Explanation of the New IP Conciliation at the Osaka District Court
September 1, 2019
21st and 26th Civil Divisions
Osaka District Court
In 1999, the Osaka District Court started operating the practice for conciliation
concerning intellectual property cases (hereinafter referred to as "IP conciliation").
Since then, a certain number of IP cases have been resolved through IP conciliation.
Along with the new practice for IP conciliation to be put into operation at the Tokyo
District Court, the Osaka District Court has drawn up this explanatory document and the"Guidelines for IP Conciliation Proceedings at the Osaka District Court" attached hereto
as additions to the existing framework for IP conciliation, and as from October 1, 2019,it will start operating the new practice for IP conciliation so that IP conciliation will be
more accessible to parties to IP cases.
This document provides an explanation of the basic framework and characteristicsof the new IP conciliation. For details concerning the method of filing a petition and theguidelines for conducting proceedings, please refer to the "Guidelines for Proceedings."
1. What Is IP Conciliation?
(1) IP conciliation is a means to solve civil disputes over intellectual property rights in aspeedy manner through flexible proceedings for civil conciliation.
(2) Civil disputes over intellectual property rights are monetary or non-monetarydisputes over the existence or the scope of rights and obligations under private law withregard to: patent rights, utility model rights, design rights, trademark rights, rights ofauthors, print rights, neighboring rights, layout-design exploitation rights, breeder'srights under the Plant Variety Protection and Seed Act, unauthorized use of trade names,
etc. prohibited under the Unfair Competition Prevention Act, the Commercial Code, andthe Companies Act, and unauthorized use of another person's name or portrait(infringement of rights of publicity).
(3) While litigation is a procedure that is carried out basically toward obtaining a court
judgment, conciliation is a procedure for solving a dispute through negotiations(compromise) between the parties.
(4) Civil conciliation is a procedure conducted at a summary court or district court thataims to solve a dispute with the help of conciliation commissioners appointed fromthose with expert knowledge and experience in various fields of society. IP conciliation,

which is one category of civil conciliation, is available at the Tokyo District Court andthe Osaka District Court, where divisions specialized in IP cases are established, and it
is conducted by a conciliation committee composed of a judge who handles IP cases asregular duty, and conciliation commissioners who are lawyers and patent attorneys withvast experience in dealing with IP cases.
(5) IP conciliation is conducted with the aim of solving a dispute in a speedy manner on
the premise that the parties have agreed to bring their dispute to conciliation and haveengaged in some negotiations beforehand, and through the procedure where theconciliation committee may present its opinion by a fixed date.
2. Characteristics of IP conciliation
As compared to litigation, IP conciliation has the following characteristics: (1)flexible; (2) economically efficient; (3) expertness; (4) speedy; (5) effective; and (6)closed to the public.
(1) Flexible
Any person who is a party to a dispute may file a petition for conciliation. Thismeans that not only a right holder but a party against whom a right is enforced may filea petition for conciliation to solve the dispute (Article 2 of the Civil Conciliation Act).
In the written petition for conciliation, the petitioner must state the object of thepetition and the points of the dispute (Article 4-2 of the Civil Conciliation Act). As
compared to a complaint to be submitted when filing a lawsuit (Article 133 of the Codeof Civil Procedure), the petitioner for conciliation can state the backgrounds andrealities of the dispute and the details of the desired solution of the dispute more
flexibly.
The petitioner may withdraw the petition for conciliation after hearing the opinionof the conciliation committee and negotiate with the respondent out of court based onthat opinion. If the petitioner finds it difficult to reach a solution through negotiations, it
is possible to use other procedures such as filing a lawsuit or petitioning for an order ofprovisional disposition. The petitioner for conciliation is not necessarily required to seeka solution only through conciliation.In these aspects, conciliation can be used more
flexibly than litigation.
(2) Economically efficient
The amount of fees required for filing a petition for civil conciliation is less thanhalf the amount of fees required for filing a lawsuit if the economic benefit sought bythese means is the same (Article 3, paragraph (1) of the Act on Costs of CivilProcedure).

No additional costs are required to hear an opinion of the judge of the IP division or
the conciliation commissioners who are lawyers or patent attorneys, or to seek theadministration of some affairs by a judicial research official (except for costs incurred
for serving documents upon the parties and examining evidence).
If conciliation ends unsuccessfully, and the petitioner files a lawsuit with regard tothe claim for which conciliation has been sought, within two weeks after receiving thenotice of unsuccessful conciliation, the amount of fees paid when filing a petition for
conciliation is deducted from the amount of fees required for filing an action (Article 5,paragraph (1) of that Act).
Thus, from an economic perspective, IP conciliation is a cost-efficient procedure.
(3) Expertness
Proceedings for IP conciliation are conducted by the conciliation committee set up
for each case.
At the Osaka District Court, IP conciliation is conducted by the conciliationcommittee composed of three members, i.e., one judge who is in charge of IP cases atthe 21st or 26th Civil Division, and two conciliation commissioners who are lawyers
and patent attorneys with vast experience in dealing with IP cases (two lawyers, or one
lawyer and one patent attorney, depending on the case).
In cases in which technical matters are involved in the dispute, a judicial research
official may administer some affairs during the proceedings. Legally, a technical advisor
may also administer some affairs (Article 22 of the Civil Conciliation Act; Article 33 of
the Non-Contentious Case Procedures Act), but it is rare for a technical advisor to be
involved in IP conciliation, which aims at speedy proceedings as explained in (4) below.
The parties may ask the conciliation committee composed of IP experts for anopinion from a fair and neutral viewpoint and advice toward a solution of the disputewith regard to legal and technical matters over which they have conflicting arguments.
(4) Speedy
In order to use IP conciliation, the parties must reach an agreement on jurisdiction
for filing a petition for IP conciliation with the Tokyo District Court or the OsakaDistrict Court. In most cases, the existence of such an agreement suggests that thepetitioner and the respondent have some negotiations beforehand, and that they go toconciliation after understanding each other's allegations and the issues between them.
On that premise, the parties to IP conciliation are required to submit their
allegations and evidence at an early date so that the conciliation committee can verballypresent its determination and opinion toward a solution of the dispute by the third date
for proceedings. Thus, IP conciliation is designed for speedy proceedings.

(5) Effective
Conciliation is a procedure aimed at achieving the solution of a dispute throughnegotiations between the parties in accordance with reason and the circumstances of thedispute (Article 1 of the Civil Conciliation Act). Therefore, the solution reached throughconciliation is likely to be acceptable, voluntary, and easy for the parties to complywith.
When conciliation ends successfully and a conciliation record is prepared, thematters entered in the record have the same effect as a court judgment. The same applies
when the court issues an order in lieu of conciliation by its own authority (Article 17 ofthe Civil Conciliation Act) and the order becomes final and binding without objection(Articles 16 and 18 of the Civil Conciliation Act; Article 267 of the Code of Civil
Procedure).
The use of IP conciliation enables the parties to a dispute to reach an effective
solution that is fit for the circumstances of the dispute.
(6) Closed to the public
While oral argument held in litigation proceedings is open to the public, allproceedings for IP conciliation are closed to the public. Therefore, matters such aswhether or not a petition for conciliation has been filed or when conciliation
proceedings are held are kept undisclosed to any third party.
Similarly, while any person may inspect case records of litigation, records ofconciliation are not available for inspection by a third party who has no interest in thecase (Article 12-6 of the Civil Conciliation Act).
Thus, IP conciliation is suitable for a party who wishes to solve a dispute based on
the court's determination and opinion but does not want the existence of the dispute andits details open to the public.
3. Types of cases that are suitable or unsuitable for IP conciliation(1) Cases suitable for IP conciliation
IP conciliation is suitable for such cases as where the point of contention between
the parties is clear, but which party's allegation is valid cannot be decided throughnegotiations between them, and if this issue is decided based on the court'sdetermination and opinion, the parties can reach an agreement on the details of how tosolve the dispute.
As the object of the petition for IP conciliation can be stated flexibly (2.(1) above),
IP conciliation can also be used to solve only a specific part of the dispute.
At present, the new framework for IP conciliation is considered to be useful toaddress the following cases, which are cited just as examples, and IP conciliation is, ofcourse, expected to be used for various other cases.
(i) A patent dispute in which there is no contention between the parties with regard to
the validity of the patent right and the amount of reasonable licensing fees, andwhether the respondent's product involves a specific constituent element of thepetitioner's invention is the sole point of contention.
(ii) An IP dispute mentioned in 1.(2) above in which the petitioner, while planning tochange the specification of its product in order to avoid a dispute with therespondent, anticipates from the past negotiations that the respondent would
enforce its IP right against the petitioner's new product with the specification after
the change, and seeks to confirm before the market launch that its new product does
not infringe the respondent's right.
(iii) An IP dispute mentioned in 1.(2) above in which there is no contention between theparties with regard to the fact that the respondent's act falls within the scope of thepetitioner's right, and whether the respondent has prior user's right is the sole pointof contention.
(iv) A copyright dispute in which there is no contention between the parties with regard
to the fact that the respondent has used the petitioner's work without permission,and the petitioner is not satisfied with the calculation by the respondent regarding
the amount of sales earned by the respondent and the amount of loss incurred by thepetitioner.
(v) A dispute concerning a contract in which the petitioner wishes to identify anappropriate amount of licensing fees while assessing the invalidity risk of its IPright because the respondent has pointed out the possibility of the invalidation ofthe IP right.
(vi) A case under the Unfair Competition Prevention Act in which the petitioner
suspects that its former employee has stolen a trade secret after finding a job at therespondent company, and seeks only the return of the trade secret throughclosed-door proceedings.
(2) Cases unsuitable for IP conciliation
Conciliation is considered unsuitable to deal with cases in which the contention
between the parties is so intense that it is unlikely that they can reach a solution throughnegotiations.
Speedy proceedings described in 2.(4) above may also be difficult in such cases as
those with complicated backgrounds or involving a broad range of issues.