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This Newsletter (No.1) summarizes legal information updated in July 2020.
The Japanese Patent Act provides a “Document Production Order” for proving infringement and damages. Though such Document Production Order has been issued sometimes for proving damages after the Court found infringement, there has been only a few cases in which the Order was issued for proving infringement. Considering such difficulty to prove patent infringement, a new Evidence Collection Procedure called “Sasho” was introduced in 2019, by referring to the German “inspection” system. The following explains the two Evidence Collection Procedures.
<1>Document Production Order in Japan (Article 105, Paragraph 1 of the Patent Act)
Two Requirements ((i) “Necessity” and (ii) Lack of “Reasonable Ground”)
<2>New Evidence Collection Procedures (Sasho) was introduced in 2019 by referring to German inspection system.
1. Background
2. Requirements - (i) Necessity: (ii) Probability: (iii) Supplementarity: (iv) Appropriateness:
3. Matters to be filed
4. Enforcer (Expert)
5. Procedures for issuing orders
6. Evidence collection procedures
7. Treatment of Enforcer’s (Expert’s) reports
8. Effect not to comply with a Sasho order
【PATENT ★★★】Supreme Court Case No. 2018 (Gyo-hi) 69; August 27, 2019
“Topical Ophthalmic Formulation for Treating Allergic Eye Diseases” Case: A case in which the Supreme Court found that, when determining an inventive step of an invention, an “unpredictable and outstanding effect” should be considered based on whether or not a person skilled in the art could have predicted such effect based on a structure of the invention, but not by comparing it with an effect exhibited by another compound.
【PATENT ★】IP High Court Case No. 2018 (Gyo-ke) 10151; September 18, 2019 (Presiding Judge TSURUOKA)
“Mattress for Gatch Bed” Case: A case in which the Court found that it is sufficient for a cited invention to be recognizable as a set of features or technical ideas disclosed in a cited reference. The Court identified one example of use as a cited invention among the four examples of use disclosed by the cited invention.
[Patent★] “Roll paper for packaging medicine” (Court of Second Instance) –
A case in which the appellants of an infringement lawsuit other than a claimant or an intervenor of an invalidation trial who did not file a suit for revocation of the trial decision of dismissing the request for the invalidation trial are restricted from making a defense of invalidity based on the same fact and the same evidence.
【PATENT ★★】IP High Court Case No. 2018 (Gyo-ke) 10036; March 19, 2019 (Presiding Judge MORI)
“Inhibition of IL-17 Production” Case: A case in which, regarding an invention related to a pharmaceutical composition which contains a publicly known active ingredient and is for publicly known therapeutic use, the Court identified a newly discovered mechanism of action as “intended use” of the invention and affirmed novelty and inventive step of the invention.
A case in which the Court found that a color trademark consisting solely of orange without contours cannot be said to have acquired distinctiveness as a source indicator under Article 3, Paragraph 2 of the Trademark Act even if such a trademark has been used for a long period of time for hydraulic excavators, the designated goods of the trademark.
【Trademark Act ★】The Intellectual Property High Court Decision of May 20, 2020 (Case No. 2019 (Gyo-Ke) 10151 — Presiding Judge MORI)
A case in which the Court revoked a decision of the Japan Patent Office which refused an application for registration of the mark “CORE ML” by finding that the mark “CORE ML” consisting of common characters is not similar to either of the cited trademarks “CORE” and “コア” (KO-A in English) which consist of common characters.
I. Background of Amendment
The Act Partially Amending the Copyright Act and the Act on Special Provisions for the Registration of a Computer Program Work (Act No. 48 of 2020) was enacted on June 5, 2020, and promulgated on June 12, 2020. The main points of the amendments and the dates of enforcement are as described in Section II below.
II. Main Points of the Amendments and Dates of Enforcement
1. Strengthening of Measures against Pirates on the Internet
(1) Measures against leech sites and leech apps (effective from October 1, 2020)
(2) Illegalization of an act of downloading copyright-infringing contents (effective from January 1, 2021)
2. Measures to Promote Smooth Utilization of Copyrighted Works
(1) Expansion of limitation on copyrights in connection with incidental inclusion of copyrighted works (effective from October 1, 2020)
(2) Development of provisions for limitation on copyrights for administrative proceedings (relating to the Geographical Indications Act and the Plant Variety Protection and Seed Act) (effective from October 1, 2020)
(3) Introduction of a system enabling an authorized user of a copyrighted work to assert its right against any third party (effective from October 1 2020)
3. Measures to Promote Appropriate Protection of Copyright
(1) Strengthening of Procedure for Collection of Evidence (effective from January 1, 2021)
(2) Strengthening of Protection for Access Control (effective from January 1, 2021)
4. Development of a Registration System for Works for Computer Programming
(1) Systematization of requesting registration certificate to a designated registration agency (Software Information Center) (effective from the date designated by Cabinet Order within one (1) year after June 12, 2020 [the date of promulgation])
(2) Repeal of provisions exempting the State and incorporated administrative agencies from the payment of registration fees (effective from January 1, 2020)
Hideki Takaishi(Attorney at Law & Patent Attorney) (Publishing Manager)
Nakamura & Partners
Room No. 616, Shin-Tokyo Building, 3-3-1 Marunouchi, Chiyoda-ku,
E-mail: nakamura_and_partners---magazine@nakapat.gr.jp
*The content of this newsletter provides general information and is not legal advice.
*Nakamura & Partners was founded in 1914 and provides comprehensive IP-related services both domestically and internationally as an international IP law firm.