New provisions on disclosing prior art will be applicable to Japanese patent applications with a filing date on or after September 1, 2002. The new prior art disclosure requirement are less onerous that the United States' legal "duty of candor and good faith" in dealing with the USPTO. More importantly, a breach of the Japanese duty of disclosure cannot be used as a ground of invalidity against the resulting Japanese patent.

John A. Tessensohn and Shusaku Yamamoto

This article examines Japanese legal position on the scope of research tool patents, focusing on their patentability and enforceability. It also shows that the Japanese patentability position on such reach-through claims is consistent with that of the United States and Europe. As to enforcement, the Supreme Court in Japan and some lower United States District Court decisions appear to take a dim view on the asserted expansive scope of such reach-through patent claims.

John A. Tessensohn and Shusaku Yamamoto

Japanese Courts have responded to the recent trend of Japanese companies using patent litigation to protect and advance their business interests by granting big damage awards (at least by Japanese standards) and this is ostensibly to serve as a deterrent against future infringers.

John A. Tessensohn and Shusaku Yamamoto

In order to enhance the protection of patents and trademarks in Japan, the Japanese Government has expanded the scope of indirect infringement for patents, amended PCT Japanese National Phase practice and expand the scope of protection of trademarks on computer online networks.

John A. Tessensohn and Shusaku Yamamoto

The Japanese market is dishonorably regarded as lenient towards infringement. It is sometimes said that one may as well infringe on whatever patents he likes in Japan, because court proceedings are slow and compensation insignificant To many, Takeshi Isayama, the then Japanese Patent Office (JPO) commissioner was articulating long-held complaints that foreign companies had about Japan's IP system when he made this candid observation in November 1998. Since 1998, especially in 2000, Japan has taken positive steps to shed its image of being lenient on infringement.

John A. Tessensohn and Shusaku Yamamoto

Must Be Software-Related The JPO will usually recognize that most business-related inventions may be considered a form of software-related invention. It will not, however, recognize pure business methods per se.

John A. Tessensohn and Shusaku Yamamoto

The article discusses the consensus position adopted by the Trilateral Patent Offices comprising of the JPO, USPTO and EPO in connection with computer implemented business methods in that (1) a technical aspect is necessary for a computer-implemented business method to be eligible for patenting, however, the technical/computer-related aspect, must be described in the specification and expressed in the claim according to the JPO and EPO, whereas for the USPTO, "in the technological arts" feature may be implicitly recited in the claim; and (2) that to merely automate a known human transaction process using well-known automation techniques is not patentable.

John A. Tessensohn and Shusaku Yamamoto