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Technical Advisors System

Technical Advisors in Intellectual Property Lawsuits

ILLUSTLAION

July 2009



Q1.
What is the technical advisor system?
A.
   The technical advisor system was established by the amendment of the Code of Civil Procedure in 2003 and introduced into practice in April 2004. This system aims at achieving higher quality of court proceedings and judgments in specialized fields of lawsuit such as intellectual property cases, in which scientific and technical matters are often disputed. Under this system, experts who have a wealth of knowledge in relevant scientific fields are asked to participate in court proceedings as technical advisors. They provide judges and parties, from the viewpoint of a fair and neutral adviser, with explanations on the technical matters involved in the lawsuit. These explanations are helpful for judges to have better understanding on the technical aspects and to narrow down legal and factual issues of the case.
Q2.
Why are technical advisors helpful in intellectual property lawsuits?
A.
   In intellectual property lawsuits and in particular patent cases, issues often relate to complex and highly advanced technology. Technical advisors participate in court proceedings of such lawsuits and provide explanations, from a fair and neutral viewpoint, on the technical matters at issue, based on their expertise in their respective scientific fields. By doing so, they assist judges in conducting proceedings and making decisions more accurately and expeditiously. The contribution of technical advisors is also expected to enhance public confidence in judicial determination on intellectual property issues.
Q3.
How many technical advisors have been appointed so far, and in what fields are they specialized? How many technical advisors have participated in court proceedings?
A.
   Technical advisors in the field of intellectual property lawsuits are appointed from among leading experts nationwide, including university professors and researchers in the area of cutting-edge sciences and technologies. So far, more than 200 persons have been appointed as technical advisors. They cover a wide range of scientific fields, including electronics, machinery, chemicals, information communication, and biotechnology. Courts select the most suitable technical advisors from a wide range of candidates, on a case-by-case basis, considering the nature and content of the dispute.
   By July 1, 2009, a gross total of more than 500 technical advisors have participated in court proceedings of intellectual property lawsuits.

Composition of technical advisors by occupation


Q4.
What status do technical advisors have?
A.
   Technical advisors are part-time officials appointed by the Supreme Court from among experts with scientific knowledge and experience. Upon appointment, they are given the status of court official. However, unlike ordinary court officials, they serve as a court official only when they are selected as technical advisors and thereby participate in court proceedings. Technical advisors belong to a court as designated by the Supreme Court, and the court selects and assigns technical advisors to appropriate cases. Their term of office is two years.
Q5.
In what kind of procedures do technical advisors participate?
A.
   Technical advisors, by the decision of a court, participate in either proceeding for clarifying issues and evidence, evidence examination proceeding, or settlement conference. Among these proceedings, the advisors usually participate in the proceeding for clarifying issues and evidence, which is called “preparatory proceeding for oral argument” (benron-junbi tetsuzuki in Japanese, hereinafter referred to as “preparatory proceeding”), and provide oral explanation on technical matters in the proceeding.

Flow of court proceedings

  Court procedure starts with a filing of an action to the court. The parties present their arguments before judges, and through proceedings, factual and legal issues are clarified. Relevant evidence is examined, and oral argument is concluded when judges think that the case is ready for determining the merit. Finally, the decision is rendered. In intellectual property lawsuits, there are two types of litigation; civil litigation (infringement litigation) so as to determine the rights and obligations of parties, and administrative lawsuits seeking revocation of the board decisions of the Patent Office.

  In addition to final judgment, a case is terminated by settlement reached between the parties, and withdrawal of a lawsuit is another way of termination.

Flow of court proceedings

Clarification of issues and evidence

  This proceeding is to identify the issues by hearing arguments of both parties and to determine whether evidence submitted by the parties is relevant and necessary to resolve the dispute. Judges and parties also use this proceeding to discuss how to proceed with the case. This proceeding may be conducted in a courtroom, but usually in a room other than a courtroom (such as a conference room).

Examination of evidence

  Through the examination of documents, witnesses, parties themselves, expert witnesses and objects for inspection, courts are given enough materials to determine the merit. In patent lawsuits, examination of witnesses is relatively rare.

Settlement

  While the case is pending before a court, the parties may compromise to solve their dispute through negotiations, thereby terminating the lawsuit.

Q6.
How are technical advisors assigned?
A.
   A court, when it finds necessary, decides that technical advisors should be involved in either preparatory proceeding, evidence examination proceeding, or settlement conference. Before the decision, however, the court is required to hear the parties’ opinions in the case of preparatory proceeding and evidence examination proceeding and to obtain consent of the parties in the case of settlement conference. Once the decision is made, the court selects suitable technical advisors from among those who belong to the court and assigns them to the case, considering the nature and content of the dispute.

Procedural flow for assignment of technical advisors

Q7.
How do technical advisors differ from judicial research officials and expert witnesses?
A.
   In intellectual property lawsuits, technical matters are often at issue. In order to resolve such disputes fairly and expeditiously, courts have sought contribution and cooperation from various experts such as judicial research officials and court-appointed expert witnesses in addition to technical advisors.
   Judicial research officials are full-time court officials. As of July 1, 2009, 21 judicial research officials specializing in intellectual property cases have been assigned to courts, 11 officials to the Intellectual Property High Court, 7 officials to the Tokyo District Court, and 3 officials to the Osaka District Court. Those officials have expertise in various technical fields such as machinery, chemicals and electronics, and as ordered by judges, carry out necessary research on technical matters involved in patent, utility model and other intellectual property cases. From April 2005, they may, with the permission of a judge, ask questions to the parties during oral proceedings so as to clarify the issues of the case (Article 92-8 of the Code of Civil Procedure).
   Unlike technical advisors who participate only in cases to which they are assigned, judicial research officials are supposed to participate in proceedings of all cases seeking for revocation of the board decision of the Patent Office regarding patents and utility models. In a dispute over highly specialized or advanced technology, both judicial research officials and technical advisors may participate in the proceedings. In such a case, technical advisors, who have expertise in specific technical fields, and a judicial research official, who has technical knowledge in general and is well versed in the patent/utility model prosecution procedure, work together to assist judges.
   Court-appointed expert witnesses provide expert opinions on specific matters as requested by the court, and their opinions may be adopted as evidence and relied on in the judgment. On the other hand, technical advisors participate in the proceedings as the court’s advisers and provide explanations on technical matters disputed in individual cases. Their opinions do not constitute a part of the evidence.


Comparison among technical advisor, expert witness, and judicial research official
  Technical advisor Expert witness Judicial research official
Status Part-time court official not a court official Full-time court official
Term of office Two years No term No statutory term in general
Remuneration Allowance paid for each case Fee for an expert opinion Salary paid for full-time official
Possibility to be questioned
by the parties		 Not expected to be questioned May be questioned on the opinion Not expected to be questioned
Nature of explanation or opinion Provide easy-to-understand explanations on scientific matters as the court's adviser. The explanation may not be adopted as evidence. Provide expert opinion on specific matters as requested by the court. The opinion may be adopted as evidence and relied on in the judgment. Carry out research on necessary matters as ordered by the court and report the research results. The research results may not be adopted as evidence.
Q8.
What would be helpful reference to gain a better understanding of technical advisors?
A.
   The procedures in which technical advisors are to participate, as well as the procedures for their assignment and appointment/dismissal are prescribed in Articles 92-2 to 92-7 of the Code of Civil Procedure.
   For the purpose of the introduction of the technical advisor system, refer to Atsushi Onose, et al., ed., “Ichimon itto: Heisei 15 nen Kaisei Minji Soshoho” (Questions and answers: 2003 Revised Code of Civil Procedure), Shojihomu, 48; for the implementation and actual practice of the technical advisor system in intellectual property lawsuits, refer to Katsumi Shinohara, “ ‘Chizaikosai’ kotohajime: Shonendo no kaiko to tenbo” (Review of the first year and future vision of the Intellectual Property High Court), Chizai Purizumu, 2006 March issue, 1, and Tomokazu Tsukahara, “Chizai Kosai gannen: Sono itinenkan no jisseki no kaiko to kongo no tenbo” (Review of the performance in the first year and future vision of the Intellectual Property High Court), Kinyu Shoji Hanrei (special number), No. 1236, 6.
Q9.
How will the technical advisors system be utilized in intellectual property lawsuits?
A.
   In order to achieve more fair and expeditious proceedings and decisions on highly specialized and technical matters disputed in intellectual property lawsuits, courts will further promote the use of technical advisors and upgrade the technical advisors system, taking advantage of various occasions such as practical case-study seminars for technical advisors.