AIPPI Journal, May 2005

131

Outline of the Intellectual Property High Court of Japan
Katsumi Shinohara*

1. History of the Intellectual
Property High Court
The half-century long history of theintellectual property division (IP Division) of the Tokyo High Court opens a
new page with the start of the Intellectual
Property High Court as a kind of “special
branch” within the Tokyo High Court asof April 1, 2005. Tracing its long history,
after the post-war amendment to the Patent Law of 1921 (setting forth the system
for appeal trials and appeal to the Grand
Court) in July 1948, by which the Tokyo
High Court was given exclusive jurisdiction over suits against appeal/trial decisions made by JPO, the 5th Special Division was established in November 1950
for handling appeals from JPO and district court decisions on intellectual property cases. Judicial research officials
were also assigned pursuant to Article 57of the Court Organization Law.
Subsequently, various additional divisions were given responsibility to handle IP cases — the 5th Special Division
was replaced with the 6th Civil Divisionin March 1958, then the 13th Civil Divi* Chief Judge of the Intellectual Property High Courtsion in December 1959, the 18th Civil
Division in January 1985, and the 3rd
Civil Division in April 2002 were added.
During that period, the official name of
the IP Division remained the “Civil Division”, although the group had been often
called the patent division, industrial property division or intellectual property division. These specialized divisions became
independent from the regular Civil Division as of April 1 of 2004 due to institutional reform and were renamed as the“Intellectual Property Divisions (IP Division)”. Accordingly, in the order of theoffice spaces located on 17th floor ofTokyo Court Complex in Kasumigaseki,
the names of those specialized Civil Division were changed as follows: the 3rd
Civil Division to the 1st IP Division, the13th Civil Division to the 2nd IP Division,
the 6th Civil Division to the 3rd IP Division and the 18th Civil Division to the
4th IP Division, respectively. Furthermore, the 6th Special Division (Grand
Panel of IP cases) was created for dealing
with proceedings heard by a panel of fivejudges. On April 1, 2005, all these divi-

132

sions were transformed into the 1st to 4th
Divisions and into the Special Division of
the Intellectual Property High Court(hereinafter the “IP High Court”). This
article will discuss and examine certain
problems and provide some visions forthe future concerning the IP High Court.
Please note that the opinions discussed inthis article represent my personal views
only.

2. Background of the Establishment of the IP High Court
1) Pro-patent National Policy
In June 2001, the Justice System
Reform Council published various recommendations and expressed its viewthat “Strengthening of Comprehensive
Response to Cases Related to Intellectual
Property Rights” is one of the most important subjects of the civil justice reform.
The Justice System Reform Council
pointed out that “Many countries are designating the issues of enriching andspeeding-up of IP-related proceedings as
a part of the international strategies concerning intellectual property and taking
various measures to promote those strategies, and the Japanese government should
also, taking these trends into consideration, designate these issues as one of themost important subjects to which the government should fully commit itself”, andrecommended that, with the goal of reducing the trial period of IP cases in half,
the specialized divisions of the Tokyo
and Osaka District Courts should substantially function as “patent courts”, andfurther recommended necessary measuresby examining the issues of reinforcing thesystem for resolving IP cases with moreexpertise at the Tokyo and Osaka HighAIPPI Journal, May 2005

Courts. With the economic recession
continuing since the collapse of the socalled bubble economy, the general viewhas been that Japan should take nationwide measures to create, protect, and use
intellectual property so as to revitalize theeconomy. The Strategic Council on Intellectual Property was established within
the Cabinet and in July 2002, the Strategic Council adopted the “Intellectual
Property Policy Outline”, which proposed,
under the concept of “an intellectual
property-based nation”, to review subjects such as the creation of an entity substantially functioning as a “patent court”
as well as reform of the appeal system,
limiting jurisdiction, enhanced expert
participation, enhancement of evidencecollection procedures, and so on. Subsequently, the Basic Law on Intellectual
Property came into force in March 2003,
providing the basic policy concerning
intellectual property matters and articulating the responsibility of the governmentfor “formulating and implementing measures for the creation, protection and exploitation of intellectual property” (Article 5), and the Intellectual Property Policy Headquarters was established in the
Cabinet. The Headquarters adopted theStrategic Program for the Creation, Protection and Exploitation of Intellectual
Property in July 2003, in which it recommended the establishment of the IP High
Court to reinforce the dispute resolutionfunction, as the “protection” part of theintellectual creation cycle (creation, protection and exploitation) and for strengthening intellectual property protection,
which is critically important from theview point of maintaining the superiorityof Japanese economy in the international
context, and for emphasizing to the pub-

AIPPI Journal, May 2005

lic and overseas that intellectual property
is a top national priority.
2) The Path to Special Legislation
After discussions within the Working
Group on Intellectual Property Lawsuits
held by the Office for Promotion of
Justice System Reform and the Task
Force on Strengthening of the Foundation
for Right Protection established under theIntellectual Property Policy Headquarters,
as well as within industry circles and thegeneral public, it was proposed to makethe IP High Court the 9th independent
High Court. However, this proposal was
not adopted, due to various problems increating such an independent High Court,
such as the possibility of increasing peripheral disputes concerning the competency of jurisdiction, the inconvenienceof proceeding with related cases in separate courts, the inconvenience for people
living in regional areas in respect of theinfringement of copyrights and businessinterests by acts of unfair competition,
many of which cases are closely related
to the local community, the feeling thatthe creation of a specialized court is inconsistent with the conventional approachtaken by the Japanese judicial system forstrengthening the system based on regularcourts and does not fit such conventional
approach, and so on.
Finally, it was agreed to establish ahighly independent court within theTokyo High Court as a “Special Branch”,
for the realization of a system that is easy
to use for the public, and the Law for
Establishing the IP High Court (Law No.
119 of 2004, hereinafter “Establishment
Law”) was enacted on June 11 of 2004,
promulgated on June 18 of 2004, and implemented on April 1, 2005 (“ShihoSeido-Kaikaku-Gaisetsu-2-Chitekizaisan-

133

Kankei - Niho/Roudo - Shimpan - ho(Overview of Judicial System Reform
Part II, Two of the Intellectual Property
Laws and the Labor Appeal Law)” by
Masaaki Kondo & Tomoyoshi Saito,p.14). Behind the history of implementing the Establishment Law, there was amajor trend, as represented by the establishment of the Basic Law on Intellectual
Property and the phrase of “an intellectual property-based nation”, in which thegovernment designated the measures forpromoting creation, protection and exploitation of intellectual property as national strategies to revive the Japaneseindustry and economy and compete in the
global markets, and under these circumstances, the courts which are the last resort of protection drew unprecedented
attention of the general public. The provision of Article 1 of the Establishment
Law, purporting that the purpose of the
Law is to establish the IP High Court“specialized in IP cases for the purpose ofenhancing the expertise in more enrichingand speeding-up the proceedings of IP
cases, in view of the fact that the judicial
function for protecting intellectual property is getting more and more importantwith the development of exploitation of
intellectual properties in Japanese economy and society”, should be construed toreflect the above backgrounds.

3. Character of IP High Court
1) Positioning as “Special Branch”
As the “Special Branch” (as set forthin the provision of Article 2) establishedby a specific law, the IP High Court is
granted a higher degree of independence
than that of other branch of High Courts,
has a specific chief judge (Article 3.2),

134judicial conference (Article 4.2) andsecretariat office (Article 5), and administers judicial administrative mattersthrough the judicial conference of the IP
High Court independently from that of
the Tokyo High Court (Article 4.1). A
branch of a High Court established pursuant to Article 22.1 of the Court Organization Law, is established by the Supreme
Court to have such branch deal with apart of the administrative duties of such
High Court within the jurisdiction of such
High Court. Currently there are six High
Court branches nationwide (Kanazawa
Branch of the Nagoya High Court,
Okayama Branch and Matsue Branch of
the Hiroshima High Court, Miyazaki
Branch and Naha Branch of the Fukuoka
High Court, and Akita Branch of the
Sendai High Court), each of which has
only a limited scope of location-based
jurisdiction, and such High Court
branches deal only with certain judicial
administrative matters authorized andcontracted by the judicial conference ofsuch High Court within the scope of such
authorization and contract in principle
without exercising any specific authority
in respect of such judicial administrations.
In contrast, the IP High Court is a court
specialized in IP cases and specificallyestablished by the legislative body by
way of a special provision to the Court
Organization Law, based on the abovediscussed reasons for legislation. The IP
High Court has a character remarkably
different from other High Court branches
in that the IP High Court deals with any
and all IP cases including certain IP cases
being subject to the exclusive jurisdictionof the Tokyo High Court (appeals of patent-related litigations, suits against appeal/trial decision made by JPO) as wellas the cases concerning the infringement

AIPPI Journal, May 2005

of copyright or business interests by actsof unfair competition in a comprehensive
manner, and that the IP High Court is
granted to exercise its specific authority
in respect of certain judicial administrative matters (such as allocation of thebusiness of court, assignment of judges,
substitution of judges in case of inconvenience, court scheduling and so on),closely connected to the specialized processing of the cases and deemed reasonable to be dealt with only within the IP
High Court. However, it is obvious that
the IP High Court is within the scope of
regular courts and not deemed as a special court in the meaning set forth in Article 76.2 of the Constitution, in view ofthe provisions that the decisions made by
the IP High Court may be appealed to theSupreme Court, that the judges working
for the IP High Court are the judges of
the Tokyo High Court and appointed by
the Supreme Court from among those appointed by the Cabinet using the list ofjudges designated by the Supreme Court,
and that the IP High Court is subject tothe supervision of the Supreme Court interms of the judicial administration(“Chiteki-Zaisan-Koto-Saibansho (Intellectual Property High Court)” by
Masayuki Yoshimura, Hogaku-Kyoshitsu
vol.287, p.2).
2) Comparison with Judicial System
of Other Countries
Under the discussions made in thecourse of establishing the Establishment
Law, comparisons were made with thejudicial system of other countries(“Chiteki - Zaisan - Sosho - Seido - no Kokusai-Hikaku-Seido-to-Unyo-ni - tsuite(International Comparison of Intellectual
Property Litigation System - the System
and Operation) by Tetsuya Oobuchi et al.,

AIPPI Journal, May 2005

NBL Special Edition vol.81; “ChitekiZaisanken - Sosho - Seido - no-Genjo -to Tenbo (Current Situation and Forecast ofIntellectual Property Litigations)” by
Makoto Jozuka, NBL vol.765, p.28). The
most frequently cited system was theFederal Circuit, which does not deal withcopyright cases but deals with IP casesand various other types of cases. About
30% of the cases heard by the Federal
Circuit are IP cases. Since the acceptanceof appeals is subject to broad latitude of
the Supreme Court, whereas the Federal
Circuit must hear all properly lodged appeals, the Federal Circuit is in effect, thelast court of appeal in many cases. The
Federal Circuit has its own law clerks andtechnical assistants as its subsidiary organ.
In contrast, the Federal Patent Court ofGermany (established in 1961) and the
Patent Court of Korea (established in1988) deal with the cases equivalent tothe suits against appeal/trial decisions
made by JPO in Japan, and the German
Patent Court has technical judges as theirconstituent members and the Korean Patent Court has technical examiners as theirsubsidiary organ to support the understanding of technical issues. Both Patent
Courts have no jurisdiction over infringement cases, and the regular courts dealing
with infringement cases utilize expert
opinions as necessary. The judicial system of each country has been developedin the context of their specific legal structure, history, culture and so on, and it isclear from the above comparison with thejudicial system of other countries that the
IP High Court of Japan is rooted in thelegal system of Japan and has a uniquecharacter.

1353) Development of Organization andDesired Operation of System
Prior to the start-up of the IP Court,
the IP Division of the Tokyo High Court,
consisting of three to four separate divisions, had functioned as one judicial unit
separately from other Civil Divisions(currently 20 divisions), each IP Division
dealing only with the IP cases of the sametypes, commonly utilizing the specificsubsidiary organ called “judicial research
official”, jointly holding various workshops and training sessions and otherevents, receiving visitors for training oron-the-spot study purposes from within
Japan or from abroad (judges from APEC,
APIC, WIPO, AIPLA, EPO, China,
Korea, Thailand and so on, scholars, appeal examiners, IP personnel of private
corporations), dispatching the judges aslecturers to external institutions (Japan
Institute of Invention and Innovation,
National Center for Industrial Property
Information and Training (former Industrial Property Training Institute), Japan
Patent Attorneys Association and so on),dispatching judges to overseas on business trip (for participating in the IP seminars held by the US law schools, symposium held by EPO judges and so on), subject to the plans made for the overall IP
unit. Figuratively, the IP High Courtchanged the “thin dotted line” conventionally drawn to make distinction between the regular Civil Divisions and the
IP Division into the “bold and solid line”,
substantially making the IP Divisionareas on the 17th floor of the Tokyo
Court Complex in Kasumigaseki thecourt specialized in intellectual property
having the jurisdiction over the cases
arising all over Japan except for certain
exceptional cases. How to develop theunprecedented system of the “Special

136

Branch” and how to operate the system
are the subjects to be examined and resolved in the future. However, even if
the IP High Court is granted certain independency and autonomy, self-righteousness depending on the specialty and expertise should never be permitted. One
thing that gives us a useful suggestion is
the fact that the Federal Circuit became
as it is today with the background that the
Frasca Report (1975), which was the key
factor behind the establishment of theFederal Circuit, pointed out the “tunnel
vision” of judges as a negative effect of
creating a court specialized in patents andthe risk of the judges reflecting theirpolitical views in the decisions (Oobuchi
et al., ditto, p.30; “Chiteki-Zaisan-SenmonKosai-ni-Gimon (Skepticism against theHigh Court Specialized in Intellectual
Property)” by Toshiaki Makino, The
Yomiuri Shimbun dated December 4,2003). Whatever the effects will be,
there is no doubt that the judicial organ
assumes an extremely heavy responsibility under the Establishment Law,
which had been established with theabove backgrounds, and we must commit
ourselves in creating a powerful organization and operating the system with harmony as a whole, being always aware of
its responsibility.

4. Personnel System
1) Judges
The number of judges belonging to
the IP Division of the Tokyo High Court
had been ten until five years ago when
the division was consisting of three divisions.
Subsequently, the number ofjudges increased to eleven in April 2000,
twelve in April 2001, sixteen in April

AIPPI Journal, May 2005

2002 when the division grew to four divisions, and finally to eighteen in April
2004. The IP High Court started withthese eighteen judges. The industrial
world having been pushing and supporting the recent pro-patent policies represents three major needs as follows:
speedy trials, trials with more expertise,and unified decision in an early stage.
Among those industrial needs, a difficult
problem involving the essence of judicial
processes relates to the subject of the desired expertise of IP judges. As it is obvious from the discussions made in respectof the introduction of so-called “technicaljudge” in the course of establishing theEstablishment Law, it seems that the issue of technical expertise of judges ismore acute for IP litigations, than for
those other special litigations requiring
specialized technical knowledge and understanding such as the medial malpractice and product-liability cases. The issue of the expertise of judges is mostly
concerned with the litigations concerning
patents and utility models, among various
IP cases, and if we take an example of acase in which the point of dispute iswhether the subject invention is entitledto a patent, the knowledge and understanding of the judge assigned to the caseshould reach, at least at the point of rendering the decision and in respect of thesubject technical matters at issue, thelevel of the person skilled in the art
whose knowledge and understanding arereasonably deemed as the standard of thedecision (the person who has ordinary
knowledge in the technical field to which
the invention belongs). In reality, however, the efforts in achieving such level is
not necessarily easy for ordinary judges
generally without technical backgroundand having acquired their practical ex-

AIPPI Journal, May 2005

perience as a so-called generalist. Further, it would be practically difficult or
impossible for the judges to have knowledge and understanding of the subject
technical matters at issue at the level
equivalent to those of the person skilledin the art from the outset, in respect of alltechnical fields having developed into
more and more highly specialized andsophisticated fields. It is also difficult toassume or expect any drastic change tothese circumstances by having law school
graduates with technical backgrounds entering the judiciary in the near future.
In the United States, there seems to
be a strong tendency to pick judges withwide knowledge and experience, with theso-called generalist preferred to the specialist. The famous Judge Randall Raderof the Federal Circuit is one such generalist without scientific and technical background, and the following statement from
Judge Rader may shed light on one of thedesired visions for IP judges: “All court
proceedings should be made in accordance with the neutral and understandable legal principles, and the most important capacity of IP judges is the legal
capacity to understand the points of technical matters required for leading to thelegal conclusion. It is sufficient for IP
judges to have passionate interest in science if they are to take active roles intheir profession.” (Interview with Judge
Rader in “Law School Report” by Yutaka
Miyoshi, NIBEN Frontier, June edition
2004, p.13). Intellectual property laws
such as the Patent Law are based on general laws such as the Civil Code, andthere is no difference between IP litigation and other general litigation in thatthe judge is required to make decisions ina thoughtful manner, according to legal
precedent. Therefore, what is required as

137

an IP judge is wide and deep sophistication and experience in the general legal
theories and judicial practices, the capacity of accurate and flexible understandingof issues, a sense of justice in seeking anappropriate dispute resolution, a sense ofbalance and so on (“Chizai-Kosai-ImejiSenko-no-Gu-Sakeyo (Intellectual Property High Court; Avoid the Folly of Pursuing only Images)” by Eiji Tomioka,
The Asahi Shimbun dated December 11,
2003; “Chizai-Seido-Kaikaku-no-Genjoto-Shorai (Current Situation and Prospectof Intellectual Property System Reform)”by Nobuhiro Nakayama, NBL vol.785,
p.5). Judge Rader represented that hewas skeptical about leaving the trials of
IP cases to the experts in science andtechnology, insisting that it is almost impossible to find an expert perfectly
matching the scientific or technical field
at issue and that judicial trials should not
be made depending on the views and theway of thinking specific to certain experts.
This skepticism seems to have somethingin common with the argument that;“Since the suits against appeal/trial decisions made by JPO are the judicial trialsof the administrative measures made by
JPO, which is an administrative agency,
the judge assigned to deal with such trial
should be a lawyer and not an expert inscience and technology” (“Tokkyo-SoshoTetsuzuki-Ronko (Study concerning Proceedings for Patent Litigations)” by
Eiichi Takigawa, issued in 1991 [Introduction]). What the personnel distribution of the judges should be and how todevelop the technical expertise of thejudges of the IP High Court are the challenges for the future. Meanwhile, it
should be critically important for thejudges of the IP High Court to try to cultivate so-called technical mind by keep-

138

ing active interests in technologies andmaintaining progressive spirit on thebasis of their sophistication as a lawyer aswell as their knowledge and experience
as a generalist, while consistently maintaining sincere efforts in researching thetechnical matters required for the judicial
decisions and deepening their understanding of such matters through the allegations made by the parties to the litigation
and by depending on the support of the
judicial research officials and listening to
the explanations made by the expert commissioners. There is no difference in essence in respect of these efforts between
the IP cases and many of the specialized
litigations other than the IP cases.
2) Judicial Research Officials
At the IP High Court, the judicial research officials support the judges byconducting research on technical mattersnecessary for the trials and other judicial
proceedings of the suits against appeal/
trial decisions made by JPO, over which
the IP High Court has the jurisdiction as
the court of first instance, and the appeals
from district courts in civil cases relating
to patents and utility models. The system
for judicial research officials has a historyof over fifty years, and the style of theiroperation, including the cooperative work
style with the judge presiding the preparatory proceedings as well as the formof research papers, seems to be an established principle in its framework. By
tradition, retired patent examiners andappeal examiners of JPO (in themechanical, chemical and electric fields)
are assigned as the judicial research
officials. All of the research officials
work in the same office called the
Researcher’s Office, and they are assigned to various cases on a case-by-case

AIPPI Journal, May 2005

basis. The number of those research officials was eight in the 1970’s, increased tonine in April 1991 and then to eleven in
April 2002. One of the research officials
assigned in April 2002 was a practicing
patent attorney, who provided a new perspective and beneficially stimulated the
Researcher’s Office. The total number of
judicial research officials engaged in IP
cases is twenty-one (eleven at the Tokyo
High Court, seven at Tokyo District
Court and three at the Osaka District
Court), meaning that more than half of
those research officials belong to the IP
High Court. The judicial research officials so far have gained high reputation
for having conducted fair and appropriate
researches by performing their duty faithfully with a rather critical eye on the performance of JPO (“Tokkyo-SoshoMonogatari Aru-Jitsumu-Memo-ni-yoru(Patent Litigation Story - from businessmemorandum -)” by Masao Miyake,p173; “Chiteki-Zaisan-Kankei-Sosho-niokeru-Saibansho-Chosakan-no-Yakuwari(Role of Judicial Research Officials in IP
Litigations)” by Ryu Takabayashi,
Annual Newsletter of Nihon Industrial
Property Right Legal Society, Vol.20,p52). Along with the start of the IP High
Court, these research officials are subject
to the provisions for increased and clarified authority (Article 92-8 of theAmended Code of Civil Procedure of2004) and for the qualification of judicial
research officials (Article 92-9). Historically, it was judge’s authority to ask
questions to the parties or urge the parties
to establish the facts of the case during
oral arguments or other occasions. Asfrom April 2005, the research officials
may, at the direction of the judge, exercise such authority as a subsidiary organof the court in order to have common un-

AIPPI Journal, May 2005

derstanding and recognition with the parties, and they may further become involved in the in-camera trials for deciding
whether certain documents should besubmitted at an infringement case wheretrade secrets are an issue. As a result,research officials will have more opportunity at face to face contact with the parties and accordingly their traditional behind the scenes role will shift to more ofa front line role. The form of the research
papers was also actively discussed in thecourse of the recent judicial system reform, and the authority of the research
officials to propose their reference opinion in order to properly reflect the expert
knowledge and research result to the decisions made by the court for each case
(verdict or judgment) was clarified in theprovisions stipulating “to propose to thejudges their opinions concerning thecase”(Article 92-8(4)). It will be necessary to study more and work out what theappropriate exercise of such authority
should be. These subjects, together withother subjects such as what the appropriate role-sharing with the expert commissioners should be, are left to the operationof the court in many respect, and therefore, every effort should be made to build
up the practice and to prove the merit of
the recent reform, purporting further reinforcement of the judicial system specialized in handling the IP cases, while giving appropriate attention to the transparency and neutrality of the proceedings.
3) Expert Commissioners
The system for assigning expert
commissioners was introduced on April 1,
2004 for ensuring judicial proceedings
with sophistication and expertise corresponding to the highly specialized and sophisticated technologies rapidly evolving

139

day by day (Article 92-2 of the Amended
Code of Civil Procedure of 2003). The
expert commissioners system is mostly
utilized at the IP High Court so far. Approximately 170 expert commissioners,
who are top-level technical experts invarious fields, are appointed nationwide
by the Supreme Court from among experts such as university professors, researchers at public research institutes or
private corporations, patent attorneys andso on, as part-time officials with two-year
term. Such expert commissioners arepooled so that the court may designate
the most suitable expert for the cases
involving the technical disputes especially difficult to understand and requiring explanation based on expert knowledge on a case-by-case basis, and so thecourt may hear the explanation of suchcommissioner on the trial date concerning
the allegations and evidences submitted
by the parties from the fair and neutral
position of advisor. Metaphorically, theexpert commissioners are sometimes
compared to a “home teacher” whoguides the most appropriate course of thelitigation (Asahi Newspaper; March 29,2004). Since the expert commissioners
provide services on a part-time basis,
which is different from the judicial research officials who provide services on apermanent basis, there are certain requirements for exploiting the expert commissioners system, such as the requirementof hearing the opinions of the parties andmaking explanations based on expert
knowledge during oral arguments orother occasions, for giving the parties theopportunity to make counterarguments.
However, the expert commissioners system has been favorably received so far
since expert knowledge can be reflectedin the litigations in a manner easy to un-140

derstand and the point of dispute can beclarified due to the explanations made by
the expert commissioners from various
perspectives. The purpose of the expert
commissioners system is to enhance thequality and accuracy of the trial proceedings rather than to speed up the trial, andthe judges in charge of each case now
start examining the content of the cases at
an earlier stage than before to identify thesuitable expert commissioners on thebasis of the backgrounds of those commissioners, select the most suitable commissioner after explaining the content of
the case to all candidates, and explain thesystem of litigation and the manner inwhich the commissioner should make
explanations on the trial date. Since theuse of a single commissioner may cause aconflict of opinions between the commissioner and the parties, assigning multiplecommissioners (combining, for example,
a patent attorney and a scholar or a researcher) to one case is under discussion
for the smoother operation of the litigations. This kind of know-how has gradually been accumulated. However, what is
important to make this system get on
track is to gain the confidence of the parties in this system, and therefore, thetransparency of process is indispensable
in the course of the preparatory meetings
with the expert commissioners. The expert commissioners system has just begun,and various briefing sessions and study
meetings have recently been held. It
would be necessary to establish and develop this system to be fully operable astechnical support in synergy with the system for judicial research officials by accumulating further practices and further
trial and error.

AIPPI Journal, May 2005

5. Jurisdiction
1) Comprehensive
SuccessionofCases Pending at IP Division ofTokyo High Court
The IP High Court hears all cases
subject to the jurisdiction of the Tokyo
High Court as long as the nature and contents of the case are related to intellectual
property (Article 2 of the Establishment
Law). The Establishment Law does notchange the jurisdictions set forth in Article 6 and other provisions of the Code ofCivil Procedure but sets forth the assignment of cases between the Tokyo High
Court and the IP High Court as its special
branch. Therefore, the IP High Court
hears the same cases as currently heard
by the IP Division of the Tokyo High
Court. The codes used in the case records include “Gyo-ke” for the suitsbrought to the High Court against appeal/trial decisions made by JPO, “Ne”
for appeals from district courts, “Gyo-ko”
for appeals from district courts on administrative cases, and “Ra” for interlocutory
appeals. All cases pending at the IP Division of the Tokyo High Court as of theend of March 2005 are succeeded by the
IP High Court and those cases are given
new case numbers at the IP High Court.
In order to distinguish these cases fromthose of other divisions of the Tokyo
High Court, the new case numbers aresequential serial numbers starting from10,000 .
An overview of the trend of major
cases heard by the IP Division of theTokyo High Court in the past 10 years is
as follows: First, in terms of the administrative cases brought to the High Court as
the court of first instance (suits against
appeal/trial decisions made by JPO), although the number of commenced cases

AIPPI Journal, May 2005

hit a peak and began gradual declining in
2002, the number is still hovering at ahigh level. With the number of disposedcases increasing, the number of pendingcases decreased nearly to fivehundred,
the number before the period when thenumber of cases drastically increased.
Looking into the details of the number ofcommenced cases in these few years, thepatent cases increased to account fornearly 80% of all cases, followed bytrademark cases, utility model cases anddesign cases. Nearly 80% of these cases
result in court decisions due to the natureof the administrative cases. Second, in
terms of appeals from district courts on
intellectual property actions, the numberof commenced cases that drastically increased starting in 1997 stopped increasing with the peak in 2002 and remained
flat. With the increase in the number ofdisposed cases, the number of pendingcases decreased less than eighty. Looking into the details of the number of commenced cases, patent cases account forover 30% of all cases, copyright cases
account for over 20%, followed by cases
concerning business interests by acts of
unfair competition, trademark cases,
utility model cases and design cases.
2) Administrative Cases Brought toHigh Court as the Court of First
Instance
The administrative cases brought tothe High Court as the court of first instance herein means the suits against appeal/trial decisions made by JPO, overwhich the Tokyo High Court has the exclusive jurisdiction (Article 178(1) of the
Patent Law, etc.). These suits are heard
by the IP High Court as a special branchof the Tokyo High Court. Traditionally,
there had been two forms of administra-

141

tive litigation challenging the appropriateness of the decision made by JPO on
the patentability of an invention, suits
against appeal/trial decisions made by
JPO and suits for canceling the decisionof revocation of a patent. As a result of
the 2003 amendment to the Patent Law(implemented as of January 1, 2004), thepatent opposition system was abolishedand merged into a single system for thetrial for invalidity of a patent (Article 123of the Patent Law), and the system for thesuits for canceling the decision of revocation of a patent vanished. Litigations
against the decision of revocation of apatent made in certain opposition proceedings which had been brought to thecourt prior to the implementation of theamended Patent Law shall be subject toconventional proceedings (Article 2.9 of
the Supplemental Provisions), and therefore those suits for canceling the revocation decision are expected to remain
pending for a while. These “administrative cases brought to the High Court as
the court of first instance” may include(1) suits for canceling the trial decision
made by JPO for sustaining the final rejection in the trial against the final rejection concerning patent, design registration or trademark registration, (2) suits
against trial decision made by JPO for
denying the trial for correction of a patent,(3) suits against trial decision made by
JPO for sustaining the rejection ofamendment concerning a patent, utility
model registration, design registration ortrademark registration, (4) suits against
trial decision made by JPO for invalidation or denial of invalidation concerning apatent, utility model registration, design
registration or trademark registration, (5)suits against trial decision made by JPO
for revocation or denial of revocation of a

142

trademark on the ground of non-use of
the trademark, and (6) suits against trial
decision made by JPO for revocation ordenial of revocation of a trademark on the
ground of misuse of the trademark, andso on. The above cases (1) through (3)could be classified as suits against appeal/trial decisions made by JPO derivingfrom JPO decisions and cases (4) through(6) could be classified as those derivingfrom disputes between the parties.
3) Appeals from District Courts in
Civil Cases
First, appeals from district courts incivil cases relating to intellectual property
and which derive from claims covering
patent rights, utility model rights, rightsof layout-designs of integrated circuits,
and rights of the authors of a program
work (hereinafter the “claims concerning
patents and others”) come under the exclusive jurisdiction of the Tokyo High
Court (Article 6(3) of the Code of Civil
Procedure amended in 2003 and implemented on April 1, 2004), and are heard
by the IP High Court. As from April 1,
2004, the claims concerning patents andothers occurring in the East Japan area
should be subject to the exclusive jurisdiction of the Tokyo District Court for
the first instance, and those occurring in
the West Japan area should be subject tothe exclusive jurisdiction of the Osaka
District Court for the first instance. However, the appeals for the cases pending atother district courts within the jurisdiction of other High Courts as of March 31,
2004 should be subject to the jurisdictionof such other High Courts as they had
been prior to the implementation of theamended code (Article 3.1 of the Supplemental Provisions), and the appeals fromthe Osaka District Court concerning the

AIPPI Journal, May 2005

cases filed in the Osaka District Court on
and after April 1, 2004 should be heard
by the IP High Court. There could be,
however, some cases where a certain appeal involving patent or other intellectual
property is transferred to the Osaka High
Court from the IP High Court because therequirement for technical expertise orother reason as long as such transfer isdeemed necessary to avoid excessive
damage or delay (Article 20-2.2). Further,
we are considering utilizing telephonemeetings or video meetings for the convenience of people living in regional areas, reducing the burden of the parties toappear in court. These “claims concerning patents and others” may include (1) aclaim for injunction or destruction basedon the patent right, (2) a claim seeking adeclaratory judgment to establish the
non-existence of the claim for injunction
based on a patent right, (3) a claim fordamages (or liability for returning undue
profit) caused by patent or other IP infringement (or claim for return of undue
profit), (4) a claim seeking a declaratory
judgment to establish the non-existenceof liability for damages (or liability for
returning undue profit) caused by patentor other IP infringement, (5) a claim forrestoring reputation or confidence basedon patent or other IP right, (6) a claim forpayment of royalty based on a license
agreement concerning patent or other IP
right, (7) a claim for transferring the registration of a patent, (8) a claim for seeking a declaratory judgment to establish
the right to apply for a patent, (9) a claim
for the payment of consideration for assignment of employee's invention to employer, and so on.
Second, appeals from district courts
in civil cases relating to intellectual property and which derive from claims cover-

AIPPI Journal, May 2005

ing the design rights, trademark rights,
rights of the authors (excluding the rightsof the authors of a program work), publishing rights, copyright neighboringrights, breeder’s rights, and businessinterests by acts of unfair competition(hereinafter the “claims concerning
design and others”) may be also heard by
the IP High Court as long as the court offirst instance is within the jurisdiction of
the Tokyo High Court. Although claims
concerning design and others filed in a
district court within the jurisdiction of theHigh Court other than the Tokyo High
Court should be subject to the jurisdictionof the corresponding High Court, the appeals from the district court could beheard by the IP High Court as the special
branch of the Tokyo High Court if theparties agree upon the jurisdiction of theTokyo District Court for the first instance.
Trial by the IP High Court could also be
available according to the provision of
Article 12 of the Code of Civil Procedure
if the suit is filed in the IP High Court
and the defendant fails to challenge thelack of jurisdiction.
Appeals from district courts in civil
cases relating to intellectual property account for a little less than 20% of all caseso far, but after the so-called Kilby decision (Texas Instruments v. Fujitsu,
Supreme Court Third Petty Bench Decision of April 11, 2000, Minshu 54-4,
1368), more and more patent or other IP
infringement cases are arguing the existence of the reason for invalidating a patent, and with the increase of the first trials making decisions on the “defense ofabuse due to obvious invalidity”, the appeal trials on infringement have become
more and more complicated and difficult
to render a decision. While maintaining
the framework of the invalidation trials

143

before JPO but still extending the legal
theory depending on the above precedents, the provision of Article 104-3 ofthe amended Patent Law of 2004 cameinto effect at the same time as the start of
the IP High Court, setting forth that theenforcement by courts of a patent, whichshould be invalidated by an invalidation
trial before the JPO, should be restricted.
Accordingly, it is expected that the courts
will face more and more opportunities
where the court is required to confront
the issue and make decision on the invalidity of the patent. Further, the appeals
from district courts on the claims concerning patents and others, which havebeen subject to the jurisdiction of otherHigh Courts, will inevitably come under
the jurisdiction of the IP High Court
sooner or later. Accordingly, the significance of the appeals from district court incivil cases on intellectual property will
increase.
4) Appeals from District Courts on
Administrative Cases involving
Intellectual Property Right
Appeals against the decisions madeby the Tokyo District Court in the suits
for canceling any disposition ordered by
the Commissioner of Patents (such as therejection of the application for special
succession of the right to apply for a patent, or the rejection of proceedings due tothe failure in payment of patent fees) are
subject to the jurisdiction of the Tokyo
High Court, and as a matter of course,
these case are heard by the IP High Court.
5) Other Cases
The IP High Court will hear, in addition to the above discussed cases, thecases which are subject to the jurisdiction

144of the Tokyo High Court and which require specialized knowledge concerning
intellectual property in terms of major
dispute (Article 2.3 of the Establishment
Law), including (1) the cases not classified as involving “intellectual property
rights” such as patents but classified as
involving “intellectual property”, likethose involving trade names (Articles 20
and 21 of the Commercial Code), requiring judgment depending on specialized
knowledge in the trial concerning thesubstantial matter of the case, (2) interlocutory appeals concerning the civil oradministrative cases discussed in 2)
through 4) above, (3) suits for seeking
preliminary injunctions based on civil
cases discussed in 3) above, (4) suits forseeking suspension of execution based on
administrative cases discussed in 2)
above, and(5) retrial or quasi retrial proceedings concerning any of the above
cases described in (1) through (4) above.
The IP High Court will further hear thecases that should be heard by combining
with the cases set forth in Articles 2.1,
2.2 or 2.3 of the Establishment Law(Article 2.4 of the Establishment Law).

6. Trial System
1) Intensive Hearings and Plan Hearings
Traditionally, administrative cases
brought to the High Court as the court offirst instance and relating to trademark or
design rights as well as the appeals from
district courts on civil or administrative
cases are heard at oral proceedings in the
court room by a panel of three judges
from the first date of the trial, whilecases relating to patents or utility modelrights are left from the outset to the judge

AIPPI Journal, May 2005

assigned to each specific case for the preparatory proceedings, where the allegations and presentation of evidence are
fully completed, and regularly left to theoral proceedings for final conclusion after
the submission of the report and the completion of the draft decision. Because
cases brought to the court have been drastically increasing in these few years, a
project team consisting of experienced
associate judges was started in July 2002
to study the style of trial proceedings andthe form of decisions. The project teamannounced the result of the study recommending the intensive hearing method inwhich the judge intensively develops
clear understanding of the allegations andthe point of issue and forms his opinion
within the single date of the preparatory
proceedings (to the extent possible), by
requiring the parties to submit preparatory documents by the date agreed uponby the court and the parties, and rationalizating the form of decisions on a case-bycase basis from the high-performance andheavy-weight rulings to the high-performance and light or medium-weightrulings (“Shinketsu-Torikeshi-Sosho-noAratana - Shinri - Hoshiki - to - Aratana Hanketsu-Yoshiki-ni-tsuite (New Methodof Trial Proceedings and New Form ofDecisions in Suits against Appeal/Trial
Decisions made by JPO)” by Shuhei
Shiotsuki, Ryuichi Shitara, Misao
Shimizu and Gaku Okamoto, NBL
vol.769, p.6). Since around January 2003,
the intensive hearing method has beenprevailing in which the preparatory proceedings are completed within one or twotimes of such proceedings. For this andother reasons, the average time intervals
from commencement to conclusion,
which was 18.6 months in respect of thesuits against appeal/trial decisions made

AIPPI Journal, May 2005

by JPO and 18.5 months in respect of theappeals from district courts in civil casesin 1997, decreased to 12.4 months and to
10.4 months, respectively, in 2003. In
some cases, the whole trial process iscompleted and the decision is madewithin approximately six to ten months
after the filing of the suit.
The Justice System Reform Council
published a report recommending further
promotion of the planned hearings withthe goal of reducing the time intervals
from commencement to disposition of thecivil cases by half. The Law concerning
Promotion of Speedy Judicial Proceedings (implemented as of July 16, 2003)
was established, and the system ofplanned proceedings was introduced in
the process of the fact-finding proceedings on the ground of the legal framework due to the 2003 amendment to theCode of Civil Procedure (Articles 147-2,
147-3 and 297) (implemented as of April
1, 2004). Especially in case of suits
against appeal/trial decisions made by
JPO, apart from the allegation of procedural defects, the cause of canceling thedecision has already been alleged in thecourse of the trial proceedings from time
to time, and the parties are not allowed topresent a new reason for invalidation orother new allegation or evidence thathave not been heard in the course of theappeal proceedings by JPO. Therefore,
regularly the subject issue to be heard at
the IP High Court is whether such cause
is reasonable or not. That is why theplanned hearing system is generally
deemed to go well with the suits of thiskind. The guideline for implementing theplanned proceedings was established andthe actual planned proceedings started
around October 2004. The basic processof the planned proceedings is as follows:

145(1) The court requires the appellant tosubmit the preparatory pleadings providing the cause of canceling the decision
until a week before the date of the firstpreparatory proceedings; (2) During thefirst preparatory proceedings, the judge
clarifies the point at issue and notifies thesubsequent due dates of all preparatory
documents and the approximate scheduled date of rendition of judgment; (3)The court designates the second preparatory proceedings as the date of intensive
hearing for finalizing the preparatory
proceedings, and the judge in charge ofthe case forms his opinion on the issue inthe course of confirming the point at
issue with the parties and referring to theopinion of the judicial research officials,
and gives notice of the scheduled oral
hearing date and the date of rendition of
judgment; (4) The court ensures that theparties attach a summary of the cause ofcanceling the decision at the end of the
final preparatory pleadings if the parties
are to submit plurality of or high volume
of preparatory pleadings. We are committed to achieve good results from theplanned proceedings by further making
improvements and efforts.
2) Grand Panel System
In response to the requirements of“unified decision in early stage”, which isone of the three major needs of the industrial circle, the system of the Grand Panelconsisting of five judges was introduced
as of April 1, 2004 for hearing suits
against appeal/trial decision on patents orutility models made by JPO and appeals
from district courts based on claims concerning patents and others (Article 182-2of the Amended Patent Law; Article 47.2of the Amended Utility Model Law; Article 310-2 of the Amended Code of Civil

146

Procedure, of 2003), and the IP High
Court has set up within it a special division (the Grand Panel), to which all thejudges are assigned. The Federal Circuit,which was established to unify the legal
interpretation concerning intellectual
property rights, conducts trials on thematter of law and substantially functions
as the last court of appeals. Especiallythe in banc panel of the Federal Circuit isdeemed to play an important role(“Beikoku - Renpo - Junkaikouso Saibansho - no - Genjo -ni-tsuite (Current
situation of the United States Court ofAppeals for the Federal Circuit)” by
Yorihisa Takase, Hanrei Jiho vol.1826,p.28). On the other hand, the IP High
Court is a court originally conducting
fact-finding proceedings and it is theSupreme Court that plays the role of unifying the legal interpretation as the court
conducting trials on the matter of law.
However, since the court decisions sometimes have the effect of setting up newrules and frameworks for business, theindustrial circle had desired the formationof satisfactorily reliable rules prior to thefinal judgment made by the Supreme
Court in order to set up these businessrules at an early stage. That is why thesystem of the Grand Panel was introduced as the means to substantially unify
the decisions in the early stage at thelevel of the High Court (“Chizaisosho-noGenjo - to - Honnen - Shigatsu - kara-noAtarashii-Chizaisosho - Seido (Current
Situation of Intellectual Property Litigations and New System for Intellectual
Property Litigation just Started in April)”by Makoto Jozuka, NBL vol.785, p.19).
In the IP High Court, it is arranged
that the general managing judge of thespecial division (Chief Judge of the IP
High Court) presides over the panel at the

AIPPI Journal, May 2005

Grand Panel, and the other four judges
consist of three judges managing theother three divisions, respectively, (or the
associate judges substituting the above)
and one associate judge who should be incharge of the case. It is further arranged
that the cases involving important matterof law as their point at issue should beheard by the Grand Panel through thegiven procedure when there is anotherpending litigation having the same point
or issue in common and heard by anotherpanel, or when it is otherwise deemed
reasonable for the Grand Panel to hear
the case. According to a person having
been engaged in the relevant legislation,
it seems they assumed a situation where
the case involves an extremely importantmatter of law and the outcome of the proceedings may significantly impact corporate activities (by Kondo and Saito, ditto,p.74). As a precondition to conducting
these procedures, the judges are required
to be aware of the cases presided over byother judges at all times, especially thecases pending at other divisions, to someextent. Therefore, the judges have regular meetings for exchanging information
among associate judges approximately
once a month. These should be one of
the reasons contributing to the sense ofunity which is strong as ever before
among the judges belonging to the IP
Division.

7. Prospects for the Future
Now that the start of the new IP High
Court is just before our eyes, when I
think back the past days, I feel the merefact that serious discussions were madefrom various perspectives concerning thedesired IP High Court indicates thesignificance of the “judicial role for pro-

AIPPI Journal, May 2005

tecting intellectual properties” (Article 1of the Establishment Law), and I believe
the establishment of the IP High Court isa historical and epoch-making event in
the context of the judicial system reform.
According to the Strategic Program for
the Creation, Protection and Exploitationof Intellectual Property, one of the reasons to establish the IP High Court was
the symbolic role of the court proclaiming the pro-patent national policy to the
public and overseas. Further, according
to a person having been engaged in therelevant legislation, they assumed theside effect of enhancing the awareness ofrespecting intellectual property rights anddeterring the infringement of patents andother IP rights within Japan as well as
deterring the import of counterfeit goods
from abroad (by Kondo and Saito, ditto,
p.73; by Yoshimura, ditto, p.5). In either
case, I believe that the most importanttask and duty of the IP High Court is to147

conduct trial proceedings in speedy andreliable manner with high-level expertisein the disputes involving intellectual
property, ensure the position of last resortof protection within the intellectual creation cycle by responding to the demandsof the times and the voices from all levels
of Japanese society, and to output necessary information on the results of our effort. I am committed to humbly accept
the opinions and criticisms brought to ourattention so far, return to the starting
point of the judicial role of promoting
appropriate and speedy proceedings regardless of the scale of each case, and to
do solemnly what I am expected to do inorder to respond to the expectation of alllevels of Japanese society toward the new
system. I would greatly appreciate theunderstanding and cooperation of allusers of the IP High Court as well as all
public, since it is impossible for us alone
to respond to all expectations.