AMERICAN PATENTS, JAPANESE GIs

Supreme Court on patent fundamentals

Today (Tuesday) the US Supreme Court will hear a case on the limits of patentable subject-matter, the International Herald Tribune reports. At issue is a test for homocysteine, a substance that occurs in the blood where there is vitamin B12 or folic acid deficiency. The 13th claim in the patent in question covers a way of determining vitamin deficiency by first testing blood or urine for homocysteine by any means and then correlating elevated levels with a vitamin deficiency. However, the claim does not specify or limit how homocyestein should be tested for and the argument is that the patent wrongly gives protection against all methods of testing for homocyestein, even though it is a substance which occurs naturally in the human body.

The IPKat awaits the outcome of this case with bated breath. He’s put in mind of the copyright idea/expression dichotomy.


More on Japanese local trade marks

On Saturday the IPKat asked his readers for more information on the upcoming reforms to the Japanese trade mark law. He received the following responses, for which he is grateful:

A Kobe cow (right) welcomes the Japanese law reform

Dev Gangjee (LSE) writes:

As the article hints, this is in order to facilitate the registration of geographical indications, hence the 'community' mark. I was in Japan researching it for a month last summer, so my knowledge may be a little dated, but here's a synopsis.

The new law is an amendment to the Trade Mark law, which introduces a special type of Regionally Based Collective Mark. Traditionally collective marks indicate commercial origin of goods or services from members of a group. Only members of the group who satisfy the conditions for belonging to that group can use the mark. So an agricultural cooperative is an example of such a collective organization, which would hold the title for the benefit of all members of the group.

The Key Points of the new Law are that:

(a) The mark can be applied for by a Collective Association, which is recognized by law. Such marks must be applied to goods which come from the area named or have a close connection with it.

(b) The mark should consist of both the place and product name; e.g. Kobe Beef or Nishijin Ori (brocade)

(c) Since it consists of a geographical name, it will have to show acquired distinctiveness. This reputational requirement threshold will probably not be very high. In order to encourage the protection of regional specialties, if the product is even well known or has a reputation in a local area it will be granted protection.

(d) There are strict limitations on the transfer or assignment of such marks.

(e) Provision is made for a ‘fair use’ right for prior users from the area to continue using the mark.

(f) If the requirements for registration are violated, the marks registration may be opposed or if it has been granted, then invalidated.

Meanwhile, a source from MIP writes:

MIP is going to have an article in its May issue on Japan's new system of collective marks (which is what I think the Daily Yomiuri is referring to when it talks about community marks). It's going to be by John Tessensohn of Shusaku Yamamoto. He says that the new system will be the trade mark equivalent of GI protection "for owners of marks of agricultural products like PARMA ham, Aberdeen Angus Beef, French cheese makers, Japanese Yubari melons & Kobe beef will be get new trade mark protection by this new law".

I'm not sure whether this means that producers of products outside of Japan will get protection under the new trade mark rules - I'm waiting to read the article to find out.....

John Tessensohn also says "Japan's collective mark will be the sleeper IP story of 2006 or at least it will be after I've written the 2000 word piece on it and MIP publishes a front page story about it."