6 Establishment and Operation of a Patent System
Conducive to Patent Stability in Infringement Lawsuits (*)
The Cabinet decision "Basic Principles Concerning the IP Policy" was adopted on October 7, 2013. In thisdocument, the government declared its determination to examine whether the IP dispute settlement system isworking properly as a whole and to take measures to further enhance the system in terms of its patent disputesettlement function in order to strengthen Japanese industrial competitiveness. In order to create one of theworld's most sophisticated IP systems, it is necessary to improve the system from the perspective of broadening
the spectrum of users (special support for Small-and-Medium-sized Businesses (SMBs) and venture companies),
promoting innovation (strategic support to turn technologies and R&D capabilities into assets), and supporting
global business activities (grant of stable rights that are effective in and outside Japan).
On the other hand, Japan’s numbers are lower than Western countries’ in terms of patent infringement
lawsuits and the patentee's win rate in infringement lawsuits. It has been pointed out that one of the reasons forthis difference is that, since the rendering of the Supreme Court judgment for the Kilby case, the defense ofinvalidity has been permitted to be raised in an infringement lawsuit under Article 104-3 of the Patent Act(enforced on and from April 1, 2005), which has increased the burdens on the patentee in an infringement
lawsuit. Consequently, this has prevented patentees from fully exercising their rights. This situation might bediscouraging companies from filing patent applications and hindering the promotion of innovation.
In this research, we identified specific needs of Japanese users with regard to the establishment andoperation of a patent system conducive to patent stability in infringement lawsuits, etc. and also analyzed
similar systems in other countries. Based on the findings, we discussed how to improve the patent stability
evaluation system for patent infringement lawsuits in Japan.

I

Introduction

1

Background of this research

The JPO has been struggling to achieve its
most important goal of "11-month first officeaction pendency" over the past 10 years. During
this period, we have seen significant changes inthe economic and social situations, which must
always be reflected in the national IP policy. As aresult of these changes, it has become
increasingly important to enhance the IP strategy
in order to strengthen Japanese companies’
competitiveness and to raise the standard ofliving of Japanese people. "Japan Revitalization
Strategy -- Japan is Back," adopted by the Cabinet
on June 14, 2013, states that the IP strategy
should be fundamentally enhanced in order topromote scientific and technological innovation.
On June 7, 2013, the Cabinet adopted the "Basic
Principles Concerning the IP Policy," which statesthat the main objective is to "examine whether
the IP dispute settlement system is working
properly as a whole and to take measures tofurther enhance the system in terms of its patentdispute settlement function."
In view of the facts that the number ofIP-related lawsuits is extremely small in Japan(187 cases in Japan, 5,189 cases in the U.S., 9,680
cases in China in 2012) and that the patentee's
win rate (on the basis of the number of
judgments) in patent infringement lawsuits is
relatively low in Japan in comparison with the
U.S., and France (the provision concerning thepresumption of validity and the triple damages
system are explained as examples of IP-related
litigation systems in other countries) (Chapter I-2(5) of the IP Policy Vision), it may be said that the
dispute settlement function of the Japanese
patent system has hindered smooth exercise ofrights. In particular, thanks to the Supreme Court
judgment for the Kilby case (April 11, 2000) and
Article 104-3 of the Patent Act (enforced on andfrom April 1, 2005, the provision concerning
patent invalidity defense), the defense forpreventing the exercise of rights has been
stipulated by law. As a result, in a patent
infringement lawsuit, the court is allowed todetermine the validity of the patent. There is aconcern that the resulting increase in the burdenof defense on the part of the patentee in an
infringement lawsuit might have discouraged
inventors from filing patent applications and,
consequently, hindered the promotion of(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
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innovation in Japan.
On the other hand, in the U.S., where thedefense for preventing the exercise of rights has
been stipulated by law, many IP-related lawsuits
are filed. This is attributable, in part, to theestablishment of a legal provision concerning thepresumption of patent validity (Section 282 of the
35 U.S. Code) based on the idea that, in a patent
infringement lawsuit, the court should hand down
a judgment of patent invalidity only with greatcare. If this provision is applied to a case, thepresumption of validity may be overturned only
by clear and convincing evidence. The
introduction of a similar provision to Japan could
resolve the aforementioned concern. Meanwhile,further discussions would be necessary fromvarious perspectives in order to examine whether
the introduction of such a provision could
facilitate exercise of rights and promote
innovation in Japan and how to integrate it into
the Japanese patent system and legal framework.
2

Roles of patent rights in promoting
innovation

It has been reported that innovation is likely
to occur when venture activities increase and that,while there are two types of innovation, namely,
innovation that creates a new market and a new
industry and innovation to satisfy the increasingly
sophisticated market and customer needs, theinnovation achieved by the existing companies islikely to fall under the latter type, which satisfies
the sophisticated market, etc., whereas theinnovation achieved by entrepreneurs (venturecompanies) is much more likely to fall under the
first type, which creates a new market and a new
industry. In light of these reported facts and thefact that the creation of new industries isessential for the future development of Japan, notonly large companies but also entrepreneurs and
SMBs such as venture companies areindispensable for the promotion of innovation.
Furthermore, the results of the research
conducted in Western countries have revealed
that SMBs that detect infringement would not beable to fully exercise their rights. This suggeststhat the situation in Japan is even more serious
because the exercise of rights is further
prevented by the high loss rate in infringement
lawsuits in Japan.
The Japanese IP environment, which may becharacterized by low patent stability despite strict
patent examination practices, has made it difficult
for SMBs to create portfolios and increased therisk of their involvement in IP-related lawsuits
due to the instability of the portfolios that they
managed to create.
In sum, the situation in Japan may beconsidered to be extremely unfriendly to SMBs
such as venture companies trying to conduct
continuous business in a new market or a new
industry although it is important to let them play
important roles as promoters of innovation.
3

Example cases where innovation wasprotectedbypatentrights(pharmaceuticals)

Mevalotin(registeredtrademark)iscommonly used as a drug to treat hyperlipidemia.
This drug is one of the main drugs produced by
Daiichi-Sankyo Co., Ltd., whose sales of this drug
reached 128.8 billion yen (domestic sales) in
FY1999 and 110.7 billion yen in FY2002. However,since the expiration of the patent in Japan in 2002,
23 companies have entered the domestic market
since 2003. The patent also expired in Germany
and the U.K. in FY2004 and in the U.S. andFrance in 2006. Moreover, a generic drug makerdeveloped a technology to circumvent the process
patent. Since the expiration of the patent, thesales of the drug have dropped to about 50% of
the peak sales. This indicates that patent
protection of innovation is extremely important
for the recovery of R&D investments.
For example, Takeda Pharmaceutical Co., Ltd.
had 36 patent applications laid open and invested
453.0 billion yen in R&D activities, while Astellas
Pharma Inc. had 26 patent applications laid open
and invested 159.1 billion yen in R&D activities.
This shows that the number of applications isrelatively small compared to the amount of R&D
costs.
As shown by the aforementioned example
case of Mevalotin, however, in the pharmaceuticalindustry in particular, each patent contributes
greatly to the successful recovery of R&D
investments through the sale of pharmaceuticalproducts. The instability of such a small numberof patents owned by these companies would
prevent innovation from receiving proper
protection and would hinder the promotion of
innovation. Therefore, in this industry, patentstability is naturally considered to be extremely
important.
The importance of patent stability is also felt
by small and midsize venture companies, whichhave to protect their innovations and businessactivities by a relatively small number of patent

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company).
4

Method of this research(1) Discussions at the committee
We established a committee consisting of a
total of five persons, Mr. Naruo Takakura,
Professor of the Law School of Meiji University,
serving as the chairperson, and also persons with
relevant knowledge and experience, persons withpractical experience, and experts from industrial
circles. The committee held a meeting threetimes in order to discuss the issues related to thesystem conducive to patent stability by having
committee members examine and analyze related
issues and give advice from the perspective ofexperts.
(2) Domestic interview survey
A domestic interview survey was conducted
mainly on companies that experienced patent
infringement lawsuits in Japan and the U.S. in
recent years, namely, 13 large companies, 4 SMBs,
2 law firms, and 2 persons with experience injudicial practices. In the survey, we collected
information about the current use of patent rights
and the issues related to the current systems
concerning
patentstabilityandpatentinfringement lawsuits and asked opinions about
the introduction of new systems.
(3) Overseas questionnaire survey
We conducted an overseas questionnaire
survey on 11 organizations such as IP Offices,
courts and law firms in the U.S., Germany, theU.K., South Korea, etc. concerning the operationof the system for patent stabilization and related
issues in each country. We also conducted anoverseas questionnaire survey to collectinformation about the issues, etc. related to theJapanese system for patent stability.
(4) Domestic and overseas literature study
By using books, academic papers, research
papers, Council's reports, database information,
online information, etc., we examined, organized
and analyzed literature useful for this research.

Ⅱ Issues related to the current law
concerning validity evaluation
Under the current system, a patent right isestablished and registered after examination by

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an invalidation trial under Article 123 of the
Patent Act. In the case where the JPO makes adecision of invalidity in an invalidation trial, if thedecision becomes final and binding, the decision
would become effective against third parties. If
that person is not satisfied with the JPO decisionof the invalidation trial, he or she may file alawsuit to seek rescission of the JPO decision.
On the other hand, since the rendering of theso-called Kilby judgment in 2000, under Article104-3 of the Patent Act, which was newly
established in the 2004 legal revision, any court
hearing a patent infringement lawsuit has been
allowed to determine the validity of the patent in
the course of infringement proceedings. In an
infringement lawsuit, if the court rules that "thepatent shall be invalidated by a patent invalidation
trial," the patentee, etc. will be prohibited fromexercising his/her patent right against the
opponent of the lawsuit (however, this rulingwould not be effective against third parties.).
Meanwhile, an infringement lawsuit and aninvalidation
trial
may
be
conducted
simultaneously. In order to prevent inconsistency
between an infringement lawsuit and aninvalidation trial in terms of evaluation of patentvalidity, measures have been taken to improve thedesign and operation of the system. However, inthe case where the validity of a patent isdetermined under two different systems(so-called double track), namely, an infringement
lawsuit and an invalidation trial, the patentee isrequired to win the confirmation of validity under
two different settings. Consequently, the patentee
must bear a heavy burden. Furthermore, in an
infringement lawsuit, chances are high that thepatent will be found invalid. Either rightly or
wrongly, the exercise of patent rights is restricted
as a result. Even in some court cases before 2000,
some courts hearing patent infringement lawsuits
imposed restrictions on the exercise of patentrights in practice by interpreting that the scope of
patent is limited to the embodiments in somecases such as the case where a publicly known
technology may be considered to be included in
the invention described in the patent claims basedon a literal interpretation of the claims. As
mentioned above, the court hearing a patent
infringement case has been allowed to determine
patent validity since the rendering of the Kilby
judgment, where the court found that the court
hearing a patent infringement case is authorized
to determine the validity of the disputed patent,

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and the subsequent establishment of Article104-3 of the Patent Act.
On September 30, 2005, the Intellectual
Property High Court (2005 (Ne) 10040, theappeal case to seek an injunction against patent
infringement) found the icon patent of Matsushita
Electric Industrial Co., Ltd. invalid and revoked
the judgment in prior instance handed down by
the Tokyo District Court, which issued an
injunction against the Japanese word processor
software "Ichitaro" and the graphic software"Hanako" manufactured and sold by JustSystems.
The Intellectual Property High Court also
dismissed a claim for an injunction filed by
Matsushita.
Regarding patent infringement lawsuits inJapan, it has been pointed out that "the number of
infringement lawsuits has decreased rather thanincreased since around this time."
Furthermore, as an opinion from an oversea
user, it has been reported that an executive of theAmerican Intellectual Property Law Association(AIPLA) pointed out that "It would bemeaningless to file patent applications in Japan
where the defense of invalidity can be easily
raised, preventing patentees from fully exercising
their rights."
Also, as other opinions from oversea users, it
has been reported that, in the overseas
questionnaire survey conducted in this research,some respondents said that the patentee's highloss rate in patent infringement lawsuits is one of
the reasons why they refrain from filing
applications in Japan (U.S. companies, offices inGermany and South Korea).

Ⅲ Comparison between countries
with regard to the validity
evaluation system for patent
infringement lawsuits
1

System in the U.S.

Patent validity can be evaluated through anyof the five procedures under the current law. The
USPTO offers four procedures that differ fromeach other in terms of the examination standards
and the person authorized to conduct a validity
evaluation, namely, (i) reexamination, (ii) thesystem of Post-Grant Review (PGR), (iii) thesystem of filing oppositions against Business
Method Patents (CBM), and (iv) Inter Partes
Review (IPR). In addition, the federal district
courts are also authorized to evaluate patentvalidity in the case where the validity of a patent

is disputed (usually in a patent infringement
lawsuit). In order to fulfill the validity criteria, it
is necessary to satisfy Section 282 of 35 U.S.
Code by "clear and convincing evidence (at least
80:20)," whereas the USPTO, to which such ruleof validity presumption is not applied, has adopted
the practice of requiring the "preponderance ofthe evidence (at least 51:49)." In order to prevent
hindsight from affecting the evaluation of an
inventive step, courts require the indication ofteaching, motivation or suggestion in referencesin order to combine those references. These
requirements were clarified in the KSR judgment.
When it comes to infringement lawsuits in the
U.S., high trial costs and instability thereof aresome of the reasons why the parties to a lawsuit
choose to settle the dispute.
2

System in Germany

Any person may file an opposition with thepatent office within three months after the grantof a patent (in the case of a German patent) orwithin nine months (in the case of a Europatent).
After these opposition periods (as long as noother opposition procedures are pending), any
person may dispute the validity of a German
patent or the German part of a Europatent byfiling a lawsuit with the Federal Patent Court forinvalidation of the patent. If the Federal Patent
Court finds a patent valid, the decision would bebinding only to the parties to the case. Therefore,
any third party may still file a lawsuit to seek apatent invalidity judgment. If a patent is foundinvalid, whether in whole or in part, the decision
would be effective against third parties. The
decision made by the Federal Patent Court may
be brought before the Federal Supreme Court. In
Germany, the rapid infringement proceedings andthe slow patent validity proceedings cause a timelag between the two types of proceedings, which
has created a system that is advantageous topatentees. This system has encouraged thepatentees of relatively weak patent rights to filelawsuits against infringers. On the other hand, if apatent is subject to patent validity proceedings,
the court in charge of the patent infringement
lawsuitmaysuspendtheinfringement
proceedings under Article 148 of the Code of Civil
Procedure. In Germany, courts always encourage
settlement between the parties concerned. In thecase of a simple dispute over whether the alleged
infringement actually occurred or not, a court
would simply determine whether the alleged
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court would encourage settlement if either party
has an advantage over the other.

Ⅳ Lawsuits and patent stability inJapan
1Lawsuits(1) Current situation
In Japan, the number of patent infringement
lawsuits has stayed at around 200 in recent years.
This is relatively small in comparison with thenumbers in the U.S. and China, due probably tosuch factors as the high risk for patentees to lose
lawsuits, the tendency of Japanese people to avoid
lawsuits, high court costs, low damages, anddifficulty obtaining a useful patent. The patentee's
loss rate in lawsuits has been around 80% since
2000. As far as patent infringement lawsuits areconcerned, the rate has been on the rise since therendering of the Kilby judgment and stayedaround 70 to 80% since 2004. In slightly less than
50% of those cases, a request for an invalidation
trial was filed. This indicates that the burdens on
patentees have been increasing. In the case of apatent infringement lawsuit, if the defense ofinvalidity is raised, the court would evaluate thevalidity of the patent in 60 to 70% of the cases
and find the patent right invalid in 70 to 80% of
those cases.
On the other hand, the number of cases
where a request for an invalidation trial was filedwith the JPO has been on the decline and reachedslightly less than 200 in 2012. The patent
invalidation rate has also been declining, reaching
about 35% in 2012. The rate of upholding the JPO
decision in a lawsuit to seek rescission of the JPO
decision with regard to patent validity has stayedat around 70% since 2008, regardless of whether
the JPO decision in question recognizes patentvalidity or patent invalidity.
In the case of patent infringement lawsuits inJapan, 64% of the plaintiffs were SMBs (44 out of
65 patent infringement lawsuits (first instance) inwhich the court rendered a judgment in 2010 or2011). As far as the lawsuits that SMBs filed
against SMBs are concerned, the plaintiff's win
rate is 25%. However, as far as the lawsuits filed
by SMBs against large companies are concerned,
the plaintiff's win rate is about 10%. This low ratesuggests that SMBs are having difficulty inprotecting their business by patents.
(2) Decrease in the number of lawsuits
In Japan, the number of patent infringement

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and, since then, the number has been on the
decline although the number showed a slightincrease in 2011. This decline was probably
attributable to the establishment of Article 104-3
of the Patent Act, the difficulty in winninglawsuits, the remaining impression of thesituation around 2004 where the inventive step
criteria imposed by the IP High Court weredifficult to meet, the shrinking Japanese market,
the increase in the number of companies that
conduct prior art searches to avoid infringement,
the conclusion of license agreements withcompetitors in Japan, the filing of lawsuits in the
U.S. because of the low possibility of winninglawsuits in Japan, and the smallness of theamount of damages and royalties. Regarding thereasons for patentees' defeats during the period
from 2006 to 2009, about 50% of the defeats canbe attributed to the recognition of patent
invalidity. In recent years, however, only 27% of
the defeats can be attributed to the recognition ofpatent invalidity.
(3) Amount of damages
The amount of damages approved by the
court is five million yen or less in about 20% of allof the cases. The amount is 10 million yen or lessin about 35% of all of the cases. Ten million yen isconsidered to be the attorney's fees that would
arise in a patent infringement case (in an example
case where a claim for the payment of 100 million
yen is filed).
(4) Settlement after the filing of an
infringement lawsuit
About 50% of the patent infringement
lawsuits are resolved through settlement (34 outof 74 cases filed with district courts in 2012).
On average, in about 61% of the IP-relatedcases settled at the 29th Civil Division of theTokyo District Court, settlement was made insuch a way that may be regarded as in favor of theright holders. It has been reported that the actual
plaintiff's win rate is about 50% including theupholding judgments that have led to theplaintiffs' winning of the cases. This data is about
IP-related cases in general, not limited topatent-related cases. Since the plaintiff's win rate
is higher than the rate calculated only forpatent-related cases, the rate of settlements infavor of the plaintiffs is expected to be slightly
lower than this rate. Furthermore, in an interview
survey conducted on those engaged in IP-related
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slightly less than 50% of the settlements are
considered to be in favor of patentees.
Moreover, it has been reported that about
90% of the cases are solved through settlement in
the U.S., for example. In the overseas interview
survey, the respondents said that, in many of
those cases, the suspected infringers are
considered to have paid a large amount ofmonetary compensation to the patentees.
2

Patent stability

This research has revealed that patent rights
are effectively used not only by large companies
but also by SMBs (13 out of 13 large companies, 4
out of 4 SMBs). However, the interview survey
conducted on companies has revealed that manyof them are concerned about insufficient patentstability (7 out of 12 large companies, 4 out of 4
SMBs). Since low patent stability would result ininsufficient patent protection for business,companies, especially SMBs and venturecompanies, which have to protect their businessby a small number of patents, emphasized theimportance of patent stability ((the number ofpatents owned by companies) 18 patents in thecase of SMBs and 209 in the case of large
companies).
3

Double-track validity evaluation system(1) Predictability of evaluation results
In the domestic interview survey, many
respondents said that, in comparison with JPO
invalidation trials, the results of the validity
evaluation in patent infringement lawsuits areless predictable.
(2) Inconsistency between JPO decisions
ininvalidation
trialsandcourt
judgments in infringement lawsuits
Currently, there is a provision to prevent any
inconsistency between the JPO and courts interms of validity evaluation results. However,such inconsistency has actually occurred in somecases. In the domestic interview survey, some
respondents said that a certain degree ofinconsistency has been anticipated since theestablishment of the two-track evaluation system.
In the research conducted by the JapanIntellectual Property Association (JIPA) on theissue of invalidity defense raised in infringement
lawsuits, an analysis was conducted on the
judgments handed down for the cases where suchinconsistency occurred despite the use of thesame evidence. JIPA found that the JPO has atendency to focus on "structure," whereas courts
have a tendency to focus on "problem, functionand effect." It has been reported that it isdesirable to use such logic that can win a court
judgment of invalidity in a judicial trial as well asa JPO decision of invalidity in a JPO invalidation
trial and that the defense of patent invalidity
raised in a trial is important because any person
who wins an infringement lawsuit would not be
ultimately obliged to seek an injunction etc. even
if the JPO has already recognized the validity ofthe patent in a JPO invalidation trial.
(3) Use of the JPO examination guidelines
by courts
Some member of the committee established
for this research pointed out that it is necessary
for courts to respect the JPO examination
guidelines, which reflect the opinions ofcompanies, experts, etc. and to take them into
consideration when examining the defense ofinvalidity unless those guidelines are illegal. In
the interview survey, some companies submitted
a similar opinion, saying that courts and the JPO
should, at least, use the same validity evaluation
criteria.

Ⅴ Discussions on the proposedsystem conducive to patentstability and the issues that need
to be solved before introductionof the system
1

Introduction of the U.S.-type "provisionon the presumption of validity"

Under the current Japanese Patent Act, it isinterpreted that any patent registered after theapplication examination procedure may bepresumed to be valid on the grounds that theexaminer who examined the patent was unable tofind any reasons for refusal, which are almost thesame as the reasons for invalidation, and that thevalidity is publicly certified by the patentregistration. Some committee members said that
it would be useful to establish a provision on thepresumption of patent validity, like the one
established in the U.S., and to explicitly specify tothat effect in order to give some guidance tojudges and to show the users of the patent system
Japan's policy of respecting the validity ofregistered patents. However, some othercommittee members said that such legislation

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would be unnecessary because patent validity
may be presumed based on the aforementioned
interpretation.
Regarding the effect of introducing theprovision on presumption of validity into theJapanese Patent Act, some committee members
said that, like in the U.S., an invalidation
judgment made by the court hearing an
infringement lawsuit should require a higher levelof the standard of proof than the level required in
the case of a JPO decision of invalidity in a patent
invalidation trial. On the other hand, some othercommittee members said that the level of thestandard of proof should not be easily changed
because the litigation system in Japan is different
from the one in the U.S.

invalidation should be examined only if they are
related to the issue of novelty and should not be
examined if they are related to the issue of a
subtle, highly specialized inventive step and (ii)the reasons related to the issue of inventive stepshould not be excluded, while the defense ofpatent invalidity should be prohibited if theexistence of an inventive step is not clear to thejudge. In the case of any reasons for invalidation
other than the reasons related to the issue ofnovelty or the issue of inventive step, there
would be two possible consequences: (i)restrictions should be imposed on the types ofreasons for invalidation that may be asserted and(ii) restrictions should be imposed based on thedetermination of the judge.

2

Ⅵ Conclusion

Revision of Article 104-3 of the Patent
Act (Proposal of adding the "clear"requirement and other proposals)

At the committee established for thisresearch, some committee members supported
the addition of the "clear" requirement to Article104-3 of the Patent Act, by saying that it would
impose excessive procedural burdens on
patentees if any matter that has already been
examined by JPO examiners, such as thefulfillment of the requirement for amended, has tobe re-examined as a result of the defense ofpatent invalidity. Some committee members
opposed such additional requirement, by sayingthat the legislative history of this Article showsthat the introduction of the "clear" requirement
adopted by the Supreme Court judgment for the
Kilby case was refused in the 2004 revision, andthat such requirement shall not be added byconducting another revision, that the "clear"requirement would not make much difference interms of the enforcement of the provision inpractice, that it may be interpreted that thecurrent provision seems to clearly stipulate thatthe same criteria shall be used by a court hearing
an infringement lawsuit when determining
whether any reasons for invalidation exist or not
and also by the JPO when making a JPO decision
in a patent invalidation trial, and that it is not
appropriate to repeatedly modify the provision
within a short period of time, and that, based on
the patent invalidity theory, it is impossible tosupport the idea of imposing the "clear"requirement on a person raising the defense ofpatent invalidity. On the presumption that the"clear" requirement is introduced, there would be
two possible consequences: (i) the reasons for

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The results of the interview survey and thequestionnaire survey have revealed that, in
response to the question about the importance ofpatents and the necessity for patent stability, bothlarge companies and SMBs responded that whiledevising their business strategies, they consider
it important to protect their business operations
by patent rights and to promote innovation by useof patent rights (Domestic interview survey: 13
out of 13 large companies, 4 out of 4 SMBs).
Many companies consider that patent rights havelost sufficient stability since the enforcement of
Article 104-3 of the Patent Act (7 out of 13 large
companies, 4 out of 4 SMBs). Furthermore, many
companies (8 out of 13 large companies, 3 out of 4
SMBs) expressed their willingness to introduce
new measures to enhance patent stability.
Also, with regard to the specific measures toenhance patent stability from the perspective of
operational practices, respondents in theinterview survey and questionnaire survey aswell as committee members in this researchsubmitted the following opinions: (i) the JPO
examination guidelines, which were createdbased on the accumulated court precedents andthe opinions of industrial circles, experts, etc.,
should be respected in trials as much as possible,(ii) the JPO decision for each case should be
respected in relevant judicial trials as much as
possible because such a decision has been madeby JPO technical experts, (iii) it would bedesirable if both the JPO and courts adopt thesame level of judgment criteria to a certain
extent.
Regarding the introduction of legal measures
to improve patent stability, there are three

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possibilities: (i) the establishment of a provision
on presumption of validity applicable to patent
infringement lawsuits (as is the case with Section
282 of the 35 U.S. Code, the newly establishedprovision would permit the invalidity defense
only if the existence of the reasons forinvalidation can be proved by clear and convincing
evidence.), (ii) the addition of the "clear"requirement to Article 104-3 of the Patent Act (topermit restrictions on the exercise of rights only
if the reasons for patent invalidation clearly exist),and (iii) the introduction of legal measures suchas restrictions on the reasons for invalidation.
Some of the respondents in the interview survey
said that it would be desirable to hold discussions
on the effects, reasonableness, related issues, etc.
of the introduction of these legal measures fromthe perspective of enhancing patent stability.
We had discussions on these measures andfound that, in sum, the introduction of any ofthese measures would be effective to a certain
degree (the effect of enhancing patent stability)
although it would cause various issues. The
effects include some direct effects such as anincrease in the accuracy of validity evaluation as aresult of encouraging judges to conduct
evaluations more carefully and also include someindirect effects such as the promotion of
innovation by use of patent rights as a result of
showing Japan's pro-patent policy to people in andoutside Japan (in particular, showing theimportance of IP strategies to Japanesecompanies).
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