<New YouTube Video> [Patents] IP Strategy That Serves Business (Publicly Releasable Extracts from a Five-Hour Paid Lecture / Two Hours)
Updated: 1 hour ago
Article information
Type: Lectures and videos
Classification: Patents, Trademarks, Designs, Copyright, Unfair competition law, Other Japanese law, United States, Other foreign jurisdictions
Topics: IP management, Divisional applications, Added matter, Numerical limitations and parameters, Extraterritorial application
First published on this site: 2023-12-30
Display and classification checked: 2026-11-14
<New YouTube Video> [Patents] IP Strategy That Serves Business (Publicly Releasable Extracts from a Five-Hour Paid Lecture / Two Hours)
★ More than half of the material was cut because it was unsuitable for general release, so there are places where the speech jumps. Thank you for your understanding.
<Contents>
1. Introduction — IP Landscaping
2. Overview of the Patent System (+ IP Landscaping) (‘Open/Closed Strategy’ omitted)
⇒ IP that decision-makers should understand in light of the Corporate Governance (CG) Code
IP that decision-makers should understand in light of the CG Code — Viewing IP as an ‘asset.’
IP due diligence: ‘Intellectual Property Due Diligence Standard and Commentary’ (Japan Patent Office, March, Heisei 30)
3. Strong (Patentable) Inventions (Pioneering Inventions) = Initial Specifications Enabling Divisional Applications That Capture Future Accused Products
4. Patent-Filing Strategies by Technical Field (IT, Pharmaceuticals and Biotechnology)
5. Important Judgments, Etc. at the Patent-Strategy Level + Important Points on IP Other Than Patents
Co-ownership of patent rights: laws of various countries
Doctrines permitting refusal to produce materials in U.S. litigation discovery
(1) Attorney-client privilege
(2) Work-product doctrine
‘Evidence gathering’ using U.S. courts <USC 1782>
Presumption of negligence (Patent Act, Article 103)
Patent rights and competition law
Divisional-application strategy (Patent Act, Article 44)
Advantages and disadvantages of numerical-limitation / parameter inventions: how to describe the invention's problem in the initial specification
Prior-user rights (denial of ‘encroachment’)
Second requirement of the doctrine of equivalents
Multiple actors — Comparison of Japanese and U.S. exhaustion doctrines
Personal liability of (nominal) directors — Overseas servers and domestic working
[Trademarks] The Mon Chouchou and Takoyaki Kobo cases
[Unfair Competition Prevention Act] Criminal trade-secret infringement cases, the three trade-secret requirements, dissemination and notification of false facts,
[Copyright] Essential wording in copyright contracts — IP combinations (trademark + design) (patent + design)
[Designs] Non-publication after rejection, partial designs, converted applications, related designs, image designs, protection of ‘functions,’ and similarity between the accused product and designs made public after filing,
6. ‘Resolution’ of the Invention (★) ⇒ ‘Resolution of the invention described in the specification’ in light of patentability requirements
7. Filing Strategies That Preserve Room (‘Option Rights’) to Obtain Rights to Another Invention After Filing and After Seeing Competitors' Products, While Maintaining Priority of the Filing Date (★) ⇒ Divisional-application strategy (‘addition of new matter’ in judicial decisions) ⇒ Filing strategies with foreign filings in mind (devising the specification of the priority application / practice in various countries)
8. Other Techniques to Maximize Patent-Application Value (A Wide Variety of Small Techniques)
(1) Reasons for rejection and amendments to claim wording: devising prosecution responses!!
(2) Utilizing dependent claims: claim differentiation
(3) Functional claims: worth considering as independent claims in every case!!
(4) Subcombination claims: no adverse decisions based on differences in intended application
(5) Specifying ‘use’ and ‘manner of use’: only one adverse decision based on a difference in use
(6) Disclaimer claims: inventive step upheld by excluding an essential element of the primary reference!!
(7) Numerical-limitation and parameter inventions: paired with a new ‘problem’!!
(8) Incorporating effects into claims: the ultimate technique when obviousness of the configuration cannot be avoided
(9) Manufacturing-method inventions
(10) Using separate applications
(11) Terms expressing degree
(12) Anticipating indirect and multiple-actor infringement (reviewing system claims)
Originally published: 2023-12-30
Update history
The first publication date and update dates are recorded separately. Display maintenance does not mean that the legal analysis was re-verified.
2026-11-14: Display and classification maintenance (article information, issue tags, language/SEO links, related articles, and consultation path added).
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