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Japan updates IP law

Masato Iida and Tomohiro Gyoda of Shiga International Patent Office analyse updates to Japanese IP law in the fields of patents, designs, trademarks and litigation

As we have seen with diagnostic robots equipped with artificial intelligence (AI), tailor-made medicines, and so forth, technical innovation has accelerated far beyond conventional technologies. Companies have come to place more importance on IP enforcement than ever as part of their corporate management strategies in order to cope with fierce global competition. In addition, the importance of design rights is growing in the business world. In April 2019, the Japan Patent Office (JPO) revised Japanese IP-related laws in response to the tide of emerging technologies and the necessity of establishing an environment which is favourable to applicants and right holders. This article will introduce and analyse recent developments in Japanese IP legislation which will come into force between 2018 and 2020.


AI-related inventions

Novel technologies regarding AI-related inventions have emerged in a wide range of technical fields from electronics to cutting-edge medical treatments and mechanical engineering etc. The newly revised JPO Examination Handbook, which was published in January 2019, illustrates concrete examples of judgements on description requirements, including enablement requirements and the inventive step of AI-related inventions. This revised handbook makes it easier for applicants to predict the JPO examiners' way of thinking and hence, makes it easier for them to draft and prosecute their patent applications more efficiently. The following shows the summary of points in the revised JPO Examination Handbook.

Description requirements

Whether enablement requirements are satisfied or not is determined by the existence of a correlation between input/output parameters of training data. The disclosure of a concrete correlation does not need to be written in the detailed description of an invention. However, in a case where a correlation cannot be presumed in light of common technical knowledge at the time of filing, the enablement requirements may not be satisfied. In addition, the invention of a product which is presumed to have a certain characteristic by using a trained model, is deemed to satisfy the enablement requirements if either of the following conditions are fulfilled:

  • a functional evaluation of an actual product is written in the embodiments; or

  • the verification of accuracy of a trained model is described in a working example.

Inventive step

The systematisation of human operations with artificial intelligence and the modification of machine learning methods may be deemed as lacking inventive step. On the other hand, in cases where the addition of training data used in machine learning methods has a remarkable effect, or the pre-processing of training data used in machine learning methods includes technical features which overcome inventive step, the claimed invention in question is considered to have inventive step.

Antibody drugs

Antibody drugs are known as promising medicines for curing refractory diseases, and are drawing global attention. When filing a patent application relating to antibody drugs, whether the application satisfies the support requirement is one thing that needs to be considered in particular. In other words, an applicant has to be aware of the following: to what extent should working examples and comparative examples be disclosed? Generally, medical-related inventions include complicated structures of low-molecular compounds and proteins. The structure-activity relationship, the so-called "SAR" must meet the support requirements. Therefore, applicants need to describe as many working examples as possible to satisfy the support requirement. At first glance, applicants tend to think that disclosing many working examples may help enlarge the scope of the claims. However, they should be aware that massive data disclosure, which is irrelevant to drug efficacy, may pose a risk of narrowing the scope of the claims.

For example, Optivo, also known as Nivolumab, is used mainly as a therapeutic medicine against non-small cell cancers and kidney cell cancer. Optivo is PD-1 (programmed cell death-1) monochronal antibody. The relevant patents are Japanese Patent (JP) Nos. 4,409,430; 5,159,730; and 6,035,372. JP No. 4,409,430 is the parent application of JP No. 5,159,730, and JP No. 6,035,372. The scope of protection described in Claim 1 of the aforementioned three patents is very broad. This means that the scope of protection in Claim 1 covers a malignant melanoma therapeutic agent whose active ingredients include a PD-1(programmed cell death-1) monochronal antibody, regardless of the amino acid sequence of heavy chains and light chains which comprise a PD-1monochronal antibody.

The earlier three patents were considered to be patentable when applying the anti-PD-1 antibody to an anti-cancer agent. In the working examples that support Claim 1 of the above three patents, the xenograft model is described as using only a single PD-1 monoclonal antibody that has an anti-metastatic effect. At the same time, a cancer cell transplant experiment using PD-1 knockout mice has revealed data indicating that it inhibits the proliferation of cancer cells.

However, as has been controversial in other antibody drug-related patents, there is room for further discussion in the above case as to what extent working examples should be disclosed, namely, how many examples of monoclonal antibody types should be given when disclosing the drug efficacy data.


New criteria for calculating compensation for damages

The current patent law does not allow a patentee to seek compensation for damages that exceed a patentee's production capability and sales. After the revision, a patentee will be able to seek compensation for damages exceeding the patentee's production capability and sales in the form of an amount equivalent to a licensing fee. In addition, it is stated in the law that the amount based on a licensing fee shall be determined under an assumption that patent infringement was found.


The revision to the Design Law will come into effect in 2020 with the aim of a broader protection of designs utilising digital technologies, using design rights for brand-building, and realisation of a user-friendly filing system. The outline of the revision is as follows:

Graphic User Interfaces (GUIs)

Under the current practice, a GUI is protected as a part of the article on which the GUI is stored, but a GUI itself, such as GUIs of a web application, is exempted from the scope of protection. The revision allows GUIs to be protected independently of objects. After the revision, for example, GUIs which are stored on the cloud and provided through a network will be protectable.

Exterior and interior designs of buildings

The exterior and interior designs of buildings will be protectable subject matter under the Design Law.

Enhancement of the related design system

Applications for related designs can be filed up to 10 years from the filing date of the principle design. In addition, designs which are not similar to the principle design, but are similar to related designs can be registered.

Extension of term of design rights

Currently, the term of a design right is 20 years from the registration date. This term will be changed to 25 years from the filing date (the filing date of a principle design application in the case of a related design application).

Simplified filing/registration process of design applications

Multiple designs can be applied for in one application. The requirements for article names will be more relaxed and more flexible.

Expansion of provisions for indirect infringement

Under the current Design Law, the following act will indirectly infringe a design right: "Producing, assigning, leasing, or importing, or offering for assigning or leasing a product as business which is used only for manufacturing the article of a registered design or a similar design". However, if such a product has other uses and can be used for manufacturing other articles, it will not constitute indirect infringement. In order to strengthen design protection after the revision, producing, assigning, leasing, importing, or offering for assigning or leasing such a product as a business will indirectly infringe the design right if certain requirements are met.


Implementation of fast-track trademark examinations

In a bid to ensure prompt and accurate examinations, the JPO implemented a pilot programme for fast-tracking trademark examinations in October 2018, which is separate from the current accelerated examination process. Due to a surge in the number of trademark applications submitted to the Japanese Patent Office (JPO) for examination, the examination stage presently lasts around eight months, whereas it previously took only four to five months. If an application fulfills certain requirements described below, it will automatically be subject to fast-track examination. The examination will be two months shorter than regular examination.

Requirements for fast-track examinations

The requirements for fast-track examinations are:

(1) trademark applications designating only goods or services which are listed in the "Examination Guidelines for Similar Goods and Services", "Trademark Enforcement Regulations" or "International Classification of Goods and Services (Nice Classification)" at the time of filing the application;

(2) trademark applications for which no amendments to the goods or services have been filed prior to the start of the examination.

Custom seizure

The number of counterfeit products seized by Japanese customs has increased. In 2018, the number of cases was 26,500, and the number has exceeded 25,000 for seven consecutive years. In addition, the number of products seized reached 929,675 in 2018, marking the highest level for the fifth year in a row. In particular, there has been a surge in the number of products seized in relation to design rights. The above graph shows the recent trends in the number of products seized by customs.

The advent of new technical innovations, such as AI, has changed not only industrial structures but also the business climate surrounding intellectual property. The JPO's latest statistics show that the total number of patent applications filed with the JPO has slightly declined, whereas the number of applications filed by overseas applicants has slightly increased. This figure shows that Japan still holds a key position in the global market. The top echelons of companies would be wise to strategically protect and utilise their own IP rights as part of their corporate assets. Developing an IP strategy which is aligned with corporate strategy is key for companies to succeed in business while taking advantage of the above legislative changes and revisions to IP law.

Fig.1: Number of import seizures


(Excerpted from the 2018 seizure statistics of IPR border enforcement by Japanese customs)

はじめに” to 日本における最新の知財動向











例えば、2018年ノーベル医学生理学賞を受賞した癌免疫治療薬「オプジーボ」の特許を上記「実施例」に鑑みて、分析してみる。オプジーボ(ニボルマブ)は、主に非小細胞肺癌・腎細胞癌の治療薬として使用されている。ヒトPD-1(Programmed cell death-1)に対するモノクローナル抗体である。関連特許として、①特許第4409430号、②特許第5159730号、③特許第6035372号があるが、②および③は①を親出願とする分割出願である。①~③の請求項1の権利範囲はとても広く、PD-1抗体を有効成分として含むメラノーマ治療剤であれば、抗PD-1抗体を構成する重鎖及び軽鎖のアミノ酸配列に関係なく、全て請求項1の権利範囲に入る。




























Masato Iida 飯田 雅人



Dr Iida specialises in biochemistry, molecular biology, and pharmaceuticals. He has extensive experience and expertise in prosecution, trials for invalidation, and suits against trial decisions in those fields. He is also qualified to represent parties in court in IP litigation. Dr Iida has experience in constructing target screening systems and evaluation systems for anti-cancer agents (both cell-based and cell-free systems) at a pharmaceutical company. He also has detailed knowledge of genome editing and antibody drugs, and frequently gives lectures and writes in medical magazines on these issues.

副所長 弁理士 農学博士 特定侵害訴訟代理弁理士


学歴:東京大学大学院 農学生命科学研究科 応用生命工学専攻



Tomohiro Gyoda 行田 朋弘



Tomohiro Gyoda handles prosecution cases, searches, oppositions and trials of designs or trademarks as well as enforcement cases relating to designs, trademarks and Unfair Competition Prevention Act. He has experience in cases in the field of information technology, such as protection of graphical user interfaces and trademark matters related to Classes 9 and 42 as he is a qualified advanced IT engineer. He also specialises in anti-counterfeiting, especially customs seizure.



学歴:東京外国語大学 外国語学部 欧米第一課程 ドイツ語専攻



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