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.

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

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

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