TMI Podcast - Intellectual Property in Japan

TMI Associates
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"TMI Podcast" is brought to you by TMI Associates, which is one of the leading law firms in Japan, with the capability of providing full-service across all legal fields. This podcast talks all about intellectual property issues in Japan, and provides you with news, tips, and information about various types of intellectual property, such as patents, trademarks, and designs.

Episodes

  1. JUN 24

    #9: First Filing Obligation in Japan

    In this episode, we focus on Japan’s new First Filing Obligation, introduced in May 2024 as part of the broader Non-Disclosure System for Patent Applications. This obligation prohibits certain inventions made in Japan from being filed abroad before filing in Japan, especially if they relate to sensitive technologies. We explain the background of this new rule, the types of inventions it covers, and the steps foreign companies and inventors should take to comply. We also compare the two available routes — domestic filing and prior confirmation — and discuss practical strategies for securing foreign patent rights without delay.

    12 min

  2. FEB 20

    #8: AI as Inventor: IP High Court Decision on the DABUS Application

    In May 2024, the Tokyo District Court ruled on the DABUS patent application, concluding that an AI cannot be recognized as an inventor under Japanese patent law. Now, in January 2025, the Intellectual Property High Court has issued its decision on the appeal. In this episode, Patent Attorney Yuya Kuroda provides an update on this important case, breaking down the court’s reasoning, how it aligns with global trends, and what it means for AI-generated inventions in Japan.

    13 min

  3. 11/04/2024

    #7: Calculation of Damages under Japanese Patent Law

    In this episode, we examine the key provisions of the Japanese Patent Act, Article 102, covering the three main methods for determining damages: lost profits, the infringer’s profits, and reasonable royalties. We also discuss recent legislative amendments aimed at enhancing patent protection, including the 2020 revisions, as well as significant rulings by the Intellectual Property High Court. This episode is essential listening for patent professionals and anyone interested in the evolving framework of Japanese patent litigation. We invite you to tune in and stay informed on these critical developments. - Statistics from the Intellectual Property High Court of Japan https://www.ip.courts.go.jp/vc-files/ip/2024/j_sintoukeiH26_R5.pdf - Case No. 2022(R2) (Ne) 10024 https://www.ip.courts.go.jp/vc-files/ip/2022/Re2ne10024-zen.pdf - Japan Patent & Trademark Update Issue 24 https://www.tmi.gr.jp/uploads/2023/07/24/jptu_issue24.pdf - Ms. Moeha HOSONUMA https://www.tmi.gr.jp/people/m-hosonuma.html - Mr. Yuya KURODA https://www.tmi.gr.jp/people/y-kuroda.html

    14 min

  4. 06/26/2024

    #6: AI as Inventor: Tokyo District Court Decision on the DABUS Application

    In May 2024, the Tokyo District Court issued its first decision regarding the DABUS application in Japan, discussing whether it is permissible or not to list AI as an inventor. In this episode, Patent Attorney Yuya Kuroda dives into this landmark court decision. He'll focus on explaining the court's rationale, its alignment with international decisions, and the broader implications for AI-generated inventions.

    9 min

  5. 03/04/2024

    #5: Examination Procedure for Multi-Multi Claims in Japan

    Rules on multiple dependent claims depending on other multiple dependent claims vary from country to country. From April 2022, we saw quite a radical change in the examination procedure on such multiple-multiple dependent claims (also known as “MultiMulti Claims”) in Japan. In this episode, we will provide brief explanations on the recent change in the examination procedure for Multi-Multi Claims in Japan.

    8 min

  6. 06/23/2023

    #4: Accelerated Examination vs. PPH

    In this episode, we talk about the two systems for expediting patent examination at the JPO in Japan: Accelerated Examination, which is a Japanese local system, and PPH, which stands for Patent Protection Highway which is a global system. Specifically, we will use the available statistics to compare these two systems from two aspects. The first aspect is which system would be faster, and the second aspect is in which system it would be easier to obtain a patent.

    13 min

  7. 10/02/2022

    #3: Recent Amendments to the Patent Law in Japan – reinstatement of rights

    This episode is part of the recent Patent Law amendments series which focuses on various aspects of recent law revisions from the viewpoint of Japanese agents. In this episode, we talk about one of the key advantages of these amendments for patent applicants, the relaxation of the requirements for reinstatement of rights in Japan. • TMI Japan Patent & Trademark Update vol. 20 https://www.tmi.gr.jp/uploads/2022/03/24/jptu_issue20.pdf#page=2 Presenters: Mayo Komiyama, and Yuya Kuroda

    7 min

  8. 06/10/2022

    #2: Software Patent Series - Subject Matter Eligibility in Japan

    This episode is part of the Software Patent Series which looks at things to be aware of when filing software-related patent applications in Japan. In the field of software patents, Subject Matter Eligibility can differ from country to country. In this episode, we talk about the requirements for Subject Matter Eligibility under the Japanese Patent Law. In particular, we go over the statutory definition of "invention," as well as the categories stipulated in the Examination Guidelines issued by the Japan Patent Office. Further, we explain some key points to keep in mind when drafting claims for software patents. • Examination Guidelines for Patent and Utility Model in Japan https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/tukujitu_kijun/index.html • Examination Handbook for Patent and Utility Model in Japan https://www.jpo.go.jp/e/system/laws/rule/guideline/patent/handbook_shinsa/index.html Presenter: Yuya Kuroda

    14 min

  9. 01/29/2022

    #1: Introduction to TMI Associates

    In this first episode, we are going to provide an introduction to TMI Associates and let you know some information about the intellectual property practice at our firm. Further, several of our colleagues, Hiroki Sato, Tomohiro Kuribayashi, and Yuya Kuroda, will have a brief discussion about some of TMI’s strengths and unique points. Presenters: Hiroki Sato, Tomohiro Kuribayashi, and Yuya Kuroda

    13 min
  • 9 Episodes

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About

"TMI Podcast" is brought to you by TMI Associates, which is one of the leading law firms in Japan, with the capability of providing full-service across all legal fields. This podcast talks all about intellectual property issues in Japan, and provides you with news, tips, and information about various types of intellectual property, such as patents, trademarks, and designs.

Information