Japanese Intellectual Property, Patent and Trademark Law Firm in Japan

Patent scope and Prior arts

1. Comparison analysis

(1) Germany

i) Literal scope

German infringe courts do not accept any objection based on prior arts regarding the patent infringement.

In the past, some scholars argued the introduction of “Einrede des freien Standes der Technik“ or “objection of free technical standard” in English because German patent law had the statutory limitation of 5 years for the invalidation procedure before 1941. However, Current German patent law no longer has the statutory limitation for the invalidation process, and the alleged infringer can file a request for invalidation to the Federal Patent Court.

Thus, German infringe courts do not accept any objection based on prior arts.

ii) Doctrine of equivalents

Prior arts can limit the application of Doctrine of equivalents as endorsed in “Formstein case” (Judgment of Federal Supreme Court of Germany, April 29, 1986, 18 IIC 795 (1987).). The objection based on prior arts are called “Formsteineinwand” or “Formstein objection” in English.

This objection is based on the premise that a prior art outside of the literal scope of patent can not necessarily invalidate the patent.

(2) U.S.

i) Literal scope

US infringe courts can invalidate the patent based on prior arts in the patent infringement procedure.

ii) Doctrine of equivalents

Prior arts can limit the application of Doctrine of equivalents as endorsed in “Wilson sporting goods case” and “Gillette case”, for example.

(3) Japan

i) Literal scope

Japanese infringe courts can invalidate the patent based on prior arts in the patent infringement procedure.

ii) Doctrine of equivalents

Prior arts limit the application of Doctrine of equivalents as endorsed in Tsubakimoto Seiko v. THK K.K., 1630 Hanrei Jiho 32 (Sup. Ct. 1998).

2. Practice guideline

Currently, Japanese court system is similar to U.S. court system rather than German court system. Japanese Intellectual High Court works like CAFC in U.S. in that Japanese Intellectual High Court is the infringement appeal court in Japan which can also invalidate the patent.


End of report