Intellectual Property Infringement Litigations and Recent Movement toward System Reforms

Home > Further Information > Publications > 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

  1. Further Information
    1. Technical Advisors System
    2. Statistics
    3. Publications
      1. Guidebook of the IP High Court
      2. Publications
      3. Intellectual Property Infringement Litigations and Recent Movement toward System Reforms
      4. Topics(from 2016)
      5. Topics(from 2005 to 2015)
      6. Two Expert Commissioners delivered lectures at the meeting of the IP Divisions Society for Study.
      7. Delegation of the American Intellectual Property Law Association visited the IP High Court.
      8. Chief Judge Shinohara Had a Talk with Newscaster Maoko Kotani.
      9. Justice of High Court of Australia Visited IP High Court.
      10. Judge Randall R. Rader of United States Court of Appeals for Federal Circuit and Other Distinguished Guests Visited IP High Court.
      11. Guests from Overseas
      12. Judge of the IP High Court Made a Speech at the University of Washington
      13. Malaysian Mission Visits IP High Court
      14. Judge of Patent Court of Korea Visits IP High Court
      15. Judges of IP High Court Participate in Fourth International Judges Conference on Intellectual Property Law
      16. Mansfield Fellow undergoes training at IP High Court
      17. Intellectual Property Workshop Held
      18. Delegation of German Chamber of Patent Attorneys Visits IP High Court
      19. Delegation of the American Intellectual Property Law Association Visits IP High Court
      20. Delegation from Ministry of Economy, Finance and Industry of France Visits IP High Court
      21. Judges of IP High Court Participate in 14th Annual Conference on International Intellectual Property Law & Policy
      22. Delegation from PRC Visits IP High Court
      23. Judge of Tokyo District Court Attends International Conference at University of Washington
      24. Judge of IP High Court Participates in International Conference in PRC
      25. Delegation from PRC Visits IP High Court
      26. Delegation of American Intellectual Property Law Association Visit IP High Court
      27. Speeches by Judge of Tokyo District Court at International Conference in Brussels Made Public
      28. Judge of IP High Court Participate in 15th Annual Conference on International Intellectual Property Law & Policy
      29. Judge of Intellectual Property High Court Attends International Conference at University of Washington
      30. Judge Randall R. Rader of the Federal Circuit and Other Guests Visit IP High Court
      31. IP High Court Judge Participated in International Conferences at Fordham University (U.S.A.)
      32. Delegation of American Intellectual Property Law Association (AIPLA) Visited IP High Court
      33. Judge of Intellectual Property High Court Attends International Conference at University of Washington
      34. Chief Justice of Supreme Court of Korea Visits IP High Court
      35. Vice President of Supreme Arbitration (Commercial) Court of Russian Federation Visits IP High Court
      36. Delegation from Intellectual Property Rights Tribunal of Higher People’s Court of Beijing Visits IP High Court
      37. Delegation of American Intellectual Property Law Association (AIPLA) Visits IP High Court
      38. IP High Court Judge Attended International Conference in People's Republic of China
      39. IP High Court Judge's Participation in Summer Seminar on American Patent Law held at University of Washington, U.S.A.
      40. Courtesy Visit by Judge from District Court of Munich I
      41. Judge Randall R. Rader of Federal Circuit and Other Guests Visit IP High Court
      42. Vice President of the Supreme Arbitration (Commercial) Court of the Russian Federation Visits the IP High Court
      43. Participating in an international conference hosted by Fordham University in the U.S.
      44. Delegation of the American Intellectual Property Law Association (AIPLA) Visits the IP High Court
      45. Visit by the Justice of the High Court of Australia
      46. IP High Court Judge's Participation in International Conference Hosted by the University of Washington
      47. Vice President of the Supreme Court of the Republic of Indonesia Visits the IP High Court
      48. Chief Justice of the Supreme People's Court of the Socialist Republic of Viet Nam Visits the IP High Court
      49. Delegation of the US Bar Association Visits the IP High Court
      50. Delegation of the American Intellectual Property Law Association (AIPLA) Visits the IP High Court
      51. Judges of the United States Court of Appeals for the Federal Circuit, CAFC visited Japan and participated in the Joint Judicial Conference on Japan and U.S. Intellectual Property Rights
      52. President of the Federal Court of Justice of Germany Visits the IP High Court
      53. Delegation of the American Intellectual Property Law Association (AIPLA) Visits the IP High Court
      54. IP High Court Judge's Participation in an International Conference Hosted by Fordham University
      55. Minister of Law and Human Rights of Indonesia Visits the IP High Court
      56. IP High Court Judge's Participation in an International Conference Hosted by University of Washington
      57. IP High Court Judge’s Participation in an International Conference Hosted by Fordham University
      58. Visit by the American Intellectual Property Law Association (AIPLA) Delegation to the IP High Court
      59. Speeches Given at the Seminar Entitled “Current Situation and the Future of Intellectual Property Cases and Patent Systems in the United States and Japan” Hosted by AIPPI JAPAN
      60. Visit by International Students from the Overseas Study Program of the World Customs Organization (WCO) to the IP High Court
      61. Visit by the Research Group on Intellectual Property Strategy from the Republic of the Union of Myanmar to the IP High Court
      62. Visit by the US Bar / JPO Liaison Council Delegation to the IP High Court
      63. Visit by Judge of the High Court of Delhi, India to the IP High Court
      64. Participation by IP High Court Judge in an International Conference Held at the University of Washington
      65. Visit by Vietnam IP Leadership Training Program Participants to the IP High Court
      66. Visit by JAUIP Seminar Participants to the IP High Court
      67. Visit by a Judge on the Federal Patent Court of Germany to the IP High Court
      68. Visit by Members of the Legislative Affairs Commission of China
      69. Visit by a Delegation from the American Intellectual Property Law Association (AIPLA)
      70. Visit by a Delegation from the German Patent Attorney Bar Association
      71. Visit by International Students from the Overseas Study Program of the World Customs Organization (WCO)
      72. Visit by Judge of the High Court of Delhi, India
      73. Visit by Presidential Council on Intellectual Property of Korea
      74. Meeting with Judge James Robart of the United States District Court
      75. IP High Court Chief Judge's Participation in International Conference Hosted by University of Washington
      76. USPTO IP High Court Chief Judge's Visit to the United States Patent and Trademark Office (USPTO)
      77. IP High Court Chief Judge's Visit to the United States Senate Committee on the Judiciary
      78. CAFC Meeting with Chief Circuit Judge Prost of the United States Court of Appeals for the Federal Circuit (CAFC)
      79. USITC IP High Court Chief Judge's Visit to the United States International Trade Commission (USITC)
      80. IP High Court Chief Judge's Visit to Federal Judicial Center
      81. 2014JAUIP Seminar Participants Visit the IP High Court
      82. 2014Fordham Judge's Participation in an International Conference Hosted by Fordham University
      83. IP High Court Judge's Participation in European Patent Judges' Symposium
      84. IBA IP High Court Chief Judge’s Participation in the 2014 IBA Conference in Tokyo
      85. the Federal Republic of Germany to the IP High Court
      86. List of Cases with Full Text Judgments
      87. Visit by Participants in Training Course on the Enforcement of Intellectual Property Rights under the WIPO Funds-in-Trust/JAPAN
      88. IP High Court Judge's Participation in IP Seminar in Indonesia
      89. Visit by International Students from the Graduate School of International Cooperation Studies (GSICS), Kobe University
      90. Visit by a Presiding Judge of the Beijing Intellectual Property Court
      91. the Supreme People’s Court of the People’s Republic of China
      92. 2015INTA Visit by Chairman of INTA
      93. Participation in the International Symposium Commemorating the 10th Anniversary of the Intellectual Property High Court
      94. 2015AIPLA Visit by the Delegation of the American Intellectual Property Law Association
      95. 2015WCO
      96. Meeting with English Solicitors
      97. The Centre for Intellectual Property & Information Law (CIPIL) at University of Cambridge, England
      98. Meeting with Prof. Sir Robin Jacob
      99. Meeting with the Hon. Mr. Justice Richard Arnold and Hon. Mr. Justice Colin Birss
      100. Seminar of the Chartered Institute of Patent Attorneys
      101. 2015Fordham
      102. Stanford University
      103. 2015 US Bar
      104. IPO of China
      105. 2015 LESI
      106. Korean Patent Attorneys Association
      107. 2015CASRIP
      108. The University of St. Gallen
      109. 2015JAUIP
      110. International Trade Court of Thailand
      111. Mr. Guenter Schmitz of the German Patent
      112. . 2015 Judge from Germany
      113. Participation in the 2015 International IP Court Conference held in Korea
      114. 2015IPO
      115. Students from Thailand
      116. Visit by the Director of the Training Department of the Supreme Court of the Republic of the Union of Myanmar and others
      117. Visit by Participants in 2015 Training Course on the Enforcement of Intellectual Property Rights under the WIPO Funds-in-Trust/JAPAN
      118. Visit by Members of the Department of State Law of the National People’s Congress of China
      119. Visit by Professor and Students of Northwestern Law School
      120. Visit by Presidents and Others of Foreign Patent Attorneys Associations
      121. Visit by Vietnam IP Leadership Training Program Participants
      122. Participation in International Conference of IP Scholars Asia at Singapore Management University (SMU)
      123. Visit by Director General Gurry of WIPO
      124. Visit by Prof. Dr. Peter Meier-Beck, Judge of German Federal Court of Justice
      125. Participation in Tokyo University of Science IP Forum 2016
      126. 2016 AIPLA
      127. 2016_WCO
      128. Visit by Chief Justice of the Supreme Court of India, and Others
      129. Visit by Indonesian Training Program Participants
      130. Participation in the 2016 International Conference on IP in Korea
      131. Visit to U.S. Law Firms
      132. Participation in Brazil Symposium at George Washington University
      133. Participation in U.S./Japan Symposium at CAFC
      134. Meeting with Lawyers in Germany
      135. Participation in Symposium at EPO
      136. Visit by Judge Matthias Zigann of Regional Court Munich of Germany
      137. Visit by Clerk of Civil Affairs Division of Supreme Court of Indonesia and Others
      138. Participation in INTA 2016 Annual Meeting
      139. Visit by JAUIP Seminar Participants
      140. Visit by Students of Master's Program in European and International Business Law at the University of St. Gallen
      141. Visit to Center for iPS Cell Research and Application (CiRA) of Kyoto University
      142. Visit by Members of the Department of Economic Law and Others of the National People’s Congress of China
      143. Participation in International Conference held at University of Washington, U.S.
      144. Participation in International Conference held at Univercity of Washington,U.S-2
      145. Participation in 2016 International IP Court Conference in Korea
      146. Visit by Members of Directorate General of Intellectual Property of Indonesia
      147. Visit by Delegation from Chamber of Patent Attorneys (German Public Law Corporation) (Patentanwaltskammer)
      148. Participation in AIPPI World Congress in Milan
      149. Participation in Europe/Japan Mock Trial in Paris
      150. Visit by Trainees of Operational Patent Examination Training Program
      151. Visit to Cour de Cessation in France by Chief Judge of IP High Court
      152. Visit by Chairman of International Trademark Association, and Others
      153. Visit by Minister of Law and Human Right of Indonesia, and Others
      154. Visit to Center for iPS Cell Research and Application (CiRA) of Kyoto University (second visit)
      155. Visit by Chief Judge of District Court of Indonesia and others
      156. Visit by Trainees of “Japan-Mexico Knowledge Co-Creation Program for the Strategic Global Partnership-Intellectual Property Rights[Short term]”
      157. Participation in International Conference in China (Shanghai)
      158. Participation in Symposium on Patent Litigation in Europe and Japan 2016
      159. Participation in Japan-China-Korea IP Symposium
      160. Visit by Presiding Judge Rho Tae-Ak, Seoul High Court of Korea
      161. Visit by Presidents and Others of Foreign Patent Attorneys Associations
      162. Visit by President of the Licensing Executives Society International and others to the IP High Court
      163. Scheduled Holding of International Judicial Symposium on Intellectual Property(provisional name) 2017
      164. Visit by Foreign Students from Graduate School of International Cooperation Studies (GSICS), Kobe University
      165. Visit by Participants in 2016 JPO/IPR Training Course
      166. Exchange of Views with Judges of Delhi High Court
      167. Participation in Workshop Held at State of Andhra Pradesh, India
      168. Scheduled Holding of Judicial Symposium on Intellectual Property / TOKYO 2017
      169. IPEC Judge and CIPA President from Britain Visit IP High Court
      170. Visit by AIPPI President and Other Members
      171. Visit by WIPO Seminar Participants
      172. The holding of IP High Court Workshop
      173. Visit by AIPLA Representatives
      174. Visit by International Students under the WCO Scholarship Program
      175. Participation in the International Conference at Fordham University
      176. Meeting with Chief Judge Prost of the United States Court of Appeals for the Federal Circuit (CAFC)
      177. IP High Court Chief Judge’s Visit to the United States Patent and Trademark Office (USPTO)
      178. Visit to IP law firms in the U.S.
      179. Participation in 2017 INTA Annual Meeting
      180. Visit to the European Union Intellectual Property Office
      181. Visit by the President of LES International
      182. Visit by JICA/WIPO Trainees
      183. Participation in International Conference held at University of Washington, U.S.
      184. Visit by Participants in FY2017 JPO/IPR Training Course
      185. Visit by Participants of Nagoya University’s CALE Summer Seminar
      186. Visit by JICA Trainees in 2017
      187. Visit by Participants in St. Gallen University’s Executive Master of European and International Business Law Program
      188. Case of the Mock Trial for Day 1(Oct.30)of Judicial Symposium on Intellectual Property/TOKYO 2017
      189. Participation in the 2017 International IP Court Conference in the Republic of Korea
      190. Visit by the Chief Justice of the Supreme People’s Court of Vietnam
      191. Visit by Senior Judges of the United States Court of Appeals
      192. Visit by Collaborative Researchers from China
      193. Start of Judicial Symposium on Intellectual Property / Tokyo 2017
      194. End of Judicial Symposium on Intellectual Property / Tokyo 2017
      195. Visit by Judge O’Malley of CAFC and Judge Haase of Dusseldorf District Court
      196. Visit by Presiding Judge Hwan-Soo Kim from the Patent Court of Korea, and Other Guests
      197. Visit by U.S. Attorney(Adjunct Professor) James D. Stevens and one Other Guest
      198. Visit by US Bar Liaison Council Members
      199. Visit by Trainees of Japan-Mexico Knowledge Co-Creation Program for the Strategic Global Partnership- Intellectual Property Rights [Short term]
      200. Visit to JAXA Tsukuba Space Center
      201. Results of Mock Trials held in Judicial Symposium on Intellectual Property/Tokyo 2017 (non-password protected version posted)
      202. Lecture at theJapan-China Joint Seminar on IPR Enforcement
      203. Visit by Attorney at law Dirk Schuessler-Langeheine of Germany
      204. Visit by Legal Apprentices from France's Ecole National de la Magistrature
      205. Visit by International Students Studying at Kobe University Graduate Course
      206. Visit by Instructors of the Judicial Training Center of Indonesia
      207. Visit by a Legal trainee from Germany
      208. Lectures in Training Program in Japan for Knowledge Co-Creation Program with Indonesia for IP Litigation
      209. Visit by Stanford Law School Students
      210. Visit by JIPII Seminar Participants
      211. Scheduled Holding of Judicial Symposium on Intellectual Property / TOKYO 2018
      212. Visit by a Delegation of the American Intellectual Property Law Association
      213. Participation in the 20th Anniversary International IP Law Symposium
      214. Visit by International Students under the WCO Scholarship Program
      215. Visit by IPOS Assistant Chief Executive and Other Delegation Members
      216. Participation in the INTA 2018 Annual Meeting
      217. Visit by AIPPI President and Members
      218. Announcement of newly translated judgment
      219. Update of IP Judgments Database
      220. Visit by JICA/WIPO Trainees
      221. Visit by Participants of the Meiji University Law in Japan Program 2018
      222. Visit by Graduate Students of Keio University
      223. Visit by JICA Trainees in 2018
      224. Update of IP Judgments Database
      225. Scheduled Holding of Judicial Symposium on Intellectual Property / TOKYO 2018
      226. Visit by a Professor and Students from the Graduate School of Information Technology and Intellectual Property,Dankook University in Korea
      227. Update of IP Judgments Database
      228. Update of IP Judgments Database
      229. Visit by the members of the Boards of Appeal of EPO
      230. Visit by Professor Christoph Ann from Technical University of Munich
      231. Participation in International Symposium 2018 Held at German Patent and Trade Mark Office on Patent Litigations in Japan and Germany
      232. Visit by Judges from Germany, U.K. and U.S.
      233. Opening of Judicial Symposium on Intellectual Property/Tokyo 2018
      234. Closing of Judicial Symposium on Intellectual Property/Tokyo 2018
      235. 【JSIP】The slides and the interlocutory judgment are posted
      236. Participation in an International Conference held in Ottawa, Canada
      237. Visit by Judge Cho Jong Hyun of Goyang Branch of Uiejeongbu District Court of Korea
      238. Visit by Students of the University of Washington, U.S.A
      239. Visit by IPO Representatives from the U.S.
      240. Visit by lecturers for JETRO European IP Seminars
      241. Participation in the 2018 International IP Court Conference in the Republic of Korea
      242. Attendance at FICPI-JAPAN Osaka Symposium 2018
      243. Visit by the Delegation of the China Trademark Association
      244. Participation in the First Intellectual Property Judges Forum Held at WIPO Headquarters
      245. Visit by Attorneys from Germany, France, the U.K. and the U.S.
      246. Visit by Participants in 2018 JPO/IPR Training Course
      247. Visit by Judges from ASEAN Member Countries
      248. Participation in Judicial Symposium on Intellectual Property
      249. Photos from the Japanese mock trial
      250. Photos from the German mock trial
      251. Photos from the French mock trial
      252. Photos from the UK mock trial
      253. Photos from the US mock trial
      254. Photos from the panel discussion
      255. Update of IP Judgments Database
      256. Visit by Judges of Indonesia
      257. Update of IP Judgments Database
      258. Visit by Legal Apprentices from France's Ecole Nationale de la Magistrature
      259. Visit by the Director of the Directorate General of Intellectual Property of Indonesia and Other Officials
      260. Update of IP Judgments Database
      261. Update of IP Judgments Database
      262. Update of IP Judgments Database
      263. Update of IP Judgments Database
      264. Visit by Delegation from Nanjing Intermediate People’s Court
      265. Visit by Delegation from AIPLA
      266. Scheduled Holding of Judicial Symposium on Intellectual Property / TOKYO 2019
      267. Three in One: Global Patent Trials, Held in New York
      268. Meeting with Chief Judge Prost of the United States Court of Appeals for the Federal Circuit (CAFC)
      269. IP High Court Chief Judge's Visit to the United States Patent and Trademark Office (USPTO)
      270. IP High Court Chief Judge's Visit to the United States International Trade Commission (USITC)
      271. IP High Court Chief Judge's Visit to the United States Court of Appeals for the Second Circuit
      272. IP High Court Chief Judge's Visit to the United States District Court for the Southern District of New York (SDNY)
      273. Participation in International Conference at Fordham University
      274. Visit by a Delegation from the International Law Section of the State Bar of California
      275. Visit by a Delegation from Court of Justice of Kingdom of Thailand
      276. Visit by International Students under the WCO Scholarship Program
      277. Participation in the INTA 2019 Annual Meeting
      278. Visit by AIPPI President and Other Guests
      279. Update of IP Judgments Database
      280. Update of IP Judgments Database
      281. Attendance at the Munich International Patent Law Conference 2019 (June 28)
      282. Visit by Members of the Boards of Appeal of EPO (July 5)
      283. Visit by JICA/WIPO Trainees (July 8)
      284. Visit by Participants in the Meiji University Law in Japan Program 2019 (July 10)
      285. Update of IP Judgments Database
      286. Visit by Judges of Indonesia (August 2)
      287. Visit by the Delegation of the China Trademark Association (September 30)
      288. Visit by Mr. Bernhard Schröder from the Federal Ministry of Justice and Consumer Protection (September 3)
      289. Attendance at the Global Series 2019 (October 14 to 16)
      290. Participation in the International IP Court Conference in the Republic of Korea (From October 16 to 18)
      291. Visit by JICA Trainees in 2019 (September 4)
      292. Visit by the Delegation of Padjadjaran University, Indonesia (October 18)
      293. Visit by a Long-term Trainee of the APIC-JIPII (September 13)
      294. Judicial Symposium on Intellectual Property / TOKYO 2019
      295. Visit by Judges and Attorneys who speak in JSIP2019(September 24)
      296. Closing of Judicial Symposium on Intellectual Property/Tokyo 2019
      297. Opening of Judicial Symposium on Intellectual Property/Tokyo 2019
      298. Photos from the mock trial of Australia
      299. Photos from the mock trial of China
      300. Photos from the mock trial of India
      301. Photos from the mock trial of Korea
      302. Photos from the mock trial of Japan
      303. Photos from the mock trial of Panel discussion
      304. 【JSIP2019】Slides presented in the mock trials and mock trial judgments are posted.
      305. 【JSIP2019】The Symposium will be also broadcast on the internet.
      306. Update of IP Judgments Database
      307. Update of IP Judgments Database
      308. Visit by Participants in 2019 JPO/IPR Training Course (November 19)
      309. Participation in the 2019 Intellectual Property Judges Forum Held at the WIPO Headquarters in Geneva (From November 13 to 15)
      310. Update of IP Judgments Database
      311. Visit by US Bar Liaison Council Members (October 18)
      312. Visit by Professors and Students from the Graduate School of Information Technology and Intellectual Property, Dankook University, Korea (December 12)
      313. Update of IP Judgments Database
      314. Update of IP Judgments Database
      315. Visit by a Member of the Supreme Judicial Council of Armenia (January 22)
      316. Visit by Participants in 2019 JPO/IPR Training Course (February 4)
      317. Lecture for Indonesian Judges (February 6, at the Red-Brick Building of the Ministry of Justice)
      318. Visit by International Students Studying at the Graduate School of International Cooperation Studies, Kobe University (February 12)
      319. Update of IP Judgments Database