2018.1.25 What's new » 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.