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.

Episode 6

In Japan, the number of intellectual property lawsuits, including patent infringement lawsuits, is extremely low compared to other countries, and the success rate of patent holders in patent infringement lawsuits is lower than in other countries (https://www.kantei.go.jp/jp/singi/titeki2/tyousakai/kensho_hyoka_kikaku/tf_chiizai/dai3/sankousiryou03.pdf).
Due to this, a phenomenon called "Japan Passing" is occurring. This means that the number of patent application families that are filed in the United States, Europe, China, and South Korea but are not filed in Japan is increasing.
In response to this, the success rate of patent holders in patent infringement lawsuits at the Intellectual Property Specialist Divisions of the Tokyo District Court and the Osaka District Court has increased in recent years. However, approximately 40% of patent infringement lawsuits end in settlement (https://www.ip.courts.go.jp/vc-files/ip/2023/2022_sintoukei_H26-r4.pdf). When a judicial settlement is recorded in a record, that statement has the same effect as a final judgment (Article 267 of the Code of Civil Procedure).
Once a lawsuit is filed to resolve a dispute and a judgment is made, that information will be made available to the public (Article 91 of the Code of Civil Procedure). If you wish to resolve a dispute without the knowledge of a third party, you may consider a settlement between the parties. The legal effect of a settlement between the parties is a type of contract under the Civil Code (Articles 695 and 696 of the Civil Code).
By the way, intellectual property mediation began in October 2019 (https://www.courts.go.jp/tokyo/saiban/minzi_section29_40_46_47/tizaityoutei/index.html). As a general rule, intellectual property mediation is not disclosed to third parties. When an agreement is reached between the parties in intellectual property mediation and it is recorded in the record, the mediation is deemed to have been completed, and that statement has the same effect as a judicial settlement (Article 16 of the Civil Mediation Act).