Episode 40

In this installment, I will discuss a lawsuit seeking the rescission of a JPO appeal decision regarding a design—a case that garnered attention this past March (Intellectual Property High Court, 2025 (Gyo-Ke) No. 10091; judgment rendered March 10, 2026).
The plaintiff filed a design registration application for an article identified as a "motorcycle" and submitted to the Japan Patent Office (JPO) a "certificate for the application of the exception to the loss of novelty for designs" (pursuant to Article 4, Paragraph 3 of the Design Act).
The 2023 amendment to the Design Act, which concerns Article 4, Paragraph 3, came into effect on January 1, 2024. Since the application in question was filed on August 31, 2023, the pre-amendment version of Article 4, Paragraph 3 of the Design Act applies. The provision states: "A person seeking the application of the provisions of Article 4, Paragraph 2 of the Design Act must submit a document to that effect to the Commissioner of the Japan Patent Office at the time of filing the design registration application, and must also submit, within 30 days from the date of the design registration application, a document certifying that the design—which has come to fall under the categories specified in Article 3, Paragraph 1, Item 1 or 2—is eligible for the application of the aforementioned exception."
Following the amendment, the following clause was added: "Provided, however, that if there have been two or more acts by the person entitled to obtain a design registration—acts which led to the design falling under the categories specified in Article 3, Paragraph 1, Item 1 or 2—it shall suffice to submit the certificate in relation to only the earliest of these acts."
The publicly disclosed design in this case is that of a motorcycle, which was exhibited at an exhibition mentioned in the aforementioned certificate. The initial notification of reasons for refusal regarding the present design application cited, as a reference design, photographs taken by a publisher’s editorial department of a motorcycle that had been publicly disclosed at an exhibition.
After the plaintiff submitted a written opinion, a new reason for refusal was issued. The reference design in this instance was a computer-generated (CG) image—created by the publisher’s editorial department—that appeared in an article on a website operated by the publisher.
The plaintiff submitted another written opinion but was subsequently issued a decision of refusal; the plaintiff then filed an appeal against this decision. In response, the Japan Patent Office (JPO) issued a trial decision stating that "the appeal is groundless."
The essence of this decision was as follows: The design for which registration is sought and the reference design relate to the same type of article and are similar in terms of shape and other features; therefore, they are considered similar. Furthermore, because the "predicted" CG image—published by the editorial department—cannot be deemed substantially identical to the design of the prototype actually exhibited, the exception to the loss of novelty does not apply. Consequently, the design falls under the category of designs precluded from registration pursuant to Article 3, Paragraph 1, Item 3 of the Design Act. Additionally, as there is no evidence to suggest that the reference design was an unauthorized creation or that its disclosure occurred against the applicant's will, the provisions of Article 4, Paragraph 1 of the Design Act are likewise inapplicable.
The plaintiff filed this lawsuit seeking the revocation of the JPO’s trial decision. The first ground for revocation concerns an alleged error in the application of the exception to the loss of novelty, while the second ground concerns an alleged error in the assessment of the similarity between the design for which registration is sought and the reference design.
In the litigation to revoke the trial decision, the plaintiff’s counsel argued that the decision was unlawful by citing the "Examination Guidelines for Designs"; however, the claim was dismissed. As previously explained—citing a Supreme Court precedent (Grand Bench judgment of October 4, 1978; Case No. 120 (Gyo-Tsu) of 1975; *Minshu* Vol. 32, No. 7, p. 1223)—examination guidelines do not possess the status of legal norms. The judgment in the present case also affirms this, stating that "design examination guidelines do not possess the status of legal norms." In a lawsuit seeking the rescission of an administrative decision (such as a trial decision by the Japan Patent Office), the subject of judicial review is not whether the decision conforms to the examination guidelines, but rather whether the authority exercised exceeded the scope of, or constituted an abuse of, the discretion granted by law (Article 30 of the Administrative Case Litigation Act).
Next, let us consider what kind of arguments should have been presented in the lawsuit to rescind the administrative decision in this case.
Returning to fundamental principles, it has been noted that "the law of intangible property is, in essence, intended to prohibit unfair competition" (*Basic Jurisprudence 3: Property*, p. 290; "Intangible Property Rights" by Nobuhiro Nakayama).
A motorcycle manufacturer and a publisher of a motorcycle magazine cannot be described as being in a competitive relationship; rather, they are in a "cooperative relationship."
When a motorcycle magazine publisher creates and publishes computer-generated (CG) imagery—predicting the design of a product likely to be sold—based on the design of a prototype exhibited by a motorcycle manufacturer, and if that predicted design closely resembles the actual final product, the publisher’s reputation among its readership is enhanced, which in turn contributes to increased magazine sales.
For the motorcycle manufacturer, the publisher’s efforts to generate buzz help boost sales of the new product.
In short, the motorcycle manufacturer and the motorcycle magazine publisher can be said to be in a "cooperative relationship" with one another. Even if a speculative CG image—made public by a business entity with which there is a collaborative relationship—is not identical in substance to the design of the prototype actually exhibited at a trade show, the disclosure of such a CG image can be equated to a disclosure resulting from the actions of the person entitled to obtain a design registration. This interpretation is also consistent with the legislative purpose of contributing to the development of industry (Article 1 of the Design Act).
Next, we shall examine whether the procedures stipulated in Article 4, Paragraph 3 of the Design Act are required in order for the disclosure of a speculative CG image—created by a business entity with which there is a collaborative relationship—to qualify for the application of Article 4, Paragraph 2 of the same Act.
Since the filing date of the present application is August 31, 2023, the provisions of Article 4, Paragraph 3 of the Design Act, as they stood prior to the 2023 amendment, shall apply. "Given that this provision is specifically established as a procedure for recognizing an exception to the loss of novelty, in cases where multiple disclosures have occurred as a result of the rights holder’s actions, it would generally be necessary to follow the prescribed procedures for each such disclosure. However, it is reasonable to interpret that if a disclosure is closely related to—and can be considered substantially identical to—a disclosure for which the required procedures have already been completed, the exception may be applied without the need for separate, additional procedures." (Judgment of the Intellectual Property High Court, June 12, 2023; Case No. 2023 (Gyo-Ke) 10008)
Furthermore, although this pertains to a patent-related case, the court held: "Given that Article 30, Paragraph 2 of the Patent Act is specifically established as a procedure for recognizing an exception to the loss of novelty, in cases where multiple disclosures of an invention have occurred as a result of the rights holder’s actions, it would generally be necessary to follow the prescribed procedures for each such disclosure. However, it is reasonable to interpret that if a disclosure is closely related to—and can be considered substantially identical to—a disclosure for which the required procedures have already been completed, the exception may be applied without the need for separate, additional procedures." (Judgment of the Osaka District Court, April 20, 2017; Case No. 2016 (Wa) 928)
Based on the above, it is reasonable to conclude that the procedures stipulated in Article 4, Paragraph 3 of the Design Act are not required in order to invoke the exception under Article 4, Paragraph 2 of the same Act, in relation to the disclosure of a "predictive CG" created by business entities in a collaborative relationship.
Note that for design registration applications filed on or after January 1, 2024, Article 4, Paragraph 3 of the Design Act (as amended in 2023) applies; therefore, it is no longer necessary to cite judicial precedents to support the application of the exception to the loss of novelty.
In light of the above, in this litigation seeking the rescission of the trial decision, it should be argued that the original trial decision runs counter to the legislative purpose (Article 1 of the Design Act) and constitutes an abuse of the discretionary power granted by law (Article 30 of the Administrative Case Litigation Act).
Even if the Intellectual Property High Court does not accept this argument, it would be worth appealing to the Supreme Court; should the Supreme Court rule in our favor, it would become a landmark precedent in the field of intellectual property law.

Episode 39

Between late May and early June, a particular book became a hot topic within the patent attorney community:
*"Everything About Inventive Step for Patent Practice"*
The authors are eight patent attorneys, all with backgrounds in science and engineering, and the supervisor is a lawyer with a similar science/engineering background. Although a bit late to the party, I borrowed a copy from the library to take a look (though I did not read it thoroughly).
In Section 1-2 of Chapter 1, under the heading "Basic Concepts Regarding the Determination of Inventive Step," the book simply copies and pastes the JPO's Examination Standards regarding terms such as "person skilled in the art," "construction of logic (logical reasoning)," "common general knowledge," "well-known or commonly used art," and "state of the art." It appears the authors and supervisor believe that discussing "inventive step" is synonymous with copying and pasting the Examination Standards.
Additionally, in "Column 3: Hindsight," the book cites and explains the Examination Standards; however, the underlying basis for this is a specific Intellectual Property High Court judgment (IP High Court Case No. 2008 (Gyo-Ke) 10096, decided January 28, 2009).
Incidentally, "examination standards" are defined as "standards necessary for determining, in accordance with the provisions of laws and regulations, whether or not to grant a license, approval, or the like requested via application" (Article 2, Item 8(b) of the Administrative Procedure Act).
It is generally understood that these examination standards do not possess the force of law or serve as binding norms for judicial decisions (Source: *Article-by-Article Commentary on the Administrative Procedure Act [Updated for the Revised Administrative Appeal Act]*; edited by the Center for Administrative Management Research). Regarding this matter, the Supreme Court has held: "Even if an administrative agency establishes guidelines for the exercise of discretionary power regarding matters entrusted to its discretion, such guidelines are essentially intended to ensure the propriety of the agency's dispositions; therefore, even if a disposition is made in violation of said guidelines, the issue is, in principle, merely one of propriety or impropriety, and the disposition is not automatically rendered unlawful. A disposition becomes unlawful only when it exceeds the scope of discretionary power permitted by law or constitutes an abuse thereof, and only in such cases may a court revoke the disposition; the provisions of Article 30 of the Administrative Case Litigation Act merely clarify this principle." (Supreme Court Grand Bench Judgment, October 4, 1978; Case No. 1975 (Gyo-Tsu) 120; *Minshu* Vol. 32, No. 7, p. 1223).
In other words, it goes without saying that examination standards are not legally binding on the courts; nor are they legally binding on examiners or trial examiners. Consequently, even if an examiner or trial examiner reaches a conclusion that differs from the examination standards, that fact alone does not render the decision unlawful.
Lawsuits seeking the revocation of a trial decision are subject to the Administrative Case Litigation Act (Article 67, Paragraph 3, Item 9 of the Patent Act). Therefore, the subject of judicial review in such a lawsuit is not whether the decision made during the trial proceedings conforms to the examination standards, but rather whether the decision exceeded the scope of discretionary power permitted by law or constituted an abuse thereof (Article 30 of the Administrative Case Litigation Act).
While it may be permissible to cite examination standards when presenting counter-arguments during the examination stage, one should cite judicial precedents or court rulings—rather than examination standards—when presenting counter-arguments during the trial stage. This is because if an administrative appeal results in a decision to reject an application, and that decision is subsequently overturned in a lawsuit seeking its rescission, it reflects poorly on the administrative judge's performance evaluation.
Court rulings fall into two categories: *hanrei* (binding precedents) and *saibanrei* (judicial precedents/court decisions). The term "*hanrei*" refers to a judgment containing a legal interpretation applicable to other cases; a judgment that merely sets forth reasoning specific to the case at hand does not qualify as a *hanrei* (Supreme Court Decision, First Petty Bench, Feb. 12, 1953; Case No. (A) 3474 of 1951; *Keishu* Vol. 7, No. 2, p. 211). In other words, whether a judgment was issued by the Supreme Court, a High Court, or a District Court is irrelevant to the distinction between *hanrei* and *saibanrei*. There are *saibanrei* issued by the Supreme Court and *hanrei* issued by District Courts. However, only Supreme Court *hanrei* (or, in their absence, *hanrei* from the High Court that heard the appeal) may serve as grounds for a petition for acceptance of a final appeal (*jokoku*) (Article 318, Paragraph 1 of the Code of Civil Procedure).
Notably, there is only one Supreme Court judgment addressing inventive step:
・Supreme Court Judgment, Third Petty Bench, August 27, 2019; Case No. (Gyo-Hi) 69 of 2018; *Shumin* No. 262, p. 51.
When discussing the inventive step of a patent, one must first identify *hanrei* from among the various intellectual property judgments; however, it is difficult for a non-lawyer to distinguish *hanrei* from the vast number of court decisions.
Therefore, to benefit from expert legal insight, one should refer to the following article:
"Considering Inventive Step" by Makiko Takabe (*Patent* magazine, January 2022 issue)
https://jpaa-patent.info/patent/viewPdf/3931
The author of this article is an expert in intellectual property litigation who served as the Chief Judge of the Intellectual Property High Court and as a Supreme Court Research Official.

Episode 38

The *Palworld* lawsuit and related patent applications have been a topic of discussion.
This is a patent infringement lawsuit filed by Nintendo Co., Ltd. and The Pokémon Company against Pocketpair, Inc., the developer and distributor of the game software *Palworld*.
When it comes to rights infringement regarding game software, both copyright infringement and patent infringement are potential issues.
Copyright infringement lawsuits require proving both similarity and reliance, which sets a high hurdle. For instance, GREE, Inc. sued DeNA Co., Ltd. and others, claiming that the mobile internet game *Tsuri-ge Town 2* infringed on the plaintiff's copyright; while the court of first instance granted an injunction and partial damages, the appellate court found no copyright infringement and overturned the initial ruling.
In patent infringement lawsuits, the claim is typically that the game's algorithms infringe upon the plaintiff's patent rights. Plaintiffs can gain a strategic advantage by splitting off and continuing a portion of the original patent application, and subsequently filing a divisional application tailored to the allegedly infringing product.
Defendants can avoid infringement by altering the design of the accused product. In such cases, the plaintiff might argue the "doctrine of equivalents" or file a new divisional application aligned with the redesigned product.
Defendants may also raise a defense based on grounds for invalidation (Article 104-3 of the Patent Act).
Patent infringement litigation is akin to mixed martial arts. Even when you believe you are gaining the upper hand, a counter-move by the opponent can instantly turn the tables.
Courts often seek to resolve cases through settlement rather than a formal judgment (Article 89 of the Code of Civil Procedure). Settling the case allows the court to avoid the burden of drafting a judgment. While court records are generally open to the public (Article 91, Paragraph 1 of the Act), the portions concerning settlement terms are kept confidential (Article 91, Paragraph 2, Sentence 2), allowing the parties to avoid public disclosure of the settlement details.
In the *Palworld* lawsuit, a divisional application (Patent Application No. 2026-19762)—derived from the patent forming the basis of the claim (priority date of the original application: December 2021)—has drawn attention after receiving a notice of refusal citing a video of game software submitted via a third-party information submission. The cited video dates back to 2013.
It is presumed that the plaintiff filed the divisional application in hopes of securing more favorable settlement terms should the court recommend a settlement; however, by receiving a refusal based on a video published prior to the priority date of the original patent, they effectively provided the opposing party with grounds to argue for the patent's invalidity. In short, they stirred up a hornet's nest.