JAPAN Law and Practice Contributed by: Takahiro Inoue, Tomohiro Kuribayashi, Yoshiyuki Takanashi and Daisuke Inaba, TMI Associates
provided by contract, work rules or other agreements. The same rules apply to inventions made at universi- ties or other educational institutions. Before filing, a transfer of the right takes effect upon agreement between the parties, and filing is required only to assert it against third parties. After filing, how- ever, the transfer becomes effective only upon noti- fication to the JPO, except in cases of general suc- cession. Japan recognises two types of patent licences: • a registered exclusive licence, which requires registration and grants rights similar to those of a patentee; and • a general licence, which becomes effective by agreement, with registration needed only for third- party effect, and, in principle, does not confer the right to seek an injunction, even if contractually exclusive. 1.5 Patent Infringement and Defences Direct Infringement Direct infringement occurs when an unauthorised party “practises” a patented invention. For prod- uct inventions, this includes making, using, selling, importing/exporting, or offering the product; for pro- cess inventions, using the process; and for product- by-process inventions, using the process or handling resulting products. To establish infringement, all claim elements must be satisfied, subject to limited excep- tions, such as indirect infringement and the doctrine of equivalents. Indirect Infringement Indirect infringement arises from activities involving items related to a patented invention, even without direct practice. It includes supplying products exclu- sively used or indispensable for the invention with knowledge of the patent and intended use, as well as possessing infringing products for sale or export. Doctrine of Equivalents Under the Doctrine of Equivalents established by the Supreme Court, an accused product or process may infringe a patent even if it does not literally satisfy all claim elements, provided certain conditions are met.
Equivalence is recognised where: • the differing feature is not an essential part of the patented invention; • replacing that feature with the corresponding element of the accused product or process still achieves the same function and effect; • such replacement would have been easily con- ceived by a person skilled in the art at the time the accused product or process was made; • the accused product or process is not identical to prior art at the time of filing, nor easily derived from it; and • there are no special circumstances, such as inten- tional exclusion of the accused feature from the claims during prosecution. Defences The principal defences available in Japanese patent infringement litigation include the following. Patent invalidity An alleged infringer may argue that the patent should be invalidated. Japanese courts may effectively con- sider invalidity within infringement proceedings. Prior user right A person who independently created the invention without knowledge of the patent application, and who was already practising or preparing to practise it in Japan at the filing date, is granted a statutory non- exclusive licence limited to the existing or planned business. Patent exhaustion Patent rights are exhausted once a patented product is lawfully sold in Japan by the patentee or an author- ised licensee, preventing control over subsequent use or resale. International exhaustion is also recognised, subject to certain restrictions clearly imposed and indicated. Employee invention licence Employers have a royalty-free non-exclusive licence to utilise inventions made by their employees.
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