Judicial Coherence in Specialized Intellectual Property
Courts: A Comparative Analysis of Japan and Europe (*)
Invited Researcher: Federica BALDAN (**)
The establishment of IP courts aims at fostering the creation of a specialized body of patentjurisprudence. However, it also entails risks in terms of judicial coherence, such as the isolationof patent law from other branches of law, the development of a pro-patent bias and theinconsistency of decisions reached by the different actors of the patent system. This research
project aims to explore and analyse the Japanese patent system and to compare it with theEuropean patent system in order to foresee the development of similar dynamics as well as to
identify potential tools and mechanisms to enhance judicial coherence. The methodology is basedon desk analysis, legal comparative research and qualitative empirical research.

I. Introduction
Specialization involves some risks in the perspective of judicial coherence in patent systems.
Although the Japanese and the future European patent systems entail institutional as well asprocedural differences, it is shown how they could be involved in similar dynamics concerning theimpact of specialization on judicial coherence. The aim of the present report is to identify carefullymechanisms developed in one patent system that can be transferred to the other for the enhancementof judicial coherence.

II. Judicial coherence and specialization
1. The importance of judicial coherence in patent systems
Patent law is based on concepts and rules which are by nature rather imprecise and vague. Thislinguistic indeterminacy allows for flexibility and a dynamic interpretation in the patent field, which
is necessary to meet advancements in technology and science as well as general societal needs.
However, linguistic indeterminacy also creates uncertainty since it leaves ample room for divergent
interpretations. 1 It is therefore important for judges to be guided by principles such as judicial(*) This is a summary of the report published under the 2016FY Industrial Property Research Promotion Project entrusted by theJapan Patent Office.
(**) PhD Candidate, Law Faculty, University of Antwerp, at our institute over a period of approximately 4.5 months from September
20, 2016 through February 4, 2017, as an Invited Researcher for the Fiscal Year 2016.
1 F. Baldan and E. van Zimmeren (2015), “The Future Role of the Unified Patent Court in Safeguarding Coherence in the European
Patent System”, in Common Market Law Review, Vol. 52, No. 6, 1529-1578, at 1549.

icoherence in adjudication. Judicial coherence refers to the consistent interpretation and applicationof the law between different actors of a legal system as well as to the consistent and well-balanced
application of principles and values throughout the entire legal system. In particular, judicial
coherence plays an essential role when the process of adjudication involves extra-legal
considerations or when legal provisions are indeterminate and abstract.2
The establishment of specialized and centralized Intellectual Property (IP) courts aims to enhance
judicial coherence. In fact, specialization provides for efficient proceedings and leads to high-quality
decisions that contribute to predictable outcomes. The need to establish centralized and specialized
courts has been perceived internationally, especially in those countries with a high number of patentapplications.3
2. The controversial relationship between specialization and judicial coherence
Specialization and judicial coherence do not always go hand in hand. Rather, excessive
specialization in a patent system has the potential to hinder judicial coherence in the absence ofcounterbalancing mechanisms. The first challenge to judicial coherence is represented by isolationof patent law. In fact, specialized courts might be inclined to disregard non-IP related issues (e.g.
competition law, human rights) and potentially develop a bias towards innovation. The second
challenge to judicial coherence relates to the interaction of the specialized court with the patentoffice. The coexistence of heterogeneous actors in charge of interpreting patent law and deciding on
the validity of patents runs the risk of reaching inconsistent decisions.

III. Specialized IP courts in Japan and Europe
The importance of specialization to enhance expertise in patent adjudication and foster
consistency has been acknowledged in the Japanese and the European patent systems. However, therisks connected to specialization can be observed in both patent systems.
1. The Japanese Patent System

2 See, for instance, A. Aarnio et al. (1981), “The foundation of legal reasoning”, Rechtstheorie, Vol. 12; A. Peczenik (1989), On law

and reason, Kluwer.
3 See International Intellectual Property Institute (IIPI) and United States Patent and Trademark Office (USPTO) (2012), “Study on

Specialized Intellectual Property Courts”, available at http://iipi.org/2012/05/study-on-specialized-intellectual-property-courtspublished/ (last visited on March 12, 2017).

ii

In the Japanese patent system, the creation of a specialized IP court and the establishment of the“double track” had relevant effects on judicial coherence. In the period between 2004 and 2008,
many decisions of the JPO that declared the patent valid were quashed by the IP High Court.4 The
trend at the IP High Court was reflected also at the district court level.5 Therefore, some scholars
held that specialization in the Japanese patent system contributed to the development of an “antipatent” bias. 6 However, the anti-patent trend settled from 2008 on. Interestingly, some experts
believe this change was especially influenced by some judgements of the third division of the Court
related to the interpretation of the inventive step requirement.7 This triggered a “dialogue” between
the court and the JPO. In fact, the new interpretation of the inventive step requirement made it easierfor examiners to conclude that the invention was inventive.8
Apart from isolation and the development of a bias, the Japanese patent system also entails otherrisks in terms of judicial coherence related to the double track system. Statistics show divergent
outcomes between the decisions of the court and the JPO in about 20% of cases in the periods 20002003 and 2005-2009. 9 Since consolidation of the two proceedings at the appellate level is notpossible due to their inherent differences, the potential for inconsistencies remains.10 The risk ofinconsistent determinations on the validity of a patent is aggravated by the fact that district courts
rarely stay proceedings even if the Patent Act allows so.11 However, it is argued that consistency has
considerably improved in recent years. In particular, the “worst case scenario”, where the patent is
considered valid and infringed and it is subsequently invalidated by the JPO, does not happen often.12
2. The European Patent System

4 See JPO (2014), “Shinpan no Gaiyō (Seido Unyō hen)” [Outline of Appeals and Trials (System and Operations)], Heisei 26 nendo, at 18,

available at: https://web.archive.org/web/20160331190419/https://www.jpo.go.jp/torikumi/ibento/text/pdf/h26_jitsumusya_txt/09.pdf
5 See S. Takakura (2008), Review of the Recent Trend in Patent Litigation from the Viewpoint of Innovation, in Research Instituteof Economy, Trade and Industry (RIETI) Journal, 3 September 2008, available at http://www.rieti.go.jp/en/columns/a01_0242.html(last visited on March 12, 2017).
6 See Y. Tamura (2015), “Kōsatsu: Chizai Kōsai—Chūō Shūkenteki katsu Tagenteki na Senmon Saibansho ni taisuru Seidoronteki
Kenkyū” (Consideration: Intellectual Property High Court: Institutional Study on the Centralized and Pluralistic Special Court), a
collection of papers in commemoration of the retirement of Mr. Toshiaki Iimura, Gendai Chitekizaisan Hō: Jistumu to Kadai(Today’s Intellectual Property Law: Practice and Issues), 29-47 (Japan Institute for Promoting Invention and Innovation); see also
Institute of Intellectual Property (2014), “An empirical study of inventive step in Japanese IP High Court cases and reconstructionof its test from a functional view”, IIP Bulletin 2014, Vol.23, 150-168.
7 Ibid.
8 In particular, the “circuit connection case” required a detailed reasoning to justify the determination that a person ordinarily skilledin the art could have easily conceived of the relevant invention from the prior art. IP High Court 2008 (Gyo-ke) 10096, January 28,
2009.
9 J. P. Kesan (2008), “Patent office oppositions and patent invalidations in court: complements or substitutes?”, in T. Takenaka (ed),Patent law and theory: A handbook of contemporary research, 246-270; J. P. Kesan (2013) “PAEs, IPrs and Improving the Patent
System”; Interviews.
10 T. Kudo (2009), “Changes to the civil procedure laws and regulations prompted by specialized litigation: regarding the UnitedStates and the Japanese patent invalidation procedures”, University of Washington, ProQuest Dissertations Publishing, at 190.
11 Art. 168 Patent Act. Source: Interviews.
12 Source: Interviews.

iii

The European patent system is highly fragmented and includes different actors which are part of
the European Union (EU) pillar and the European Patent Organisation (EPOrg) pillar and which are
not bound by each other’s jurisprudence. Several attempts have been made to reform the system andimprove a coherent interpretation and application of the law by establishing a unitary title for patent
protection and a centralized and specialized court.13 Eventually, the obstacles to the creation of aunitary patent were bypassed in 2012 by reaching an agreement between 25 Members of the EU.14
Currently, the Unified Patent Court (UPC) Agreement is in the process of being ratified by theParticipating Member States. One of the purposes of creating a centralized patent court is to foster
uniformity in the interpretation of patent law throughout Europe in order to realize more coherence
within the European patent system. However, the structure of the UPC, its insulation from otherjudicial actors and the fact that the European Patent Office (EPO) will not be bound by the UPC
case-law, entail the risk to increase incoherence. Similarly to what has been observed in the Japanese
patent system, risks in terms of judicial coherence can be identified with regard to isolation, thedevelopment of a certain bias and the potential for inconsistent decisions.
Commentators claim that, due to its centralized and specialized institutional design, the UPC will
be biased towards technology and will therefore likely develop a tunnel vision, which might lead toa pro-patent jurisprudence.15 Such belief is fostered by some provisions of the Agreement which
seem to favor the interests of patent owners, such as the flexible rules on bifurcation 16 and thepossibility to obtain pan-European injunctions.17
Moreover, the institutional design of the UPC with its different local and regional divisions
carries the risk of divergent interpretations. Additionally, parallel proceedings on patent validity
could run both at the EPO and the UPC. This means that oppositions as well as appeals at the EPO
can continue even if a revocation action has been brought before the UPC. The final determinationsof the Boards of Appeal (BoAs) at the EPO are not reviewable by the UPC or the Court of Justiceof the EU (CJEU).

13 See V. Di Cataldo (2002), “From the European patent to a community patent”, Columbia Journal of European Law, Vol. 8, 19-35;

A. Plomer (2015), “A Unitary Patent for a (Dis)United Europe: The Long Shadow of History”, International Review of Intellectual
Property and Competition Law, Vol. 46, 508–533; F. Baldan and E. van Zimmeren (2015), op. cit. supra note 1, at 1557-1559.
14 The Patent Package consists of two EU regulations (European Parliament and Council, Regulation (EU) 1257/2012 of the European
Parliament and of the Council of the EU of 17 Dec. 2012 implementing enhanced cooperation in the area of the creation of unitary
patent protection, O.J. 2012, L 361/1 (hereinafter Regulation 1257/2012 or UPR), Council of the EU, Council Regulation (EU)
1260/2012 of 17 Dec. 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard
to the applicable translation arrangements, O.J. 2012, L 361/89) and an international agreement between EU Member States(Agreement on a Unified Patent Court, O.J. 2013, C 175/1 (hereinafter UPC Agreement)).
15 See, for instance, C. S. Petersen and J. Schovsbo, “Decision-Making in the Unified Patent Court: Ensuring a Balanced Approach”,
in C. Geiger et al. (eds.), Intellectual Property and the Judiciary, EIPIN Series, Edward Elgar (forthcoming), available at SSRN:
https://ssrn.com/abstract=2799132 or http://dx.doi.org/10.2139/ssrn.2799132 (last visited on March 12, 2017). See also R. C.
Dreyfuss (2016), “The EU’s Romance with Specialized Adjudication”, International Review of Intellectual Property andCompetition Law, Vol. 47, 887–890.
16 Art. 33(3)(b) UPC Agreement.
17 Art. 62 UPC Agreement.

iv

IV. Mechanisms to improve judicial coherence
Although relevant institutional and procedural differences exist between the Japanese and theEuropean patent systems, both have developed mechanisms to overcome those challenges. Even
though such mechanisms cannot be simply “transplanted” from one system to the other legal system,
they provide important sources of inspiration for the enhancement of judicial coherence.
1. Mechanisms limiting isolation(1) Dialogue with the “generalist” higher court
First, isolation could be limited if the specialized court engages in a dialogue with the higher
generalist court. Such a mechanism can be observed in the Japanese patent system. The JapaneseSupreme Court applied standards instead of stricter rules to its reasoning in patent cases from thelate 2000’s. In this way, the Japanese Supreme Court fostered judicial experimentation andcounteracted the potential “paralysis” of case law due to its centralization while providing for a more
dynamic interpretation which better suits the needs for innovation.18 Due to the institutional designof the UPC, the risk of isolation of patent jurisprudence in the future European patent system isgreater than in Japan. This is also due to the fact that the CJEU’s jurisdiction on the UPC’s decisions
will be quite limited. Considering the positive developments in terms of coherence as a result of the
dialogue between the “generalist” Japanese Supreme Court and the IP High Court, a similarinteraction between the UPC and the CJEU through the preliminary ruling procedure19 would bedesirable in the future to limit the development of a tunnel vision by the specialized court.
(2) Law clerks with patent law education
The participation of the “generalist” court in the patent system does not necessarily entail the“best” interpretation of patent law if the court does not have a good understanding of patent law.
Moreover, the generalist court’s wider perspective may hinder predictability when the higher court
does not provide sufficient guidance for lower courts. A reasonable level of patent expertise could
be reached through the collaboration of the generalist court with experts in the patent field.20 Thismechanism is already included in the Japanese patent system, where law clerks provide a helpful
18 On the benefits of pluralism opposed to excessive centralization and the role of standards developed by the Supreme Court in theJapanese patent system, see Y. Tamura (2015), op. cit. supra note 6, at 38.
19 Art. 21 UPC Agreement.
20 See M. Kamiya (2011), “’Chōsakan’: research judges toiling at the stone fortress”, 88 Wash. U. L. Rev. 1601-1629.

v

contribution. In the European patent system, the trust of the patent community in the ability of the
CJEU in deciding patent law could be improved if a similar mechanism where patent experts from
the Member States or perhaps even lower court (patent) judges would be collaborating with the“generalist” court.
(3) Training and selection of judges
Some scholars believe that, in order to preserve its viability, the UPC will have an incentive todecide cases in ways that will encourage inventors to seek unitary patent protection and, therefore,
will develop a pro-patent bias.21 However, the Japanese experience has shown that not all specialized
courts have a pro-IP, pro-patent bias. Personal opinions, professional background and education ofjudges appear to have had a larger influence on the attitude and case-law of the IP High Court. In
Japan, in particular the training and education of judges seem to play an essential role in preventing
the isolation of patent law and the potential for the development of a bias. In the European patent
system, judges with different backgrounds who have practiced in different legal systems will be
involved in an intercultural dialogue as part of UPC multi-national panels.22 In this way, they will
directly learn from experiences in other legal cultures.23 The lesson which can be derived from theJapanese patent system is that isolation could be limited if the assignment of particular judges tocertain divisions would take into consideration the professional background and education of thejudges in order to avoid the creation of a hyper specialized court.
(4) Dissenting opinions
By giving voice to the divergent views of judges, dissenting opinions contribute to open the patent
system to different interests and values and limit the potential for isolation of patent jurisprudence.24
Dissenting opinions have been introduced in the UPC Agreement.25 Adding such option also forJapanese lower courts may counteract isolation by opening the system to dissenting voices feeding
a continuous dialogue.26

21 E.g. R. Dreyfuss (2016), op. cit. supra note 15.
22 Art. 8(1) and 9(1) UPC Agreement.
23 See F. Baldan and E. van Zimmeren (2015), op. cit. supra note 1, at 1572-1574.
24 See also F. Baldan and E. van Zimmeren (2015), op. cit. supra note 1, at 1574-1575.
25 Art. 78 UPC Agreement.
26 See I. Nakayama (2015), “Intellectual Property Policies in Japan under the New Policy-Making Process: Ten years of efforts towardmaking Japan an intellectual property-based nation”, Intellectual Property Law and Policy Journal, No. 46, pp. 1-67, at 21.

vi

(5) Amicus curiae briefs
Amicus curiae briefs include the view of different actors in patent cases. This raises courts’
awareness on broader interests at stake in the patent field and beyond the patent system.27 In Japan,
although a provision on amicus curiae briefs is not included in the statutes, in a recent case the IP
High Court sought opinions from the public.28 Hopefully, this initiative will be a benchmark for
future sensitive disputes involving societal interests in Japan and will encourage a reconsiderationof the possibility to introduce amicus curiae briefs in the European patent system.
2. Mechanisms limiting inconsistencies(1) Opinions on invalidity by the JPO
Although consistency of decisions in the double track has improved, due to the procedural
differences between the two tracks, the risk of inconsistencies in the Japanese patent system persists.
An effective solution would be the ability for the court to ask an opinion from the JPO on patentvalidity. In this way, the opinion would foster the dialogue between the court and the patent office
and would benefit the efficient determination of validity issues in courts. In addition, this could
encourage early settlements of disputes.
(2) Exchange of information and evidence
In order to ensure efficiency and coherence, it is essential that the information and evidence
submitted to courts and the patent office are the same. In this perspective, the effective
implementation of the mechanisms for information exchange ex Article 168 (5) and (6) of theJapanese Patent Act is recommended.
Dialogical mechanisms including the exchange of relevant information between the court and thepatent office will be even of greater importance in the future European patent system, due to the lackof a hierarchical relationship between the specialized court and the patent office. Some mechanisms
for the exchange of information are included in the UPC Agreement. Their effective implementation
will depend on the speed of invalidity proceedings at the EPO29 as well as on the willingness of the
27 See C. V. Chien (2011), “Patent amicus briefs: What the courts’ friends can teach us about the patent system”, University ofCalifornia Irvine Law Review, Vol. 1, 395–430.
28 IP High Court, May 16, 2014 (2013 (Ne) 10043).
29 The average duration is about 2.1 years for opposition (EPO, “Quality indicators”, http://www.epo.org/about-

us/office/quality/quality-indicators.html) and 2.7 years for appeal cases (EPO, “FAQ – Boards of Appeal”,
http://www.epo.org/service-support/faq/epo/appeal.html)

vii

UPC to stay its proceedings and wait for the EPO’s decision.
(3) Informal dialogical mechanisms
In both the Japanese and the European patent systems, informal dialogical mechanisms to
exchange views on the interpretation of patent law are promoted in the form of conferences or
symposia. Such mechanisms are very important for a coherent development of patent policies.
Hopefully, these events will contribute to a coherent development of patent law jurisprudence.
(4) Internal consistency
Both the Japanese and the European patent systems aim to ensure internal consistency among thedivisions of their specialized courts. However, it is important that internal consistency is balancedwith judicial experimentation. In this way, the specialized court could fully benefit from divergent
interpretations among its divisions for a dynamic development of patent law. In the Japanese patent
system, the Grand Panel holds an essential role for the coherent interpretation of patent law.
However, to effectively fulfil its role, the Grand Panel should intervene only after significant
divergences among the divisions.30 A similar mechanism should be applied in the future European
patent system. The President of the UPC Court of Appeal should request the intervention of theplenary session for instance after a split between different court of first instance divisions (local,
regional or central divisions) took place in order for the final decision to benefit from judicial
experimentation.

V. Conclusive remarks
The underlying justification for the creation of centralized and specialized courts is that suchcourts would contribute to the development of a more uniform and predictable case-law. However,this analysis shows that specialization also entails some risks in terms of isolation of patent law andinconsistent decisions between the specialized court and the patent office. Identifying potential
mechanisms to enhance judicial coherence within patent systems with specialized patent or IP courts
is key. The identification of such mechanisms may provide fruitful lessons to be transferred todifferent patent systems.
The mechanisms identified through the present analysis do not entail “restructuring” patent

30 See Y. Tamura, op. cit. supra note 6.

viiisystems by means of legislative intervention, which is often a complex and time-consuming process.
Rather, most of the identified mechanisms encourage a collaborative attitude of the actors involvedin the system and aim to foster a careful balance of their powers. Acknowledging the importance ofthe roles of courts and patent offices in the interpretation of the law and fostering a dialogue between
these actors will hopefully contribute to a harmonious development of patent systems.

ix