Patent Litigation 2024 Comparisons

The Japanese legal system covers two types of intellectual property rights in relation to the protection of inventions: patent rights and utility model rights. Both systems are based on statutory laws, namely the Patent Act and the Utility Model Act.

Patents

The Patent Act employs a substantive examination principle for the patent grant procedure. To obtain a patent right for an invention, a patent application must first be filed with the Japan Patent Office (JPO). A request for examination must also be filed within three years from the date of filing the patent application, or the patent application will be deemed withdrawn.

An examination will be carried out by an examiner of the JPO, who will decide whether the patent application fulfils all the requirements prescribed by the Patent Act.

If the examiner finds any reason for rejection, a notice of reason for rejection will be issued. An applicant who has received a notice of reason for rejection will be given the opportunity to file a written argument and/or an amendment in response to that rejection.

If the examiner finds no reason for rejection in the patent application, or finds that the rejection has been overcome, they will issue a decision to grant a patent for the patent application. A patent will be granted once the applicant pays the registration fees for the first three years.

Utility Models

In contrast to patent applications, the Utility Model Act does not require a substantive examination for applications for utility model registration (ie, for all applications that have passed formal examinations), the utility model right will automatically be registered without going through a substantive examination. The registration fees for the first three years must be paid at the time of filing the utility model application.

Patents

According to statistics issued by the JPO, the average period from filing a request for examination to issuing a final decision (either a decision to grant or a decision to reject) was 14.7 months in 2022. Also, the average grant rate was 75.9% in 2022.

Domestic applicants do not need representation in order to initiate grant proceedings, but foreign applicants do.

The typical costs incurred from filing to grant are JPY1 million, comprising official fees of JPY200,000 and lawyers’ fees of JPY800,000. The official fees vary depending on the number of claims. Also, additional fees for translating certain documents (eg, the specification and notice of reason for rejection) may be incurred, where necessary.

Utility Models

The typical costs incurred from filing to grant are JPY200,000, comprising official fees of JPY20,000 and lawyers’ fees of JPY180,000. The official fees vary depending on the number of claims. Also, additional fees for translating certain documents (eg, the specification) may be incurred where necessary.

Patents

The term of a patent right is 20 years from the date of filing the patent application. There are, however, some exceptions:

• if the establishment of a patent right is registered on or after the date on which five years have passed since the date of filing of the patent application, or the date on which three years have passed since the date of filing of a request for examination of the application, whichever is later (the “base date”), the term may be extended by the period calculated by deducting a certain period from a period equivalent to the base date until the date of registration of establishment of the patent right; and
• the term may be extended by up to five years on request if the invention is unable to be used due to the time spent obtaining an approval or any other dispositions under a law intended to ensure safety, as prescribed by a Cabinet Ordinance.

Utility Models

The term of a utility model right is ten years from the date of filing the utility model application. A utility model application or right may be converted to a patent application within three years from the date of filing the utility model application.

Both patent-owners and utility model-owners have the right to an injunction, the right to claim damages and the right to claim for unjust enrichment. Also, patent-owners and utility model-owners are under an obligation to pay annual renewal fees in order to maintain their rights.

It should be noted that, since a substantive examination is not required for applications for utility model registration, a utility model-owner may only exercise their utility model right against an infringer after giving a warning, and also presenting a Utility Model Technical Opinion Report for the registered utility model. This Report is an assessment of the novelty and inventive step of a registered utility model right by a JPO Examiner, based on a search of prior art documents. A request for a such Utility Model Technical Opinion Report can be made at any time after the application for a utility model has been filed.

In Japan, there is no public information listing applicable patents in relation to certain products or processes. Although there is a public database of patent information in Japan called J-PlatPat, J-PlatPat does not have any functions to search applicable patents in relation to certain products or processes.

There is no further protection for technical intellectual property rights after their maximum term has lapsed.

Anyone may file a third-party observation at any time after the filing of a patent application or an application for utility model registration, even after a patent or a utility model right has been granted. Third-party observations may include not only prior art information or a submitter’s comments regarding the novelty or inventive step of the claimed inventions, but also other information or comments regarding other requirements, such as the addition of new matter, the support requirement, or the enablement requirement. Third-party observations may be filed on an anonymous basis.

Patents

An applicant may file an appeal with the JPO against a decision of rejection issued by a JPO examiner. The patent application will then be examined by a board of three appeal examiners to determine whether the decision to reject was appropriate. The applicant is allowed to make amendments to the scope of claims, specification or drawings at the time of filing an appeal against the decision of rejection. If those amendments are made, the application will first be re-examined by the examiner who issued the initial decision of rejection before it is transferred to a board of appeal examiners.

If the initial examiner finds that the amended application has been improved to the extent that it may be approved, a decision to grant will be issued without the application being transferred to a board of appeal examiners. However, if the initial examiner still believes that the application should be rejected, the application will be transferred to the appeal stage and examined by a board of appeal examiners.

Utility Models

No remedy is available or applicable for utility model applications because the Utility Model Act does not require a substantive examination for the granting of a utility model right.

If a patent-owner or a utility model owner fails to pay the annual fees by the specified deadline, they can still make a late payment by paying a surcharge in addition, and equal, to the annual fee within the six-month grace period after the expiry of the deadline.

Furthermore, if the patent-owner or the utility model-owner was unable to meet the payment deadline, they can still make an additional payment to restore the patent right or the utility model right, except in the case of a “wilful” failure to meet the payment deadline. This additional payment can be made within two months of the applicant becoming able to make the payment or within one year after the payment deadline, whichever comes first.

Both patent-owners and utility model-owners may file a request for a trial for correction with regard to correcting the description, the scope of claims or the drawings attached to the application.

The purpose of the correction is limited to the following:

• restriction of the scope of claims (including deletion of claims);
• correction of errors or incorrect translations;
• clarification of ambiguous statements; and/or
• dissolution of the claim citation relationship.

The correction cannot be made beyond the scope of the matters disclosed in the description, the scope of claims or the drawings attached to the application.

Utility model-owners are allowed to make a request for correction only once, except for deletion of claims, whereas patent-owners may request a trial for correction as many times as they wish, except where the patent has been invalidated by an invalidation trial or revoked by a patent opposition. Patentees may not request a correction while a patent opposition or invalidation proceeding is pending, but may instead request a correction in the proceedings of the patent opposition or patent invalidation trial.

If the owner of a technical intellectual property right (eg, a patent) finds that a third party is infringing upon their patent, they can take one or more of the following actions:

• commence a regular patent infringement suit with a District Court;
• file a petition for a preliminary injunction with a District Court;
• file an import suspension application with the Customs Office; or
• use alternative dispute resolution proceedings, such as mediation or arbitration, if the other party agrees to it.

Only an interested person may file a request for a trial for patent invalidation. The term “interested person” means a person who has, or potentially will have, their legal interest/standing directly affected by the existence of the patent right. On the other hand, in the Patent Opposition System, any person (not limited to interested persons) may file an opposition to a patent within six months of the publication date of the Gazette containing the patent.

The Japanese Patent Act also provides for three types of non-exclusive licence granted by the JPO Commissioner’s award (eg, compulsory licences). However, as of the end of 2023, no such compulsory licence has ever actually been granted in Japan.

The Tokyo District Court and the Osaka District Court have exclusive jurisdiction over litigation relating to patent rights and utility model rights in the first instance. In which court a plaintiff should file a lawsuit depends on the defendant’s corporate address and the location of the infringing activity. The Japanese Intellectual Property High Court (IPHC) has exclusive jurisdiction over appeals from District Court decisions. The IPHC is a special branch of the Tokyo High Court. Parties may appeal decisions of the IPHC to the Supreme Court.

The Japan Intellectual Property Arbitration Center (JIPAC) provides alternative dispute resolution services such as mediation or arbitration in the field of intellectual property. In addition, the International Arbitration Center in Tokyo (IACT) – an international arbitration organisation that is expected to provide disputes resolution services – commenced operation in September 2018.

There are no statutory prerequisites for filing a lawsuit. However, as patent rights and registered exclusive licences become effective upon the establishment of registration with the JPO, such registration will be required when a patentee or registered exclusive licensee brings a claim for damages and/or an injunction based on that patent right or registered exclusive licence. It is, however, generally considered that such registration will not be required when a non-registered exclusive licensee brings a claim for damages based on a non-registered exclusive licence.

In Japan, a party may choose at their own discretion whether to have legal representation. However, in practice, it is common for lawyers to represent parties in intellectual property matters. Patent lawyers can also represent parties for certain intellectual property cases under certain conditions.

Preliminary injunctions are available in cases where such injunctions are necessary for a rights-owner to avoid any substantial detriment or imminent danger with respect to the rights in dispute. If a request for a preliminary injunction is granted, the rights-owner will usually be required to deposit a certain amount of money as security. The amount of that security will be determined by the court in consideration of the circumstances of the specific case. It should be noted that a relatively large amount of money may be required to be deposited as security.

Since a preliminary injunction substantially achieves an injunction against the other party’s conduct before the lawsuit is finalised, in a preliminary injunction case, a hearing of both the rights-owner and the other party is required, and prima facie evidence of a similar level to the proof required in the lawsuit is often required. In general, preliminary injunctions are intended to resolve disputes more quickly than litigation; however, the speed of trial is often not so different from that of litigation because of the above-mentioned need for prima facie evidence.

A potential defendant can file a request for a patent invalidation trial before the JPO and/or initiate a lawsuit for a declaratory judgment to confirm the absence of the right to demand an injunction, etc. There is no need for a potential opponent to lodge a protective brief in order to take these actions. It should be noted that a potential opponent is not entitled to require the owner to post a bond under the Civil Preservation Act, but a court usually orders the owner to deposit a certain amount as a security when issuing an interim injunction order.

There are no special limitations applicable only to intellectual property matters.

Claims for injunctions based on patent rights may be filed at any time if infringement of the patent rights exists, or a threat of infringement of the patent rights is recognised.

The claim for compensation for loss or damage by tort of patent infringement is extinguished by prescription if the right is not exercised within three years from the time when the patentee comes to know the damage and the identity of the infringer, or if the right is not exercised within 20 years from the time of the tortious act, pursuant to the provisions of the statute of limitations provided in the Civil Code of Japan, which is a general law. Please note that the above prescription period may be renewed or the expiry of prescription period may be postponed, for statutory reasons.

Although there is no discovery procedure in Japan, the Patent Act provides that a court can order a party to produce documents upon the other party’s request for the purposes of:

• proving infringing activities if prima facie evidence of such infringing activities is provided; or
• calculating damages if the court tentatively concludes that the intellectual property rights infringement has been established.

However, this will not apply where the accused infringer possessing the documents has reasonable grounds to refuse to produce them.

When the court finds it necessary to determine whether there are reasonable grounds, it may demand that the person with the documents present them for review in camera. Furthermore, on 1 July 2019, the amended Patent Act introduced a procedure in which the court can determine the necessity of document production by way of in-camera procedures. The amended Patent Act also introduced a procedure that allows expert advisers to participate in such a procedure.

Moreover, by way of the 2019 amendment to the Patent Act, an inspection system was introduced on 1 October 2020, under which an inspector designated by the court will be entitled to enter into the factories, offices, etc, of a defendant and collect evidence necessary to make a decision on the existence of facts regarding the alleged infringement. However, the requirements for conducting an inspection are strictly stipulated, as follows:

• it can be deemed that it is necessary to collect evidence (necessity);
• there are reasonable grounds for suspecting the existence of patent infringement conducted by the adverse party (probability);
• it is expected that no other means can be utilised to collect evidence (replaceability); and
• it is not considered inappropriate to conduct an inspection due to an inappropriate burden being placed on the adverse party or any other circumstances (appropriateness).

A complaint must contain both parties’ names and addresses, and the plaintiff’s lawyer’s name and address (if appointed), the gist of the demand and the grounds for the demand. In particular, each accused product and act of infringing conduct must be specified in detail, and the relevant features of the product must be described and compared with each element of a claim. In general, supportive evidence – to prove both the act of infringing conduct and the relevant features of the product – is submitted together with the complaint. To identify these facts and find the relevant evidence, a patentee is expected to conduct a sufficiently detailed investigation and analysis of a case prior to initiating a lawsuit.

There are no special provisions for lawsuits in intellectual property proceedings that differ from those for non-intellectual property proceedings.

It is acceptable to supplement pleadings with additional arguments. A court examines the case through periodic hearing procedures (generally once a month), and each party is allowed to add its legal/factual arguments or evidence in the course of these procedures. The plaintiff may even expand or amend the claim or statement of claim until oral arguments are concluded. However, the courts may limit such additional arguments or evidence if it considers that they would substantially delay court proceedings.

The legal system does not allow for representative or collective actions for intellectual property rights proceedings, although if the subject matter of the suits is common to two or more persons, or is based on the same factual or statutory cause, these persons may sue or be sued as co-parties.

Civil Code

As an abuse of rights is prohibited under the Civil Code, the same will apply to the execution of patent rights, and therefore, where the execution of such rights is abusive, that execution will be restricted.

For example, the act of filing a lawsuit may cause tort liability where such litigation is found to be significantly unreasonable in light of the purport of the litigation system (eg, the allegation of infringement is entirely baseless and the owner of the intellectual property right is fully aware of the lack of legal grounds). In addition, based on judicial precedents, a patent right-holder who has made a declaration of fair, reasonable and non-discriminatory (FRAND) terms will not be permitted to claim for an injunction or for licence fees against a party who intends to be licensed under FRAND terms beyond those terms, as this will fall under an abuse of rights.

Guidelines for the Use of Intellectual Property

In addition, the Japan Fair Trade Commission (JFTC) has stipulated that its Guidelines for the Use of Intellectual Property (IP Guidelines) under the Antimonopoly Act clearly show the principles of the use of intellectual property rights, including patent rights, under the Act. In January 2016, the JFTC partially amended the IP Guidelines and supplemented descriptions related to the Standard Essential Patent under the Antimonopoly Act. If a patent right has been exercised in a manner that violates these Guidelines, there is a possibility that the act will be considered a violation of the Antimonopoly Act.

Unfair Competition Prevention Act

Furthermore, if the owner of the intellectual property right makes or disseminates a false allegation of infringement of that intellectual property right, that act could constitute an act of unfair competition under the Unfair Competition Prevention Act, and the owner of the intellectual property right may be subject to a claim for injunction and/or damages.

A patent-owner and an alleged infringer are usually the necessary parties to patent infringement litigation. A registered exclusive licensee is entitled to file an action without the patent-owner, based on an infringement of the registered exclusive licence, seeking the same remedies as the patent-owner. In this regard, there are arguments over whether non-registered exclusive licensees or non-exclusive licensees can initiate an action for infringement.

With respect to injunctions, it is generally considered that neither a non-registered exclusive licensee nor a non-exclusive licensee is entitled to claim for an injunction, whereas in the case of a claim for damages, a non-registered exclusive licensee may make such a claim, although a non-exclusive licensee is not permitted to claim for damages.

For a direct infringement to be constituted, the product in question needs to satisfy all of the component features of a patented invention. If any one of the constituent features is not satisfied, a direct infringement has not been constituted.

However, even if the product does not satisfy all of the component features, the following cases will constitute indirect infringement, thus constituting patent right infringement.

• an act of the accused infringer producing, for instance, a product to be used exclusively for making a product of a patented invention, or a product to be used exclusively for the use of a patented invention;
• an act of the accused infringer producing a patented invention or a product that is to be used exclusively for the use of a process of a patented invention (excluding those widely distributed within Japan) and which is indispensable for that invention’s resolution of the problem, knowing that the invention is a patented one and that the product is used for the working of that invention.
• an act of the accused infringer possessing for assignment, etc, or exporting a product of a patented product or a product that is produced by using a process of a patented invention.

In any of these instances, where direct infringement or indirect infringement is constituted, a patentee may claim for injunctions and damages against an infringer. In a claim for damages, provisions such as those on the presumption of the amount of damage or those on the presumption of negligence may be applied.

In the Japanese Patent Act, inventions are classified either as the invention of a product, the invention of a process, or the invention of a process for producing a product, and an act of working a patented invention is stipulated for each of these categories. Specifically, for the invention of a process, the act of using the process is stipulated as an act of working. Furthermore, for the invention of a process for producing a product, acts of using the process and acts of using, assigning, etc, exporting or importing, or offering to assign, etc, a product produced by the process are stipulated as acts of working. On the other hand, for the invention of a product, acts of producing, using, assigning, etc, exporting or importing, or offering to assign, etc, the product, are stipulated as acts of working.

There is no definite rule as to whether the infringement of a patent right in Japan can be recognised when part of the invention of a process is worked abroad. In cases where some of the steps in the invention of a process were carried out outside Japan, there is a District Court case which judged that this cannot be regarded as working the patent in Japan because the act which belongs to the technical scope of the patent is not completed in Japan; however, this court ruling is not considered to be a well-established rule generally applicable to the invention of a process in Japan.

In principle, the scope for protection of a patent right (eg, the technical scope of a patented invention) is determined based upon the statements in the scope of claims. In addition, the meaning of each term used in the scope of claims is interpreted in conjunction with the statements in the description and drawings. The prosecution history of the application and the prior art may also be taken into consideration. Accordingly, to say that infringement of a patent right has taken place in principle, the subject product must satisfy all of the constituent features of the patented invention. However, even if the product does not satisfy all of the constituent features of the patented invention, there may be a case that amounts to indirect infringement or infringement under the doctrine of equivalents (see 3.2 Direct and Indirect Infringement).

If a patent right has been exercised in an abusive manner (for example, when a patent right-holder who has made a declaration of FRAND subsequently makes a claim for an injunction against a party who intends to be licensed under FRAND terms or makes a claim for damages in excess of an amount equivalent to a licence fee under FRAND terms), a defendant may assert the defence of abuse of rights.

If the defendant has practised a patented invention or made preparation for such practice at the time of the filing of the patent application, the defendant can claim “prior use” as a defence.

If the patentee, when filing an application, makes assertions that exclude the technology that is to be included in the technical scope of a patented invention (based on the common meaning of the term being used), it is common for the technical scope of the patented invention to be construed in a limited manner as a result.

Where the products in question were being assigned from a patentee or person who has legitimate rights, no patent infringement will be admitted, as the patent right will have been exhausted.

In addition, the defendant may claim that their use of the patented invention was experimental and therefore beyond the scope of the patent right.

Even though the Patent Act provides for three types of non-exclusive licences granted by the JPO Commissioner (eg, compulsory licences), as of the end of 2023, no such compulsory licence has ever actually been granted in Japan.

The fact that the defendant’s infringing conduct was an exercise of their own patent right cannot be used as a defence against the patentee’s claim of infringement.

As to the statute of limitations, the patentee cannot claim damages for an infringement if more than three years have passed since the date on which the patentee became aware of an infringement and the identity of the infringer who caused the damage. There is an overall limit of 20 years from the act of infringement.

Experts who get involved in patent litigation are mainly judicial research officials and expert advisers.

Judicial research officials are full-time court employees who conduct examinations on technical matters necessary for judicial decisions, and report to a judge. It is mostly JPO employees or patent lawyers who are appointed as judicial research officials.

Expert advisers are part-time employees, appointed by the courts, who get involved in proceedings to arrange issues and evidence, to examine evidence, and to enter into a settlement in the court proceedings. Expert advisers are usually involved in proceedings to arrange issues and evidence (preparatory proceedings, etc) and to make oral explanations on technical matters. In patent litigation, in order to have a proper understanding of technical issues, expert advisers are often involved and conduct technical explanation sessions in preparatory proceedings. It is common for an expert in the technical field to which a patented invention belongs (usually a university professor or patent lawyer) to be appointed as an expert adviser.

In addition, in litigation, experts selected by a party may prepare expert opinions, which are submitted as evidence by the party, but rarely testify in court as witnesses.

There is no separate procedure for claim construction.

A system by which the court can seek third-party opinions in lawsuits relating to patent infringement was introduced on 1 April 2022. Under this system, if a party requests it and the court finds it necessary, the court may request the public to submit documents stating public opinions on the application of the Patent Act of Japan, or any other necessary matters, after hearing the opinion of the other party. It is envisioned that this system will be used in patent infringement cases where the judgments may have significant impacts not only on an industry to which the parties belong but also on companies in other industries.

A recent case (Intellectual Property High Court, Case No 2022 (Ne) 10046) is examining whether or not the defendant’s act of creating a new system can be considered as “production”, which is one of requirements of patent infringement as set forth in Article 2(3)(i) of the Patent Act, regarding a patented invention of a system comprising a server and a plurality of terminal devices, if the server is located outside Japan. The court in this case has issued a request for third-party opinions for the first time as to whether the defendant’s act can be considered as “production” and, if so, what requirements are necessary for it to fall under the category of “production”. In response to such a request for opinions, multiple opinions have been submitted by various organisations.

Patents

There are two procedures available for seeking the revocation/cancellation of a patent – namely, an opposition or an invalidation trial before the JPO.

An opposition may be filed by anyone within six months from the issue date of a patent Gazette, based on the following grounds:

• violation of requirements for patentability, such as novelty, inventive step, double patenting, etc;
• the addition of new matter;
• violation of description requirements; and
• violation of a treaty.

An interested party may file an invalidation trial at any time after a patent has been granted, even if it has expired, based on the following grounds:

• violation of requirements for patentability, such as novelty, inventive step, double patenting, etc;
• addition of new matter;
• violation of description requirements;
• violation of a treaty;
• the patent having been granted on a patent application filed by a person who is not the inventor and who has not succeeded to the right to obtain a patent for the invention; and
• the correction of the description, scope of claim or drawings attached to the application for the patent having been obtained in violation of the provisions under the Patent Act.

Utility Models

There is only one procedure for the revocation/cancellation of a utility model registration, which is an invalidation trial before the JPO.

An interested party may file an invalidation trial at any time after a utility model has been granted, even after the utility model has expired, based on the following grounds:

• violation of requirements for registration as a utility model, such as novelty, inventive step, double patenting, etc;
• the addition of new matter;
• violation of description requirements;
• violation of a treaty;
• the utility model having been granted on a utility model application filed by a person who is not the inventor and who has not succeeded to the right to obtain a utility model for the invention; and
• the correction of the description, scope of claims or drawings attached to the application for the utility model having been obtained in violation of the provisions under the Utility Model Act.

An opposition or an invalidation trial for a patent or a utility model registration may be filed for each individual claim.

Amendments (“corrections” in opposition or invalidation proceedings under the Patent Act or the Utility Model Act) may be filed in opposition or invalidation proceedings.

In opposition proceedings, a patent-owner may file amendments in the period for responding to a notice of cancellation issued by the board of trial examiners who examined the request for opposition.

In invalidation trial proceedings, the owner of a patent or utility model right may file amendments in the period for filing an answer in response to a request for an invalidation trial. The owner may also file amendments in the period for responding to a notice of reasons for invalidation or an advance notice of appeal decision, both issued by the board of trial examiners who examined the request for invalidation trial.

In patent or utility model infringement litigation heard before the courts, both infringement and invalidation issues may be heard together because the defendant may challenge the validity of a patent or utility model registration as a defence before a court. The courts examine both infringement and validity together, and render a decision based on the examination of infringement and/or validity.

There are no specifically applicable provisions with respect to trial and settlement for intellectual property rights proceedings. However, in practice, the trial will be divided into two parts. At the first stage (the stage for examination on infringement), the court’s focus is on determining whether the infringement of the intellectual property right is established. At the second stage (the stage for examination of damages), a court will assess the damages incurred by a plaintiff only after it has tentatively concluded the establishment of the infringement.

In this regard, the Intellectual Property Division of the Tokyo District Court has a trial model for patent infringement litigation. According to this trial model, it is assumed that six court hearing dates are held at the first stage (stage for examination on infringement). If courts find that there is no patent infringement, the courts will either (i) make recommendations for settlement after disclosing their opinions, or (ii) conclude oral arguments and render judgments. If courts find that there is patent infringement, the courts will either (i) make recommendations for settlement after disclosing their opinions, or (ii) proceed to the second stage (the stage for examination of damages). It is assumed that three court hearing dates are held at the second stage, and both parties make arguments and counterarguments with regard to amounts of damages. Then, the courts will either (i) conclude oral arguments and render judgments after forming final opinions on the amounts of damages, or (ii) make recommendations for settlement after disclosing their opinions.

However, as the progress of trials (including the number of court hearing dates) depends largely on the complexity of cases, trials rarely proceed as envisioned in the above trial model, and in complex cases trials are often prolonged for much longer than the trial model.

According to the statistics provided by the Intellectual Property High Court, the average time intervals from commencement to disposition in intellectual property-related civil cases in 2022 were 15.2 months (in all district courts) and 8.2 months (in all high courts).

In patent litigation, examination of fact witnesses or experts is rarely conducted. In cases of examination of witnesses, opportunities for cross-examination are provided.

A case is determined solely by a legal judge. The Japanese legal system has neither technical judges nor jury trials for intellectual property cases.

In the Tokyo District Court and the Osaka District Court, there are special divisions for intellectual property matters (four divisions at the Tokyo District Court and two divisions at the Osaka District Court), where judges who are experienced in intellectual property matters hear and decide cases. The judges in these courts and in the IPHC do not necessarily have technical backgrounds; the courts retain judicial research officials who have a technical background to help judges understand any technology issues involved in a case (see 3.6 Role of Experts). The courts can also appoint and request expert advisers to assist judges with any case involving advanced, complicated or specialised technology issues.

Parties cannot influence who will judge a case, although a party can request to avoid a certain judge if they have reason to believe that said judge cannot be impartial, due to a particular relationship with the other party (eg, being a relative of one party).

A judge usually takes the initiative on settlement negotiations, unless the parties clearly refuse to settle a case. In no event will a defendant be obliged to settle a case. Generally, courts prefer settlements rather than judgments to resolve cases. A judge may disclose or imply their unofficial, tentative opinion on a case to the parties in order to facilitate settlement negotiations. A judge will cease settlement negotiations if one party decides and requests to receive a court decision rather than a settlement.

Even if there are any pending parallel revocation or infringement proceedings, the current proceedings will not normally be stayed, and the courts will separately and independently make a judgment for a case. The courts can even dismiss a claim for infringement on the ground that the patent is invalid, without the need for a revocation proceeding. Therefore, it is possible for a conflict between two cases on the same subject matter to exist. However, in practice, the High Court, as the court of second instance, will make consistent judgments so that any contradiction in the first instance will be resolved.

There have been no cases where anti-suit injunctions have been issued against litigation in Japan, and it is unclear whether Japanese courts would take into account foreign anti-suit injunctions. In addition, in Japan, there is no statutory basis for granting injunctions against litigation by patentees, and there have been no examples of Japanese courts recognising anti-suit injunctions.

Remedies Available for the Patentee

The typical remedies available for a patentee are injunctive relief and damages. As part of injunctive relief, the patentee can also demand measures necessary to prevent infringement, including disposal of the infringing goods. Lawyers’ fees can be recovered as part of the damages, although the recovery thereof is very limited (in practice around 10% of the total amount of actual damages admitted by the courts). A patentee can only seek compensatory damages. Claims for enhanced damages, such as punitive damages, are not eligible even in cases of wilful infringement. The Patent Act provides for certain presumptions of the damages that are to be calculated based on the profit from the infringement or the assumed royalties. A judge has the discretion to determine the appropriate remedies or amount of damages, provided that the discretion is only applied within the amount of the claim made by a plaintiff.

In addition, where an applicant has given a warning, together with documents stating the contents of the invention claimed in the patent application, that applicant may also claim compensation equivalent to the licence fee against any person who has worked the invention as a business after the warning and before the registration of the patent. Furthermore, even without such a warning, the applicant may claim compensation against those who, while being aware that the invention relates to a patent application that has been published, have worked the invention as a business before the registration. The right to claim compensation may only be executed after the patent has been registered.

A patentee may also demand measures necessary to restore its business credibility, but this remedy is rarely used.

Enforcement of Remedies

The methods for enforcement of remedies depend on the contents of those remedies. For example, with respect to judgments ordering patent infringers to pay damages, the remedies are enforced by seizing the infringers’ properties and receiving dividends from the money obtained through auctions, etc. With regard to judgments ordering patent infringers to cease and desist from manufacturing the infringing products, if the infringers do not perform the obligations ordered in the judgment, the court in charge of enforcement will enforce the remedies by ordering the infringers to pay to the obligees certain amounts of money which are found to be reasonable for securing performance of the obligation.

If a defendant prevails, the courts can order the plaintiff to pay court costs (eg, transportation fees to attend court hearings, expenses for delivering documents and daily allowances for witnesses); however, such costs do not include the defendant’s legal fees or other costs incurred by the defendant in the course of the procedure. There is no right or remedy for a prevailing defendant to recover their own costs.

A prevailing defendant may seek damages arising out of the infringement litigation, including their lawyers’ fees, if the litigation itself is considered to constitute a tort on the grounds that it is found to be unreasonable (eg, if an allegation of patent infringement is entirely baseless and the patentee is fully aware of the lack of legal grounds). However, the courts rarely accept such a claim.

There are no different remedies for different types of technical intellectual property.

To stop the execution of an injunction granted at first instance, an infringer will, upon filing an appeal, have to file a petition to seek a ruling on the suspension of compulsory execution. Here, the infringer will need to provide a security deposit (to be returned after litigation).

Under the laws of Japan, injunctions are enforceable pending appeal. However, in practice, when infringers file an appeal, the infringers also file a motion for suspension of compulsory execution in most cases, and such suspensions are usually granted if the motion is filed.

The above refers to judgments for injunctions of the first instances in main lawsuits. On the other hand, if right-owners request preliminary injunctions separately from (or in parallel with) the main lawsuits and the first instance courts grant the requests and issue preliminary injunction orders, it is difficult to stop enforcement of such preliminary injunction orders in practice, although there is a legal way to challenge such preliminary injunction orders (see 2.7 Interim Injunctions).

Generally, there are no special provisions concerning the appellate procedure for patent litigation. Note, however, that the IPHC has exclusive jurisdiction over appeals from decisions made by the Tokyo District Court and the Osaka District Court on patent litigations. A court normally consists of three judges, but if the case includes an important issue of law, five judges may sit to consider the matter and deliver their opinion.

As the court of second instance, the IPHC reviews not only issues of law but also the facts from the proceedings in District Courts in the first instance. The IPHC may also conduct factual findings of its own. A party may submit additional legal arguments, facts or evidence to the appeal court, unless such an additional claim is considered to be causing delay to the procedure and to be that party’s fault. However, the Supreme Court, as the court of final instance, only reviews the legal issues of a case.

With respect to patent infringement litigation, costs normally incurred are for:

• investigating a product or method;
• conducting searches for prior art references;
• sending warning letters; and
• preparing for litigation.

Stamp fees and expenses for delivering documents are required in order to file a lawsuit. The amount of stamp fees is calculated according to a formula prepared by the court based on the value of the subject matter of the suit.

In general, court costs (such as stamp fees, expenses for delivering documents and daily allowances for witnesses) are borne by the losing party, provided, however, that the proportion of the responsibility for the court costs is left to the court’s discretion and that the courts may allocate the responsibility of court costs to the prevailing party in proportion to the part of their claim that is not accepted by the courts.

It should be noted that court costs do not include lawyers’ fees and thus, generally speaking, each party must bear their own lawyers’ fees. A plaintiff may seek compensation for their lawyer’s fees as part of damages, but the recovery rate is left to the court’s discretion and is usually quite limited, even if the plaintiff wins the case (in practice around 10% of the total amount of actual damages admitted by the courts).

Alternative dispute resolution (ADR) is not a common way to settle intellectual property cases in Japan. However, ADR such as mediation or arbitration is available, and JIPAC and IACT (see 2.4 Specialised Bodies/Organisations for the Resolution of Disputes) are the ADR organisations that provide for dispute resolution in the field of intellectual property.

Moreover, the Tokyo District Court and the Osaka District Court introduced mediation procedures for intellectual property rights matters on 1 October 2019. This procedure is designed to resolve disputes regarding intellectual property rights matters in a speedy and efficient manner by using a mediation committee made up of a judge from the special division for intellectual property matters and experts such as lawyers or patent attorneys, who orally express their opinions. In principle, the procedure is supposed to be concluded within around three hearing dates.

Patent rights may be freely assigned. However, no assignment will take effect without having been registered on the patent registry, except in cases of general succession, such as inheritance or merger. Where a patent right is jointly owned, no joint owner may assign their share without the consent of all the other joint owners. Neither an agreement in writing nor an approval from the JPO is necessary for conducting an assignment.

Assignment of a patent right comes into effect by being registered on the patent registry. In the case of a general succession, such as through inheritance or merger, the assignment comes into effect without being registered, but the registration is made by providing notification of that assignment.

In terms of licensing patent rights, there are licences granted merely by an agreement between the parties (non-registered licences) and licences granted upon registration at the JPO (registered as exclusive licences), in addition to an agreement between the parties. As for the former type of licence, there are no particular restrictions regarding formalities, such as the existence of a written agreement or notification to the JPO, etc. However, the latter type of licence requires registration at the JPO in order for it to enter into force. It should be noted that if a registered exclusive licence is granted, the scope of rights subject to that grant may not be executed by other parties, even the patent right-holder.

As the grant of a registered exclusive licence requires registration at the JPO in order for it to come into force, it is necessary to make an application to the JPO setting forth the content of the licence agreed by both parties, and to receive registration thereof. The granting of a non-registered licence comes into force merely by way of the execution of an agreement between the parties. Thus, generally, a licence of this kind is granted by preparing a licence agreement, as well as orally, or even implicitly.