2019/09/26

[Title of the patent] “Carbon dioxide-containing viscous composition”

[Key issue] Criteria for deciding the amount of damage compensation (Article 102, paragraphs (2) and (3) of the Patent Act)

A recent IPHC Ground Panel judgment delivered on June 7, 2019.

Source IPHC
2019/09/26

[Title of the patent] “ANTIGEN-BINDING MOLECULE CAPABLE OF BINDING TO TWO OR MORE ANTIGEN MOLECULES REPEATEDLY”

[Key issue] Enablement requirement (Article 36, paragraph (4), item (i) of the Patent Act)

Court stated in the decision that “it cannot be said that the Detailed Description of the Invention provides a description to the extent that allows a person ordinarily skilled in the art to implement the whole range of pharmaceutical composition encompassed by the invention.”

Source IPHC
2019/09/26

[Title of the patent] “ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE 9 (PCSK9)”

[Key issue] Inventive step, support requirement and enablement requirement (Article 29, paragraph (2); Article 36, paragraph (4), item (i); and Article 36, paragraph (6), item (i) of the Patent Act)

Regarding the support requirement issue, Court stated in the decision “A person ordinarily skilled in the art who read the description could recognize that various neutralizing antibodies competing with the reference antibody included in the scope of the claims of the Corrected Invention 1 (Claim 1) other than neutralizing antibodies competing with the reference antibody in the description might be obtained by repetitively implementing the production and selection of immunized mouse in accordance with a procedure and a schedule of immunization program in the description, the hybridoma generation in which a selected immunized mouse is used, and a screening and an epitope binning assay for identifying an antibody that strongly blocks a binding interaction between PCSK9 and LDLR in the description from the start.  Therefore, it is recognized that Corrected Invention 1 (Claim 1) conforms to the support requirement.” and maintained the patent.

Source IPHC
2019/07/29

Confirmation of the non-existence of right to demand compensation for damages based on patent right

[Key issue] International jurisdiction and benefit of action (Article 3-2, paragraph (3), Article 3-3, item (viii), Article 3-6, Article 3-9, Article 38, first half of the Code of Civil Procedure)

A case in which, with regard to a claim for confirmation of the non-existence of right to demand compensation for damage based on a patent right between the parties concerned including foreign corporations among both the appellants/appellees, the jurisdiction of the Japanese courts is acknowledged and then, the action was dismissed since the change of the action of adding the product to be the target of the action is not allowed, and the action lacks benefit of action and is illegal.

Source IPHC
2019/07/29

Injunction against breeder’s right

[Key issue] Interpretation of “the holder of the right has not had reasonable opportunity to exercise his/her right” (Article 2, paragraph (5), item (ii) of the Plant Variety Protection and Seed Act)

A case in which, in regards to a demand for compensation, etc. based on a breeder’s right of shiitake mushrooms, the court held that the exercising of the right against production or transferring or the like of harvested material shall be restricted only to the cases where the holder of the right has not had reasonable opportunity to exercise his/her right at the stage of propagating material, thereby partially restricting the exercising of the right.

Source IPHC
2019/07/02

[Title of the patent] “Carbon dioxide-containing viscous composition”

[Key issue] Criteria for deciding the amount of damage compensation (Article 102, paragraphs (2) and (3) of the Patent Act)

This is the original judgement of a recent IPHC Ground Panel case of which judgment was delivered on June 7, 2019.

Source IPHC
2019/04/25

Claim for damages for unfair competition

[Key issue] “Unfair competition” pursuant to Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act.

Court stated in the decision “…Article 2, paragraph (1), item (ii) of the Unfair Competition Prevention Act does not require an act of unfair competition to be the ‘creation of confusion with another person’s goods or business.’  This is because the purport of item (ii) of the same paragraph is in preventing free riding by use of the customer attracting power of a famous indication of goods, etc., as well as in preventing the source-identifying function and the quality guarantee function from being harmed due to dilution.  As such, if an indication which is identical or similar to another person’s famous indication of goods, etc. is used in a manner that accomplishes the functions of indicating the source of goods and of distinguishing said goods from the goods of other persons, such use is acknowledged as the use as an indication of goods, etc., and whether or not confusion is created among consumers as to the source shown by said indication does not directly affect this point.”

Source IPHC
2019/04/25
Trademark at issue Cited Trademark (three-dimensional trademark)

 

[Key issue] “Well known” and “unfair purposes” of Article 4, paragraph (1), item (xix) of the Trademark Act.

Court judged that the three-dimensional form (Cited Trademark) of the Defendant’s Product was well-known and famous among consumers as an indicator of the Defendant’s Product, the filing by the plaintiff of the application for registration of the Trademark was based on the purpose of hindering the defendant’s business operation for the Defendant’s Product, and thus the trademark held by the plaintiff falls under Article 4, paragraph (1), item (xix) of the Trademark Act.

Source IPHC
2019/04/17

[Title of the patent] “IMMUNOCHROMATOGRAPHY TEST DEVICE AND KIT FOR MYCOPLASMA PNEUMONIAE DETECTION”

[Key issue] “Invention described in a publication” (Article 29, paragraph (1), item (iii) of the Patent Act)

Court stated in the decision “…the patent invention is an invention of a product, and thus a comparison is made with an invention of a product described in a publication in considering the inventive step.  Here, it is necessary for a person skilled in the art to be able to make a product on the basis of the description of the publication and the common general knowledge as of the filing of the Patent in order to find that an invention of a product is described in the publication.”

Source IPHC
2019/04/17

[Title of the patent] “CONSTRUCTIONAL BOARD”

[Key issue] “Finding of the differences between the Invention and the cited invention” (Article 29, paragraph (2) of the Patent Act)

Court stated in the decision “…when a difference between the Invention and the primarily cited invention is to be found, it is reasonable to find the difference between them as a collective structure as a unit from a viewpoint of a solution to the technical problem of the invention.  It is inappropriate to find the differences by particularly finely segmenting them and to determine whether each of the differences could have been easily conceived of without considering the above viewpoint, since the invention for which the inventive step should have been found could not be properly determined and the inventive step could be denied as a result.”

Source IPHC
2019/04/17

Injunction against copyright infringement, etc.

[Key issue] “Defense of quotation” and “fair practices” (Article 32, paragraph (1) of the Copyright Act)

A case in which, concerning file footage for the press over which a news agency has copyright, the court held that the act of quoting and using the same in a documentary film without indicating the source is not lawful quotation.

Source IPHC
2018/11/27

[Design at issue]

[Key issue]

“Publicly known” (Article 3, paragraph (2) of the Design Act)

Court ruled that in order to fall under the terms “publicly known,” the fact of being actually known to an unspecified or large number of people in Japan or a foreign country prior to the filing of the application for design registration was required.

Source IPHC
2018/11/08

[Title of the patent] “Method for repairing sliding door device and repaired sliding door device”

[Key issue] Literal infringement (Article 70 of the Patent Act)

IP High Court judged in a patent infringement case that the appellant’s device did not belong to the technical scope of the patent invention, since the device did not satisfy “substantially the same height” of the phrase “an upper end of the behind wall and an upper end of a lower frame for repair have substantially the same height” of the patent claim, on which point the district court had made an opposite judgement.

Source IPHC
2018/11/08

[Title of the patent] “Food product containing rice saccharified material and rice oil and/or inositol”

[Key issue] Support requirement (Article 36, paragraph (6), item (i) of the Patent Act)

Court rescinded a JPO’s decision on an opposition case, stating “the state of art as of time of the filing is only a matter to be considered auxiliary in order to understand the description of the claims and the Detailed Description of the Invention, and in principle, should not be treated as a matter to extract a problem to be solved by the invention.”

Source IPHC
2018/08/29

[Title of the case] “Accessory case shaped camera” (the article of the design)

[Key issue] The difficulty in creating a design of Article 3 (2) of the Design Act.

Court stated that the present design, whose article was an “accessory case shaped camera”, could have been easily created by combining the primary cited design relating to a “ring case with a camera” with the secondary cited design relating to a “hidden camera.”

Source IPHC

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