardback Case No. 37: Interpretation of Patent Claims – Product by ISBN: 978-90-411-9419-0 Process Claims Price: € 181.00

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