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Vol 24 No 5 May/June 2019

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Cover of Remedies for Torts, Breach of Contract, and Equitable Wrongs

Remedies for Torts, Breach of Contract, and Equitable Wrongs

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Japanese Patent Law: Cases and Comments [CRC]


ISBN13: 9789041194190
To be Published: June 2019
Publisher: Kluwer Law International
Country of Publication: The Netherlands
Format: Hardback
Price: £148.00



This first comprehensive work in English on all aspects of Japanese patent law presents 66 cases with an expert explanatory commentary from academics, attorneys, judges and members of the Japanese Patent Office. This book deals with the whole range of Japanese patent law – requirements of patentability, inventorship and ownership issues, procedures before the Patent Office, scope of protection and interpretation of claims, enforcement and infringement procedures, patent term extensions, licensing and antitrust issues, utility models and more. Many of the cases appear in English for the first time.

Following an informative introduction explaining the economic importance of the patent system for Japan, the cases cover such specific issues as the following:

  • definition of an invention;
  • assessment of prior art, novelty and inventive step;
  • rights of co-inventors;
  • disclaimers, corrections and amendments;
  • scope and limits of patent protection;
  • distinction between repair and reconstruction;
  • doctrine of equivalents;
  • domestic and international jurisdiction in patent matters;
  • interim proceedings and measures;
  • defence of invalidity;
  • damage calculation;
  • patent term extension system; and
  • utility models.
Each case commentary follows a uniform structure, including background, summary of the facts, analysis and comparative remarks. The latter allows the reader to put developments in Japan in an international context.

With the wealth of knowledge it makes available – leading Japanese patent cases in English translation, comparative case commentaries by leading experts on Japanese patent law, comprehensive analytical coverage of all aspects of Japanese patent law and coverage of related fields such as licensing, antitrust and civil procedure – this easy-to-use book will be warmly welcomed by patent attorneys and other practitioners (including Japanese patent practitioners advising foreign clients), patent academics and patent offices worldwide.

Subjects:
Intellectual Property Law, Other Jurisdictions , Japan
Contents:
List of Authors and Editors
Preface: On Contributors and Decisions

PART I
Introduction: History and Economic Importance of the Patent System
for Japan
by Christopher Heath and Atsuhiro Furuta

PART II: REQUIREMENTS OF PATENTABILITY
Case No.
1: Definition of an Invention – Mental Activity
Case No.
2: Definition of an Invention – Repeatability
Case No.
3: Novelty – Novelty Destroying Prior Application – Double Patenting
Case No.
4: Novelty – Grace Period – Combination with Priority
Case No.
5: Inventive Step – Problem Solution Approach and Ex Post Analysis
Case No.
6: Inventive Step – Assessment of Prior Art
Case No.
7: Inventive Step of New Medical Indications and Dosage Regimes
Case No.
8: Technical Effect – Late Filed Experimental Results
Case No.
9: Enabling Disclosure and Support
Case No.
10: Support Requirement – Parameter Invention
Case No.
11: Industrial Application – Medical Treatment
Case No.
12: Priority – Added Subject Matter

PART III: INVENTORS AND INVENTORS’ RIGHTS
Case No.
13: Rights over the Invention – Inventorship
Case No.
14: Rights of Co-Inventors – Action by One Co-Inventor against Revocation
Case No.
15: Rights over the Invention – Transfer of a portion of Patent Right against Misappropriation
Case No.
16: Employees’ Inventions – Company Rules – Reasonable Remuneration
Case No.
17: Employees’ Inventions – Reasonable Remuneration for Profits made Abroad

PART IV: PROCEDURES BEFORE THE PATENT OFFICE
Case No.
18: Right to be Heard – Addition of Well-Known Prior Art
Case No.
19: Right to be Heard – Right to Oral Proceedings in Invalidation Trials
Case No.
20: Possibility of Claim Amendment before Grant
Case No.
21: Possibility of Claim Correction after Grant
Case No.
22: Disclaimer, Correction and Amendment
Case No.
23: Advisory Opinion about the Technical Scope of a Patented Invention
Case No.
24: Invalidation Trial – Ne Bis In Idem
Case No.
25: Correction Trial – Revocation Proceedings
Case No.
26: Scope of Cancellation Process in Court against Decision of Patent Office
Case No.
27: Appeal to the High Court and Inventive Step Assessment
Case No.
28: Liability of the Patent Office for Mistakes, e.g. the Omission of Registering a Pledge

PART V: THE SCOPE OF PATENT RIGHTS
1. Rights of Exclusive Use
Case No.
29: Exclusive Rights – Offer for Sale, Manufacture, Export
Case No.
30: Direct and Indirect Infringement
Case No.
31: Patent Infringement – Distinction between Repair and Reconstruction
2. Limits of Exclusive Use
Case No.
32: Limits of Patent Rights – National and International Exhaustion
Case No.
33: Clinical Trials – Research Exception
Case No.
34: Defence of Prior Use
3. The Scope of Protection: Interpreting Patent Claims
Case No.
35: Interpretation of Patent Claims – Interpretation with Reference to the Description
Case No.
36: Interpretation of Patent Claims – Literal Infringement – Disclaimed Element
Case No.
37: Interpretation of Patent Claims – Product by Process Claims
Case No.
38: Interpretation of Patent Claims – Doctrine of Equivalents
Case No.
39: Interpretation of Patent Claims – Doctrine of Equivalents
Case No.
40: Interpretation of Patent Claims – Doctrine of Equivalents

PART VI: THE ENFORCEMENT OF PATENT RIGHTS
1. Jurisdiction, Procedure and Applicable Law
Case No.
41: National Jurisdiction – Exclusive Jurisdiction in Patent Matters
Case No.
42: International Jurisdiction in Patent Matters
Case No.
43: International Jurisdiction in Patent Matters – Offer on the
Case No.
44: Arbitration Law – Separability and Arbitrability – Estoppel of Invalidity
Case No.
45: Infringement of a US Patent and Applicable Law
Case No.
46: International Civil Procedure, Recognition of Foreign Judgements, Punitive Damages
Case No.
47: Discovery – Order of Documents – Defence of Secrecy
Case No.
48: Interim Procedures and Protective Orders
2. Defence of Invalidity
Case No.
49: Defence of Invalidity
Case No.
50: Patent Infringement – Defence of Invalidity
Case No.
51: Defence of Invalidity – Correction of Patent Claim – Late Filing
3. Remedies
Case No.
52: Injunctive Relief – Exception for Standard Essential Patents
Case No.
53: Scope of Injunctive Relief – Method Patent
Case No.
54: Damage Calculation – Presumption of Damages
Case No.
55: Damage Calculation – Presumption of Damages
4. Wrongful Enforcement
Case No.
56: Threats – Warning Letter alleging Patent Infringement – Standard of Liability
Case No.
57: Re-Trial due to Revocation after Successful Infringement Suit

PART VII: SPECIFIC ISSUES
1. Patent Extensions
Case No.
58: Requirements for a Patent Term Extension of Pharmaceutical Patents
Case No.
59: Requirements for a Patent Term Extension of Pharmaceutical Patents – Second Marketing Approval for the Same Patent
Case No.
60: Scope of Extended Patent
2. Licensing and Antitrust
Case No.
61: Exclusive Registered Licensee – Standing to Sue
Case No.
62: Licensing Agreement – Patent Subsequently Reduced in Scope
Case No.
63: Licensing Agreement over Foreign Patent – Royalties not Taxable in Japan
Case No.
64: Antimonopoly Act – Patent Licensing Agreement – Vertical Restraints – Maximum Output Restriction
Case No.
65: Patent Pools, Refusal to License and Abuse of a Dominant Position
3. Utility Models
Case No.
66: Utility Model – Technical Assessment Report

Index of Japanese Decisions in Chronological Order
Alphabetical Keyword Index

Series: Max Planck Series on Asian Intellectual Property Law

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Intellectual Property Law In China ISBN 9789041123404
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Parallel Imports in Asia ISBN 9789041121141
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Intellectual Property Law in Asia ISBN 9789041198945
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Legal Rules of Technology Transfer in Asia ISBN 9789041198839
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The System of Unfair Competition Prevention in Japan ISBN 9789041198372
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Intellectual Property Law in Indonesia ISBN 9789041198037
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The Protection of Well-known Marks in Asia ISBN 9789041197054
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