AIPPI Journal, March 201967

Summary of the “Judicial Symposium onIntellectual Property/TOKYO 2018”
Makiko TAKABE*

Part 1 Introduction
The “Judicial Symposium onIntellectual Property/TOKYO 2018”(“JSIP2018”) was held for two days fromOctober 31, 2018. This symposium wasco-organized by the Supreme Court, theIntellectual Property High Court, theMinistry of Justice, the Japan PatentOffice, the Japan Federation of Bar
Associations, and the IP Lawyers Network Japan following the “JudicialSymposium on Intellectual Property/TOKYO 2017” (“JSIP2017”) held in
October 2017. 1,2This report is a brief summary of theoverview and results of JSIP2018.

Part 2 Overview of JSIP2018
1.

Background of the symposium
In the field of intellectual property, it
is common to see similar disputes occurring in many countries at the same time
because business activities are becoming
more globalized and the technology protected by IP rights is used throughout theworld. As a result, in this sense, it is extremely important to pay attention to thetrends of IP disputes in other countries
and to ensure that the interpretation andapplication of laws by Japanese courts
meet the world’s standards.
Since its establishment in April 2005,
the IP High Court has been receiving an
increase in number of visitors fromabroad. In total, more than 3,000 legal
experts visited the IP High Court fromother countries. Also, there has been an
increasing number of opportunities forJapanese judges to go abroad and makepresentations at international conferenceson IP-related issues or attend such conferences as panelists.
Amid this trend, JSIP2017 held inOctober 2017 was the first symposium
for which the IP High Court joined as oneof the organizers. The IP High Court
offered a program in the symposium inwhich four countries, namely, Japan,China, South Korea, and Singapore, conducted mock trials and a panel discussion
on the topic of evidence collection procedures. Such program was provided for the* Chief Judge, Intellectual Property High Court of Japan68

purpose of promoting mutual understanding of the legal systems and judicial practices in East Asia in terms of IP-related
disputes, raising a sense of partnershipand solidarity among the four countries inorder to improve the dispute settlement
capability in the region as a whole, andproviding the legal experts and businesspersons who attended the program withaccurate information concerning the legal
systems and judicial practices in thosecountries in order to help them conduct
IP-related activities in the region.
The “Judicial Symposium on Intellectual Property/TOKYO 2018” was held
as an event following JSIP2017 by inviting Asian countries. JSIP2018 was heldby inviting Germany, France, the U.K.,
and the U.S., in order to achieve theaforementioned goals in cooperation with
Western countries.
2.

Overview
JSIP2018 was held for two days inTokyo (October 31 and November 1,AIPPI Journal, March 20192018 at Bar Association Building(Auditorium “Creo”)). 527 people participated on the first day, on which the IP
High Court provided the aforementioned
program, whereas 357 people participatedon the second day, on which the JPO provided a program. In total, about 900 people participated in the symposium.
JSIP2018 has the subtitle “GlobalCollaboration for IP Dispute Resolution.”
Many legal experts were invited such as
judges and attorneys from Germany,
France, the U.K., and the U.S. and also
examiners from the USPTO and the EPO.
In particular, it should be noted thatworld-renowned judges in the field ofintellectual property rights participated inthe symposium such as Presiding JudgePeter Meier-Beck from the German Federal Supreme Court (Bundesgerichtshof),
Judge Richard Hacon from the Intellectual Property Enterprise Court, andJudge Richard Linn from the UnitedStates Court of Appeals for the FederalCircuit.

AIPPI Journal, March 2019

Part 3 Overview of the results
1. First day (October 31)(1) Overview of the program
On the first day, the IP High Court
offered a program.
JSIP2018 started with the greetingsfrom the Supreme Court Justice,
Tsuneyuki Yamamoto, followed by mocktrials and a panel discussion conducted by
the participants from five countries,
namely, Japan, Germany, France, theU.K., and the U.S.
The theme of the mock trials was“Patent validity in patent infringement
lawsuit.” In each mock trial, firstly, ajudge or attorney from the five countries
explained the legal system of theirrespective home countries. Then, a mocktrial was conducted by the judge and IP
lawyers in their country. In all of themock trials, the same hypothetical casewas handled. 3 After the mock trials conducted by judges and lawyers from thefive countries, a panel discussion washeld by a total of 10 panelists consistingof judges and lawyers from the five countries. 4The details of the mock trials andpanel discussion conducted by the representatives of the five countries aredescribed in a separate report (AkiraKatase and Ken Furusho, “Report on theJudicial Symposium on Intellectual Property/TOKYO 2018 (Fisrt Day): Comparison on ‘Patent Validity in Patent Infringement Lawsuit’ based on Mock Trials
conducted by Five Countries,” page X ofthis magazine). In short, the mock trials
and panel discussion has revealed thateach country has a different legal system
to handle a dispute over the issues ofpatent invalidity in a patent infringement
lawsuit. Although the mock trials reached69

almost the same conclusion, the systemsof the five countries differ greatly interms of the decision-making process andapproach.
(2) Patent invalidity dispute
In Japan, we have a so-called doubletrack system to handle patent invalidity
disputes. Under the first track, an alleged
infringer can file a request for a patent
invalidation trial before the JPO andappeal its decision to the IP High Court.
In addition to that, alleged infringer canraise a patent invalidity defense in apatent infringement lawsuit (Article 1043 of the Patent Act). In the aforementioned five countries excluding Germany,
it is possible to raise a patent invalidity
defense in an infringement lawsuit. Furthermore, in France, the U.K., and theU.S., a counterclaim can be filed against
an infringement lawsuit in order to seek
revocation of a patent or to seek adeclaratory judgment on patent invalidity.
In this way, a patent invalidation procedure is available at an infringement courtin those countries. In Germany, theFederal Patent Court is in charge ofpatent invalidation lawsuits, which isdifferent from the court in charge of hearing a patent infringement case. Moreover,as a Patent Office’s procedure to invalidate a patent after the expiration of theperiod to reexamine, there is the patent
revocation procedure in the U.K. and theIPR (Inter Partes Review) system in theU.S. However, there are no such procedures in Germany and France.
In the 21st century, Japan adopted aprocedure to file a request for a patent
invalidation trial before the JPO and also
a procedure to raise a patent invalidity
defense in a patent infringement lawsuit.
Thanks to these procedures, the proceed-70

ings of the infringement lawsuits can be
conducted efficiently without suspending
it. The mock trial and panel discussion
gave us an opportunity to show measures
to prevent legal instability under theaforementioned two procedures (socalled double track). One of thosemeasures is the establishment of Article
104-4 of the Patent Act, which imposes
restrictions to raise a patent invalidity
defense at a re-trial even if a contradicted
JPO decision is finalized following thefinalization of the judgment of the infringement lawsuit. The other measure isthat the same panel of the IP High Court
which has the exclusive jurisdiction over
the two procedures is to conduct bothproceedings and make same determinations on patent validity. We were alsoable to explain that the allegations andproof submitted through the two procedures are required to be the same in orderto ensure fairness between the patentee,
which is needed to win the case throughboth procedures and the defendant of an
infringement lawsuit, which can choose
either of the two procedures.
(3) Counter defense of correction
In Japan, even if there are grounds toinvalidate a patent, it is possible to exercise the patent right by alleging counter
defense of correction (re-defense). In
Germany, a patentee is permitted to limit
the scope of patent claims until theconclusion of oral argument in order tocircumvent the grounds for invalidation.
In France, a patentee can circumvent thegrounds for invalidation by filing a request with the EPO or the National Institute of Industrial Property (INPI) ofFrance for claim limitation. In the U.K.,
not only the Patent Office but also a court
has the authority to permit a correction toAIPPI Journal, March 2019a patent specification. On the other hand,in the U.S., an applicant is not permitted
to correct the patent claim unless the correction is to correct an obvious error interms of formality. Since a patentee is not
permitted to request a claim correction asa counter defense against a defense ofpatent invalidity, it is important for apatent applicant to carefully make sufficient sub-claims and obtain a patent.
In this way, the patent system differsfrom one country to another with regard
to a counter defense of correction. In themock trial conducted by Japanese panelists, the patentee made a counter defenseof correction against the defense of patent
invalidity and consequently obtained acourt determination that some of thedefendant’s products infringed the patentright. We were able to introduce the exercise of claim correction in an infringement lawsuit.
(4) Introducing expert knowledge
In recent years, many patent lawsuits
are filed over the issues related to advanced technology.
Japanese courts acquire expert
knowledge by using judicial research
officials and technical advisors. The system of explanatory session also greatly
contributes to promoting the understanding of advanced technology. In the mock

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trial conducted by Japan, we were able toshow how an explanatory session is conducted. In contrast, the mock trials conducted by the U.K and the U.S. respectively are unique in that they conducted
proceedings by adopting expert witnesses.
2.

Second day (November 1)
On the second day, the JPO offered a
program in which examiners were invitedfrom the EPO and USPTO to hold a lecture and two panel discussions. For moredetail, please refer to a separate report(Shunsuke Shikado and others, “Reporton the Judicial Symposium on Intellectual Property/TOKYO 2018 (SecondDay): Global Collaboration for IP Dispute Resolution” page X of this magazine).
First,Deputy
Commissioner
Kunihiko Shimano offered a keynotespeech. Then, the JPO, the EPO, and theUSPTO provided lectures titled “TheLatest Situation of Trials and Appeals ofEach Office” and “Introduction of Trialand Appeal System for Patent Invalidation of Each Office.” After that, panel
discussions were held on the topics “CaseStudy on Trial and Appeal Procedures forPatent Invalidation” and “Case Study
Related to Whether or Not Claims Can
Be Corrected/Amended in a Trial forInvalidation /IPR/ Opposition.” Throughthese discussions, it became clear that
there are differences among Japan,
Europe, and the U.S. in terms of PatentOffices’ procedures, etc.
At the end of the Symposium, President of the Japan Federation of BarAssociations, Yutaro Kikuchi, gave closing remarks. JSIP2018 conducted for twodays finally came to an end.

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Part 4 Achievement and comments
1.

Purpose of the international symposium
JSIP2018 is overviewed as above.
It is extremely important to hold aninternational symposium by inviting legal
practitioners from other countries toJapan because it will give an opportunity
to share information and exchange opinions in Japan and to learn about IP
systems and practices in major countries
around the world. Also, an international
symposium is very meaningful as ameans to show the presence of Japanesecourts to the international community.
In JSIP2017, the main topic was thecollection of evidence. The symposium
revealed the differences among theparticipating countries on the decisions
whether to issue an order to submit documents and whether to accept a request for
inspection. Those differences would
occur since the legal system differs fromone country to another. Having been
given an opportunity to learn about suchdifferences, we were able to reconsider
the current Japanese practices concerning
an order to submit a document andinspection.
In JSIP2018, we were able to accomplish great achievements to enhance thedispute settlement capability of courts bymeans of deepening our mutual understanding and recognition about the legalsystems and judicial practices in major
Western countries with regard to how todeal with a patent invalidity dispute and acounter defense of correction in aninfringement lawsuit. For the attorneys,patent attorneys and business persons
dealing with IP who attended the symposium, JSIP2018 must have been a good

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opportunity to acquire knowledge on thelegal systems of other countries, which
will be useful for overseas businessexpansion in the increasingly globalized
environment and also a great opportunity
to obtain information about the litigation
systems of other countries, which will be
useful for resolution of international IPdisputes. 5Moreover, the greatest achievementsof all must be the close human relationships we established with IP judges andthe IP lawyers of other countries.
The example case shared in mocktrials was a significantly simplified version of an actual case. In JSIP2018, inorder to offer a program on the first day,the members 6 of the IP High Court spentalmost one year to carry out detailed
planning and all the preparations despite
their busy work schedules. The symposium members conducted research on thelegal systems of the participating countries, created an example case, preparedtranslations, contacted the persons who
were scheduled to be invited from abroad,and planned topics for panel discussions.
Thanks to the leadership of these young
judges and the cooperation from major
members of the IP Lawyers Network
Japan and the Japan Federation of Bar
Associations, we were able to offer a very
beneficial, meaningful program on thefirst day of the symposium. We wouldlike to take this opportunity to express
our heartfelt gratitude.
2.

Future prospects
With the advancement of globalization, the JSIP2018 had a total of about
900 participants and ended in a great
success. Understanding the significant
achievement of this year’s symposium,
we plan to hold an international sympo-AIPPI Journal, March 2019sium in 2019 as well. In the next symposium, we will focus on Asian countries
once again. We hope to invite judges not
only from China, and South Korea, butalso from India and Australia, which are
attracting public attention in recent years,and plan to hold mock trials. 7The IP High Court will further promote international exchanges in tandemwith the advancement of globalization
and actively disseminate information. Wewill contribute to the continuous development of the Japanese IP litigation system
by holding a Judicial Symposium onIntellectual Property in cooperation with
the Ministry of Justice, the Japan Patent
Office, the Japan Federation of Bar
Associations, IP Lawyers Network Japanand other organizations.
(Notes)123

JSIP2018 was supported by Ministry ofForeign Affairs, International Civil and Commercial Law Centre Foundation, IntellectualProperty Strategy Headquarters, KEIDANREN(Japan Business Federation), International
Association for the Protection of Intellectual
Property of Japan, Japan Intellectual Property
Association, and Japan Patent Attorneys
AssociationOn November 30, 2018, “Judicial Symposiumon Intellectual Property Advanced Seminar for
ASEAN+3 2018” was also held.
In the Japanese mock trial, the author, Ayako
Morioka, Judge, IP High Court and Ken
Furusho, Judge, IP High Court played the rolesof judges, while Shoji Kemmoku, Judicial
Research Official, IP High Court played therole of a judicial research official. Yoichiro
Komatsu, Attorney, played the role of theattorney representing plaintiff. Makoto Hattori,Attorney, played the role of the attorney
representing defendant. Peter Meier-Beck,
Presiding Judge of Germany, Denis Monégier
du Sorbier, Attorney of France, Richard Hacon,
Presiding Judge, of the U.K. and Richard Linn,
Judge of the U.S. played the roles of judges
and led the judicial proceedings. IP lawyers ofthe participating countries presented arguments.

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At the panel discussion, Yoshiyuki Mori,
Presiding Judge, IP High Court served as theleading moderator, while Akira Katase, Judge,IP High Court, and Attorney Hattori served asa moderator.
The results of the questionnaire survey conducted on the attendants revealed that theattendants made the following comments: “Itwas like attending trials in Japan, the U.S., andEurope at once. I was able to get a quick
overview of the differences between the views
and stances of other countries,” “Since thesymposium allowed me to make a comparison
between different countries based on theexample case, it was easy to understand,” “Iwas interested in approaches taken by othercountries in handling the example case,” “Thesymposium was useful because I was able tosee mock trials and learn about the process ofmaking a court judgment,” “The symposium
gave me a precious opportunity to learn about
the differences between other countries interms of the current situation, the measurestaken in each country, and the dispute settlement approach.
Judge Masaki Sugiura, Judge Sumiko Sekine,
Judge Ayako Morioka, Judge Aya Takahashi,
Judge Ken Furusho, Judge Akira Katase, JudgeDaisuke Kumagai, Judge Hiromitsu Magira,and Judicial Research Official Shoji Kemmoku
From September 25 to 27 of this year, thesymposium is scheduled to be held at Bar
Association Building (Auditorium “Creo”) inTokyo.

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