Category: Resources

Albert Einstein said “Man is an animal that makes mistakes,” Even a genius makes mistakes, and, of course, that includes Patent Attorneys.  After a long period of divergence from foreign Patent Offices, the JPO is easing reinstatement of rights procedures.

Each country’s civil law regulates the lives of its people, each country’s constitution protects the human rights of its citizens, and prescribes and maintains its governing structures. International IPO patent examination cooperation is advancing – this is vitally important and welcome within the realm of territoriality.

In 2014, I had occasion, together with a client, to visit a US patent firm regarding the question of enforcing a patent issued in the US. The patent was a so-called business method invention, and had been also granted in Japan. We must address global differences in business method invention treatment.

Based on the utility model registration of a Japanese company in China, we filed an injunction request with the administrative agency of a certain local city in China. This case study explains two solutions to overcoming local patent protectionism in China.

If a patent application (latter application) is filed with the claimed invention being identical to the description in the specification of a former patent application, the application may be rejected when the former patent application is laid open to the public after the filing of the latter patent application. Understanding secret prior art in Japanese and global patent law is important.

The JPO is conducting comparatively high-level and detailed examinations. Design registration hurdles in Japan compared to other countries should be considered.

In PTO cases, a problem is evaluating the evidence value of private documents for patent invalidation or opposition in Patent litigation.

Always register IP under the company name, even when it is supported or created by the president’s technical capabilities.

n patent infringement cases, the “infringement discussion” (whether or not the alleged infringing product actually infringes the patent right) is the first hurdle in the courts in any country.

The JPO has issued its decision dismissing the appeal against the decision of refusal in the examination of the Christian Louboutin “Red Sole High Heels trademark” case. 

As a Japanese patent attorney, I’ve handled, and I’m aware that there are a large number of applications to Asian countries, especially China and South Korea.

It seems that the landscape of IP protection in large companies, compared to that of SMEs, is completely different – this is not the case only in Japan, but globally. It is vital to understand the differences between SME and Corporate IP Treatment by the PTOs and in business.

Unlike in other countries, in Japan JPO appeals are more advantageous than examinations. In general, there is a higher possibility of successful acquisition of rights at the appeal stage than at the examination stage

In a case I managed, a foreign SME sued a large Japanese company for infringement in Japan based on its utility model rights. The patent applied to a health appliance, and the accused device was a similar appliance. As you’ll read, the Patent “Doctrine of Equivalents” is vitally important in all countries

In a very high profile and significant case, Christian Louboutin is currently filing a trademark registration application in Japan for “red soles for women’s high heels”. The company was refused registration in the examination stage, and it is currently pending in the Appeal Stage. Different Counties – different decisions on one-colour trademarks.

Loosing novelty regarding patents is a vital issue globally. It should be well understood in order to avoid the potential business and value loss than it can entail.

A new Kimura client consulted with us that “I was listing on a well-known E-Commerce Site but I was notified that I would have to stop listing because there was a possibility of infringement of design rights.

This mini case shows the practical use of Patent Portfolios to leverage the value of inventions. Specially, by adding new Patents that build on a core technological innovation and ensuring long-term protection and greater commercial success

This mini case is a practical example of using Divisional Patent Applications as a means of building invention protection in Japan. For greater background detail, please see “Understanding Japan’s Divisional Application System” published August 21, 2021.