Business brief 2018: Japan
Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
Any person can apply to the Japan Patent Office (JPO) to obtain a patent. A foreign applicant can take action pursuant to the Paris Convention and/or initiate a Patent Cooperation Treaty (PCT) national-phase application in Japan.
The JPO requires a specification in Japanese, but it can first be submitted in English, followed later by a Japanese translation. We recommend this when translation time is short.
Is there anything unusual about the patent law(s) that companies should be aware of?
On June 5, 2015, the Supreme Court entered judgments in two cases involving product-by-process claims, ie, claims reciting the process by which a product is manufactured, and issued holdings that if a process to manufacture a product is stated in the claims for an invention of a product, the requirement of clarity of the claims would be only if there are circumstances such that it was impossible or entirely impractical to directly specify the product by its structure or characteristics at the time that the application was filed.
The JPO accordingly published application-processing procedures under which the examiner will not refuse to approve an application that normally would be refused for lack of clarity involving product-by-process claims when the examiner finds that the invention involves “impossible or impractical circumstances”.
The examiner will notify the applicant of the reason for refusal so as to provide the applicant with an opportunity to contend and provide evidence of the “impossible or impractical circumstances” and/or to amend the claim(s) (see below).
This will be done to avoid the granting of a patent that might include grounds for invalidation, or a situation in which the interests of third parties could be unfairly harmed. We recommend that the applicant polish and amend the specification as indicated below, before the JPO conducts a substantive examination, so that the examination process will proceed smoothly.
- Delete any claim concerned;
- Amend any applicable claim into a claim concerning an invention for a process of producing a product;
- Amend any applicable claim into a claim concerning an invention of a product that does not recite a manufacturing process, apart from arguing and verifying the existence of “impossible or impractical circumstances”, based on a written opinion;
- Assert and prove the existence of “impossible or impractical circumstances” based on a written argument; and/or
- Assert that any applicable claim is not “a claim concerning an invention of a product that includes the method of manufacturing the product”.
What is the best strategy if you suspect someone is infringing your patent?
Fact-finding
First, we examine the features of the allegedly infringing product to determine whether the product infringes our patent. Normally, we analyse each claim of our patented invention into “claimed elements” and then determine whether all the features of the allegedly infringing product are included in the claimed elements of our patent.
We prepare a “claim chart” to conduct a speedy and accurate comparison between the claimed elements and the features of the allegedly infringing product.
Procedures after determining that our patent has been infringed
The patent owner can exercise its rights by using measures including (a) seeking a court injunction banning the manufacture and/or sale of the product; (b) filing a claim for damages; (c) filing an action to restore the patent owner’s business reputation; and (d) seeking criminal charges against the infringer.
Considering the actual situation, and in order to promote our client’s best interests, we consider options including (a) requesting the infringer to cease from manufacturing and/or selling the product; (b) licensing the infringer to practise the patent so that the patent owner can receive licence fees for the product that will be manufactured and sold in the future without requiring the infringer to stop manufacturing and/or selling the product; or (c) seeking damages from the infringer for its manufacturing and/or selling the product in the past. If it is evident that the infringement was intentional, we might seek criminal charges against the infringer.
Also, if the allegedly infringing product is manufactured in a foreign country and has been imported into Japan, it is possible to file with the Japan Customs Office a request to apply the Japan Customs Law and suspend customs clearance of the infringing product. The patent owner can submit to the Customs Office requests to suspend customs clearance of the infringing goods and to conduct certification procedures to determine whether the goods are infringing.
Cease-and-desist letter and lawsuit
After conducting the above two steps we will send to the infringer a cease-and-desist letter informing them that the product infringes our client’s patent and specifying what our client wants from the infringer, as a basis for negotiating with the infringer as much as possible to reach an agreement with the infringer (a settlement regarding damages, a licence agreement, etc). If the infringer does not respond sincerely, we will recommend that our client file a lawsuit against the infringer.
Trademarks
How do you register or secure trademark rights, and what protection do they grant?
Applications to register trademarks must be submitted to the JPO. Under the Madrid Protocol, foreign applicants specify Japan in the international application. If the application is then rejected by the JPO, a Japanese patent attorney must reply to the office action. Before submitting either a direct Japanese application or a Madrid Protocol international application, a trademark search is essential. The JPO’s trademark database is very useful in that regard.
What are the costs of registering and defending a trademark?
Conducting a trademark search before submitting an application is highly recommended, to avoid applying either (i) when there is no chance of approval because the subject application is obviously identical to, or so extremely similar to, a trademark that has already been applied for or registered; or (ii) when the costs of attempting to succeed against opposition would be excessive.
