This material was first presented at the AIPLA Asia Patent Practice Seminar
held in Crystal City, VA on October 13-14, 1997.
1.Claim Scope and Interpretation, including the Doctrine of Equivalents
2.Preliminary Relief - Injunctions and Seizures
3.Defenses to a Claim of Infringement
1.1 Claim Scope and Interpretation
1.1.1 Claim Scope
As in the United States, the all-element rule also applies in Japan. An
accused product or process is infringing if it satisfies all the limitations
recited in the claim.
1.1.2 Claim Interpretation
The terms and phrases in a claim are interpreted to determine the scope
of protection. They are interpreted in the light of detailed explanation
in the specification and the drawings attached to it. As in the United
States, if a word has a definition in the specification, it will be interpreted
in accordance with the definition given in the specification. When no definition
is given in the specification, a term appearing in the claim is given the
meaning that an ordinary person skilled in the art would give to that term.
1.1.3 File Wrapper Estoppel
The file history plays a more important role in interpretation of a claim
in Japan than in the United States. In the United States, the doctrine
of file wrapper estoppel plays a role in applying the doctrine of equivalents.
However, the doctrine of file wrapper estoppel is often applied even to
deny literal infringement in Japan.
To illustrate it, let's assume that a claim recites an "aluminum compound"
as an essential element of the claimed invention. Without any further qualification,
the term "aluminum compound" would encompass any compound containing aluminum.
However, if the applicant stated in a response to an office action that
the effect of the claimed invention has been achieved because the aluminum
compound is metallic, even if no amendment was made either in the claim
or in the specification, the term "aluminum compound" would be interpreted
as "aluminum metallic compound."
In the above hypothetical case, an accused product containing alumina (aluminum
oxide) but no other aluminum compound would literally infringe the claim
without application of the doctrine of file wrapper estoppel if it satisfies
all other limitations. When this result is felt unfair in the United States,
one solution would be to declare the claim invalid based on the reason
that the claim is indefinite or the specification does not meet the enablement
requirement, or otherwise. However, the Japanese courts do not have the
authority to declare a claim invalid. Hence, they need to interpret the
claim narrowly so that they can avoid an unfair conclusion. The file wrapper
estoppel gives the court a reason to give a term in the claim a narrower
interpretation than an ordinary dictionary would.
1.1.4 Prior Art
Another reason that requires narrow interpretation of a claim is existence
of close prior art. If the court finds literal interpretation of the claim
to cover the prior art or an obvious modification from the prior art, it
gives the claim a narrower interpretation than its literal meaning. This
enables the court to avoid finding infringement by an accused product or
process that should be in the public domain. This logic is similar to that
used to avoid application of the doctrine of equivalents in the United
States, where no infringement under the doctrine should be found if the
hypothetical claim is not patentable in light of the prior art.
1.2 The Doctrine of Equivalents
For the latest information on this subject, please refer to "
The Supreme Court Re-Defines the Doctrine of Equivalents
." in the news section at this site.
1.2.1 Recognition of the Doctrine of Equivalents in Japan
Even when no literal infringement is found, the court may still find infringement
under the doctrine of equivalents. The doctrine has been recognized for
a long time though we have few reported cases in which it was actually
applied.
1.2.2 Test to Be Used to Apply the Doctrine
The doctrine is applied when one or more elements recited in the claim
are missing in the accused product or process. First step in application
of the doctrine is to identify elements that somehow correspond to the
missing elements. Then the following conditions are considered:
i) substitutability;
ii) easiness of substitution; and
iii) absence of remarkable effects brought about by the substitution.
When the above three conditions are met, infringement under the doctrine
of infringement is found.
One question still under debate is at what point of time condition ii)
must be met. It is usually said that it should be met at the time of filing.
However, some practitioners say that it may be met at the time of infringement.
An extreme opinion is that it should be met at the time of infringement,
but it must not be met at the time of filing. The rationale of the extreme
opinion is that the applicant should be deemed to have waived the right
covering the substitution by failing to claim it if it was obvious to those
skilled in the art at the time of filing.
1.3 Example of Application of the Doctrine of Equivalents
1.3.1 Introduction
On March 29, 1996, the Osaka High Court found infringement of a bio-tech patent under the doctrine of equivalents. A brief study of this case will probably give you an idea as to how the doctrine works in Japan.
1.3.2 Background
The Plaintiff was the patentee of a patent granted for an invention directed to t-PA. During its prosecution, the Japanese patent examiner allowed the application with some broad claims which did not include any sequence listing, but which were defined in terms of the function and other properties of t-PA. However, he later rejected the application on the ground that the claims were not sufficiently specific. After the appeal procedure at the Patent Office a patent was granted with claims which the applicant restricted to a single specific sequence found in the application in order to avoid the examiner's reason for rejection.
Attempting to stop the defendant from making and selling t-PA products, the plaintiff sued it at the Osaka District Court alleging patent infringement. However, the plaintiff was not successful at the first instance. The reason was that one amino acid was different from the one specified in the claims. At position 245 of the claimed sequence, valine (Val) was specified in the claims, but it was replaced by methionine (Met) in the accused product.
The plaintiff appealed to the Osaka High Court against the judgment of
the Osaka District Court.
1.3.3 Issues
The issues before the Osaka High Court are as follows:
(1) whether the accused product was equivalent to the claimed t-PA;
(2) what kind of factors must be considered to find patent infringement under the doctrine of equivalents;
(3) whether independent development of the accused product should be considered as defense against application of the doctrine of equivalents; and
(4) whether the prosecution history of the patent in suit should preclude the plaintiff from alleging infringement under the doctrine of equivalents.
1.3.4 The Court's Opinion
The Osaka High Court found infringement by the defendant applying the doctrine
of equivalents for the first time in a case involving a chemical or biotechnology
patent. As to the factors to be considered, the Court followed the standard
that had been at least theoretically accepted over years in Japan. The
factors considered by the Court were as follows:
(1) whether the claimed invention and the accused product solve the same
problems and share the same technical idea;
(2) whether no significant effects arise from differences between the claimed
invention and the accused product; and
(3) whether replacing the element or feature recited in the claim, but
missing in the accused product, with the element existing in the accused
product was possible and easy for a skilled person in the art based on
the state of the art as of the filing date.
On the other hand, the Court stated that independent development would
not per se serve as defense against application of the doctrine of equivalents,
pointing out that the question of infringement is not related to good or
bad faith of the infringer. However, the Court recognized that lack of
independent development would serve as circumstantial evidence to find
infringement under the doctrine of equivalents.
Finally, the Court declined to apply the prosecution history estoppel to
this case, finding that amendment of the claims had been made to comply
with the requirements of specificity, but not those of novelty and non-obviousness.
2.1 Availability of Provisional Injunctions
Under the Civil Provisional Measures Law, which applies to all civil cases
including patent infringement cases, certain provisional measures are available
in Japan before a judgment is rendered after regular proceedings of a civil
lawsuit. The provisional measures are granted in the form of provisional
court orders. To obtain a provisional court order, a petition must be filed,
and the petitioner must show his likelihood of success on the merits and
indispesability of such an order to avoid exceptionally significant damages
or an urgent danger to him. However, in a case of intellectual property
infringement, it is usually presumed that such indispensability exists
unless there is a serious question about the validity of the right in suit.
The available orders include:
an order compelling the defendant to do something;
an order prohibiting the defendant from doing something;
an order compelling the defendant to deliver something;
an order instructing a custodian to keep something in his custody; or
an order taking measures that are appropriate and necessary to achieve
the purpose of the petition for the provisional court order.
A petition for a provisional court order may be filed before or at the
same time as filing the complaint of the principal lawsuit. In principle,
the district court which would have jurisdiction over the principal lawsuit
seeking permanent injunction also has the jurisdiction for the provisional
measures. Although it is practically rare, it is also permissible to file
a petition for provisional measures during the pendency of the principal
lawsuit. In such cases, provisional injunction proceedings usually take
place before the same court as the principal lawsuit, which could be the
district court having geographical jurisdiction over the district in which
the plaintiff resides if monetary relief is sought in the principal lawsuit.
Before issuing a provisional court order, the court must hold a hearing
at which the defendant is allowed to be present unless holding such a hearing
would make the provisional measures meaningless.
2.2 Advantages of Seeking Provisional Injunctions
Decisions by the court given after regular proceedings of a civil lawsuit
are highly dependable because examinations are made deliberately based
upon reliable evidence and without haste. However, it often takes three
or four years just to get the decision of the court of first instance.
If this decision is appealed, of course even more time is required.
In contrast, provisional proceedings are less formal and more intensive
in order to reach an early conclusion of the matter, including a court-assisted
settlement. Therefore, the filing of a petition for provisional (or preliminary)
injunction is often preferred. Although theoretically it is preliminary,
it often leads the parties to a final settlement of the dispute. Hearings
for preliminary injunction are more frequently held and less formal than
those for regular civil cases. Therefore, the decision is sometimes given
within a year from the filing with less than ten hearings.
2.3 Requirement of Bond
When the court decides to grant an injunction, since the decision is preliminary,
the petitioner is required to make a security deposit sufficient to cover
the damages that may be incurred by the accused infringer if the injunction
be found to be erroneous. The amount of the deposit is determined by the
judge at his discretion after considering various factors, including the
petitioner's probability of success in the final decision of the case.
The deposited security money is to be returned to the plaintiff when the
defendant has exhausted or waived all measures to have the provisional
injunction reversed.
3.1 Non-Infringement and Invalidity
Non-infringement and invalidity are typical defenses to a claim of infringement.
Burden of proof is on the patentee. This means that the patentee must show
not only the the scope of protection of the patent in suit but also the
fact that all the limitations are met by the accused product/process. In
many cases, the central issue is how to interpret the claims. While the
plaintiff is always desirous to interpret the claims literally or even
more broadly, the defendant often asks the court to interpret a claim more
narrowly than it literally mean.
In this regard, it should be noted that it is not rare that the court rejects
the literal interpretation and accepts a narrower one. This is mainly because
invalidity per se cannot be a defense before a court, as already mentioned.
Instead of waiting for the patent in suit to be declared invalid by the
Patent Office, the court often disposes of the case by finding no infringement
by way of interpreting the claims narrowly.
Otherwise, when invalidity of the patent in suit is a valid defense, the
accused party should take a separate action before the Patent Office to
seek its invalidation. Then, the court hearing the infringement case may,
at its discretion, stay the proceedings before it during the invalidation
action before the Patent Office.
3.2 Other Defenses
3.2.1 Prior User Right
The prior user right is a legal defense against infringement claim by the
patentee. To establish a prior user right, the defendant must show the
following facts:
(1) he himself made the invention without knowledge of the patentee's invention,
or he came to know the invention through a third party that made the invention
without knowledge of the patentee's invention; and
(2) he was practicing the invention as business, or he had prepared for
the practice of the invention as business, within the territory of Japan
prior to the filing date of the patent.
Under the prior user right, the prior user is entitled to practice the
invention within the mode of the invention which he practiced or prepared
for practice of, and within the purpose of his business that he conducted.
3.2.2 Permissible R&D Activities
Any person may practice a patented invention for the purpose of R&D. One
issue relating to this defense is whether testing a drug for obtaining
approval from the Ministry of Health and Welfare should be regarded as
R&D within the meaning of the Patent Law. We have some conflicting decisions
at the first instance and appellate court levels. So far no Supreme Court
decision has addressed this issue. (For updated information, click
here.
)
3.2.3 Exhaustion and License
Under the doctine of patent exhaustion, repair of a patented product sold
with consent by the patentee is permissible. However, distinction between
permissible repair and illegal reconstruction is not clear. For example,
when the ink cartridge for a personal computer printer is patented, it
is not clear whether re-filling a used cartridge with ink is permissible.
A licensee of a patent has the right to have someone make the patented
products on his behalf. Hence, a supplier to, or a subcontractor of, the
licensee may invoke the license as defense if the licensee is the only
purchaser of the products.
3.2.4 Parallel Import
In principle, parallel import is permissible. For more detail, please refer
to "
Judgment Permitting Parallel Import Affirmed
." in the news section of this site.
Although the Patent Law of Japan has provisions for compulsory licensing,
it is inconceivable that they are actually invoked. So far I am aware of
no meaningful precedent to speak on.