اليابان

Date of Judgment: November 8, 2007

Issuing Authority: Supreme Court

Level of the Issuing Authority: Final Instance

Type of Procedure: Judicial（Civil）

Subject Matter: Patent (Inventions)

Summary of the judgment (decision):

1. If the patent holder, or the licensee who was licensed by the patent holder, assigned the patented product in Japan, the patent regarding this patented product is exhausted since it has achieved its purpose by the assignment and thus, the effect of the patent does not extend to the use, assignment etc. of the patented product and therefore, the patent holder is not entitled to exercise the patent in relation to the patented product.

2. If the patented product, assigned in Japan by the patent holder or by a licensee who was licensed by the patent holder, has been modified or its components replaced, and as a result, can be regarded as a novel production of the patented product not identical to the original patented product, the patent holder is entitled to exercise their patent right over this patented product.

3. If the patented product, assigned in Japan by the patent holder or by a licensee who was licensed by the patent holder, has been modified or its components replaced, whether such modification etc. is a novel production of this patented product and whether the patent holder is subsequently allowed to exercise the patent right over it, should be determined by taking into consideration the characteristics of the patented product, the content of the patented invention, the manner of modification and the exchange of components as well as the circumstances involving the transaction, in a comprehensive manner.

4. If a patented product, which was assigned abroad by a patent holder or by those who can be equated with the patent holder in Japan, has been modified or its components replaced, and as a result, can be regarded as a novel production of the patented product, not identical to the original patented product, the patent holder is entitled to exercise the patent right over this patented product in Japan.

5. If a patented product which was assigned outside Japan by a patent holder or by those who can be equated with the patent holder in Japan, has been modified or its components replaced, whether such modification etc. is a novel production of the patented product and whether the patent holder is subsequently allowed to exercise the patent right over it, should be determined by taking into consideration the characteristics of the patented product, the content of the patented invention, the manner of modification and the exchange of components as well as the circumstances involving the transaction in a comprehensive way.

6. X, the patent holder of the ink cartridge (ink tank) for ink jet printers, put these cartridges (hereinafter, “X’s products”) on sale inside and outside Japan, Y imported cartridges in which X’s used products were cleaned and had ink freshly injected into them (hereinafter, “Y’s products”) and sold them in Japan. In such cases, if the manner of modification in the process of producing Y’s products is not only the supplement of the ink, but also involved modification, such as the modification of the cartridge itself, which had not been structurally designed for the refill of ink because this would decrease the printing quality and cause the cartridge to malfunction if, in order to enable the supplementing of the ink, the product comes to lack the structure, which is an essential part of the patented invention, ink is supplemented again and the effect and function of this patented invention has been newly enabled. Also considering the circumstances of trade involving ink cartridges, under such circumstances, Y’s product is a novel production of the patented product which is not identical to X’s product before modification, and should not be an object of restriction of the exercise of the patent right. Therefore, X is entitled to seek an injunction for the importation, sale etc. of Y’s products and to require destruction of these products on the basis of its patent.

(Translated by Sir Ernest Satow Chair of Japanese Law, University College, University of London)