Episode 20

In recent years, the number of AI-related patent applications has increased, and the rate of patent grants has also risen (https://www.jpo.go.jp/system/patent/gaiyo/sesaku/ai/document/ai_shutsugan_chosa/hokoku.pdf).
The Japan Patent Office has published a total of 25 AI-related cases in Annexes A and B of the Patent and Utility Model Examination Handbook (https://www.jpo.go.jp/system/laws/rule/guideline/patent/document/ai_jirei/jirei.pdf).
By the way, AI-related inventions are one type of software-related invention. In order to prepare a specification that can be used to effectively enforce your rights, you must first accurately grasp the technical content of the invention and prepare it in accordance with the basics of preparing specifications for software-related inventions (see "Historical Background of the 'Examination Standards for Software'" stored in the reference materials (https://sophia-ip.jp/en/reference-materials/)).
If you enforce your rights with an insufficiently written specification, the patent will be dismissed in a patent infringement lawsuit on the grounds that it is invalid (Article 104-3, Paragraph 1 of the Patent Act). It is particularly important to meet the support requirement (Article 36, Paragraph 6, Item 1 of the same Act).
Regarding this support requirement, the Intellectual Property High Court has ruled that "Whether the statement of the claims meets the support requirement of the specification should be determined by comparing the statement of the claims with the statement of the detailed description of the invention, and by examining whether the invention stated in the claims is the invention stated in the detailed description of the invention, and whether it is within a scope that a person skilled in the art would recognize from the statement of the detailed description of the invention that the problem of the invention can be solved, and whether it is within a scope that a person skilled in the art would recognize that the problem of the invention can be solved in light of the common general technical knowledge at the time of filing, even without that statement or suggestion. It is reasonable to interpret that the burden of proof for the existence of the support requirement of the specification lies with the patent applicant or patent holder." (Intellectual Property High Court Grand Panel Decision, Case No. 10042 of 2005 (Gyo-Ke), November 11, 2005).
In the case of software-related inventions, what is protected by patent law is the software algorithm (https://sophia-ip.jp/en/features-of-our-office/). The algorithm is expressed as a flowchart.
However, some patent applications for software-related inventions do not include a flowchart. This is likely because the writer of the specification does not understand the technical content of the invention or does not understand the basics of writing specifications for software-related inventions.
Since what is protected by patent law is the software algorithm, a flowchart should be selected as the [selected figures] in the abstract. However, there are many patent applications in which drawings other than a flowchart are selected.
By checking whether a flowchart is selected as the [selected figures] in the abstract, you can easily distinguish the quality of a patent specification for software-related inventions, including AI-related inventions.

Episode 19

A request for examination of a patent application can be made within three years from the filing date (Patent Law, Article 48-3, Paragraph 1), and if no request for examination is made within that period, the patent application is deemed to be withdrawn (Patent Law, Article 4, Paragraph 4).
When one year and six months have passed since the filing date, the patent application is published (Patent Law, Article 64, Paragraph 1), so even if an application with the same content as the withdrawn patent application is filed, it will fall under Article 29, Paragraph 1 (novelty) of the same law and will be rejected (Patent Law, Article 49, Paragraph 2).
The examination request rate for patent applications is 74.8% (2020) (https://www.jpo.go.jp/resources/report/nenji/2024/document/index/020202.pdf). In other words, one in four patent applications will not be granted rights, and will only have the effect of excluding later applications (Patent Law, Article 29, Paragraph 1 or Article 29, Paragraph 2) after the application is published.
Even if it is undecided at the time of filing whether or not to request examination, and the need to obtain rights arises three years after filing, the opportunity to obtain rights has already been lost.
In contrast, since utility models are registered without a substantive examination (Utility Model Act, Article 14, Paragraph 2), the right cannot be exercised until a utility model technical evaluation report has been presented and a warning has been issued (Utility Model Act, Article 29-2). A request for a utility model technical evaluation can be made even after the utility model right has expired (Utility Model Act, Article 12, Paragraph 2).
A utility model right holder can file a patent application based on the utility model registration within three years from the date of filing the utility model registration (Patent Act, Article 46-2, Paragraph 1).
In light of the above, if it is undecided at the time of filing whether or not to request examination, if you file a utility model registration application for the time being, and if the need to obtain rights arises within three years from the date of filing, you can file a patent application based on the utility model registration, and if not, maintain the utility model registration, then you can request a utility model technical evaluation and exercise your rights even if the need to obtain rights arises three years after filing.
By utilizing the patent application system based on utility model registration, you can reduce the costs of filing and obtaining rights, while also being able to obtain rights for the contents of your application as necessary.

Episode 18

It is possible to apply for design registration for three-dimensional shapes, and it is also possible to apply for registration as a three-dimensional trademark.
Since design rights are creations resulting from human mental activity, registration requires novelty and creatability, and the term of the right is limited (25 years from the application date).
In contrast, trademark rights protect business reputation, so they require awareness through use, and the term of the right is semi-permanent through renewal registration.
The Intellectual Property High Court has ruled as follows on this matter.
"Given that trademark rights can be held semi-permanently by repeatedly renewing the duration of their validity, granting protection to three-dimensional shapes that were the subject of utility model rights or design rights through trademark rights could result in a specific person being granted exclusive rights semi-permanently beyond the duration of the rights under the Utility Model Law or Design Law, which would unfairly restrict fair competition between businesses. Therefore, unless there are special circumstances in which the three-dimensional shapes that were the subject of utility model rights or design rights have acquired distinctiveness unrelated to the monopoly of the rights, it cannot be deemed that they have acquired distinctiveness through use." (Intellectual Property High Court Case 2017 (Gyo-Ke) No. 10155, Judgment of January 15, 2018)
Recently, special circumstances in which "distinguishing power through use" has been recognized, a three-dimensional trademark for Shin Godzilla was approved.
Based on the "overwhelming recognition of the Godzilla character," the court ruled that "although the trademark in question falls under Article 3, Paragraph 1, Item 3 of the Trademark Act, the trademark in question falls under Article 3, Paragraph 2 of the Trademark Act because it can be recognized that the use of the trademark in question on the designated goods has led to general consumers being able to recognize that the goods are related to the plaintiff's business." (Intellectual Property High Court Case No. 10047 of 2024 (Gyo-Ke) of October 30, 2024)