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Intellectual Property Infringement Litigations and Recent Movement toward System Reforms

Thesis

Intellectual Property Infringement Litigations and Recent Movement toward System Reforms

Toshiaki Iimura*

1. Introduction

Japan has been taking measures to protect and exploit intellectual property and to enhance the development of excellent technological creation. The purpose of such measures is to improve the quality of people's life, to revitalizing the economy and society, and to strengthen international competitiveness. Among those measures, there has been much reform made in the area of intellectual property litigations.

The outline of the steps that had been taken in advance and that lead to the reformation of intellectual property litigations is as follows. In June 2001, the Council on Reform of the Judicial System publicly announced in documents the "Recommendations of the Justice System Reform Council" which consists of the fundamental measures necessary to realize a judicial system which is better in convenience for the nation, higher in judicial quality etc. Within the above document, the issue concerning the reformation of intellectual property litigations was specifically discussed as an independent topic, and the following recommendations were made to reduce the duration of proceedings for cases related to intellectual property rights by approximately one-half; (1) introduction of planned proceedings, (2) expansion of the proceedings for the taking of evidence, (3) reinforcement of the specialized proceedings of the courts (including the granting to the Tokyo and Osaka District Court of the exclusive jurisdiction in respect of the cases related to patent and utility model rights). In July 2002, the Strategic Council on Intellectual Property, a specialized council set up within the Cabinet, announced the "Intellectual Property Policy Outline" which proposes policies for the revitalization of the economy and society by protecting and exploiting intellectual property. The Intellectual Property Policy Outline made the following five proposals (1) the centralization of appellate jurisdiction to Tokyo High Court over cases related to patent and utility model rights, and the reinforcement of specialized proceedings to deal with intellectual property-related cases, (2) expansion of the human resources in courts (3) expansion of the proceedings for obtaining evidence, (4) reinforcement of the system concerning the compensation for damages, (5) reinforcement of the protection of trade secrets, and so forth. In 2003, the Intellectual Property Policy Headquarter was established within the Cabinet, and in July, the headquarter announced the "Strategic Program for the Creation, Protection and Exploitation of Intellectual Property", stating the necessity for expanding the proceedings for cases related to intellectual properties and developing the system for prompt proceedings.

In order to achieve the discussed proposals, as above, the Legislative Council of the Ministry of Justice and the Office for Promotion of Justice System Reform divided the topic in two, each to work on its own topic. The Legislative Council of the Ministry of Justice worked on the following three issues; (1) introduction of a provision which only allows specific courts to handle cases concerning patent rights, etc., (2) introduction of a expert commissioner system, (3) introduction of a pre-trial proceeding for obtaining evidence. At the same time, the Office for Promotion of Justice System Reform worked on the following four issues; (1) establishment of the intellectual property high court, (2) the relationship between a patent infringement suit, in which a court can decide the validity of a patent, and a invalidation trial handled by the Patent Office, (3) improvement and expansion of expert knowledge under intellectual property litigations, (4) measures to ease the burden of proof as regards to infringement acts.

All of these issues are related to the essential part of the dispute resolution system for cases related to intellectual property, and the outcome of the considered issues, as above, are sure to give a major influence on how the system will be in the future.

The purpose of this article is to introduce the amendments made to improve the proceedings of intellectual property suits, within the judicial reformation, and to further present some personal opinions on how the new system will be operated.

2. Revision of the Code of Civil Procedure in 2003

The Law for Revising the Code of Civil Procedure, enacted in 2003, stipulates measures aimed at expanding and reinforcing the proceedings for intellectual property litigations. In September 2001, the Legislative Council of the Ministry of Justice decided to deliberate the following issues; (1) granting certain courts an exclusive jurisdiction over cases related to patent or other intellectual property, (2) introduction of a expert commissioner system, (3) introduction of a pre-trial procedure for obtaining evidence. The "Revision Outline" was compiled at the general meeting of the Legislative Council in February 2003, and finally the "Revised Code of Civil Procedure", which was amended based on the outline, came into effect on July 9, 2003. *1

Within the Revised Code of Civil Procedure, there are 4 key issues related to intellectual property litigations. The first issue is the granting to certain courts an exclusive jurisdiction over cases related to patents or other intellectual property. It is likely that a highly technical matter arises as the main issue at dispute, in cases concerning patents, utility models, software-related copyrights etc. Accordingly, it has been stipulated that such cases must be brought exclusively to Tokyo and Osaka District Court at the district court level and exclusively to the Tokyo High Court at the high court level, so as to ensure that experienced judges and court researchers (staffs who give technical advice to judges) are assigned to those trials in order to achieve prompt and relevant trials and decisions. The second issue is the introduction of additional jurisdictions over cases concerning copyright (except for software-related copyright), unfair competition, industrial design, trademark etc., which grants the plaintiff to file suit to Tokyo or Osaka District Court without consideration of the place where the dispute occurred. In contrast to patent litigations, as regards to cases concerning copyright and unfair competition there are many cases which have a higher preference in being treated in a certain area within the nation. Therefore, it has been stipulated that the complainant may choose to file an action either in the court having the conventional jurisdiction or in the Tokyo or Osaka District Court having specialized Intellectual Property Divisions. The third issue is the introduction of a panel consisting of five judges. A decision made by a five judge panel is expected to provide guidance to similar cases that may arise in the future, which will give de facto legal stability over intellectual property disputes. The fourth issue is the introduction of an expert commissioner system. This system which enables experts to engage in a proceeding and a judge to obtain expert advise from the expert, has been introduced for the convenience of judges and both parties in understanding highly specialized matters. Nowadays, we face a remarkable progress and segmentation in the area of technology, and technological innovation and obsolescence are getting faster and faster, as ever before. It will be effective for achieving trials and decisions with relevance and speed with the support of an expert commissioner, especially on key trial dates with importance. *2

3. Consultation Group on Intellectual Property Litigation and New Legislation under the Office for Promotion of Justice System Reform *3

The Consultation Group on Intellectual Property Litigation established within the Office for Promotion of Justice System Reform discussed new measures for the improvement and the realization of a prompt intellectual property trial. 16 meetings were held during October 2002 to January 2004, and the group came up with conclusions to the following issues; (1) establishment of intellectual property high court; (2) relationship between a infringement suit, in which a court can decide the validity of an intellectual property right and a invalidation trial handled by the Patent Office; (3) introduction of expert knowledge under intellectual property related litigations, (4) introduction of measures to ease the burden of proof of infringement acts. On June 11, 2004, the "Law for Establishing Intellectual Property High Court" was established in respect of above issue (1), and the "Law for Amending a Part of the Court Organization Law" was established in respect of issues (2)-(4) focusing on the improvement and the realization of a prompt proceedings for cases involving intellectual property. Both laws are scheduled to be enacted from April 1, 2005. *4

4. Establishment of Intellectual Property High Court

The Law for Establishing an Intellectual Property High Court declares the necessity of a specialized high court which deals with cases concerning intellectual property, and establishes the Intellectual Property High Court as a special branch of the Tokyo High Court. Its main object is to realize a prompt and solid judicial system for cases related to intellectual property, so as to meet the requirements of the national economy, which acknowledges the importance of the role that the judicial system is to play for the protection of intellectual property rights, in light of the enhanced use of intellectual properties recently.

The Intellectual Property High Court is established formally within the Tokyo High Court, but it has a judge committee consisting of judges of Intellectual Property High Court and has a bureau of its own, thereby securing its independency.

Establishment of the Intellectual Property High Court does not change the juridical authority primarily granted to the Tokyo High Court5. The Intellectual Property High Court deals with cases within the Tokyo High Court, which are (1) appeals of cases relating to intellectual property rights and requiring expertise, (2) revocation of the decision made by the Patent Office, (3) cases concerning intellectual properties as the main disputes and requiring expert knowledge, (4) cases for which the oral arguments should be merged with above cases, and so forth.

Since the Intellectual Property High Court is located in Tokyo, consideration should be made for the convenience for local residents. Accordingly, it is expected that the provisions for transferring a case from one court to another, or the videoconference system, under the Code of Civil Procedure, is to be used flexibly.

5. Relationship between Court Decision of Invalidation and Invalidation Trial before the Patent Office

1) Supreme Court Decision on Fujitsu Semiconductor Case
Under the Patent Law of Japan, the remedy that a third party may have against an allegedly incorrect decision of a patent grant can be pursued only by, first of all, filing a complaint to the Patent Office demanding invalidation of a patent within a patent invalidation trial and then, second, one dissatisfied with the decision of the Patent Office, filing suit to the court for the cancellation of the alleged incorrect decision made by the Patent Office concerning the validity of a patent.
Therefore, it had been a matter of course, under the administrative code, that, even if a patent had good reason for invalidation, the patent will exist as a valid patent as long as the patent is not invalidated within the invalidation trial, as above, and the court cannot render a decision on the premise that the patent is invalid.
However, the Supreme Court Decision on the Fujitsu Semiconductor Case (Decision by the Third Petty Bench of the Supreme Court on April 11, 2000; Minsh? Vol.54, 4th Issue, Page 1368) substantially changed the previous theories and opinions held in the precedents, and held that the court that is expected to render a decision on a patent infringement suit may also render a decision on the question-whether or not there is reason for invalidating a patent, and that any claim made on the ground of such invalid patent is deemed as abuse of right and should not be allowed, as long as the reason for invalidation is obvious.
The Supreme Court Decision on the Fujitsu Semiconductor Case is appreciated as a decision that meets the needs of prompt processing of patent infringement cases. The Supreme Court decision emphasized the aspect of prompt dispute resolution and the proper use of judicial resources, as can be seen from the reasons stating: "It is desirable that a dispute should be resolved within as short a period as possible and under a single process. If, in patent infringement cases like the present one, the defendant (alleged infringer) is not allowed to defend itself by arguing the existence of a reason for invalidation in respect of such patent without first filing a demand for invalidation trial and allowed to argue such invalidation only after the trial decision is finalized, then the defendant would be forced to take a process of invalidation trial even when such defendant does not intend to have the invalidation of such patent effective for the general public. Such dual process would also contravene the economic view of court procedures." From then on, there are many examples that the counter-argument of "abuse of right" be submitted by the defendant within an infringement case and the court dismiss the claim brought by the plaintiff by holding that "the claim of the plaintiff brought on the ground of a patent infringement is not allowed because the existence of the reason for invalidation is obvious".
2) Identification of Problems
Under the framework of the Supreme Court Decision on the Fujitsu Semiconductor Case, whether or not a patent comprises a reason for invalidation will be a disputed issue within a infringement case. As mentioned above, the Supreme Court decision aims at prompt dispute resolution and reduced economic burden in proceedings. However, when both the infringement litigation and the invalidation trial take place simultaneously, the decisions made by each procedure may contradict to each other, and the dispute resolution may end up being delayed. And so, there were opinions pointing out that the relationship between the court's decision and the Patent Office's decision of invalidation should be clarified. Especially from the industrial circle, there were opinions that the "obviousness" requirement stipulated by the Supreme Court Decision on the Fujitsu Semiconductor Case should be removed, in order to reach a complete resolution to the disputed validity of a patent, within a infringement litigation and without the need for an invalidation trial.
However, there are a several problems in removing the "obviousness" requirement. The first problem is the procedural difference. The procedure of an infringement litigation is based on an adversary and accusatorial system while the procedure of invalidation trial is based on inquisitorial system. Under the adversary system, the court is not allowed to favor one party who is insufficient in his litigation activities by supporting his argument and proof of evidence because the court is bound by the arguments and proof presented by both the parties to the litigation. It is often the case that the results of litigations substantially depend upon the skilled litigation activities. Should the "obviousness" requirement be removed from the infringement litigation and the requirement of invalidation become the same as those of an invalidation trial, the decision on the validity of an intellectual property right within an infringement litigation and the result of a corresponding invalidation trial may well contradict with each other, due to the procedural difference. Contradiction between a decision of an infringement litigation and the corresponding decision of an invalidation trial in respect of the same reason of invalidation, will not necessarily produce a desirable result from the point of view of reaching an ultimately resolution. The second problem is the possibility that a defendant may endlessly submit the reason for invalidation for the purpose of prolonging an unfavorable decision in an infringement suit. Should the "obviousness" requirement be removed from the infringement litigation, the court will be obliged to render its ruling on each one of the reasons for invalidation submitted by the defendant, and which may impair prompt remedy for the plaintiff. The third problem is the patent owners attempt at avoiding invalidation of the patent by filing a request for correction of the description of the patent claims when the validity of the patent become a disputed issue within a infringement litigation. The correction of a description of a patent can be deemed as a granting of a new patent, and therefore the Patent Office is required to handle the matter. Thus it has been criticized that as long as the correction system is maintained, it would be difficult to resolve a dispute promptly and under a single process even if the "obviousness" requirement is removed. The three problems mentioned above were pointed out.
3) Result of Discussion and Content of Amended Law
The Consultation Group on Intellectual Property Litigation discussed the problems mentioned in the previous section and wrapped up the result of the discussion, which was to propose the introduction of the following systems for the realization of an effective dispute resolution, and accordingly, the laws were amended:
  1. Concerning infringement litigations, the laws were amended so that the court will have provisional grounds for rendering a judgment based on the decision of whether or not there is a reason for invalidation, without requiring "obviousness", when the defendant argues that the enforcement by the claimant of the patent should not be allowed because such patent falls within the scope of one or more reasons described in Paragraph 1, Article 123 of the Patent Law, which stipulates grounds for invalidation. If the court finds that a patent is to be invalidated, had the invalidation trial been conducted, then, the court can deny the enforcement of such patent (injunction, compensation for damages, etc.).
  2. The laws were amended so that the panel in the Patent Office, in charge of the invalidation trial, can obtain the evidence that were submitted to the court as evidence concerning the validity of a patent, improving the coordination between the proceedings taken by the court and by the Patent Office, so as to avoid the contradiction between a court's decision rendered within an infringement litigation and the corresponding result of the invalidation trial.
  3. In order to avoid the delay of infringement proceedings, caused by inappropriate arguments of invalidation submitted to the court only for the purpose of prolonging an unfavorable decision, the law was amended so that the court can overrule such arguments when deemed so.
  4. There is no limitation for a defendant or a third party in filing for an invalidation trial, even when a simultaneous infringement suit is tried at court.
4) Operation of the New System
Under the new system, the court handling an infringement case is supposed to "decide whether or not a reason for invalidation exists, regardless of the obviousness". Accordingly, the scope of issues that can possibly be disputed within an infringement suit has expanded, causing a bigger chance of delayed proceedings and contradicting decisions. Looking into the former disadvantage (the delay in trial proceedings), the court, under the predominant practice in an infringement litigation, has occasionally been denying the argument presented by a defendant in the course of an infringement litigation, by stating that an argument without reason or without proof does not meet the "obviousness" requirements. Under the new system, however, whether or not a infringement litigation in which the validity of a right comes into question can be carried out smoothly and promptly is most dependent to the faithful cooperation of both parties. It is regretfully anticipated that some defendants may submit irrelevant reasons for the invalidation of a patent endlessly only for the purpose of prolonging an unfavorable decision. For such circumstances, the new provisions provide courts with the authority to overrule such inappropriate arguments-arguments "submitted by the defendant for the purpose of prolonging the trial proceedings unreasonably", and the exploitation of the provision would be an important issue. Secondly, looking into the latter issue (the contradiction of decisions), supposing that a patent currently at issue has a reason for invalidation, but such reason could be removed if the patent owner files a request for correction in the future, how should a court handling an infringement case try the case, and what decisions should a court make? One alternative for the court is to cease the proceeding for a period of time and to wait for the result of the correction trial taking place in the Patent Office (or an argument requesting correction under the pending invalidation trial), which may help achieve a stable and more desirable resolution of the dispute. The Patent Office, therefore, is expected to arrange the trial of the correction requested by the parties during the pending infringement litigations as soon and promptly as possible. On the other hand, in light of the fact that (1) the amended law establishes a dispute resolution system that allows the court to deny a claim brought by a patent owner when a patent is found to be "invalidated" at the very closing point of the oral proceedings, and that (2) whether one is to file a request for correction and what correction is to be made totally depends on the patent owner, another alternative for the court, depending on the situation of the trial proceedings and whether the patent owner has the intention to file a request for correction, is to deny the claim filed by the patent owner immediately by finding that the reason for invalidation exists. Based on such practice, the patent owner may be well advised to take a correction procedure and clear any reason for invalidation, before filing an infringement suit, in order to avoid unexpected disadvantages. Further, in respect of correction trials filed while infringement cases are tried, cooperation by the Patent Office as well as the parties to the correction trial would be indispensable to achieve prompt proceedings.

6. Introduction of Expert Knowledge in Intellectual Property Litigations

1) Identification of Problems
The judges of the intellectual property division within the high court and district court in Tokyo and in Osaka, carry out there proceeding with the support of court researchers- technical experts that are appointed for the trial proceedings for intellectual property litigations. The expert commissioner system was introduced by the revision of the Code of Civil Procedure, but the demand for further exploitation of expert knowledge has increased, as regards to the recent remarkable technological advances. On the other hand, there are some opinion pointing out that the contents of the research, and the way in which the judges make use of the information has not yet been disclosed to the general public, and so, a new measure to ensure neutrality and fairness should be introduced. Under these circumstances, the Consultation Group on Intellectual Property Litigation discussed how the expert knowledge should be introduced in the intellectual property litigations.
2) Result of Discussion and Content of Amended Law
The Consultation Group on Intellectual Property Litigation appreciated the usefulness of the court researchers in intellectual property litigations, and, for further enhancement of the specialized proceedings, summed up the result of the discussion by stating that the authority of court researchers be expanded and clarified while ensuring the neutrality of court researchers. The outline of the deliberated results is as follows, and accordingly the laws were amended:
  1. The laws were amended partly in the same manner as in the previous system; the court to assign the following operations to the court researcher engaging in research concerning the trial and litigation proceedings for intellectual property-related cases at a high court or a district court whenever it deems necessary, and upon assignment of the chief judge. The new legislation set forth the operations of court researchers specifically and clearly as follows:
    • (a) to make an inquiry on matters of fact and law to the parties in order to clarify the matters in relation to the litigation on the date of the oral pleadings or others,
    • (b) to directly question a witness or others on the date of taking of evidence,
    • (c) to make an explanation on the ground of expert knowledge on a date of a settlement
    • (d) to state a reference opinion to the judge.
  2. In intellectual property litigations, the provisions setting forth the limitation (joseki) or challenge (kihi) of certain court researchers were introduced in order to ensure the neutrality of the court researchers.
  3. There were opinions that the technical experts should be appointed as judges in charge of intellectual property litigations, but the Consultation Group did not support that opinion for a several reasons; the essential part of the intellectual property litigations is the legal decision and the technical decisions are a part of the legal decision and both decisions are inseparable, even if technical expert judges were appointed they would need support in issues outside of their skills, the introduction of technical expert judge require careful deliberations in reference to the provisions set forth in the Constitution of Japan, etc. It is expected that lawyers with technical background will be trained at the law schools.
3) Operations under Revised System and Matters to be Noted
In Japan, the court researcher system has been well-established and highly appreciated. Under the revised new system, if the neutrality and fairness of the court researcher could be ensured by introducing new measures, it would make the court's trial decisions more trustworthy for the parties that take part in the litigations and accordingly the new system could realize a more prompt and appropriate proceeding.
However, there are several issues that need to be taken into account. Intellectual property litigation is a category belonging to the civil proceedings, and therefore, those litigations are based on the adversary system. The courts are not allowed to render any decision based on any fact not argued by either party, nor allowed to acquire evidence that neither party has submitted to the court and make use of it as the ground for a judgment. Any special knowledge or expertise that a judge has privately acquired must be excluded from the grounds of a judgment. The courts are supposed to engage in the trial proceedings from the neutral and fair position, and should not, in principle, urge either party to make explanation to support one side. Under the principle of the adversary system, it is the parties taking part in the litigation that undertake the burden of presenting arguments and proofs required to win the case, and that take the risk of losing the case when they fail to make a judge understand technical details. It is true that the fairness and neutrality of the use of court researcher system is warranted under the new system, and the possibility of more active exploitation has increased. However, this does not mean that the court may render a decision by supplementing the insufficient preparation of the parties in pursuit of the truth even when the proofs presented by the parties are insufficient. In this sense, there is no change in the application of the adversary system as regards to intellectual property litigations.

7. Measures to Ease the Requirement for Proving Infringement Acts

1) Identification of Problems
In intellectual property litigations, a trade secret held by either party is, in many cases, an evidence with significance. However, disclosure of trade secrets may result in critical damages to the disclosing party's business activities. It can be said in general that an infringement suit is one that can be categorized to those cases in which the establishment of facts is fairly difficult. Article 105 of the Patent Law, a special exception to Article 220 of the Code of Civil Procedure, authorizes the court to order a person who possesses a certain document to hand in the document for the purpose of easing the burden of proof of infringement acts. However, since the party who has filed the request for such court order is not allowed to take part in an in-camera proceeding, there were opinions stating that it would be difficult to obtain a common understanding with the side of a party requesting such court order. Accordingly, measures, including the amendment of the in-camera procedure, the introduction of "protective order" and the clarification of the requirements and procedure when it is necessary for a trial to be kept closed to the public, etc., to reduce the burden of proof, while at the same time protecting trade secrets, have been discussed.
2) Result of Discussion and Content of Amended Law
The Consultation Group on Intellectual Property Litigation deliberated the protection of trade secrets and the reduction of burden of proof concerning infringement acts, and came up with the results summarized as follows. Accordingly the legislators amended the laws.
  1. Introduction of Protective Order:The amended laws enables courts to grant, at the request of either party, said protective order to the other party (or its agent or employee) or its attorney-at-law or counsel, so that they do not disclose the trade secret for any purpose of use other than the use within the litigation, nor to disclose such trade secret to any person other than the party who has received a protective order from the court, when a party has submitted prima-facie evidence which satisfies the requirements: (a) the briefs or evidence submitted to the court includes a trade secret, and that (b) it is necessary to prevent it from being used or disclosed for any purpose besides the use within a proceeding. One that breaches the protective order will be imposed of a imprisonment for up to three (3) years or a fine not exceeding three million (3,000,000) yen.Both the parties-the party that filed a request for protective order and the party that received the protective order may file a petition to cancel the protective order, when a protective order lacks or that comes to lack the requirements set forth by the provisions, to the court that stores the procedural records of the litigation.
  2. Measures to keep a trial secret when an issue related to a trade secret is at dispute:According to the amended laws, the court may keep a trial secret by a unanimous vote of all the panel judges, in litigations pursuing injunctive relief, compensation for damages, recovery of trust, or litigations for pursuing declaratory judgment on the non-existence of a claim, concerning typically infringement of business profit caused by unfair competition or infringement of patent, etc., if any party or a third person is to be examined as a witness in finding out a fact, whether or not the alleged infringer has infringed the right of an owner, related to a trade secret when the following requirements (a) and (b) are met:
    • (a) when a party is caught in a truly unavoidable circumstance where it is obvious that if a party makes a statement, comprising a trade secret, in the court, which is in principle opened to the public, it will impair the closed-nature and secrecy of the trade secret and accordingly cause a significant negative impact on the party's business activities based upon such trade secret, and
    • (b) when it is anticipated that, without a statement comprising a trade secret of a party, the court may make a misjudgment in finding out whether or not a infringing action of business profit had been conducted, violating the unfair competition prevention law, patent right, etc. only by examining all the other evidence.Also, in respect of the proceedings to keep a trial secret from the public, it has been established that the court is required to take a prior proceeding for hearing opinions of the parties, and that, when it is necessary for a oral pleading or a witness examination to be carried out kept secret to the public, the court is obliged to render the reasons for deciding so, before the judge orders the audience to leave the court.
  3. Disclosure of documents within the so-called "in-camera proceedings":The court may necessarily disclose the document that allegedly contains a trade secret and that is to be examined within the in-camera proceedings, to the party that filed the request for a court's order to force one to hand in a document, in a trial in which an exceptional reason "legitimate reason" for refusing the court's order to hand in a document, stipulated in Paragraph 2, Article 105 of the Patent Law, is at dispute, so as to ask the filing party an opinion based on the disclosed documents, in order to ensure procedural clarity.
3) Operations under the Revised System and Matters to be Noted
It has traditionally been said that even if one owned a patent, there is difficulty in exercising one's rights especially if the patent is a process patent, because the suspected infringer will not disclose its process. There were cases where the defendant (alleged infringer) in a patent infringement case gave up arguing his prior use of the invention, even when the actual fact was in favor of the defendant, who could not sacrifice its trade secret to be disclosed. Also, there were cases where a plaintiff, filing a request for protection of a trade secret as stipulated in the Unfair Competition Prevention Law, could not effectively and accurately prove the necessity of protection due to his concern about the disclosure of such trade secret in the course of proving facts. Improvement of the in-camera proceedings, measures for keeping a trial secret and the introduction of the system of protective order are epoch-making measures for the resolution of significant practical problems.
On the other hand, when a document containing a trade secret is to be disclosed to the other party, it is likely that we will face many new difficulties such as the selection of documents truly required for the trial, the clarification of the scope of recipients of the disclosed document, the establishment of a system to protect the received information, and the establishment of a system for monitoring parties so that the recipients of the order do not violate the order, and so forth. In order to operate the new system effectively, it is of utmost importance to realize sufficient consultation between the parties taking part in the litigation, to cooperate and build up a trustful relationship between parties, and to increase the quantity and quality of the attorneys who play an significant role in operating the system.

8. Conclusion

As discussed above, the role in which a court plays in the area of intellectual property has grown more and more significant, and the expectation and the demand from the public has increased, as ever before, due to the development and exploitation of intellectual properties in Japan. It will not be an easy task to design and establish an appropriate system and to operate the system under the new framework since the courts that handle intellectual property litigations are required to satisfy various factors- speed, expertise, effective relief, global-awareness, cost-effectiveness, trustworthiness, stability or transparency. It can be said that the recent revision of the system has a significant meaning, from the point of view that it improves and reinforces the dispute resolution function over intellectual property disputes. Needless to say, the clue to solving the problems discussed above, and to realizing a further improvement of the system, is the cooperative attitude of the court and attorneys toward resolving intellectual property cases.

(Notes)* Judge of Tokyo District Court ( At writing )

  1. Law No. 108/2003
  2. See "Present Condition and Prospect of the Intellectual Property Litigations" by Makoto Jozuka (NBL vol.765, 20p.) for the details of the improvement and reinforcement of intellectual property litigations under the revised Code of Civil Procedure of 2003.
  3. See "Reform of Litigation System concerning Intellectual Properties" by Tomoyasu Sakaguchi and Sinji Oda ("Patent" vol.57, Issue 8, 21p.) for the details of the Law for Establishing Intellectual Property High Court and the Law Amending a Part of the Court Organization Law.
  4. "Law for Establishing Intellectual Property High Court" (Law No. 119/2004), "Law Amending a Part of the Court Organization Law" (Law No. 120/2004).
  5. As mentioned in Section 2 of this article, it was provided that the cases concerning intellectual property litigations should be exclusively brought to the Tokyo High Court in accordance with the Code of Civil Procedure amended in 2003.

AIPPI Journal, September 2004 (Vol.29 No.5)279

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