Patent Protection Under IP Law in Japan
In Japan, there is no provision for discovery or seizure in IP law when a dispute involves allegations of patent infringement. Although the patentee may request the court to order the defendant to submit evidence in proof, the defendant may refuse on the basis of trade secret disclosure and confidentiality of evidence. Therefore, it is up to the patentee to collect as much evidence of infringement as possible before going to the court and prove the infringement. On the other hand, once the judge is convinced that infringement has occurred it may be easier to obtain orders obliging the defendant to submit evidence to determine the damages. There are no provisions requiring licence negotiations or any kind of contact to take place before bringing action.
Fees:- Except for complex matter, a decision of first instance in district court will be made within two years which may be shortened to one year if the procedures have been accelerated under pressure. The cost of litigation will vary substantially depending on various factors, such as the amount of damages, the strength of counter-arguments by the infringer, the need for experiments by a third party, etc. Generally, a straightforward patent infringement case without any interference may cost $100000 to 200000 which the defendant is required to bear ultimately.
Preliminary injunctions:- A preliminary injunction can be obtained if the damage caused by patent infringement is continuing and irrevocable, and does not preclude a permanent injunction being ordered by the court. Although the statutory period for claiming damage is three years, but even on the expiry of such period, it cannot prevent forfeiture of the right to demand damages by6 the patentee. However, if more than three years have passed since the infringement and the infringers came to the attention of the patentee, the right to demand damage compensation is at least partially lost.
Jurisdiction:- For IP-related cases appealed from district court, only the IP High Court located in Tokyo has jurisdiction as the court of second instance. However, the decision of the High Court may be appealed in the Supreme Court along with information concerning the patent, the alleged infringer, the products allegedly infringing the patent, the number of the products being sold, and the reason the products are believed to infringe the patent in order to consider the case by the Supreme Court.
Procedure:- Under the present Code of Civil Procedure, the court is recommended to call both parties after the complaint is submitted to hold a hearing to determine the issues in dispute. However, this procedure is not often adopted due to the difficulty of predicting all the possible claims in the initial stages of an action. In that event opinions will be exchanged between the parties in brief after the complaint is served to the defendant. Although the parties can submit new claims later, the court has the discretion to reject entry of these claims on the grounds that they are being submitted with the intention of delaying the proceedings. Therefore, it is crucial to submit a well-prepared complaint in order to direct the proceedings in a favourable direction.
Court sessions are held regularly once or twice a month until the court declares the sessions closed. Disputes regarding validity of patent and infringement are considered first and disputes regarding damages are considered afterwards. The patentee may request the court to issue an order requiring the defendants to submit documents which are necessary to determine infringement.
Computation of damages:- The Japanese Patent Law provides three different ways to compute damages:
- The damages which are assumed to be equivalent to lost profits that the infringer must compensated;
- The profit earned by infringer considered to be as amount of ` damages; and
- The amount of money claimed by the patentee equivalent to the royalties from the infringer for use of the patent.
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