Home > Rules of Practice > Proceeding for Calling for Third-party Opinions
1. Outline of the proceeding for calling for third-party opinions
- Under the proceeding for calling for third-party opinions (hereinafter referred to as "this Proceeding"), if the court finds it to be necessary in patent infringement litigation, etc., at the motion of a party, the court may seek from the general public submission of written opinions regarding the application of the Patent Act or any other necessary matters relating to the case, after hearing the other party’s opinion.
This Proceeding is one of the procedures for the collection of evidence that was newly introduced by the amendment to the Patent Act in 2021 (Act No. 42 of 2021), and the details thereof are stipulated in Article 105-2-11 of the amended Patent Act (hereinafter referred to as "this Article"). In addition, this Article is applied mutatis mutandis pursuant to Article 65, paragraph (6) of the Patent Act and Article 30 of the Utility Model Act.
2. Purpose of this Proceeding
- In recent years, the situation surrounding patents has been changing. For example, IoT-related technologies involving multiple industries have shown outstanding progress, and the formation of rules about standard-essential patents has been required. Under such circumstances, a judgment of the court can substantially have a significant effect not only on the parties but also on many industries relevant to the involved patent right, etc. Therefore, it is sometimes desirable for the court to make a judgment in light of the actual business conditions, etc. of relevant third parties. In addition, some cases can involve issues that should be considered from international perspectives, and it is sometimes desirable to collect wide-ranging opinions from abroad.
This Proceeding makes it possible to collect opinions broadly from the general public in relation to the cases mentioned above for the purpose of ensuring that the court can obtain materials for making an appropriate judgment.
3. Cases to be covered
- (1) The cases to be covered by this Proceeding are as follows. For all cases, the Tokyo District Court or the Osaka District Court has jurisdiction as the first instance, and the Intellectual Property High Court has jurisdiction as the appellate instance.
[i] Litigation on the infringement of a patent right or exclusive license therefor (this Article, paragraphs (1) and (2))
[ii] Litigation seeking compensation (Article 65, paragraph (1) or Article 184-10, paragraph (1) of the Patent Act)
[iii] Litigation on the infringement of a utility model right or exclusive license therefor (application mutatis mutandis of this Article pursuant to Article 30 of the Utility Model Act)
(2) Incidentally, suits against appeal/trial decisions made by the Japan Patent Office and litigations concerning a right other than patent right and utility model right are not covered by this Proceeding.
- (1) As this Proceeding is positioned as one of the procedures for the collection of evidence by the parties, it may not be implemented sua sponte, and a motion filed by one party is required (this Article, paragraphs (1) and (2)). When filing a motion for this Proceeding, please submit a written motion to the division at which the case is pending (neither fee for filing a motion nor prepayment of expenses is required).
(2) It is necessary to state matters about which opinions shall be called for (hereinafter referred to as "Subject matters") and the necessity of calling for opinions in a written motion.
(3) Subject matters may include not only legal issues and rules of thumb but also facts, including business practices and actual business conditions.
In addition, circumstances related to the necessity of calling for opinions may include the degree of influence that a judgment on the case will have on third parties and the difficulty of the collection of evidence by the parties (more specifically, the fact that the case is a dispute over an invention related to many industries, the fact that there is neither established court precedent nor theories, etc. about Subject matters, the fact that it is difficult to accurately grasp related industries, and the fact that it is necessary to obtain the latest information overseas, etc.)
5. Implementation of a call for opinions
- (1) If the court finds it necessary to implement a call for opinions after hearing the other party’s opinion, it makes a ruling of acceptance while specifying Subject matters and the period of the call for opinions (this Article, paragraphs (1) and (2)).
(2) Moreover, when making a ruling of acceptance, the court posts guidelines on the call for opinions on the Intellectual Property High Court's website, etc. for the purpose of widely publicizing the implementation of the call for opinions and the details thereof, etc.
Guidelines describe information that is necessary for third parties to submit their opinions, including the outline of the case and Subject matters. In addition, the English version of guidelines may be prepared considering the nature of the case. (Click here(PDF:312KB) to see an example description of guidelines.)
(3) Other appropriate methods of notification to third parties may be decided on a case-by-case basis through consultation between the court and the parties. For example, possible methods are the posting of guidelines on the website of the council’s office, the placement of a notification of a call for opinions in domestic and overseas magazines, etc.
6. Submission as evidence
- (1) Third-party’s opinions shall be submitted to the court in writing (this Article, paragraphs (1) and (2)).
However, written opinions submitted by third parties themselves do not automatically constitute evidence. It is necessary for the parties to submit the written opinions as documentary evidence, after inspecting and copying them (this Article, paragraph (3)).
(2) The court sends to the parties the list of written opinions submitted by third parties after the passage of the period for the call for opinions. Please use the list as a reference when inspecting and copying written opinions.
In addition, the inspection and copying procedures and the procedure for the submission as documentary evidence are the same as those for ordinary documentary evidence. However, for the details of handling, such as the method of stating a description of evidence and the way of assigning documentary evidence numbers, please confirm with the division at which the case is pending.