1.1 What are the principal sources of law and regulation relating to patents and patent litigation? (Briefly describe the role of international, foreign or state laws and relevance of court decisions, list and briefly describe relevant statutes and international treaties)
Since the Japanese legal system is based primarily on codified law, the Patent Law is the principal source of substantive law governing patents, and the Code of Civil Procedure and Rules of Civil Procedure are the principal sources of law and regulation governing the procedural aspects of patent litigation in Japan. The Civil Provisional Relief Law is also the source of law governing provisional relief, including preliminary injunctions, in connection with patent infringement.
The protection of patents in Japan has been strengthened due to international agreements. Japan is a member of the major international agreements aiming to create an internationally integrated patent system, including:
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
In Japan, prior court judgments, such as decisions and orders, do not have legally binding effect on the courts. Courts are theoretically free to render judgments contrary to precedents. However, the precedents of higher courts, especially those of the Supreme Court, substantially function as a source of law for lower courts in that lower courts hesitate to render judgments that contradict rulings established by the higher court and that would likely be overruled at the higher court. In this context, it can be said that court precedents are also sources of law (ie case law).
As to international treaties, Article 26 of the Patent Law provides that where there are specific provisions relating to patents in a treaty, such provisions basically prevail over the provisions of the Patent Law.
2.1 In which courts are patents enforced? Are they specialised patent courts? If not, what level of expertise can a patent holder expect from the courts?
In general, a litigation case, including a patent infringement case, is first tried in a district court, and the judgment of a district court can be appealed to a high court (Koso appeal) and then to the Supreme Court (Jokoku appeal).
Under the new Code of Civil Procedure, which came into effect in 2004, two district courts now have exclusive jurisdiction over patent cases in Japan. The claims concerning patents exclusive jurisdiction of the Tokyo District Court, and those occurring in western Japan are subject to the exclusive jurisdiction of the Osaka District Court, in each case as the court of first instance. The Tokyo District Court has four special divisions and the Osaka District Court has two special divisions for intellectual property matters.
Koso appeals from district courts in patent infringement cases come under the exclusive jurisdiction of the Intellectual Property High Court (‘IP High Court’), which was established in April 2005 as a special High Court dealing only with IP matters. The IP High Court has four general divisions and one special division where a panel of five judges hears and decides cases.
Jokoku appeals from the IP High Court are filed with the Supreme Court. A case in the Supreme Court is usually heard by one of the three petty benches composed of five justices.
2.2 To what extent are courts willing to consider, or are bound by, the opinions of other national or foreign courts that have handed down decisions in similar cases?
In principle, as mentioned in question 1.2 above, the courts are not legally bound by prior court decisions. However, in practice, the precedents of higher courts, especially those of the Supreme Court, substantially function as a source of law for lower courts in that lower courts hesitate to render judgments that contradict rulings established by the higher court and that would likely be overruled at the higher court. Foreign court decisions in similar cases would not be considered by Japanese courts because of the territoriality principle .
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg the Patent Office)?
The Patent Law grants the Japanese Patent Office (‘JPO’) the authority to determine patent invalidity. In order to invalidate a patent, one is required to file a complaint with the JPO demanding a trial for invalidation (Muko-Shinpan). The old Patent Law did not provide any specific provision for an invalidity defence in a patent infringement case being heard by a court, which caused delays in litigation where the validity of a patent was at issue and the defendant filed for invalidation with the JPO. In order to solve this inconvenience legislatively, the new Patent Law, which came into effect in 2004, stipulates in Art 104–3 that a court in a patent infringement case can deny enforcement of the patent at issue if it finds grounds for invalidation. Before this amendment, under the framework of the Supreme Court decision in the Kilby Patent case (11 April 2000), courts were allowed to examine the validity of patents to dismiss a patent infringement claim using the theory of ‘abuse of right’ only when the reason for invalidation was ‘obvious.’ Article 104–3 removed this ‘obviousness’ requirement.
However, it should be noted that a court judgment on patent invalidity under Art 104–3 is binding only on the parties to the particular case, and that, as explained above, the JPO still has the authority to declare general invalidity of a patent through a trial for invalidation. The existence of two different procedural tracks for patent invalidation is likely to raise the issue of how to resolve a situation where the decisions of the court and the JPO contradict each other.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
In Japan, there are effectively two types of legal representatives that handle patent matters for clients, ‘attorneys-at-law’ (Bengoshi) and ‘patent attorneys’ (Benrishi). Bengoshi are persons who have passed the bar examination and are registered with a bar association, and Benrishi are usually persons who have passed the patent bar examination and are registered at the JPO.
Bengoshi can represent parties before courts in patent litigation. They are also allowed to appear before the JPO. Benrishi can act as representatives for prosecution matters, including filing appeals of decisions of the JPO with the IP High Court. They may also appear in a court as assistants for Bengoshi in patent litigation. As a result of the amendment to the Patent Attorney Law in 2002, Benrishi were granted authority to co-represent parties in patent litigation with a Bengoshi, provided that such Benrishi have passed the Specific Infringement Litigation Representation Examination.
2.5 What is the language of the proceedings? Is there a choice of language?
Court proceedings are carried out in the Japanese language. If a person participating in the court proceedings is not familiar with Japanese, such as an expert witness from a foreign country, an interpreter is required. When presenting documentary evidence which is written in a foreign language, a translation into Japanese needs to be attached.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
In principle, the enforcement of a patent right under Japanese Patent Law is permitted only within the territory of Japan, and Japanese courts will grant injunctive relief only if the act of patent infringement is conducted in Japan (‘Principle of Territoriality’). However, it is theoretically possible for a Japanese court to grant an extra-territorial injunction against patent infringement conducted in another country applying such country’s patent law as the governing law, if the Japanese court has its jurisdiction over such case.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
Such actions are not recognised by Japanese courts.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
Assessment of patent infringement
A patentee has an exclusive right to work the patented invention commercially (Art 68 of the Patent Law), and therefore unauthorised commercial working by a third party of a patented invention constitutes patent infringement. The Patent Law prescribes the following definitions of ‘working’ in order to clarify the scope of the patent right (Art 2(3)):
The protection of a patent right is limited to the technical scope of the claimed invention of the patent. In other word, the technical scope of a claimed invention of a patent is the scope in which an act can constitute patent infringement. Therefore, it is critical in patent litigation to determine the technical scope of the claimed invention of the patent (‘claim construction’ or ‘claim interpretation’).
As to how the technical scope should be determined, Art 70(1) of the Patent Law provides that the technical scope of a patented invention is determined on the basis of the statements of the patent claim, and Art 70(2) provides that the meaning of a term or terms of the patent claim is interpreted in the light of the statements in the specifications and the drawings. These articles confirm that determination of the technical scope cannot deviate from the statements of the patent claim. In addition, the technological level at the time of the filing must be taken into consideration in determining the technical scope of an invention. Also, documents which were exchanged between the applicant and the JPO examiner during the filing procedure have great significance in determining the scope (‘File Wrapper Estoppel’).
Doctrine of equivalents
As in many other countries, Japanese courts have ruled that the scope of patent protection can be extended beyond the literal wording of the claim to cover a technological idea that can be regarded as equivalent even if the product in question does not literally infringe the patent (‘Doctrine of Equivalents’).
The Supreme Court decision in the Ball Spline Shaft Patent case (24 February 1998) affirmed the doctrine of equivalents and laid down the five requirements for application of the doctrine. The Court clearly states that, even if there is a part that is different from the allegedly infringing product in the composition of the claim, it is covered by the technical scope of the patented invention as an equivalent when:
(1) that part is not the essential part of the patented invention;
(2) the objective of the purpose of the invention can be achieved and the same effect can be obtained even if that part were replaced;
(3) that replacement could be easily arrived at by a person skilled in the art at the time of infringement;
(4) that part was not identical to a publicly-known technology at the time of filing or could not be easily conceived of by a person skilled in the art at the time of the filing; and
(5) there are no special circumstances, such as that part being intentionally excluded from the claim during the filing procedure.
In most patent infringement cases, an alleged infringer argues that:
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
In Japan, there has been no court decision or statutory law ruling that a violation of the Antimonopoly Act by a patentee constitutes a defence against patent infringement, as is often the case in US courts (‘patent misuse defence’). However, there is a possibility, under the abuse of right doctrine, that a court would deny enforcement of a patent if granting such enforcement would result in a serious violation of the Antimonopoly Act.
The Patent Law (Art 123 (1)) prescribes that a patent is invalidated if it:
The existence of any of the above grounds is determined not only by the panel of the JPO, but also by court judges when the defendant raises an invalidity defence in litigation.
3.5 Can a court only partially invalidate a patent? Can it transform the patent into a utility model?
Japanese courts can partially invalidate a patent, for example invalidating some of the claims for an invention and upholding others. Japanese courts do not have the authority to transform the patent into a utility model.
Since a patent right becomes fixed upon registration, the specification can only be changed by demanding a trial for correction (Teisei-Shinpan, Art 126 of the Patent Law) or simply demanding a correction (Teisei-Seikyu, Art 134-2 of the Patent Law) with the JPO, not with a court. The matters subject to correction in both procedures are limited only to:
A patentee can seek a trial for correction (Teisei-Shinpan) unless a trial for invalidation is pending before the JPO or in appeals from a JPO decision on the invalidity of the patent. However, in appeals from a JPO decision, a trial for correction can be accepted within 90 days of the date of filing an appeal from the JPO decision.
On the other hand, the defendant in a trial for invalidation can demand correction (Teisei-Seikyu) within the stated time limit in the proceeding of the trial for invalidation.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg expiry of time limit)?
As mentioned above, the right to claim damages lapses by prescription if not exercised within, as applicable, three years or 20 years (‘extinctive prescription’ or ‘statute of limitations’). However, there are no defences, based on laches or equitable estoppel, as is often seen in US courts, even when a patentee delays filing suit for a long time, except for the circumstance where the patentee implicitly grants a licence to use its patent to the alleged infringer. Also, in Japan, there is no defence like the doctrine of inequitable conduct in the US, and therefore the fraudulence of a patentee during prosecution with an examiner of the JPO would not be grounds for unenforceability of a patent.
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
The Unfair Competition Prevention Law protects trade secrets against unauthorised use or disclosure by providing injunctive and monetary relief to owners of trade secrets. However, a patent holder usually cannot claim both patent infringement and trade mark infringement, because a trade secret which was opened to the public as a result of the issue of a patent is no longer protected under the Unfair Competition Prevention Law.
The Unfair Competition Prevention Law also protects famous business indications, such as a mark and appearance of goods. Thus, if a product which infringes a patent has the same indication of the goods of the patent holder, it is possible for the patent holder to claim both patent infringement and unfair competition concurrently.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
Not only a single patentee, but a joint owner of a patent can seek an injunction against and compensation for damages from a patent infringer regarding his/her own share of the patent. Further, patent licensees can be plaintiffs to seek statutory remedies against the infringer of a patent. A patent licensee is generally classified into one of three categories:
A registered exclusive licensee, the licence of which must be registered in the Patent Register at the JPO in order to take effect, is granted a right to bring a law suit seeking an injunction and compensation for damages under the Patent Law. A non-registered exclusive licensee can claim damages incurred by itself from infringers without the licence being registered. However, court decisions and theories are not unified with regard to whether or not a nonregistered exclusive licensee can demand an injunction in subrogation of a patent owner. Neither the Patent Law nor court precedents have granted a non-exclusive licensee the right to seek an injunction against and compensation for damages from a patent infringer.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
A patentee sometimes sends a cease and desist letter to an alleged infringer, including its customers, without reliable or definite facts proving the infringement. In such case, the alleged infringer is able to file a law suit to obtain a declaratory judgment for non-infringement. In addition, under the Unfair Competition Prevention Law, the alleged infringer can petition a court to grant an injunction against a patentee’s false misrepresentation to customers and compensation for damages that such alleged infringer suffered.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
In principle, the defendant in a patent infringement case should be the person or entity who conducted the act of commercially working the entire patent claim (‘direct infringement’). Directors, officers, or a parent company of a company that conducted the act of commercially working the patent will not be liable for patent infringement.
In addition to direct infringement, Art 101 of the Patent Law further prescribes certain acts which are deemed to be infringements because they are preliminary or contributory acts of infringement (‘indirect infringement’). Article 101 of the Patent Law was amended in 2002 and 2006 in order to expand the scope of indirect infringement, and describes the following acts as patent infringement:
Under the Code of Civil Procedure, the courts may order the combination of oral arguments for a case in which different parties are involved. Therefore, when a plaintiff of the pending law suit brings another law suit against another infringer, or when another right holder, such as a co-owner of the patent, brings a law suit against a defendant of the pending law suit based on the same patent, the procedure would become consolidated if the court orders a combination of oral arguments. On the other hand, a plaintiff may voluntarily dismiss a law suit against any defendant at any time before the defendant files an answer with the court, but only with the defendant’s acceptance after the defendant has filed an answer with the court.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
In connection with patent infringement, not only civil remedies, including an injunction and compensation of damage, but also other remedies, such as criminal penalties, border measures and alternative dispute resolutions, such as conciliation and arbitration, are available to a patentee, as described in more detail below.
Criminal proceedings are available. As a result of the amendment to Patent Law in 2006, criminal sanctions for patent infringement were stiffened. Any individual who has infringed a patent right can be liable for imprisonment with labour not exceeding ten years or for a fine not exceeding ¥10m (Art 196 of the Patent Law). Furthermore, where an officer representing a company or a representative, employee or any other servant of a company has infringed a patent right with regard to the business of the company, in addition to the offender, the company is liable for a fine not exceeding ¥300m (Art 201 of the Patent Law).
Border measures are available. To strengthen the enforcement of IP laws at the border, the Customs Tariff Act was amended in 2003, as a result of which a patentee may, where cargo considered to infringe the patent is imported, file a petition with the Customs Director for an importation suspension by submitting necessary evidence establishing a prima facie case for infringement (Art 21-2). The Customs Director has authority to order confiscation, destruction, or reshipment of goods prohibited from being imported. This petition system has already been established for copyright and trade mark cases. Although there is no judicial procedure at the Customs Services, such as the s 337 investigation of the US International Trade Commission, to determine whether products actually infringe IP rights and should be excluded, this new provision provides a way for patentees to become involved in preventing the importation of infringing goods.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
In Japan, there are two types of alternative dispute resolution (‘ADR’) procedure: conciliation and arbitration. These ADR procedures, however, are not frequently used since the court system for the protection of patents in Japan works well in terms of the speed of litigation and reliance of the judgments of the special IP division of the District Court and the IP High Court. The procedures for conciliation and arbitration in Japan can be briefly summarised as follows.
If a dispute has arisen in respect of patent infringement, the party concerned may file an application for conciliation with the court. In a conciliation procedure, the Conciliation Committee, which is composed of one judge and two civil conciliation members, hears the case, and if an agreement is reached between both parties in the conciliation and is stated in the protocol, it is deemed that a conciliation has been formed and such statement has the same effect as a judicial compromise (Art 15 of the Law for Conciliation of Civil Affairs). The Tokyo District Court and the Osaka District Court have a special conciliation system for IP matters, where attorneys-at-law and patent attorneys well versed in IP matters are appointed as conciliation members.
In an arbitration procedure, the parties concerned conclude an arbitration agreement, and arbitrators hear the case. Although an arbitral award has the same effect as a final and conclusive judgment, a party seeking enforcement based on the arbitral award is required to apply to a court for an enforcement decision (Arts 45 and 46 of the Arbitration Law). Arbitration awards only affect the parties to an arbitration agreement. The Japan Patent Office neither recognises nor executes arbitration awards declaring a patent invalid. The Japan Intellectual Property Arbitration Center, where attorneys-at-law, patent attorneys and former judges are appointed members, deals with IP matters.
Patent infringement litigation is commenced by a plaintiff filing a complaint with the court. A complaint must contain a specific allegation of the fundamental facts and of the substantial evidentiary facts, and the plaintiff is required to attach to the complaint such basic materials as copies of the material documentary evidence.
Once a complaint and summons are served, the defendant is required to file an answer with the court and attach copies of the material documentary evidence to the answer. Then, the judge holds a hearing date for both the plaintiff and defendant about once a month at a courtroom or a meeting room to sort out disputed issues after studying briefs submitted by the plaintiff and defendant.
The process of patent infringement litigation is divided into two stages:
(1) the first stage (Shingai-Ron), where the court examines whether the accused product infringes the patent; and
(2) the second stage (Songai-Ron), where the court examines the amount of damages.
In the first stage, the specifications of the accused product, the ascertaining of the technical scope of the patent, and the comparison of the structural requirements of the patent with the accused product are performed. If after hearing arguments and evidence from the parties the judge reaches a conclusion in favour of the defendant, the judge may not move the case to the second stages and may close the trial. On the contrary, if the judge reaches a conclusion in favour of the plaintiff, the judge often discloses the conclusion to the parties and makes a suggestion for settlement. The judge often sets several dates for settlement, suggesting appropriate terms and persuading the parties to make concessions. If the parties do not reach a settlement, the judge may move the case to the second stage or sometimes render an interlocutory judgment in order to conclude the first phase.
The statistics show that more than 50 per cent of all IP infringement cases are resolved by judicial settlements at the district court.
As no jury system exists in Japan, the judges alone hear all the arguments and evidence. At the district court, cases are usually heard by either a panel of three judges or a single judge. A panel of three judges hears most patent infringement law suits, as IP law suits are generally believed to be difficult. In addition, a panel of five judges was introduced regarding patent infringement litigation in 2004 (Art 269–2 of the Code of Civil Procedure).
In Japan, it is uncommon for judges handling a patent case to have scientific or technical backgrounds. In order for them to understand the technical issues better, the judges can obtain support from court researchers, who are technical experts (eg, former patent attorneys or examiners of the JPO (Art 57 of the Court Organisation Law)), especially when they come across highly complex and technical issues. Also, an expert commissioner system was introduced with the amendment of the Code of Civil Procedure in 2003 in order to make further use of expert knowledge (Art 92–2).
6.3 To what extent are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
In patent infringement litigation, a variety of evidentiary documents are submitted to the court, ranging from technical publications, experiment reports, and affidavits of expert testimony.
With regard to experts, the parties usually ask private experts for affidavits, but the court also may designate an independent expert if it determines a necessity.
While the taking of testimony of witnesses or parties is commonly conducted in civil law suits, the examination of witnesses is rare in patent infringement law suits. The judge often reaches a conclusion based solely on documents submitted by the parties in patent infringement cases.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
There are some statutory means for obtaining evidence from an adverse party or third parties in Japan, although there is not as strong a discovery procedure as in the US.
First, the party may file a motion for an examination, and preservation of the results of such examination, prior to filing a law suit (evidence preservation, Shoko-Hozen). The requirement for this evidence preservation motion is that it would be too late to conduct an appropriate examination of evidence if the court were to wait for the scheduled presentation of evidence at court (Art 234 of the Code of Civil Procedure). However, the courts in fact often deny these motions unless the necessity is fully established, because it would likely inflict irreparable harm on the defendant, as trade secrets of the defendant may become known to the other side. It should also be noted that the order for evidence preservation only has a non-binding effect.
Second, as a result of amendments to the Code of Civil Procedure in 2003, a party may, prior to the commencement of a law suit, enquire in writing to the adverse party about the matters which are clearly necessary for the preparation of the law suit. The court may, upon a motion of a party, make dispositions prior to the commencement of a law suit to collect evidence such as a request for transmission of a document, a request to government offices and so forth, after hearing from the adverse party. A written notice indicating the intent of a would-be plaintiff to sue a would-be defendant is a prerequisite for these pre-trial procedures.
Lastly, during a law suit, the court may, upon a request of a party, order the other party to produce documents necessary for the proof of alleged infringement or the assessment of the damages caused by the infringement. However, submission of documents can be refused when there is a legitimate reason, such as a trade secret (Art 105 of the Patent Law). When the party does not obey the order for the production of documents without a legitimate reason, there is a presumption in favour of the claim made by the requesting party.
6.5 What level of proof is required for establishing infringement or invalidity?
The standard of proof does not have to be beyond all doubt, but it is required to satisfy a high probability.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
Court procedure has accelerated considerably in recent years, and the average pendency time for concluded IP cases in 2004 was about 13.8 months, which was about half the time of ten years ago.
There are three types of civil remedies for patent infringement, namely:
With regard to injunctive relief, Art 100 of the Patent Law prescribes that a patentee may require a person or entity who is infringing or is likely to infringe the patent to discontinue or refrain from such infringement. Furthermore, a patentee may demand the destruction of articles by which an act of infringement was committed, the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement. Even if the defendant has not yet started to manufacture or sell the infringing product, a patentee could seek an injunction where an infringement is likely to be committed.
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
It is possible to obtain a final injunction against suppliers and customers. However, if customers are not working a patented invention ‘commercially’ (or ‘in the course of trade’), a patent holder cannot obtain injunctive relief against customers.
7.3 What monetary remedies are available against a patent infringer? Are punitive damages available?
In order to claim damages, a patentee must basically prove three requirements, namely:
To alleviate the burden of the patentee on claiming damages, there are statutory presumptions in Patent Law. First, negligence of the infringer is presumed (Art 103 of the Patent Law). The second presumption relates to the damages. Although punitive damages are not permitted in Japan, there are special provisions regarding the presumption of the amount of damages. Article 102(1) of the Patent Law provides that the amount of damages is presumed to be the sum of money obtained by multiplying the quantity of the infringing products by the unit profit that could have been gained by the patentee. Article 102(2) also presumes that the profits gained by the infringer through the act of infringement to be the amount of damages. Furthermore, damages can be presumed to be equal to the amount of royalties receivable to the patentee under Art 102(3).
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunction) and under what conditions?
A preliminary injunction is available to a patentee to stop infringement when it is necessary to avoid substantial damages or imminent danger on the side of a patentee (Art 23(2) of the Civil Preservation Law). The necessity is determined taking into consideration the specific circumstances of each particular case. Although a preliminary injunction is usually a good way for a right holder to obtain fast relief for infringement, motions for a preliminary injunction in a patent infringement case are time-consuming to prepare and the proceedings also take considerable time unless the fact of the infringement is clearly proved.
If a preliminary injunction is to be granted, the court usually orders a petitioner to deposit a bond prior to granting the injunction, which is expected to compensate the damage incurred by the respondent if the preliminary injunction is overruled later. The amount of the bond is decided on the basis of the foreseeable damages the respondent would suffer.
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, what conditions?
As mentioned in question 8.3, a court must hold oral proceedings or an interrogation of the respondent in order to grant a preliminary injunction, and an ex parte preliminary injunction is not available.
A motion for preliminary injunction must be filed with a district court. As a preliminary injunction seeking to stop the manufacture or sale of a product affords substantially the same result as winning the main law suit, which would likely cause extremely severe damage to the respondent, oral proceedings or an interrogation of the respondent must be held by the judge at the court (Art 23(4) of the Civil Preservation Law). In practice, the courts usually hold an interrogation, but oral proceedings are rarely initiated.
in counsel for both the petitioner and respondent about once every month or three weeks. If the main law suit and the motion for preliminary injunction are filed jointly, it may happen that the preliminary injunction case is heard parallel to the main law suit.
Preliminary injunction cases are heard by either a panel of three judges or by a single judge. When the preliminary injunction case is heard parallel to the main law suit, a panel of three judges usually hears the case.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The respondent can raise an invalidity defence against the patent at issue in preliminary injunction proceedings, as in the main law suit.
8.5 To what extent are documents, affidavits, witnesses, and/or (court-appointed or private) experts used in preliminary injunction proceedings?
The evidence submitted in a preliminary injunction case is limited to that which can be examined immediately, and there is no commissioning the investigations, the mailing of documents, or ordering the submission of written documents.
8.6 What level of proof is required to establish infringement or invalidity in preliminary injunction proceedings?
The level of proof is, unlike in the main law suits, prima facie.
According to the statistics provided by the Supreme Court, in 2003, the average pendency time for IP preliminary injunction cases, including those for patent infringement, was about five months.
8.8 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
When a preliminary injunction is granted prior to commencement of the main law suit, the court must, upon application by the respondent, order the petitioner to file the main law suit and submit a document showing such filing within a term designated by the court. If there is a failure to comply with this court order, the order granting the preliminary injunction must be vacated upon application of the respondent (Art 37 of the Civil Preservation Law).
9.1 What avenues of appeal are available for a defeated party to main proceedings or preliminary injunction proceedings?
The losing party in a district court case may file a Koso appeal to the IP High Court within two weeks of the day of service of the judgment on the appellant. Because the Koso appeal court is still a court conducting fact-finding proceedings, the grounds for Koso appeal may be not only errors in the application of law in the judgment but errors in the finding of fact. A case in the IP High Court is usually heard by a panel of three judges, but a case which involves an important matter of law the outcome of which may significantly impact IP practices would ordinarily be heard by the Grand Panel consisting of five judges, which was introduced in April 2004.
The losing party in an IP High Court case may file a Jokoku appeal to the Supreme Court within two weeks of the day of service of the judgment on the appellant. Because the Supreme Court is a court ruling on matters of law and is bound by the facts found at the IP High Court, the grounds for a Jokoku appeal are limited to a violation of the Constitution in the IP High Court judgment or substantial illegalities of procedure in the lower court. In addition, the losing party may file a petition for a Jokoku appeal (Jokoku-Juri-Moushitate) on the grounds that the judgment contains an important issue of interpretation of law, or is contrary to precedent. However, like the system under the US writ of certiorari, the Supreme Court can exercise its discretion of whether to grant such petition.
Appeal of preliminary injunction
When a preliminary injunction is granted, the respondent may file an objection (Hozen-Igi) with the district court which granted it. Upon hearing both parties, the court must approve, change or repeal the original order.
9.2 How long do appeal proceedings typically last?
The average pendency time for IP Koso appeal cases in 2004 decreased to about nine months as a result of the introduction of the intensive hearing method from January 2003.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
When a patentee files a law suit or preliminary injunction for patent infringement, the patentee must pay filing fees by affixing to the complaint or other documents revenue stamps in an amount set by the Civil Litigation Costs Law. Attorneys’ fees are also incurred, and these are usually calculated on either a time-charge basis or retainer/contingency basis.
10.2 Are costs recoverable from the losing party?
The losing party must pay the litigation costs (Art 61 of the Code of Civil Procedure), which are limited to filing fees, transportation fees for an expert designated by a court etc. Attorneys’ fees are not included in litigation costs. However, it should be noted that a person who is injured by a tortuous act and is thereby obliged to hire an attorney may recover reasonable attorneys’ fees as part of the damages at the discretion of the court, but not as litigation costs. This rule has become one of general application in tort litigation.
11. FORTHCOMING LEGISLATION
11.1 What are the important developing and emerging trends in your country’s patent law?
Japan appears to be finally emerging from an unprecedented economic depression during most of the 1990s. It is likely that a key source of Japan’s continued competitiveness and economic growth will be added value and productivity fuelled by intellectual property. With such awareness, the Japanese Government declared that it would promote IP as a national policy and took the first step toward becoming an intellectual property-based nation with the enactment of the Basic Law on Intellectual Property in 2002. Since then, a series of specific reforms have been made and are still in the process of being made at an exceptionally fast pace, all of which are having considerable influence on every aspect of economic activities relating to the creation, protection, and exploitation of IP.
11.2 To the extent it relates to patent enforcement, outline any major patent legislation in the pipeline.
As the Japanese Government declared its intention to promote IP as a national policy, a variety of amendments were made to improve the proceedings of law suits in the field of patent litigation, such as reinforcement of specialised proceedings, human resources in the courts, and proceedings for obtaining evidence, most of which have been mentioned above. In addition, as already described, the amendments to the Patent Law in 2006, which will take effect as of 1 January 2007, further strengthen the protection of patent rights by expanding the scope of patent infringement to acts of exporting infringing products, and by enhancing the criminal penalties for patent infringement. For additional information on IP legislation, please see the Intellectual Property Strategic Program which has been developed by the Government of Japan every year since 2003 and is available on the internet (www.kantei.go.jp/jp/singi/titeki2/kettei/060609keikaku.pdf).
12.1 Please identify any useful works of reference relating to patent law and patent litigation in your country including useful websites.
N Nakayama Industrial Property Law, Vol 1 (2nd ed, 2000)
C Heath (ed) Intellectual Property Law in Asia (2003)
Journals of The Japanese Group of AIPPI
The Supreme Court’s home page: www.courts.go.jp/
The IP High Court’s home page: www.ip.courts.go.jp/
The JPO’s home page: www.jpo.go.jp/
The Secretariat of IP Strategy Headquarters’ home page: www.ipr.go.jp/
