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At-a-glance: Japan Patent Office 3-4-3 Kasumigaseki, Chiyoda-ku, Tokyo 100-8915, Japan Fax: +81 3 3581 0762 Email: PA0842@jpo.go.jp Website: www.jpo.go.jp Last year was promising for Japanese IP practitioners, with the onset of amendments to the... [more]

Last year was promising for Japanese IP practitioners, with the onset of amendments to the country's long-standing Copyright Act and patent-friendly decisions handed down by the IP High Court.

The copyright amendments seek to broaden the opportunities of online users and disabled users of copyrighted materials, while simultaneously circumventing the distribution of such materials by infringers. The new law stipulates that any copyrighted works found through an internet search can be legally reproduced if the rights owner did not specifically opt out of search services or previously object to the replication of works. Moreover, end users can apply to the Agency for Cultural Affairs (ACA) to use orphan works, where the material's copyright owner cannot be contacted or identified after considerable effort, under Article 67 of the Act, provided a security deposit is paid in advance. However, once a good is known to have infringed copyright, any purposeful distribution is considered an infringement, including advertising and reproduction for private use, and carries penalties.

The amendments may also introduce the concept of fair use. To the dismay of copyright owners, an ACA subcommittee issued an interim report that endorses and outlines the concept. These include the allowable use of copyrighted works in activities that does not draw direct benefits from the works and of which the primary purpose is not to reproduce the works, as well as marketing materials to promote the lawful use of the works. To protect ownership rights, additional requirements will be included in the final report in January 2011.

One of the main concerns voiced by patent owners and practitioners in the country is the Japan Patent Office's (JPO) propensity to use the obvious-to-try rule, or the lack of inventive step rule, to reject applications. Practitioners believe that the JPO interprets this rule too broadly.

In recent months, Japan's IP High Court has handed down several notable rulings that reversed decisions by stating that the JPO has improperly implemented the obvious-to-try rule and that it should only be considered when obviousness is clearly observable. The IP High Court's new pro-patent stance has been received very favourably by the industry, and encouraged patent owners, who would otherwise risk their patents being nullified under JPO scrutiny, to take action against infringers.

On another front in patent legislation, the JPO and IP High Court have shown unprecedented willingness to impart concessions to drug innovators on patent term extensions. In particular, the JPO's first approval rule, that extensions cannot be achieved by different treatment of the same active ingredient drug, was challenged in a recent court action. Although judgment is pending at the Supreme Court, the IP High Court's decision on Takeda Pharmaceuticals v JPO ruled in favour of the plaintiff on the ground that extensions should be granted on subsequent regulatory approvals if the product could not otherwise have been marketed as such, that is with the differing of treatment, on the first instance of regulatory approval.

Additionally, while the JPO did not previously consider treatment regimes as part of a patent's technical feature, examination guidelines introduced at the end of 2009 welcomed treatment regimes as a distinguishing feature that separates new claims from prior art. In reference to the guidelines, any new claims filed must clearly illustrate the unexpected "advantageous effect" of a proposed treatment regime to fulfil the inventive step requirement of an extension. With more avenues to protect IP, innovators effectively gained judicial clout in their battle against generic manufacturers, despite efforts by the Ministry of Health, Labour and Welfare to minimise the rising drug costs in Japan.