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We will select informative IP court decisions from the “TOKKYO HANREI HYAKUSEN IV” (100 selected patent precedents, ver. 4) Published by YUHIKAKU on April 5, 2012 and “SHOHYO/ISHO/HUSEIKYOSO HANREI HYAKUSEN” (100 selected trademark, design and unfair competition precedents) published by YUHIKAKU on November 15, 2007. 
We sincerely hope this report will provide useful information for you.

 

Vol.5 (April 30, 2013)

Patentability of Inventions Directed to Medical Methods

Hei 12(2000) Gyoke No.65 Judgment of the Tokyo High Court

This Appeal was filed to request reversal of a decision of the JPO rejecting the patent application. The Tokyo High Court upheld the decision of the JPO.

Relevant Patent Laws:

Article 29(1): An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following:

Article 32: Notwithstanding Article 29, any invention that is liable to injure public order, morality or public health shall not be patented.

Article: 69(3) A patent right for the invention of a medicine (refers to a product used for the diagnosis, therapy, treatment or prevention of human diseases, hereinafter the same shall apply in this paragraph) to be manufactured by mixing two or more medicines or for the invention of a process to manufacture a medicine by mixing two or more medicines shall not be effective against the act of preparation of a medicine as is written in a prescription from a physician or a dentist and the medicine prepared as is written in a prescription from a physician or a dentist.

 

The Facts:

The Appeal Board of the JPO finally rejected a patent application entitled “Method and equipment for displaying a surgical operation in an optical and replayable manner”.  Therefore, the patent applicant filed a lawsuit before the High Court requesting the decision of the Appeal Board to be overturned.

In the decision, the Appeal Board determined that Claim 1 was a method claim ineligible for patenting because it was not industrially applicable.  More specifically, the Board stated that the invention of Claim 1 was the method for diagnosing human beings, and thus the claimed subject matter concerned a medical procedure that does not belong to an industry, i.e. it was not industrially applicable.

 

The Judgment:

The plaintiff asserted that an invention directed to a method of diagnosing human beings is not necessarily unpatentable under Article 32.

However, the High Court determined that, if inventions directed to methods of diagnosing human beings are allowed to be patentable, physicians may be inhibited from freely providing necessary medical treatments to patients in need thereof, because the physician would always have to be concerned about whether his/her action will infringe a patented method.

On the other hand, the High Court also determined that, even if a medicine or equipment for diagnosing human beings is patented, physicians would not be inhibited from freely providing necessary medical treatments to patients in need thereof, because the physician need not mind whether his/her action will infringe a patent.  Rather, the physician may only be prohibited from using the patented medicine or the equipment.

Furthermore, the High Court noted that Article 69(3) of the Patent Act prevents a finding of infringement with respect to an invention of a medicine that is manufactured by mixing two or more medicines or an invention of a process for manufacturing a medicine by mixing two or more medicines.

While the Patent Act does not include any prescriptions such as Article 69(3) for inventions directed to methods of diagnosing human beings, the same problem solved by Article 69(3) is applicable to methods for diagnosing human beings.

Therefore, in view of the ultimate objective of the Japanese patent system (i.e. to promote the public welfare), the High Court determined that it is rational and appropriate thought for the Patent Act to exclude medical procedures from the category of industrial-applicable inventions.

 

Our Remarks:

The JPO’s Examination Guidelines state that methods of surgically operating on, treating (curing) or diagnosing human beings are not inventions capable of being applied to any industry. Therefore, such methods are not patentable.

The Examination Guidelines further state that methods for diagnosing human beings encompass the collection of any information by measuring the structure or the function of one or more organs or tissues of a human body and the determination or evaluation of the condition thereof based upon the collected information.

Therefore, when drafting claims, it is necessary to ensure that method claims are not directed exclusively to a medical procedure, such as a method of diagnosing a human being.

 

 

 

Vol.4 (February 19, 2013)

The relationship between being “publicly known” and “an obligation of confidentiality”

Case : Hei 11(1999) Gyoke No.368 Judgment of the IP High Court

This Appeal was filed to request reversal of a decision of the JPO validating the patent.
The IP High Court upheld the decision of the JPO.

Article 29(1) of the JPA (the Japanese Patent Act) states that “an inventor of an invention that is
industrially applicable may be entitled to obtain a patent for said invention, except for the following:

(i) inventions that were publicly known in Japan or a foreign country, prior to the filing of
the patent application;”

 

The facts:

The plaintiff “X” filed a Trial for Invalidation before the JPO against a patent of the patentee “Y”. 
The patent concerned a roll-calendar.

According to the facts determined by the JPO, Y conceived the inventive roll-calendar in about 1980
and disclosed drawings of the inventive roll-calendar to several clients with a business proposal in September
of the same year.

In about Oct. 1983, a third party “A” requested an employee of Y to provide a cost proposal for
supplying the inventive roll-calendar. 

The employee of Y drafted another set of drawings of the inventive roll-calendar around Dec. 26
of the same year and held a meeting with A around the middle of Jan. 1984, in which the new drawings were shown to A.

Further, in the beginning of Feb. 1984, A visited Y to hold a meeting and to obtain a detailed cost proposal
based on the new drawings.

Then, in the middle of March 1984, Y drafted another set of drawings of the inventive roll-calendar and
provided them to A to further negotiate the cost proposal (supply contract).
During this entire time period, Y never entered into a written confidentiality agreement with A and never
explicitly orally instructed A to maintain the drawings in secrecy (confidentiality).

Therefore, in the Trial for Invalidation, X asserted that Y publicly disclosed the roll-calendar
invention by showing the drawings to a customer with no explicit confidentiality obligation.

Thus, the disclosure of the invention to A before the filing date of the application made the invention
“publicly known” in accordance with Article 29(1)(i) of the JPA.

In addition, X also asserted that X heard from A about the subject matter of the invention before
the filing date of the application. 

Therefore, this subsequent disclosure from A to X additionally destroyed the novelty of the invention,
even if the JPO/IP High Court were to determine that A had an obligation to maintain the confidentiality
of Y’s invention.  

 

The judgment:

The IP High Court dismissed X’s request to invalidate the patent and stated that the invention would not
be deemed to be “publicly known” when only persons, who have an obligation to maintain the
confidentiality of the invention, have knowledge of the invention.

Further, even without an explicit instruction or request of the inventor and/or applicant,
the obligation of confidentiality arises when persons having knowledge of the invention are expected to
maintain the confidentiality of the invention based upon social commonsense or customary business practices.

The reason for this ruling is that, if an absolute requirement to obtain written confidentiality agreements
and/or to explicitly request confidentiality is imposed on the inventor/applicant in every possible business
situation, it would disrupt the smooth transaction of the inventive products, techniques, etc. in commerce.

In the present case, according to social commonsense and/or customary business practices,
“A” was expected to maintain the confidentiality of Y’s drawings and disclosures concerning the inventive calendar.

Therefore, the novelty of the invention was not lost by Y’s disclosure of the drawings to A,
even though there was no explicit agreement concerning confidentiality.

Furthermore, even though X obtained the disclosure of Y’s invention from A before the filing date of the application,
this disclosure also does not cause the invention to become “publicly known” due to Article 30 of the JPA,
which provides an exception to Article 29 when the disclosure is unauthorized. 

 That is, because Y did not authorize A to disclose Y’s invention to X, this subsequent disclosure also
can not be considered a “public disclosure” that destroys novelty of the invention.

 

Our Remarks:

In ordinary business transactions, the act of disclosing drawings and/or other documents concerning
the invention may not destroy the novelty of the invention, even if there is no prior (explicit) written
confidentiality agreement or the like.

However, in order to minimize risk, we still strongly recommend the filing of a patent application
prior to any disclosure of the invention in order to avoid disputes later.  

In the alternative, if the invention must be disclosed, e.g., to a potential business partner prior to
the filing of the patent application, it is still best to obtain a signed confidentiality (non-disclosure)
agreement from any party who will receive documents and/or oral disclosures concerning the invention.

Though, in Japan, generally it may be troublesome for a small company as a supplier to enter into
a written confidentiality agreement with a large company as a customer.

 

 

Vol.3 (October 12, 2012)

“What is a “good” according to the Japanese Trademark Act (JTA)?”

Case : Sho 61(1986) wa No. 7518 (Judgment of the Osaka District Court) 

Art. 2 of the JTA defines a “Trademark” as any character(s), figure(s), sign(s) or three-dimensional shape(s), or any combination thereof, or any combination thereof with colors which is:

(i) used in connection with the goods of a person who produces, certifies or assigns the goods as a business; or

(ii) used in connection with the services of a person who provides or certifies the services as a business.

 

The facts:

X (plaintiff) is the rightful owner of the registered trademark “BOSS” designating clothes, etc. as the goods.

Y (defendant) is a company in the business of making and selling electronic musical instruments using the trademark “BOSS”.

Y provided T-shirts and other items free of charge, based upon point cards, in drawings, as presents etc., to purchasers of its products as goods for advertisement and sales promotions of its musical instruments.
The word “BOSS” was printed in the center of the T-shirts in large-font with a small-font sentence stating “for sound innovation on stage”.
X asserted that Y’s action infringed X’s trademark rights and requested damages for trademark infringement.

 

The Judgment:

The Osaka District Court dismissed X’s request.
The Court determined that a “good” according to the JTA must have a value of exchange by itself and must be the independent object of a transaction.

The court further determined that Y only provided the T-shirts, etc. with the “BOSS” mark free of charge under certain conditions (and the price of the T-shirts, etc. is essentially much lower than the price of the instruments) as a good for advertising and sales promotions, i.e. as a novelty.

In addition, the T-shirts, etc. were provided only to purchasers of the instruments, such that the T-shirts, etc. themselves were never the object of the transaction. Moreover, Y was not expected to distribute the T-shirts, etc. in the market in the future.

Consequently, the T-shirts etc. were not a “good” by themselves, but were instead only an advertising medium.
Therefore, Y did not infringe X’s trademark rights.

 

Our Remarks:

An item showing a registered trademark may not be “good” according to the JTA under certain circumstances and it is best to carefully consider the nature and manner of conveyance of the good when determining whether Japanese trademark rights have been infringed.

 

 

 

Vol.2 (October 12, 2012)

“Utilization of  the laws of  nature”

continued from the last issue

Case 2 : Hei 19 (2007) gyo ke No. 10369 (Judgment of the IP High Court)

  • This Appeal was filed to request a decision of the JPO rejecting the applicant’s patent application to be overturned.
  • The IP High Court overturned the decision of the JPO.

 

Summary:

This invention concerns a tooth treatment system that utilizes a computer.

The claims of the application recited means for judging the type of tooth restoration that is required and
means for planning the schedule of the treatment at the first stage.

The JPO determined that such means only involved the mental activity of a dentist, so the claimed invention
did not utilize any laws of nature.

On the other hand, the IP High Court decided that such means as a whole did, in fact, utilize laws of nature,
even though some aspects of the means did not.

That is, such means support the dentist’s best selection of the necessary treatment by using a computer,
as was determined by referring to the detailed description of the invention.   

 

Our Remarks:

The following should be kept in mind.

The IP High Court stated that, even in case an invention includes any conduct involving mental activity of a person or
relates to such mental activity, the invention may still be considered to utilize laws of nature, if the essence of the
invention is to support the mental activity of a person or to offer technical measures that replace such mental activity. 

 

Case3 : Hei 20 (2008) gyo ke No. 10001 (Judgment of the IP High Court)

  • This Appeal was filed to request a decision of the JPO rejecting the applicant’s patent application to be overturned.
  • The IP High Court overturned the decision of the JPO.

 

Summary:

The title of this invention is “a method of looking up a word in a special translating dictionary”.

In this application, “special” means that, in this dictionary, the words are arranged vertically in alphabetical
order of the consonant elements included in the word as shown in Fig. 1 below.

Each row in Fig. 1 includes, from left to right, the consonant elements, the phonetic spelling,
the actual spelling and the corresponding translated (Japanese) word.

The method of looking up a word in this dictionary according to the invention is as follows.

First, when the pronunciation of a word is heard, the word is searched in the dictionary based on the consonant
elements included therein.

If two or more words containing the same consonant elements are found,
then the differences of the vowels included in those words or the accents on them are compared with each other
to find the word that is sought.

The IP High Court stated that this invention was invented by using the scientific knowledge that human beings
have a better ability to recognize a consonant sound than a vowel sound in order to be able to look for the sought (English)
word based upon its consonants, even if spelling of the sought (English) is unknown.

Furthermore, this effect could be achieved repeatedly in the same way.

Therefore, it was found that the invention utilizes laws of nature.

 

Our Remarks:

Even if the subject matter of the invention relates to the mental activity of a person, the invention will be deemed to
utilize laws of nature in case the activity is based on a scientific ground and repeatedly achieves the same effect.

 

Fig.1

 

 

Vol.1 (September 19, 2012)

“Utilization of the laws of nature”

Article 2(1) of the Japanese Patent Act (JPA) defines

“Invention” to mean the highly advanced creation of technical ideas utilizing the laws of nature.

Article 29(1) of the JPA states as follows:

“An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention …”

Accordingly, in order to be eligible for patenting, a claimed invention must include at least one technical idea that
utilizes at least one law of nature.

Three precedents, namely Case 1, Case 2 and Case3, concerning this patentability requirement
will be described in successive reports.

Case 1 : Hei 16 (2005) gyo ke No.188 (Judgment of the Tokyo High Court)

  • This Appeal was filed to overturn a decision of the JPO rejecting the applicant’s patent application.
  • The Tokyo High Court affirmed the decision of the JPO.

 

Summary:

The title of the invention at the time of filing was “a method of solving a simultaneous equation”,
but and it was amended during prosecution to “a method of simulating an electric circuit”.

In the decision, the Tokyo High Court stated “although the applicant asserts that the equation is
the mathematical model of the circuit, no electrical characteristics are reflected in the equation in the claims. 

Moreover, the process of tracing the solution curve of the Homotopy equation based on the above equation
using the BDF method is nothing more than the process of searching the solutions of the equation,
and includes no consideration of the physical or technical character of the circuit.”

Our Remarks:

When drafting the claims, it is essential to make sure that the relationship between a numerical formula and
a concrete physical quantity is clear, as well as that the formula is utilized to measure, control, etc. the physical quantity.

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