Patent Case Law and Intellectual Property Practice Blog

① The Ricoh case and how “compulsory mediation” should operate Although the first-instance judgment also dismissed damages entirely, as long as the implementer actually enjoys the patented invention's benefits, a solution denying an injunction but allowing payment equivalent to a reasonable licence fee (royalty)—following the Supreme Court's 1968 judgment—is desirable from the perspectives of legal consistency and equity.

1. The Japan Patent Office's (JPO) “first alternative” principle In chemistry and biotechnology, compounds and sequences are commonly expressed as alternatives (Markush form), such as “R is A, B or C” or “any of SEQ ID NOs. 1–4.” Under Japan's Examination Guidelines, the first-listed alternative is, in principle, selected for examination when assessing unity (Patent Act Article 37).

1. Branding by vegetable producers Separate breeders' rights from trademarks: Registered variety names enter the public domain after the protection term, so obtain trademark rights too. For brands closely linked to a region, strategically distinguish between the GI and regional collective trademark systems.

There have been five cases claiming remuneration solely on the basis of employee-created designs, but no published court decision has awarded it. Compared with patents (employee inventions), the following differences and points warrant attention in calculating reasonable remuneration.

1. De facto patent linkage in Japan Under the practice based on the Ministry of Health, Labour and Welfare's “two division directors' notification,” biosimilars (BS) are, in principle, not approved while patents exist on the originator product's active ingredient or use. 2. Re-examination period

In Japan, the 2016 revision of the Examination Guidelines strengthened protection for food-use inventions, but overseas, national laws and examination practices differ greatly. 1. Permissible claims ① US: Product-use inventions are not recognized; draft as methods. A use in the preamble often has no limiting effect.

Five starting points for enquiries: warning letters, enforcement, patent validity, intellectual property contracts, and training or lectures.

Explore articles on claim interpretation, the doctrine of equivalents and product-by-process claims. Consult the individual articles and their sources for the facts and discussion of each case.

Explore existing articles on AI and intellectual property, including rights relating to voice and IP strategy in the AI era.

Explore existing articles on inventive step, design choices, motivation and teaching away. The collection includes case notes, reviews of publications and lecture materials. See each article for its discussion and sources.