2019.5.14 Unius IP Seminar to Be Held on 31 May 2019 (Fri): “A Look at Some Court Cases in which Claims Reciting Intended Uses Were Acknowledged as Bona Fide Limitations: Lessons for Obtaining Allowance of Claims During Examination”

Unius IP Seminar: “A Look at Some Court Cases in which Claims Reciting Intended Uses Were Acknowledged as Bona Fide Limitations: Lessons for Obtaining Allowance of Claims During Examination”

During this year’s spring seminar, entitled A Look at Some Court Cases in which Claims Reciting Intended Uses Were Acknowledged as Bona Fide Limitations: Lessons for Obtaining Allowance of Claims During Examination, Unius Senior Managing Partner Kouichi Kajisaki, who has much experience in obtaining allowance of claims reciting intended uses, will take a look at whether court decisions are consistent with examination guidelines, and will go over a number of topics of particular relevance to claims reciting intended uses.

Please note that this seminar will be conducted in Japanese.

The seminar will be followed by a reception. Attendees are welcome to attend the seminar and/or the reception. There is no charge for attending either the seminar or the reception.

Note that this seminar will be held only at our Osaka office.

To register, please send an email including your name and organization to seminar@unius-pa.com.

More information can be found by clicking here (Japanese).

Osaka Seminar: “A Look at Some Court Cases in which Claims Reciting Intended Uses Were Acknowledged as Bona Fide Limitations: Lessons for Obtaining Allowance of Claims During Examination”
31 May 2019 (Friday)
Seminar 15:00 – 17:00
Post-seminar reception starts at 17:00
(Attendees are welcome to attend seminar and/or reception; there is no charge for attending either the seminar or the reception)
TKP Shinosaka Business Center
First Shinosaka MT Building 4th Floor (*)
5-13-9 Nishinakajima, Yodogawa-ku Osaka 532-0011
(*) Approximately 4-minute walk from JR Shinosaka Station Central Exit. Note that Unius’s Osaka office is on 2nd Floor of building where seminar will be held.

2019.4.11 Japanese IP case summary: “Filter Cartridge” case. Takagi Co., Ltd. v. Graceland LLC and Koyu Printing Corporation. Tokyo District Court Case No. 2017(Wa)14637. Decided 26 July 2018.

  • “Filter Cartridge” case
  • Takagi Co., Ltd. v. Graceland LLC and Koyu Printing Corporation
  • Tokyo District Court Case No. 2017(Wa)14637
  • Decided 26 July 2018

In this civil action brought by water purifier filter cartridge manufacturer Takagi alleging trademark infringement and unfair competition by defendants Graceland and Koyu Printing, the Tokyo District Court found that use by defendants of plaintiff’s name (Takagi) in the <title> and <meta> tags of defendant Graceland’s website did not infringe Takagi’s trademark but did violate Article 2, section (1), paragraph (i) of the Japanese Unfair Competition Prevention Act, which makes it illegal to “create confusion with the goods or business of another by using an indication of goods identical or similar to an indication of goods well-known among consumers as belonging to the other, or by transferring or delivering goods that use such indication, or by displaying goods that use such indication for the purpose of transfer or delivery, or by causing goods that use such indication to be exported, imported, or provided through a telecommunication line“.

This case is somewhat unusual in that the defendants were found liable for unfair competition but not for infringement of plaintiff’s trademark, a finding somewhat contrary to the typical expectation that trademark infringement is easier to prove than unfair competition.

While the Court acknowledged that Graceland’s website itself made adequately clear that the products advertised thereon were not genuine Takagi products, this fact did not save defendants from a finding of unfair competition, since the issue before the Court was not whether a consumer arriving at Graceland’s website directly, without reliance on Internet search results, would have been misled, but whether Graceland’s tagged content would have led a typical consumer, arriving at that website via search results produced by that tagged content, to believe that they were purchasing genuine Takagi products when in fact they were not.

In reaching this result, the Court found that the name “Takagi” was “well-known among consumers” and that use of the word “Takagi” in <title> and <meta> tags on Graceland’s website constituted “an indication of goods identical or similar to an indication of goods well-known among consumers as belonging to the other“. While there is room for interpretation regarding which of several purportedly misleading aspects of the tag-based search results it was that swayed the Court, it would seem that presence of the name “Takagi” in search results together with photographs of Graceland’s products and a clickable link to Graceland’s website are perhaps what struck the Court as “creat[ing] confusion with the goods or business of another“.

A cautious person noting that the Court reached this result despite the fact that all of the relevant tags at Graceland’s website appear to have contained ample warnings that Graceland’s products were not genuine Takagi products (but which warnings may have been truncated or displayed in less-than-prominent fashion by search engines) may well conclude that this case stands for the proposition that a website owner can be held responsible under the Japanese Unfair Competition Prevention Act for how a third-party search engine displays tagged content from that website in search results. Such a cautious person may deem it prudent not to rely on disclaimers or warnings but instead to completely avoid the use of competitor names, insignia, marks, and so forth in web page titles, markup language tags, keywords, and other content that may be indexed by a search engine.

The Court also considered whether the party identified in Court documents only as “A” (but who can safely be assumed to be Takeshi Yasuda based on descriptions to the effect that “A” was the sole corporate officer of Graceland and simultaneously the CEO of Koyu Printing) should be held personally liable. While the Court noted that “A” was basically self-employed and essentially one-and-the-same as the Graceland entity, the Court nonetheless found that the evidence fell short of proving that “A” was acting in a personal rather than corporate capacity.

This case is also instructive as an example of how Japanese courts apportion court costs, attorney fees, and damages. While Japanese courts may award all or some portion of “court costs” to the prevailing party, this term does not include attorney compensation and other out-of-pocket expenses but merely refers to the trivial-by-comparison fee that the plaintiff must pay the court when filing the Complaint (the Complaint filing fee varies depending on the amount sought in damages, but by way of example would have been JPY 17,000, or about USD $ 150, for a Complaint seeking damages in the amount JPY 2,500,000, or about USD $ 22,000, as in the present case; the Court in the present case determined that the prevailing party should bear 9/10 of the parties’ combined court costs and that the defendants should bear 1/10 thereof). Separately from any award for court costs, a Japanese court may award all or some portion of “attorney fees” to the prevailing party, but it is unlikely that the amount awarded by the court for attorney fees will come close to covering the total amount actually disbursed to attorneys and other third parties by the prevailing party (e.g., the Court awarded JPY 50,000, or about USD $ 450, in attorney fees to be paid by the defendants to the plaintiff in the present case). Typically larger, therefore, than any award for court costs or attorney fees is the amount of damages that the court awards the prevailing party; by way of example, the Court in the present case awarded damages in the form of lost profits to the prevailing party (Takagi) in the amount JPY 230,000, or about USD $ 2,000, which is still only about 1/10 of the amount that plaintiff Takagi sought at the time that the Complaint was filed (in addition to damages, Takagi also sought injunctive relief, which was not granted by the Court).


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.11.22 Seminar by Unius Partners Masanori Haruna and Katsushi Ishikawa on Subject of Case Studies Illustrating Strategic Use of Intellectual Property in Development of Functional Food Products Held in Tokyo on 22 November 2018 (Organized by Tech-Design Inc.)

Seminar by Unius Partners Masanori Haruna and Katsushi Ishikawa on Subject of Case Studies Illustrating Strategic Use of Intellectual Property in Development of Functional Food Products Held in Tokyo on 22 November 2018 (Organized by Tech-Design Inc.)

On 22 November 2018 (Thu), we gave a seminar in Tokyo on the subject of Case Studies Illustrating How To Make Strategic Use of Intellectual Property in Development of Functional Food Products. The seminar was divided into two parts. Part I, entitled Branding Strategies and Effective Use of Trademarks and Designs for Food Product Manufacturers, was presented by Unius Partner Katsushi Ishikawa. Part II, entitled Case Studies Illustrating Key Concepts in Patent Strategies for Functional Food Products, was presented by Unius Partner Masanori Haruna. Details follow below.

  • Seminar organized by: Tech-Design Inc.
  • Seminar title: Case Studies Illustrating Strategic Use of Intellectual Property in Development of Functional Food Products
  • Part I: Branding Strategies and Effective Use of Trademarks and Designs for Food Product Manufacturers
    Part II: Case Studies Illustrating Key Concepts in Patent Strategies for Functional Food Products

  • Presentations by: Japanese Patent Attorney Masanori Haruna and Japanese Patent Attorney Katsushi Ishikawa
  • Date and time: 22 November 2018 (Thursday) 13:00 – 17:15
  • Location: Conference Room, Reference Nishi-Shinjuku Daikyo Bldg 2nd Floor (Nishi-Shinjuku, Tokyo)
  • Overview:
    In the four short years since creation of the legal framework making it possible to obtain IP protection in Japan for functional food products, there have already been more than 1,300 items registered, which, together with the preexisting category of foods for specified health uses, has had a major impact on Japan’s health food industry. While functional food products have benefited from the newfound ability to make use of previously inaccessible marketing strategies focused on mental sharpness, beauty, and so forth in addition to the more conventional marketing strategies that had been the sole purview of foods for specified health uses, the rapid increase in the number of products on the market has brought with it a tendency toward commoditization of certain functionalities, making product differentiation increasingly difficult.

    While market participants have expended much brainpower in the search for intellectual property strategies and marketing approaches that might allow them to differentiate their products from those of their competitors, due to the sheer number of products on the market it has not been an easy task to gain a comprehensive view of the many IP strategies employed by the various market participants; indeed, as busy as we all are with the everyday pressures of the workplace, who can find the time to properly conduct such a wide-ranging market analysis?

    The speakers at this event have since 2017 been engaged in just such an ongoing project to research, analyze, and report on the product differentiation of functional food products and other health foods, as well as the strategic use of patents, trademarks, and designs that has made such product differentiation possible.

    Attendees of the present seminar will be able in one day to gain a comprehensive overview of the marketing and branding strategies employed in the Japanese health food industry, as well as an understanding of the role played by intellectual property in supporting those marketing and branding strategies through selective use of patents, designs, and trademarks, the goal of the present seminar being to provide attendees with knowledge that they can immediately apply to their company’s products.

  • How to register for event: Please click on https://tech-d.jp/pdf/pdf_3670.pdf for further information (in Japanese) regarding the seminar, including how to register to attend (note that registration is closed).

2018.11.1 Japanese IP case summary: “Dispersion Composition, Cosmetic Preparation for Skin Care Use, and Dispersion Composition Manufacturing Method” case. DHC Corporation v. FujiFilm Corporation. Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10092. Decided 25 October 2017.

  • “Dispersion Composition, Cosmetic Preparation for Skin Care Use, and Dispersion Composition Manufacturing Method” case
  • DHC Corporation v. FujiFilm Corporation
  • Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10092
  • Decided 25 October 2017

In this judicial appeal from DHC’s failed attempt to invalidate FujiFilm’s patent before the Japan Patent Office (JPO), the Japanese Intellectual Property High Court upholds the decision of the JPO Trial and Appeal Division, finding none of the arguments advanced by DHC urging invalidation of FujiFilm’s patent persuasive. In affirming the inventive step of FujiFilm’s patent, the Court found that a website disclosure at issue in the present case did not constitute the making available to the public of all features of the invention via an electronic communication line prior to the application filing date; that even if adjustment of pH might be considered routine knowledge in the context of a skin care cosmetic it would not have been obvious to apply such knowledge to an emulsion composition in a nonpatent disclosure at issue in the present case; and it would not be proper to infer a date of distribution from a date of publication of, or a date of manufacture disclosed in, a nonpatent disclosure at issue in the present case.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.10.15 Unius IP Seminar to Be Held on 5 and 12 October 2018: “How to Analyze and Respond to Inventive Step Rejections at the JPO: Insights from a Former JPO Patent Examiner”

Unius IP Seminar: “How to Analyze and Respond to Inventive Step Rejections at the JPO: Insights from a Former JPO Patent Examiner”

During this year’s fall seminar, entitled How to Analyze and Respond to Inventive Step Rejections at the JPO: Insights from a Former JPO Patent Examiner, Unius Patent Attorney Hayato Akao, who before leaving the JPO in March of this year to join the staff of Unius worked for many years as a JPO patent examiner, will explain to the audience how to decode the comments that JPO examiners make in their Office Actions so as to get valuable insight into what the Examiner is thinking and understand what Response strategy is most likely to produce the desired result.

Please note that this seminar will be conducted in Japanese.

The seminar will be followed by a reception. Attendees are welcome to attend the seminar and/or the reception.

Note that the seminar will be held one week apart in Tokyo and Osaka. Please choose whichever location is more convenient.

To register, please send email to seminar@unius-pa.com or fax to 06 6838 0515. Kindly include your name, organization, and whether you will be attending in Tokyo or Osaka.

More information can be found by clicking here (Japanese).

Tokyo Seminar
5 October 2018 (Friday)
Seminar 18:30 – 20:00
Post-seminar reception starts at 20:00
(Attendees are welcome to attend seminar and/or reception)
TKP Tokyo Station Conference Center
Ishizuka Yaesu Building 9th Floor (*)
1-5-20 Yaesu, Chuo-ku Tokyo 103-0028
(*) Approximately 1-minute walk from JR Tokyo Station Yaesu North Exit. Note that Honma Golf is on 1st Floor of building where seminar will be held.

Osaka Seminar
12 October 2018 (Friday)
Seminar 18:30 – 20:00
Post-seminar reception starts at 20:00
(Attendees are welcome to attend seminar and/or reception)
TKP Shinosaka Business Center
First Shinosaka MT Building 4th Floor (**)
5-13-9 Nishinakajima, Yodogawa-ku Osaka 532-0011
(**) Approximately 4-minute walk from JR Shinosaka Station Central Exit. Note that Unius’s Osaka office is on 2nd Floor of building where seminar will be held.

Hayato Akao during recent Unius seminar Hayato Akao during recent Unius seminar
Unius staff member and former JPO examiner Hayato Akao shares insights during the recent Unius seminar
 
 
 
 
 
 

2018.3.23 Seminar by Unius Partners Masanori Haruna and Katsushi Ishikawa on Subject of Intellectual Property Strategies for Functional Food Products and Health Foods To Be Held in Tokyo on 27 June 2018 (Organized by Johokiko Co., Ltd.)

On 27 June 2018 (Wed), we will be giving a seminar in Tokyo on the subject of Intellectual Property Strategies for Functional Food Products and Health Foods.

The seminar will be divided into two parts. Part I, entitled Branding Strategies and Effective Use of Trademarks and Designs, will be presented by Unius Partner Katsushi Ishikawa. Part II, entitled Lessons from Recent Cases with Implications for Patent Strategy, will be presented by Unius Partner Masanori Haruna. Details follow below.

  • Seminar organized by: Johokiko Co., Ltd.
  • Seminar theme: Entitled How to Make Your Company’s Products Stronger and More Valuable, the theme of the seminar is Intellectual Property Strategies for Functional Food Products and Health Foods
  • Presentations to be given by: Japanese Patent Attorney Masanori Haruna and Japanese Patent Attorney Katsushi Ishikawa
  • Date and time: 27 June 2018 (Wednesday) 10:30 – 16:30
  • Location: Conference Room No. 3, Shinjuku Bunka Center 4th Floor (Higashi Shinjuku, Tokyo)
  • Seminar overview: Attendees will be able in one day to learn about a variety of topics ranging from branding strategies for new products under development to patenting strategies for protection of existing products, the goal of the seminar being to provide attendees with knowledge that they can immediately apply to their company’s products. Persons expected to benefit most from the seminar are those struggling with the question of how patents and trademarks can be utilized in strategies built around their company’s products, and persons considering how their company’s products might benefit from intellectual property strategies employed by other companies in the context of functional food products. Because the seminar will focus on analysis of case studies, even those individuals who do not have a specialized intellectual property background and who do not work in the intellectual property field on a daily basis should find it worthwhile to attend.
  • How to register to attend: Please click on http://www.johokiko.co.jp/seminar_medical/AA180674.php for further information (in Japanese) regarding the seminar, including how to register to attend.

2018.2.20 Unius is First Patent Professional Corporation in Japan To Be Recognized by METI as a Corporation Displaying Excellence in Health and Productivity Management

Unius is the First Patent Professional Corporation in Japan To Be Recognized by METI as a Corporation Displaying Excellence in Health and Productivity Management

Prompted by a proposal made some time back by one of our staff that we see if we might receive certification from the Japanese Ministry of Economy, Trade and Industry (METI) as a Corporation Displaying Excellence in Health and Productivity Management, we in April 2017 established a Health and Productivity Management Planning Group, and we have since that time applied ourselves to the topic of how best to see to the physical and mental health of our staff.

We are pleased to announce that Unius has been selected by METI as the first patent professional corporation in Japan to receive certification as a Corporation Displaying Excellence in Health and Productivity Management under the Small and Medium Enterprise category for the year 2018.

We at Unius are very happy to receive this recognition from METI and will continue to do everything we can in terms of further specific and practical improvements in health and productivity management to maintain the health of our staff and contribute in our own small way to the well-being of our corporate clients and society at large.

A list (in Japanese) of corporations receiving certification from METI as a Corporation Displaying Excellence in Health and Productivity Management under the Small and Medium Enterprise category for the year 2018 can be found by clicking on the following link (Unius is No. 567 in the list but the first patent professional corporation in Japan to receive such certification): http://www.meti.go.jp/press/2017/02/20180220003/20180220003-2.pdf

2018.2.5 Unius Celebrates 20th Anniversary Since Founding with Inspirational Seminar and Enjoyable Reception

Unius Celebrates 20th Anniversary Since Founding with Inspirational Seminar and Enjoyable Reception

This year marks the 20th year since Unius was founded in 1998.

We at Unius gratefully appreciate that it is only due to the support of so many people during a period that witnessed many profound changes in the field of intellectual property that we are now able to successfully observe our 20th anniversary.

On the occasion of our 20th year since founding, we had the great privilege of welcoming Doctor Hiroaki Suga, founder of PeptiDream Inc. and Professor of the Faculty of Science at the University of Tokyo, as well as Attorney-at-Law Yoichiro Komatsu, a widely recognized authority in the field of intellectual property litigation, to speak at a special seminar event that we hosted for our clients.

We would like to take this opportunity to sincerely thank Dr. Suga, Attorney Komatsu, and all who attended. We hope that everyone enjoyed the inspirational presentations by Dr. Suga and Attorney Komatsu, and we hope that you also had a pleasant time at the reception which followed.

Kouichi Kajisaki during Unius 20th Anniversary SeminarUnius Senior Managing Partner Kouichi Kajisaki recounts stories from the days of Unius’s founding during the recent Unius 20th Anniversary Seminar

 

 

 

 

 

2018.1.25 Japanese IP case summary: “NK Cell Activator” case. Meiji Co., Ltd. v. Commissioner of the Japan Patent Office. Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10279

  • “NK Cell Activator” case
  • Meiji Co., Ltd. v. Commissioner of the Japan Patent Office
  • Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10279
  • Decided 30 November 2017

In this judicial appeal from an adverse decision by the JPO Trial and Appeal Division, the Japanese Intellectual Property High Court upholds the decision of the JPO Trial and Appeal Division which found Meiji’s grandchild application (the application at issue in the present case) ineligible for protection under the six-month Japanese grace period, and thus unpatentable due to Meiji’s publication of a novelty-defeating paper during that six-month period, when the formal requirements for invoking the protection of the grace period were met only by the grandparent application, and an intervening application claiming domestic priority [*] to the grandparent application prevented automatic application of the grace period to the grandchild application as would otherwise have occurred by operation of law.

Perhaps lulled into a false sense of security by the provisions of the Japanese Patent Act that extend the benefits of grace period protection which has been properly invoked in a parent application to divisional offspring of that parent (but not, as the Court in the present case held, to a non-divisional application which claims domestic priority [*] to that parent), patent counsel in the present case failed to perform the comparatively simple procedural steps necessary to invoke the protection of the grace period, underscoring the need to err on the side of caution in such matters.

[*] Cautionary note to U.S. practitioners: Whereas the expression “domestic priority” is commonly used in the U.S. to refer to any parent-child relationship among U.S. applications, in Japanese (and European) practice the expression “domestic priority” is used exclusively to refer to a domestic version of the Paris Convention one-year priority period, for which reason the closest analogy under U.S. practice might be the one-year priority period that arises upon filing of a U.S. provisional patent application. And while on the subject of terminology that may not mean what one thinks it means (!), note further that whereas the U.S. has continuations, continuations-in-part, and divisionals, divisionals only properly arising as a consequence of a restriction requirement, in Japanese (and European) practice almost every application that claims the benefit of an earlier-filed domestic application is referred to as a “divisional application” (with the notable exception of the provisional-like “domestic priority” situation that confounded even the Japanese practitioner in the case summarized above). Although now quite surely far afield of the original topic, it may be of interest to note that while US-style “bypass” continuations from international applications are not permitted under Japanese practice, one can enter Japan from an international application via the “domestic priority” route (one-year priority period); however, it should be noted in this regard that one gets only “one bite at the apple,” in the sense that one cannot enter Japan via both the “domestic priority” route (one-year priority period) and the national stage route (30-month priority period) based on the same international application.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.1.15 Article Branding Strategies that Strengthen Intellectual Property Rights in the Context of Functional Food Products by Unius Partner Katsushi Ishikawa Published in January 2018 Issue of Food Processing and Ingredients

Article Branding Strategies that Strengthen Intellectual Property Rights in the Context of Functional Food Products by Unius Partner Katsushi Ishikawa Published in January 2018 Issue of Food Processing and Ingredients

The article Branding Strategies that Strengthen Intellectual Property Rights in the Context of Functional Food Products by Unius Partner Katsushi Ishikawa was published in the January 2018 issue of the trade journal Food Processing and Ingredients.

The January 2018 issue (in Japanese) of Food Processing and Ingredients may be obtained from the publisher (UBM Media Co Ltd) by clicking on the following link:
http://www.kenko-media.com/food_devlp/archives/2291

Those interested in the content of the article may wish to inquire with Unius for more information.

For general inquiries, please send email to office@unius-pa.com or fax to 06 6838 0515. For inquiries related to IP protection for food products, please email us at food@unius-pa.com.

2018.1.14 Trade Journal Food Processing and Ingredients To Publish Series IP Strategies in Connection with Development of Functional Food Products by Unius Partner Masanori Haruna

Trade Journal Food Processing and Ingredients To Publish Series IP Strategies in Connection with Development of Functional Food Products by Unius Partner Masanori Haruna

Starting from its January 2018 issue, the monthly trade journal Food Processing and Ingredients will publish a series entitled IP Strategies in Connection with Development of Functional Food Products by Unius Partner Masanori Haruna. This series seeks to provide readers with the latest news in the field of intended uses of known food products by providing a regular report of recently granted patents and published patent applications dealing with such subject matter.

Besides providing a regular summary of recently granted/published patents and applications, this series will discuss aspects of cases having broader ramifications for food product patents in general, such as effective claim language, interesting specification drafting techniques, and successful prosecution strategies.

The first article in the series (in Japanese) can be found at http://www.kenko-media.com/food_devlp/archives/2284.

Links to all articles published to date in the series (in Japanese) can be found at http://www.kenko-media.com/food_devlp/archives/category/hatsumei.

Those interested in the content of the series may wish to inquire with Unius for more information.

For general inquiries, please send email to office@unius-pa.com or fax to 06 6838 0515. For inquiries related to IP protection for food products, please email us at food@unius-pa.com.

2018.1.4 Japanese IP case summary: “Accounting Device” case. Freee K.K. v. K.K. Money Forward. Tokyo District Court Case No. 2016(Wa)35763.

  • “Accounting Device” case
  • Freee K.K. v. K.K. Money Forward
  • Tokyo District Court Case No. 2016(Wa)35763
  • Decided 27 July 2017


This infringement litigation, in which the Tokyo District Court rendered a decision of no infringement, is noteworthy for the fact that, in response to plaintiff’s motion to compel production by defendant of documents that plaintiff alleged would demonstrate that asserted claim(s) read on the accused method, the Court conducted an in camera inspection of the documents in question to ascertain whether there were “reasonable grounds for the person possessing the documents to refuse production of the said documents” as provided under Article 105(1) of the Japanese Patent Act. As a result of its in camera inspection of the documents in question, as the Court could find nothing that would substantiate plaintiff’s allegation, and as the Court further considered that the goal of preserving the trade secrets of the defendant outweighed any value that the documents may have had as evidence in the present case, the Court denied plaintiff’s motion to compel and ultimately found in favor of the defendant.

Depending on one’s perspective, this case will likely be viewed as either confirming the general reluctance of Japanese courts to enforce discovery-like motions to compel production of documents and so forth, or as lending hope to the possibility that Japanese courts may be growing increasingly receptive to discovery-like practices such as those envisioned at least in theory under Article 105 of the Japanese Patent Act and Article 182 of the Japanese Code of Civil Procedure.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.1.4 Japanese IP case summary: “Tomato-Containing Beverage” case. Kagome Co., Ltd. v. Ito En, Ltd.. Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10147.

  • “Tomato-Containing Beverage” case
  • Kagome Co., Ltd. v. Ito En, Ltd.
  • Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10147
  • Decided 8 June 2017


In this invalidation action brought by Kagome targeting Ito En’s Japanese Patent No. 5189667, the Japanese Intellectual Property High Court found the subject patent invalid for failure to meet the written description requirement because one of skill in the art would have been incapable of instantly relating flavor criteria for sweetness, acidity, and richness evaluated at the Working Examples to numeric (parametric) ranges for sugar content, sugar acid ratio, and glutamic acid content recited at the claims.

This case highlights the importance in Japanese practice of providing written description support that is commensurate with the scope of the claims. In the present case, it would appear that the Court was unconvinced either by the evaluative method employed or by the proposition that the claimed numeric ranges alone could account for the benefit allegedly provided by the invention.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.1.4 Japanese IP case summary: “Methods and Compositions for Making Antibodies and so forth with Reduced Core Fucosylation” case. Party X v. Seattle Genetics Inc. Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10146.

  • “Methods and Compositions for Making Antibodies and so forth with Reduced Core Fucosylation” case
  • Party X v. Seattle Genetics Inc.
  • Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10146
  • Decided 12 July 2017


(Although the plaintiff is referred to as Party X by the Court, Party X is presumably Koji Wada, the petitioner in the JPO invalidation action being appealed in the present case.)

In this judicial appeal from a failed attempt to invalidate the patent at issue before the Japan Patent Office (JPO), the Japanese Intellectual Property High Court upholds the decision of the JPO Trial and Appeal Division, finding the enablement requirement and other conditions for validity to have been met despite disclosure of experimental results indicating no inhibitory activity, provided that, as here, there would have been no particular technical difficulty in realizing that such data was erroneous after noting the strangeness thereof in light of common knowledge in the art and statements made in the specification, and thereafter confirming existence of said inhibitory activity by carrying out measurements in accordance with the methods disclosed at the working examples.

Although in the present case the patent owner was saved from a finding of invalidity by both the JPO Trial and Appeal Division and the Japanese Intellectual Property High Court, this came at considerable expense for the patent owner, highlighting the importance of making a clean and consistent record during patent prosecution or the factfinding stage of litigation.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.1.4 Japanese IP case summary: “Processed Beverage and Packaged Beverage” case. Kikkoman Corporation and Nippon Del Monte Corporation v. Commissioner of the Japan Patent Office. Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10205.

  • “Processed Beverage and Packaged Beverage” case
  • Kikkoman Corporation and Nippon Del Monte Corporation v. Commissioner of the Japan Patent Office
  • Japanese Intellectual Property High Court Case No. 2016(Gyo-Ke)10205
  • Decided 14 June 2017


Where asserted patent claim recites “fractional content of insoluble solids” and description at working example adequately permits measurement of same but patent specification parenthetically remarks that presence of “filter residue” may in some cases make measurement impossible, invalidity is upheld for failure to satisfy the enablement requirement.

In light of the present decision in which the Japanese Intellectual Property High Court treats the cautionary mention of possible difficulties that may be encountered when measuring a claimed quantity as an admission of nonenablement by the inventor, drafters of new specifications may wish to avoid gratuitous statements that may be misinterpreted as similar admissions, and patent owners having issued patents containing such problematic statements may wish to consider whether amendment of the patent specification might be warranted prior to any attempt to assert the patent against an infringer.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2018.1.4 Japanese IP case summary: “Sheetcutter” case. Party X v. Party Y. Japanese Supreme Court Case No. 2016(Ju)632.

  • “Sheetcutter” case
  • Party X v. Party Y
  • Japanese Supreme Court Case No. 2016(Ju)632
  • Decided 10 July 2017


(Although the parties are referred to as Party X and Party Y by the Court, Party X is presumably patent owner Yasuhiro Maekawa, and Party Y is presumably Yoshiharu Higashi, the petitioner in the JPO invalidation action that sought to invalidate the patent asserted by the patent owner in the present case.)

In a suit for preliminary injunction and other relief, where patent owner had not by the conclusion of the oral argument phase at the trial court asserted its right to amend the claims in response to a defense of invalidity by an alleged infringer but thereafter contests the judgement of the trial court on grounds including the fact that the decision regarding amendment has been made final, absent extraordinary circumstances that would have prevented the patent owner from asserting its right to amend the claims, this is held to be impermissible since to hold otherwise would unjustly delay resolution of the patent infringement dispute.

In light of the present decision by the Japanese Supreme Court in which a procedural rule prohibiting amendment of claims until after conclusion of oral argument in the case below was not deemed to constitute an “extraordinary circumstance” that would have rescued the patent owner from the present result, patent owners wishing to preserve their right to amend claims in response to a defense of invalidity may find it prudent to ignore such procedural prohibitions and prophylcatically assert their right to amend the claims regardless of the status of the case below.


The foregoing Japanese intellectual-property-related court case summary has been provided by the Japanese patent attorneys at Unius Patent Attorneys Office. A complete list (in Japanese) of all cases reviewed by Unius Patent Attorneys Office can be found at http://www.unius-pa.com/precedent.

2017.11.16 Unius Partners Shuko Takayama and Masanori Haruna Give Private Seminars at Client Sites on Topics Including Current Situation Regarding Claims that Recite Numeric Ranges and Strategic Use of Food Product Patents Having Claims that Recite Functional Expressions

Unius Partners Shuko Takayama and Masanori Haruna Give Private Seminars at Client Sites on Topics Including Current Situation Regarding Claims that Recite Numeric Ranges and Strategic Use of Food Product Patents Having Claims that Recite Functional Expressions

Unius is pleased to be able to provide private seminars on a variety of themes for our corporate clients.

Unlike the seminars that we hold on a regular basis which are open to the public and which may thus be attended by corporate rivals, our private seminars, which are typically conducted in a confidential setting at a client-controlled facility, permit us to engage in a more in-depth and fact-specific dialogue with a particular client.

Please let us know if you would like Unius to give a private presentation on an intellectual property topic at your company for the benefit of your IP legal staff, IP managers, and/or R&D team.

For general inquiries, please send email to office@unius-pa.com or fax to 06 6838 0515. For inquiries related to IP protection for food products, please email us at food@unius-pa.com.

2017.10.18 Unius Hosts Visit from Six EPO Examiners During Seminar and Q & A Session on Clarity and Inventive Step

Unius Hosts Visit from Six EPO Examiners During Seminar and Q & A Session on Clarity and Inventive Step

EPO Seminar Details
18 October 2017 (Wednesday)
10:10 AM – 11:15 AM Seminar (seating from 9:30 AM)
11:15 AM – 12:00 noon Q & A
TKP Shinosaka Business Center
First Shinosaka MT Building 2nd Floor (*)
5-13-9 Nishinakajima, Yodogawa-ku Osaka 532-0011
(*) This is the location of Unius’s Osaka office, which is an approximately 4-minute walk from JR Shinosaka Station Central Exit.

Seminar will be given in English but Unius staff member Gerry Peters (U.S. patent agent) will provide interpreting between Japanese and English during the seminar as well as during the Q & A session which follows.

2017.10.5 Unius IP Case Study Seminar to be Held on 6 and 13 October 2017: “Interpreting Patent Claims that Recite Parametric Ranges”

Unius IP Case Study Seminar: “Interpreting Patent Claims that Recite Parametric Ranges”

This year’s seminar (Interpreting Patent Claims that Recite Parametric Ranges) is the sequel to the similarly titled seminar of last year (Novelty and Inventive Step of Patent Claims that Recite Parametric Ranges).

In this year’s seminar, Unius Senior Managing Partner Kouichi Kajisaki, who has devoted much study to the subject of patent claims that recite parametric ranges, shares his knowledge of the subject and provides commentary on the impact of recent court decisions.

Please note that this seminar will be conducted in Japanese.

The seminar will be followed by a reception. Attendees are welcome to attend the seminar and/or the reception.

Note that the seminar will be held one week apart in Tokyo and Osaka. Please choose whichever location is more convenient.

To register, please send email to seminar@unius-pa.com or fax to 06 6838 0515. Kindly include your name, organization, and whether you will be attending in Tokyo or Osaka.

More information can be found by clicking here (Japanese).

Tokyo Seminar
6 October 2017 (Friday)
Seminar 18:30 – 20:00 (seating from 18:00)
Post-seminar reception starts at 20:00
(Attendees are welcome to attend seminar and/or reception)
TKP Tokyo Station Conference Center
Ishizuka Yaesu Building 9th Floor (*)
1-5-20 Yaesu, Chuo-ku Tokyo 103-0028
(*) Approximately 1-minute walk from JR Tokyo Station Yaesu North Exit. Note that Honma Golf is on 1st Floor of building where seminar will be held.

Osaka Seminar
13 October 2017 (Friday)
Seminar 18:30 – 20:00 (seating from 18:00)
Post-seminar reception starts at 20:00
(Attendees are welcome to attend seminar and/or reception)
TKP Shinosaka Business Center
First Shinosaka MT Building 4th Floor (**)
5-13-9 Nishinakajima, Yodogawa-ku Osaka 532-0011
(**) Approximately 4-minute walk from JR Shinosaka Station Central Exit. Note that Unius’s Osaka office is on 2nd Floor of building where seminar will be held.

2017.7.13 Article “Principles and Strategies for Patent Applications on New Uses of Known Food Products in What Will Soon Be an Increasingly Patent-Dense Market“ by Unius Partner Masanori Haruna Published in May 2017 Issue of Food Processing and Ingredients

An article entitled “Principles and Strategies for Patent Applications on New Uses of Known Food Products in What Will Soon Be an Increasingly Patent-Dense Market“ by Unius Partner Masanori Haruna was published in the May 2017 issue of the Japanese trade journal Food Processing and Ingredients.

The May 2017 issue (in Japanese) of Food Processing and Ingredients may be obtained from the publisher (UBM Media Co Ltd) by following the instructions at the following link:

http://www.kenko-media.com/food_devlp/archives/1792

Those interested in the content of the article may wish to inquire with Unius for more information.