Episode 9

In recent years, the number of trademark registration applications has been on the rise, with approximately 60% of applications being filed by individuals and small and medium-sized enterprises. However, the number of unregistered cases after registration assessment is also increasing. Furthermore, approximately 80% of claims are successful in non-use cancellation trials (Article 50 of the Trademark Law) (https://www.jpo.go.jp/resources/shingikai/sangyo-kouzou/shousai/shohyo_shoi/document/t_mark_paper09new/ 01.pdf).
This is because individuals and small and medium-sized enterprises have become aware of their rights, and some patent (trademark) firms have made low-cost trademark registration applications a selling point, leading to an increase in the number of easy trademark registration applications.
The object of protection under the Trademark Act is not the trademark itself, but the business credit embodied in the trademark (Article 1 of the Act). The purpose is to establish a brand and make your business successful, and trademark registration is a means to that end.
Even after a trademark is registered, especially in highly competitive fields, competitors may request a trial to invalidate the trademark registration (Article 46 of the Act). In this case, you must protect your registered trademark. Registering a trademark is just one step in the journey to establishing your brand and building a successful business. If you apply for trademark registration because it's cheap even though you have no purpose or plan to use it, and if you don't register it even if it's approved, or if you don't use it even after registering, the application fee will end up being wasted.
Some patent (trademark) firms that make low-cost trademark registration applications their selling point waive the registration fee after the registration decision is made. For such firms, whether the applicant registers or not, the fee the firm receives remains the same; if the applicant does not register, it actually saves time and effort.

Episode 8

Continuing from episode 7, we will explain the descriptions in patent specifications.
When preparing a patent specification, a patent attorney or patent engineer may add new information to the proposal prepared by the inventor, pretending to know the information.
Case 2 (Maxacalcitol case) in "Regarding the technical scope of patented inventions and their interpretation" in [Reference materials] is a case in which the doctrine of equivalents was applied. As a result, the technical scope of patented inventions (Article 70 of the Patent Act) has been interpreted more broadly than the scope of claims.
Looking at the investigator's commentary on the Supreme Court case above, "Based on the explanation of this judgment, if there is a statement in the specification that can be seen as disclosing an invention in which the starting material etc. has a trans vitamin D structure, such as a description of the process of converting the trans form to the cis form. It seems highly probable that there were special circumstances in which the claim of equality was not permissible.”. (“Housou Jiho” December 2017 issue, p. 213). In other words, if the preparer of the specification had added such information while pretending to know, there is a high possibility that the doctrine of equivalents would not have been accepted.
By the way, civil Precedents of the Supreme Court include "Minshu" and "Shumin". The "Minshu'' is the official Supreme Court Precedent, and the "Shumin" was created as an internal document of the court.
Supreme Court decisions are not directly written by Supreme Court judges, but are drafted by elite judges called "Supreme Court investigators," and the Supreme Court judges make additions and revisions.
Regarding the "Minshu", the monthly magazine "Housou Jiho" will publish the "Explanation of Supreme Court Precedents" by the investigator who prepared the original draft of the Supreme Court decision. For this reason, it is also called "investigator commentary''. The "Explanation of Supreme Court Precedents - Civil Edition'' has been compiled and bound by year.
The Supreme Court's judgment is relatively concise, and there is a wide range of interpretations. Complementing this is the "Explanation of Supreme Court Precedents.'' "Supreme Court Precedents Commentary" is essentially the Supreme Court's official commentary on Supreme Court Precedents (Minshu). For this reason, it is necessary to read Supreme Court Precedents (Minshu) while referring to the "Explanation of Supreme Court Precedents". However, the reality is that many patent attorneys are not even aware of the existence of " Explanations of Supreme Court Precedents''.

Episode 7

When preparing a patent specification, whether or not "effects of the invention" should be described. If so, should it be written in the [effects of the invention] column or in the "mode for carrying out the invention" column? There are lawyers and patent attorneys who are debating whether it should be done(https://jpaa-patent.info/patent/viewPdf/3240).
 However, in the enforcement of rights, that is, in patent infringement lawsuits, the technical scope of a patented invention (Article 70 of the Patent Act) is determined not only by the statement in the specification, but also by the relative relationship between the present invention and the subject invention, and may be interpreted more narrowly or more broadly than the scope of the claims (Refer to Court Cases 1 and 2 under "Technical Scope of Patented Inventions and Their Interpretation" in [Reference Materials], respectively).
 There is a point in pointing out that writing too much about the effects of the invention when preparing a patent specification will narrow the scope of the right. However, if the reason for invalidation is lack of inventive step (violation of Article 29, Paragraph 2 of the Patent Law) (Article 123, Paragraph 1, Item 2 of the Patent Law), rights cannot be exercised (Article 104-3 of the Patent Law). In this case, the right holder can use "advantageous effect" as the basis for claiming inventive step during the trial of an infringement awsuit(https://www.jpo.go.jp/system/laws/rule/guideline/patent/tukujitu_kijun/document/index/03_0202bm.pdf). The relationship between the description in the patent specification and the scope of rights is determined by the balance of multiple factors.