IP
Enforcement in Japan
Many very
important changes were made to Japan's IP system in the year 2005,
especially in connection with IP enforcement. The highlight
of the year was the establishment of the IP High Court, Patent validity,
confidentiality order with regard to trade secret, parallel importation
and other trends.
IP High
Court:
The IP High
Court was established as a special branch of the Tokyo High Court
in order to strengthen the Japanese judiciary's ability to deal
with IP litigation under Japan's planned pro-patent system.
The IP High Court has jurisdiction as appellate court for cases
originating within the geographic jurisdiction of the Tokyo High
Court.
Patent
validity:
A rule has
been introduced to the Japanese Patent law that a patent right cannot
be executed if it has grounds for invalidity. While this rule
seemed to state the obvious, the Japanese Cupreme Court decision
in the Kilby patent case of April 2000 served as a legal precedent
which provides that a court must work on the assumption that a patent
is valid unless there are clear grounds to believe that the patent
will be invalidated by the Japan Paten Office (JPO). Under
this legal precedent, in a hypothetical case where it has been proven
that there are grounds for invalidity but not clear grounds for
invalidity. The revisions made to the Japanese Patent Law
have resolved this problem that the courts can decide to deny execution
of a patent which has grounds for invalidity without have to wait
for a judgement by the JPO.
Appointment
of experts:
Since patent-related
litigation often requires a high level of technical expertise, under
the new system appointment of experts has been introduced to assist
judges' understanding of highly technical subject matter.
With this provision, the parties may provide their opinions on the
explanations made by the technical experts. Additionally,
grounds for exclusion and challenges will also be able to applied
to experts since the explanations to be provided by the experts
can have an enormous impact on the results of a judgment.
The Code of Civil Procedure was also amended to strengthen and clarify
the duties of the law clerks who have been empowered to offer their
opinions to the judges, directly to ask questions to the parties,
to urge explanations from the parties with regard to factual and
legal issues during almost all court proceedings including in cameral,
oral hearings, etc.
Confidentiality
orders and trade secrets:
There have
actually been cases in lwhich a party has lost simply because it
refused to submit its trade secrets against the orders of the court.
In order to avoid such circumstances, in camera proceedings were
introduced which refer to proceedings in which a party discloses
information only to the court in order to explain that the information
is a trade secret. However, this procedure was often criticized
as being unfair to complainant. Therefore, under the revised
provision with regard to in camera proceedings, the court may show
a party and its attorney nominal trade secrets produced by the other
party, and hear their opinions on whether or not they are trade
secrets. Since this procedure essentially causes the trade
secrets to be disclosed to the competing party, a system for ordering
confidentiality has been provided to protect the interests of the
party disclosing the information. Those who have received
a confidentiality order may not have to disclose the information
subject to the confidentiality order to anyone other than those
who have also received such orde, and cannot use the information
for any purpose other than the purpose of seeking resolution of
the case.
Parallel
importation:
New decisions
have recently been made regarding parallel importation and infringement
of rights in Japan. As will be clear, parallel importation
is treated differently according to whether the products are protected
by patents, trade marks or copyrights, so that these mkust be clearly
distinguished when considering whether parallel importation constitutes
infringement. In one of its decisions, the Supreme Court held
that sales of products, whether inside or outside Japan, could be
considered to be a surrender to the purchaser of all rights to the
products, so that acts of importing and selling the products as
described above do not constitute infringement. However, at
the same time the Court also held that if the seller and purchaser
agreed to exclude Japan from further sales or use of the products,
the importation and the sale of the products would constitute patent
infringement, thus making it clear that parallel importation does
not constitute patent infringement subject to the above conditions.
The decision indicates that manufacturers holding a patent in Japan
can prevent parallel importation by a third party by making it clear
when selling the products, such as by providing indications on the
products, that they do not consent to importation of the products
into Japan.
Parallel
importation and Trade Marks:
While the
Supreme Court held that parallel importation of trade mark bearing
genuine products not constitute infringement, because it does not
harm the origin indication function and quality of guaranteeing
function which are essential functions of trade marks, but it constituted
trade mark infringement on the ground that the products lay outside
the scope of the agreement concerning the manufacturer, thus losing
the origin indication function of the trade mark and the quality
of the products is not the same as the manufacturer differs, thus
removing the quality guaranteeing function.
With regard
to parallel importation of copyrights, since it differs from country
to country and each country is bound to protect the generated copyright
under the Berne and the Universal Copyright Conventions, therefore
the national borders do not seem to be of much consequence, and
as long as a copyrighted work is sold legitimately, the problem
of copyright infringement does not seem to arise no matter where
the product is subsequently sold.
For any
queries relating to our services and costs, please feel free to
contact us at info@iprfirm.com.
IPR
FIRM.COM - Online IPR Law Firm, India – Trade Marks, Copyright Registration,
Delhi, India
| | |
(c) IPR Firm, 2007.
|
