Japan Supreme Court Confirms Overturning of JPO’s Validation of Vague Tomato Juice Processing Patent

A while back, the “Ikinari! Steak” steak service patent was revoked. Now a patent that the JPO refused to invalidate in a challenge has gone up to the Supreme Court. On June 27, 2018, the Supreme Court concurred with the IP High Court’s invalidating decision, to overturn the JPO’s position.

The patent for “Tomato-Containing Beverage, Method for Producing the Same and Method for Suppressing Acidity of Tomato-Containing Beverage” (title translated by J-Plat Pat) No. 5189667 (JP Patent Publication No. 2012-223141) filed by Ito En Ltd., a beverage company, was granted in 2013. In 2015, Kagome Co., Ltd., one of whose major products is tomato juice, filed for an invalidation trial in 2015. The JPO refused to invalidate the patent as revised by Ito En, in 2016. Kagome refused to let the case stand, though, and appealed to the IP High Court, which ruled on June 8, 2017 that the patent was invalid. Now, the appealed case has been referred back to the JPO through the Supreme Court’s siding with the IP High Court against Ito En.

While multiple points were argued in the 2017 decision, what decided against Ito En in the end was that its descriptions were vague on the actual combination of tastes to be produced by its claimed methods. Ito En’s data did not rate bitterness, only sweetness and acidity (sourness), leaving too much vague on what the actual claimed product should be.

While this tomato juice case received plenty of attention in the legal blogosphere for Japanese clients, now that the Supreme Court has ruled it became a more useful tale for foreign applicants. Applicants for patents in Japan need to make sure that their descriptions, from the early stages, give full detail to ground the claims made.

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Taro Yaguchi