JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
will constitute indirect infringement, thus consti- tuting patent right infringement. • an act of the accused infringer producing, for instance, a product to be used exclusively for making a product of a patented invention, or a product to be used solely for the use of a patented invention; • an act of the accused infringer producing a patented invention or a product that is to be used exclusively for the use of a process of a patented invention (excluding those widely distributed within Japan) and which is indis- pensable for that invention’s resolution of the problem, knowing that the invention is a patented one and that the product is used for the working of that invention; and • an act of the accused infringer possessing for assignment, etc, or exporting a product of a patented product or a product that is produced by using a process of a patented invention. In any instances where direct or indirect infringe- ment is constituted, a patentee may claim injunc- tions and damages against an infringer. In a claim for damages, provisions such as those on the pre- sumption of the amount of damage or those on the presumption of negligence may be applied. 3.3 Process Patents In the Japanese Patent Act, inventions are clas- sified as the invention of a product, the inven- tion of a process, or the invention of a process for producing a product, and an act of working on a patented invention is stipulated for each of these categories. Specifically, for the inven- tion of a process, the act of using the process is specified as an act of working. Additionally, for an invention that involves a process for produc- ing a product, the following activities are con- sidered acts of working: using the process, as
well as producing, using, assigning (including lending and providing via telecommunications lines), exporting, importing, or offering to assign the product created by that process. Conversely, for an invention that pertains to a product, the acts of producing, using, assigning (including lending and providing via telecommunications lines), exporting, importing, or offering to assign the product itself are defined as acts of working. No clear rule exists regarding whether patent infringement in Japan can be recognised when part of a process is executed abroad. In some cases where steps of a patented process were conducted outside Japan, a District Court ruled that this cannot be considered as working the patent in Japan because the relevant technical steps of the patent are not completed within the country. However, this ruling is not regarded as a well-established precedent that applies univer- In principle, the scope for protection of a pat- ent right (eg, the technical scope of a patented invention) is determined based on the statements in the scope of claims. In addition, the mean- ing of each term used in the scope of claims is interpreted in conjunction with the statements in the description and drawings. The prosecu- tion history of the application and the prior art may also be taken into consideration. Accord- ingly, to say that infringement of a patent right has taken place in principle, the subject product must satisfy all of the constituent features of the patented invention. However, even if the product does not satisfy all of the constituent features of the patented invention, there may be a case that amounts to indirect infringement or infringement under the doctrine of equivalents (see 3.2 Direct and Indirect Infringement ). sally to process inventions in Japan. 3.4 Scope of Protection for an Intellectual Property Right
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