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.
In Part 2, I described the philosophy and current status of the PCT (Patent Cooperation Treaty), especially from the perspective of the international search system. Here, I will address the importance of the “patent harmonization” discussion that has had to gradually converge, due to various circumstances and while being discussed heatedly for a long time […]
In Japan, the patent attorney profession is not as well known as those of attorneys – at – law and certified accountants. It is important to understand the differences between Attorneys-at-law and Patent Attorneys in Japan. For SMEs, the business can be at stake. The Basic Situation and Difference The basic occupation of patent attorneys […]
In Parts 1 and 2 I introduced the usefulness of Japan’s utility model system, especially for small and medium-sized enterprises (SME’s). I believe that there is broad misunderstanding and underestimation of the value of the Japanese Utility Model. In this Part 3, I will explain and answer the question: “why can a company’s market can […]
In a previous article, I touched on “the usefulness of the Japanese Utility Model System” in Japan. The utility model system is a strong ally when Small and Medium-Sized Enterprises (SMEs) try to protect “technical ideas” in Japan. Thus the usefulness of the utility model system will be more fully described below. The essential characteristic […]
The PCT has an “International Search System” (PCT Article 15). Regarding international search, various issues have been raised at WIPO’s PCT-related meetings, and I have faced some of these issues in our practice. Using the International Patent Search System requires skill and knowhow. The “International Search System” was, in short, an attempt to conduct a […]
The Patent Cooperation Treaty’s “International Search System” is referred to as “IS”: PCT Article 15. Regarding International Search, various issues have been raised at WIPO’s PCT-related meetings, and I have faced several problems relating to IS personally. Before considering this issues, it is necessary to first consider “search in patent examination in general”. We must […]
In most law firms and patent firms in every country, there are not only lawyers and patent attorneys, but also many non-certified people assisting them. These paralegals or legal assistants are essential to IP practice success. As a matter of course, it is impossible for a patent attorney alone to run the cases and operate […]
The JPO (Japanese Patent Office) does not have an RCE (Request For Continued Examination) system as the means against a final such as exists at the USPTO and KIPO South Korea PTO. In fact, there is no Continuing Application system at the JPO like in the US. Therefore, when a decision of refusal issued, it […]
Each country’s patent system has an examination stage and an appeal stage. Patent appeals in Japan, however can play a vital role in strategy. The idea that the decision in an examination will be reconsidered in the appeal is common throughout the world. However, in terms of the actual process, specifically the Examination / Appeal […]