What Specific Actions Qualify as "Working" (Jisshi) a Patented Invention in Japan?

In the realm of Japanese patent law, the concept of "working" (実施 - jisshi) an invention is central to determining whether patent infringement has occurred. A patent grants its owner the exclusive right to work the patented invention in the course of trade (Article 68, Japanese Patent Act). Therefore, understanding precisely which actions constitute "working" is fundamental for both patentees seeking to enforce their rights and for third parties aiming to avoid infringement.

The definition of "working" is not uniform; it varies depending on the category of the patented invention. Article 2(3) of the Patent Act meticulously defines these categories and their corresponding "working" acts. Furthermore, these acts must generally be performed "in the course of trade" and within the territory of Japan for a Japanese patent to be infringed.

The Overarching Requirement: "In the Course of Trade" (業として - gyō to shite)

Before delving into the specific acts, it's crucial to note the qualifier in Article 68: the patentee's exclusive right pertains to working the invention "in the course of trade" (業として - gyō to shite). This phrase generally serves to exclude purely personal, private, or household activities from the ambit of patent infringement. For an act to be "in the course of trade," it does not necessarily have to be profit-motivated or part of a continuous, repetitive business. Rather, it implies an industrial or commercial character, distinguishing it from acts done within a strictly private sphere.

Defining "Working" by Invention Category: Article 2(3)

Article 2(3) of the Japanese Patent Act provides specific definitions of "working" tailored to different types of inventions:

A. Inventions of a Product (物の発明 - mono no hatsumei) - Article 2(3)(i)

For a patented product, "working" encompasses a range of activities:

1. Producing (生産 - seisan) the product: This is a cornerstone of product patent rights. "Production" is interpreted broadly and is not limited to manufacturing from raw materials in a factory setting. It includes:
   • Assembling components to create the finished patented product.
   • In some circumstances, acts of repair or modification can be considered "production" if they are so substantial that they effectively result in the new creation of the patented product, thereby going beyond mere permissible repair. This concept is closely related to the exhaustion doctrine, notably explored in cases like the Supreme Court decision of November 8, 2007 (Minshu Vol. 61, No. 8, p. 2989, the "Ink Cartridge" case or 「液体収納容器」事件), where the extent of refurbishment of used ink cartridges was at issue. While that case primarily dealt with exhaustion, the underlying question of whether a "new" product was made is relevant to the scope of "production."
2. Using (使用 - shiyō) the product: Any utilization of the patented product in its intended manner or otherwise.
3. Assigning (譲渡 - jōto) the product: This refers to the sale or other transfer of ownership of the patented product.
4. Leasing (貸渡し - kashiwatashi) the product: Providing the patented product for temporary use by another party under a lease agreement.
   (The Patent Act often groups "assigning" and "leasing" together as "譲渡等" - jōto tō).
5. Importing (輸入 - yunyū) the product: Bringing the patented product into Japan from a foreign country.
6. Offering for Assignment or Lease (譲渡等の申出 - jōto tō no mōshide) the product: This includes soliciting sales or leases of the patented product. This act was added to provide an earlier point of intervention for patentees. Examples include:
   • Distributing catalogs or pamphlets advertising the patented product.
   • Operating a website that displays product information, contact details, and an inquiry form for the patented product can constitute an "offer for assignment". The IP High Court decision of September 15, 2010 (2010 (Ne) 10033, the "Motor" case or 「モータ」事件) suggested that a website launch itself could be an offer, especially when coupled with other sales activities.
   • The scope can be less clear for intermediaries. Simply providing a hyperlink on one's website to a third-party page where an infringing product is listed is unlikely, by itself, to constitute an "offer for assignment" by the linking party, as this could impose an unmanageable burden of liability.
7. For inventions of a program, etc. (プログラム等 - puroguramu tō, which includes computer programs and other information processed electronically similar thereto): In addition to the above, "working" also includes acts of providing the program, etc., via a telecommunications line (e.g., making software available for download). This provision, introduced by the 2002 amendments, ensures that patent protection for software-related inventions is not easily circumvented by non-physical distribution methods.

It is also worth noting that Article 101, item 3 of the Patent Act deems the act of possessing a patented product for the purpose of assigning, leasing, or exporting it to be an infringement. While Article 101 primarily deals with indirect infringement, this specific provision addresses acts preparatory to direct working (assignment, lease, or export) and underscores the breadth of control afforded to product patent owners.

B. Inventions of a Process (方法の発明 - hōhō no hatsumei) - Article 2(3)(ii)

For an invention that is a process (e.g., a method of testing, a method of treating a substance, a communication method), the definition of "working" is more focused:

• Using (使用 - shiyō) the process: This is the sole act defined as working for a simple process invention. It involves carrying out the sequence of steps that constitute the patented method.

C. Inventions of a Process for Manufacturing a Product (物を生産する方法の発明 - mono o seisan suru hōhō no hatsumei) - Article 2(3)(iii)

This category covers inventions where the core inventive concept lies in a new method of making a product. For such inventions, the patentee's rights are broader than for a simple process invention:

1. Using the process: Similar to simple process inventions, carrying out the patented manufacturing process itself is an act of working.
2. Acts concerning the product directly obtained by that process: In addition to controlling the use of the process, the patentee also has rights over the products that are directly manufactured using that patented process. The acts of "working" these products are the same as for product inventions: using, assigning, leasing, importing, or offering for assignment or lease the product manufactured by the process.

This "reach-through" protection for the products of a patented process is a significant feature of Japanese patent law, providing more comprehensive control than if rights were limited only to the use of the process itself. Similar to product patents, Article 101, item 6 deems possession of a product manufactured by a patented process, for the purpose of assigning, leasing, or exporting it, to be an infringement.

Distinguishing Between Invention Categories: Impact on "Working"

The categorization of an invention as a "product," a "process," or a "process for manufacturing a product" is crucial because it directly determines which set of acts defined in Article 2(3) will constitute "working" and thus potential infringement. These distinctions are primarily based on the language of the patent claims.

1. Product Inventions vs. (Simple) Process Inventions

• Significance: The primary difference lies in the breadth of enforceable acts. Product patents cover making, using, selling, etc., the physical product. Simple process patents primarily cover only the act of using the process steps.
• Determination by Claim Language: For legal certainty and to provide clear notice to the public, the classification of an invention (and thus the applicable definition of "working") is determined by how the invention is formulated in the patent claims. One cannot argue, for instance, that a claim written as a process should, in substance, be treated as a product claim to capture a broader range of activities, or vice-versa.
• Mismatch Between Claim and Specification: If a patent claims a "product" but the specification only adequately describes a method of making it without sufficiently defining the product's structure or characteristics, the patent might be vulnerable to invalidity for lack of support (Art. 36(6)(i)) or enablement (Art. 36(4)(i)). The claim will not simply be re-categorized as a process claim for infringement purposes.
• Conceptual Basis of Distinction: The distinction often hinges on whether acts like "production" or "assignment" are conceptually applicable to the claimed subject matter. If the invention is inherently an activity or a sequence of operations for which "production" or "transfer of a thing" is not meaningful (e.g., a method of diagnosis or data analysis), it is likely a process invention. The 2002 Patent Act amendments recognized that even intangible subject matter like computer programs could be considered "products" because they can be "produced" (e.g., copied onto media, developed) and "assigned" (e.g., sold, licensed for download), even if they also involve temporal, process-like execution steps.

2. (Simple) Process Inventions vs. Inventions of a Process for Manufacturing a Product

• Significance: The key difference is the extension of rights to the products manufactured by the process. For an invention of a "process for manufacturing a product," the patentee's rights extend to the products directly obtained therefrom. For a simple process invention (e.g., a testing method, a data processing method), the rights are limited to the use of the process itself.
• Determination by Claim Language: As with the product/process distinction, the claim language dictates whether an invention is a simple process or a process for manufacturing a product. For example, a claim to a "method of measuring substance X" is a simple process claim. One cannot argue that it is effectively a "method of manufacturing drug Y" simply because measuring substance X is an essential quality control step for drug Y, and thereby attempt to extend patent rights to drug Y itself if drug Y is not claimed as being produced by the method. The Supreme Court decision of July 16, 1999 (Minshu Vol. 53, No. 6, p. 957, the "Bioactive Substance Measurement Method" case or 「生理活性物質測定法」事件) affirmed this principle, rejecting an attempt to broadly construe a measurement method claim to cover the resulting product where the claim was not drafted as a process for manufacturing that product.

The Nature of Patent Rights: Exclusive, Not Affirmative

It is a fundamental tenet of Japanese patent law that a patent grants an exclusive right (専有権 - sen'yūken) to work the invention (Article 68). This means the patentee has the right to prevent others from working the invention in the course of trade.

Crucially, it is not an affirmative right for the patentee to work their own invention under all circumstances. For instance, if working the patented invention would also involve working an invention covered by another party's dominant patent, the patentee of the subordinate patent would still need a license from the owner of the dominant patent (this is recognized in Article 72, concerning dependent patents). Conversely, if an invention is not patented, anyone is generally free to work it without infringing any patent rights (assuming it doesn't infringe other IP rights). This underscores that a patent is a right to exclude, not a governmental grant of a positive right to practice the technology.

Territoriality of "Working"

Finally, it must be remembered that Japanese patent rights are territorial. The acts defined as "working" under Article 2(3) must occur within the geographical territory of Japan to constitute infringement of a Japanese patent. Acts performed entirely outside Japan, even if they result in products that are later imported, are generally not direct acts of "working" under Japanese law (though the act of importation itself is a "working" of a product invention, as noted above).

Conclusion

The definition of "working" an invention under Article 2(3) of the Japanese Patent Act is precise and varies significantly based on whether the invention is a product, a process, or a process for manufacturing a product. These definitions, combined with the "in the course of trade" requirement and the principle of territoriality, delineate the specific actions that can give rise to patent infringement liability. For businesses and legal professionals, a clear understanding of these categories and the scope of actions they encompass is essential for navigating the complexities of patent rights and obligations in Japan. Mischaracterizing the invention type or misunderstanding the specific acts that constitute "working" can lead to flawed infringement analyses and strategies.