These new changes including fee reductions, time periods for appeal proceedings and recordation requirements of licenses are part of the incremental steps that the Japanese government has been undertaking to update its intellectual property laws in order to keep pace with the increasingly competitive, knowledge-intensive global economic environment.

John A. Tessensohn and Shusaku Yamamoto

This article discusses the patent, trademark and IP law changes coming into effect in 2008. It also previews the critical issues that Japan's IP policy makers are studying for possible future changes to Japanese IP laws in order to to achieve its goal for Japan become “the world's most advanced IP-based nation.” These issues include improving patent examination quality and speed, scent trademarks and international patent harmonization.

John A. Tessensohn and Shusaku Yamamoto

In a pro-patentee decision, the Intellectual Property High Court of Japan enforced a Japanese pharmaceutical patentee’s crystal form patent against the generic drug maker, even though the basic substance patent on its blockbuster antibiotic compound had expired some 5 years earlier, Taiyo Yakuhin Co. Ltd, v Astellas Pharma. Inc. Heisei 19 (ne) 10034, 10 September 2007. This decision is a vivid example of how Japanese innovator drug patentees are not raising the white flag to generic makers but actually taking the battle to them in the world’s second largest national pharmaceutical market. However, outright victory is difficult as the road for crystal form patent enforcement against generic makers has been rocky with the outcomes being decidedly mixed in the various jurisdictions. Nevertheless, the billion or hundred million dollar pharmaceutical stakes are more than sufficient for innovator drug companies to continue beefing up their comprehensive patent coverage, with a generous helping of crystal form patents, on promising or proven drugs.

John A. Tessensohn and Shusaku Yamamoto

In a landmark decision Recycle Assist Co. Ltd. v. Canon Co. Ltd., Case No. Heisei 18 (ju) 826 dated November 8, 2007, the First Petty Bench of the Supreme Court of Japan conclusively ruled that the refurbishment, importation and sale of recycled ink cartridges for ink-jet printers infringe a patented product claim covering the ink cartridge. According to the ruling, a recycled product infringes the patent right of the original product if the recycled product can be recognized as a “new manufacture” of the patented product. A recycled product is recognized as a “new manufacture” of the patented product based on the characteristics of the recycled product and how the original product is processed, among other points.

John A. Tessensohn and Shusaku Yamamoto

The article discusses how to maximize the benefits of the current practice & procedure of the Patent Prosecution Highway (PPH), the joint accelerated examination project of the Japanese Patent Office (JPO) and United States Patent & Trademark Office (USPTO) that was fully implemented in January 2008 after a successful two year pilot project.

John A. Tessensohn and Shusaku Yamamoto

Several important changes to Japan's Patent, Trademark and Design laws will come into effect from April 1, 2007. Users of the Japanese IP system will have greater flexibility and scope of protection under these new legal changes.

John A. Tessensohn and Shusaku Yamamoto

In Japan, the applicant does not have an onerous burden to continuously and affirmatively provide any prior art references to the patent office, and examination at the patent office is not delayed as the patent examiner does not have to negotiate a swamp full with numerous prior art references that are just submitted because it has to be submitted. The Japanese duty of disclosure provision strikes a balanced and fair approach, a goal that the United States is apparently trying to emulate as well.

John A. Tessensohn and Shusaku Yamamoto