Intellectual Property Rights and U.S.-Japan Competition in Biotechnology Report of a Workshop (1991) / Chapter Skim
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3. The Experience of U.S. Firms in Japan
3. The Experience of U.S. Firms in Japan
Pages 17-23
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From page 17... ...
Patentees encounter several obstacles in contesting infringement suits in Japan as compared to their experience in the United States. These include the lack of wide-ranging discovery procedures, which hinders the plaintiff in collecting evidence to prove infringement, as well as a generally weaker enforcement of a "doctrine of equivalents." 3sRaymond C
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From page 18... ...
companies TABLE 1 Pharmaceutical Patent Litigation in Japan Involving U.S. Companies Patent Accused Date Case Owner Party Decided Infringement Chlortetracycline American Cyanamid Meiji 9/9/55 Admitted Chloramphenicol Parke Davis Yamanouchi 12/24/55 Admitted Dihydrostreptomycin Merck Kaken 7/3/67 Admitted Tetracycline American Cyanamid Mitsui Toatsu 7/21/72 Admitted Methocarbomal Robins Chemia Boeki 9/27/72 Denied Nalidixic acid Sterling Drug Sumitomo Chem.
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From page 19... ...
Some international patent attorneys argue that if U.S. firms make sure that their patent applications are translated correctly into Japanese, and if they apply for patents on predictable modifications to the original invention in the eighteen month period between the time when the original patent application is filed and the time when the JPO publishes the claim as a kokai, then they can successfully protect their inventions.38 The quality of translations is considered to be especially critical by the Japanese patent examiners themselves.39 The most important determinant of success or failure in prosecuting an infringement suit may be the quality of Japanese representation.
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From page 20... ...
biotechnology companies operating in the Japanese IPR environment. GENENTECH AND T-PA According to Stephen Raines, Vice President for Patents at Genentech, the key patent application for recombinant tissue plasminogen activator was filed in Japan in 1983.
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From page 21... ...
Japanese fimns are expending significant resources to develop these products, indicating that the companies believe that grants will be limited, allowing them to avoid infringement with minor modifications.47 Yet the preliminary ruling by the Osaka Distnct Court is encouraging to Genentech and, perhaps, to other biotechnology companies.48 In the United States, some criticize a trend toward broad claims for biotechnology patents. The patent infringement battle over :-PA in this country is a good example of the ongoing debate over where to draw the line in interpreting the breadth of claims.
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From page 22... ...
Though the Japanese "patent playing field" may be tilted against innovators, disputes in the United States over similar breadth of claim questions show that at least some of the disparities result from legitimate differences over how to treat biotechnology inventions. Yet the experience of American films in Japan is just part of the picture.
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From page 23... ...
If both proteins have identical reactive properties, the modified version may be an infringement. If the modified protein has both unique and previously patented features, its maker may not need to pay a licensing fee for some unique applications.
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