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Japanese Patent Law: Cases and Comments by HEATH

Japanese Patent Law: Cases and Comments

Edited by Christopher Heath, Atsuhiro Furuta


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Max Planck Series on Asian Intellectual Property, Volume Number 17.

This first comprehensive work in English on all aspects of Japanese patent law presents 66 cases with an expert explanatory commentary from academics, attorneys, judges and members of the Japanese Patent Office. This book deals with the whole range of Japanese patent law – requirements of patentability, inventorship and ownership issues, procedures before the Patent Office, scope of protection and interpretation of claims, enforcement and infringement procedures, patent term extensions, licensing and antitrust issues, utility models and more. Many of the cases appear in English for the first time.

Following an informative introduction explaining the economic importance of the patent system for Japan, the cases cover such specific issues as the following:

  • definition of an invention;
  • assessment of prior art, novelty and inventive step;
  • rights of co-inventors;
  • disclaimers, corrections and amendments;
  • scope and limits of patent protection;
  • distinction between repair and reconstruction;
  • doctrine of equivalents;
  • domestic and international jurisdiction in patent matters;
  • interim proceedings and measures;
  • defence of invalidity;
  • damage calculation;
  • patent term extension system; and
  • utility models.

Each case commentary follows a uniform structure, including background, summary of the facts, analysis and comparative remarks. The latter allows the reader to put developments in Japan in an international context.

With the wealth of knowledge it makes available – leading Japanese patent cases in English translation, comparative case commentaries by leading experts on Japanese patent law, comprehensive analytical coverage of all aspects of Japanese patent law and coverage of related fields such as licensing, antitrust and civil procedure – this easy-to-use book will be warmly welcomed by patent attorneys and other practitioners (including Japanese patent practitioners advising foreign clients), patent academics and patent offices worldwide.

Last Updated 06/27/2019
Update Frequency As Needed
Product Line Kluwer Law International
ISBN 9789041194190
SKU 10059304-0001
Table of Contents

List of Authors and Editors

Preface: On Contributors and Decisions

Introduction: History and Economic Importance of the Patent System
for Japan

by Christopher Heath and Atsuhiro Furuta


Case No. 1: Definition of an Invention – Mental Activity

Case No. 2: Definition of an Invention – Repeatability

Case No. 3: Novelty – Novelty Destroying Prior Application – Double Patenting

Case No. 4: Novelty – Grace Period – Combination with Priority

Case No. 5: Inventive Step – Problem Solution Approach and Ex Post Analysis

Case No. 6: Inventive Step – Assessment of Prior Art

Case No. 7: Inventive Step of New Medical Indications and Dosage Regimes

Case No. 8: Technical Effect – Late Filed Experimental Results

Case No. 9: Enabling Disclosure and Support

Case No. 10: Support Requirement – Parameter Invention

Case No. 11: Industrial Application – Medical Treatment

Case No. 12: Priority – Added Subject Matter


Case No. 13: Rights over the Invention – Inventorship

Case No. 14: Rights of Co-Inventors – Action by One Co-Inventor against Revocation

Case No. 15: Rights over the Invention – Transfer of a portion of Patent Right against Misappropriation

Case No. 16: Employees’ Inventions – Company Rules – Reasonable Remuneration

Case No. 17: Employees’ Inventions – Reasonable Remuneration for Profits made Abroad


Case No. 18: Right to be Heard – Addition of Well-Known Prior Art

Case No. 19: Right to be Heard – Right to Oral Proceedings in Invalidation Trials

Case No. 20: Possibility of Claim Amendment before Grant

Case No. 21: Possibility of Claim Correction after Grant

Case No. 22: Disclaimer, Correction and Amendment

Case No. 23: Advisory Opinion about the Technical Scope of a Patented Invention

Case No. 24: Invalidation Trial – Ne Bis In Idem

Case No. 25: Correction Trial – Revocation Proceedings

Case No. 26: Scope of Cancellation Process in Court against Decision of Patent Office

Case No. 27: Appeal to the High Court and Inventive Step Assessment

Case No. 28: Liability of the Patent Office for Mistakes, e.g. the Omission of Registering a Pledge


1. Rights of Exclusive Use

Case No. 29: Exclusive Rights – Offer for Sale, Manufacture, Export

Case No. 30: Direct and Indirect Infringement

Case No. 31: Patent Infringement – Distinction between Repair and Reconstruction

2. Limits of Exclusive Use

Case No. 32: Limits of Patent Rights – National and International Exhaustion

Case No. 33: Clinical Trials – Research Exception

Case No. 34: Defence of Prior Use

3. The Scope of Protection: Interpreting Patent Claims

Case No. 35: Interpretation of Patent Claims – Interpretation with Reference to the Description

Case No. 36: Interpretation of Patent Claims – Literal Infringement – Disclaimed Element

Case No. 37: Interpretation of Patent Claims – Product by Process Claims

Case No. 38: Interpretation of Patent Claims – Doctrine of Equivalents

Case No. 39: Interpretation of Patent Claims – Doctrine of Equivalents

Case No. 40: Interpretation of Patent Claims – Doctrine of Equivalents


1. Jurisdiction, Procedure and Applicable Law

Case No. 41: National Jurisdiction – Exclusive Jurisdiction in Patent Matters

Case No. 42: International Jurisdiction in Patent Matters

Case No. 43: International Jurisdiction in Patent Matters – Offer on the

Case No. 44: Arbitration Law – Separability and Arbitrability – Estoppel of Invalidity

Case No. 45: Infringement of a US Patent and Applicable Law

Case No. 46: International Civil Procedure, Recognition of Foreign Judgements, Punitive Damages

Case No. 47: Discovery – Order of Documents – Defence of Secrecy

Case No. 48: Interim Procedures and Protective Orders

2. Defence of Invalidity

Case No. 49: Defence of Invalidity

Case No. 50: Patent Infringement – Defence of Invalidity

Case No. 51: Defence of Invalidity – Correction of Patent Claim – Late Filing

3. Remedies

Case No. 52: Injunctive Relief – Exception for Standard Essential Patents

Case No. 53: Scope of Injunctive Relief – Method Patent

Case No. 54: Damage Calculation – Presumption of Damages

Case No. 55: Damage Calculation – Presumption of Damages

4. Wrongful Enforcement

Case No. 56: Threats – Warning Letter alleging Patent Infringement – Standard of Liability

Case No. 57: Re-Trial due to Revocation after Successful Infringement Suit


1. Patent Extensions

Case No. 58: Requirements for a Patent Term Extension of Pharmaceutical Patents

Case No. 59: Requirements for a Patent Term Extension of Pharmaceutical Patents – Second Marketing Approval for the Same Patent

Case No. 60: Scope of Extended Patent

2. Licensing and Antitrust

Case No. 61: Exclusive Registered Licensee – Standing to Sue

Case No. 62: Licensing Agreement – Patent Subsequently Reduced in Scope

Case No. 63: Licensing Agreement over Foreign Patent – Royalties not Taxable in Japan

Case No. 64: Antimonopoly Act – Patent Licensing Agreement – Vertical Restraints – Maximum Output Restriction

Case No. 65: Patent Pools, Refusal to License and Abuse of a Dominant Position

3. Utility Models

Case No. 66: Utility Model – Technical Assessment Report

Index of Japanese Decisions in Chronological Order

Alphabetical Keyword Index

About The Experts