Presentation for mHealth Israel by Maier Fenster, Partner at Ehrlich & Fenster: IP in Japan.

1. IP in Japan
Maier Fenster
Patent Attorney
Head of Medical Devices Department
Ehrlich & Fenster
mHealth Israel
Japan Mobile Landscape & App Analytics
All rights reserved © 2016

2. 2
Disclaimer
• The purpose of this presentation is to
communicate concepts. There is no
guarantee that the information presented is
complete or up-to-date.
• Also, information is not legal advice. Legal
advice is when you apply information to a
situation.
• Go to a lawyer for legal advice
• Go to a patent attorney for patent-related
advice

3. Some statistics
Patentable inventions in
Japan
Software and medical IP in Japan
Should you file in
Japan?

4. Patent Applications by Technical Field in Japan
TOP 6 FIELDS 2014
0
5,000
10,000
15,000
20,000
25,000
30,000
35,000
40,000
Japan Patent Office Statistic Data http://www.jpo.go.jp/english/statistics/statistics/index.html

5. 2012 2013 2014
Direct PCT N.E. Total Direct PCT N.E. Total Direct PCT N.E. Total
JP Japan 269,132 17,881 287,013 252,391 19,340 271,731 245,343 20,616 265,959
total 289,738 53,058 342,796 274,279 54,157 328,436 267,652 58,337 325,989
US
United
States of
America 9,019 13,903 22,922 9,753 13,728 23,481 10,577 15,421 25,998
DE Germany 1,792 5,097 6,889 1,789 5,108 6,897 1,847 4,768 6,615
KR
Republic of
Korea
3,422 2,286
5,708 3,770 2,364 6,134 3,096 2,586 5,682
FR France 855 2,867 3,722 721 2,604 3,325 743 2,709 3,452
CN China 561 1,461 2,022 630 1,434 2,064 752 1,779 2,531
CH
Switzerland 739 1,532 2,271 824 1,590 2,414 804 1,650 2,454
NL
Netherland
s
477 1,501
1,978 336 1,514 1,850 376 1,863 2,239
GB
United
Kingdom
472 1,182
1,654 495 1,170 1,665 483 1,248 1,731
TW Taiwan 1,308 60 1,368 1,216 75 1,291 1,325 83 1,408
SE Sweden 366 804 1,170 345 679 1,024 312 726 1,038
IT Italy 194 494 688 165 534 699 182 575 757
CA Canada 208 493 701 233 458 691 197 438 635
IL Israel 117 317 434 176 268 444 173 355 528
BE Belgium 127 353 480 128 304 432 129 329 458
AU Australia 118 309 427 116 326 442 111 341 452
Number of Patent Applications filed in Japan by origin
Japan Patent Office Statistic Data http://www.jpo.go.jp/english/statistics/statistics/index.html

6. 2005 2006 2007 2008 2009 2010 2011 2012 2013 2014
Japanese 367,960 347,060 333,498 330,110 295,315 290,081 287,580 287,013 271,731 265,959
Foreigners 59,118 61,614 62,793 60,892 53,281 54,517 55,030 55,783 56,705 60,030
0
50,000
100,000
150,000
200,000
250,000
300,000
350,000
400,000
Japan Patent Office Statistic Data http://www.jpo.go.jp/english/statistics/statistics/index.html
Patent Applications in Japan
2005-2014

7. 7
Subject
Matter
highly advanced creation of
technical ideas by which a law
of nature is utilized
Novelty
inventors may not obtain patents for:
inventions that are known to the
public (Item i);
inventions that are publicly used
(Item ii); or
inventions that are described in a
distributed publication or made
publicly available online in Japan or a
foreign country before the filing of
the patent application (Item iii).
Industrial
Application‘Industry’ is a
broad term that includes: manufacture;
agriculture; fishing and forestry; mining;
commerce; and services.
Inventive Step
If, at the time the application is filed, a
person ordinarily skilled in the art could
have easily made the invention based
on the technology listed in Article 29(1)
of the Patent Act (ie, an invention
involving the prior art or that is publicly
known), the invention cannot be
patented (Article 29(2) of the Patent
Act).
What are the criteria for patentability in Japan?
http://www.lexology.com/library/detail.aspx?g=f679e703-b8e3-4c9d-b012-d5fa42a7c4c1

8. Non-statutory Inventions
• A law of nature as such
• Mere discoveries and not creations
• Those contrary to a law of nature
• Those in which a law of nature is not utilized
• Those not regarded as technical ideas
– Mere presentation of information
• Those for which it is clearly impossible to solve the
problem to be solved by any means presented in a
claim
Japan Patent Office https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/2_1.pdf

9. To what extent can inventions covering
software be patented?
http://www.lexology.com/library/detail.aspx?g=f679e703-b8e3-4c9d-b012-d5fa42a7c4c1
+ =
Inventive Software Hardware
(Law of Nature)
Patent
Party invitation
system
Memory + CPU JPO textbook example

10. Software inventions are patentable if all steps within the invention are
tied to hardware. The hardware that executes each step in the procedure
must be explicitly stated in the claims (eg, a program that makes a
processor execute steps A, B and C).
While the hardware used must be explicitly stated, it can be described in
general terms (eg, a processor, computer or processing device). This
requirement is easily met when software is executed by a single device.
However, if software is executed by multiple devices, it is necessary to
identify the machine or module that executes each step (eg, step A is
executed by a server computer and step B is executed by a client
computer). This ensures that all steps are executed by a machine, not a
person.
To what extent can inventions covering
software be patented?
http://www.lexology.com/library/detail.aspx?g=f679e703-b8e3-4c9d-b012-d5fa42a7c4c1

11. To what extent can inventions relating to
stem cells be patented?
Inventions relating to stem cells are patentable in Japan.
However, inventions that contravene public order, morality or public health
are not patentable. When an invention involves a step that destroys an
embryo, it will be rejected under Article 32 of the Patent Act. However,
inventions relating to the culturing or differentiation of an established
embryonic stem cell line are patentable. This, along with other factors, has led
to prolific studies and development in induced pluripotent stem cell
technology in Japan.
http://www.lexology.com/library/detail.aspx?g=f679e703-b8e3-4c9d-b012-d5fa42a7c4c1

12. Industrial Applicability
• Methods of surgery, therapy or diagnosis of humans – NO,
but:
– Medical device
– A method for controlling the operation of a medical device is not
considered to be classified as “methods of surgery, therapy or
diagnosis of humans” as long as the function of the medical device is
represented as a method.
– Gathering information
• Methods of extracting samples and data from the human body, or methods of
analysing as well as Preparatory treatment for measuring structures or functions of
various organs of the human body are not considered to be methods of diagnosis
of humans
• Commercially inapplicable inventions
• Practically Inapplicable
Japan Patent Office https://www.jpo.go.jp/tetuzuki_e/t_tokkyo_e/Guidelines/2_1.pdf

13. Some Considerations
• Japan is license-smart
– Large local market
• Particular market structure
– Aging, rich population
• Prosecution cost is not low
– Translation quality is critical
• Examiners open to education &
discussion
• Timing considerations
– Delaying costs to market
development
– PPH
– Examination may be too good

15. Maier Fenster
Patent Attorney
maier@ipatent.co.il