5

Study on a Future Vision for Trial System andIntellectual Property Lawsuit

In recent years, as the importance enforcing patent rights has grown, improvement of the procedural
law-related aspects of such enforcement have been demanded. In the past, the procedural systems to settle disputes
were revised several times with a view to “speeding up trials”. It is now necessary to consider further revisions sothat disputes can be settled with a single procedure. In Japan, April 2000, the Supreme Court held in the Kilby casethat enforcement of patent rights shall be deemed an abuse of right if a court handling a patent infringement
lawsuit considers that there apparently exists a reason for invalidation of the patent right in question. As a result,it has become necessary to examine the relationship between judgments of invalidation rendered in the trial forinvalidation at the Japan Patent Office and judgments of invalidation rendered by courts in lawsuit.
In light of these circumstances, this study had widely taken up points at issue with respect to how the appeal
system before the Patent Office and intellectual property lawsuits before courts should be, and then tries to consider
measures for dealing with the situation.

Ⅰ Introduction
1

Situations in Foreign Countries

The procedural law concerning patent rights inJapan, except for the examination procedures for
granting patent rights, has a dual structurecomposed of:the procedure for lawsuitsagainst
infringement, and for remedies against infringement,
andthe procedure for appeals (appeals against
decisions of refusal, appeals for invalidation) andthe subsequent procedure for lawsuits against
appeal decisions. These two parts work incooperation as the two wheels in the structure ofpatent-related procedural law.
The points at issues described in II are
inconsistent with each other because of thedifference in the manner of addressing those issues.
“issues and proposed measures” are organized andpresented in III.

Ⅱ Issues in Appeal System andIntellectual Property Lawsuits
1

Judgment on Reason for Invalidation in
Patent Infringement Lawsuits(1) The Decision of the Supreme Court on
April 11, 2000 (“the Kilby Case Decisionby the Supreme Court”)
In this lawsuit, the Third Petty Bench of theSupreme Court held that even before the appeal
decision of invalidation of a patent become final andconclusive, it should be interpreted that a court
trying patent infringement lawsuit is entitled tojudge whether or not there is explicitly a reason forinvalidation of the patent in question. It further heldthat if, after the trial before the court, it has become
apparent that there is a reason for invalidation of

IIP Bulletin 2002

the patent, request for injunction or damages basedon the patent right constitute an abuse of right andshall not be permitted except in special
circumstances.
The court gave the reasons for this judgment :Admission of a request for an injunction against
working the invention or a claim for damages on
the basis of such the patent would, in practice, givean unreasonable advantage to the patentee, and an
unreasonable disadvantage to the person working
the invention, resulting in contrary to the principleof equitability;
while disputes should hopefully
be settled in a single procedure and as quickly as
possible, if existence of a reason of invalidation of
the patent were not admitted as a defense against
enforcement of the patent right, until an appeal
decision of invalidation via appeal procedure before
the Patent Office become final and conclusive, itwould force a party having no intent to seek
absolute invalidation of the patent to proceed withthe appeal, and it would also be against judicial
economy; Section 168 (2) of the Patent Law may
not be interpreted as providingsuspension of theproceedings of a lawsuit even in a case where there
apparently exists a reason for invalidation of thepatent and, as described above, invalidation of thepatent is certainly foreseeable.
(2) Position of the Decision(i) The issue
The Japanese Patent Law provides that patentrights created by registration remain in effect until
an appeal decision of invalidation becomes final andconclusive. Therefore, the issue is whetheror not
it is permitted for a court of an infringement lawsuit
to judge on the existence of a reason forinvalidation of the patent before the appeal decision
becomes final.
(ii) Position of Dai Shinin (Former Supreme
Court) (“Mukou Handan Hitei Setsu” theory of
rejecting the judgment on invalidation)● 44 ●

According to the decision of the Dai Shinin,even if there exists a reason for invalidation of thepatent in question, that fact is not admissible as adefense in the lawsuit unless an appeal decision ofinvalidation of the patent via the appeal procedure
before the Patent Office become final andconclusive. Therefore, the court must judge thecase on the premise that the patent is valid as longas the appeal decision does not become final andconclusive.
(iii) Conventional theories and lower court decisions
To date, efforts have been made to structure
theories that enable courts in infringement lawsuits
to draw a reasonable conclusion without waiting forthe appeal decision to become final and conclusive
or without suspending the proceedings even before
the appeal decision of invalidation becomes final
and conclusive. The major theories are listed below.
Gentei Kaishaku Setsu (theory of limited claim
interpretation:Kakuchou Kaishaku Hitei Setsu(theory of denial of broader claim interpretation)
and Jisshirei Gentei Setsu (theory of claim
interpretation limited to the embodiments)
Jiyu Gijutsu no Koben Setsu (theory of defenseof free art): Kochi Gijutsu no Koben Setsu (theoryof defense of publicly known art)
Gijutsuteki Han-I Kakutei Funou Setsu(theory of determination of technical scope
impossible): Hogo Han-I Fusonzai Setsu (theory ofnonexistence of protected scope)
Tozen Mukou Setsu (theory of inevitable
invalidity: Mokou no Koben Setsu (theory ofdefense of invalidity)
Kenri Ranyou Setsu (theory of abuse of right)(iv) Position of the Supreme Court decision
Under the circumstances that there are theacademic theories listed above and lower court
decisions, this Supreme Court decision amended
the decision by the Dai Shinin, holding that a court
trying patent infringement can judge whether or
not there apparently exists a reason for invalidationof the patent in question even before the appeal
decision of invalidation of the patent becomes final
and conclusive. As a result, it has become possible
to speed up the trial proceedings in lawsuits bysaving the double procedures of appeal forinvalidation and infringement lawsuits.
(3) Elements of Abuse of Right(i) Presence of subjective elements
The Decision states that a judgment can bemade if there apparently exists a reason forinvalidation of the patent in question, and theexistence of such a reason need not be related tosubjective elements or individual circumstances.
(ii) Category of Reasons for invalidation
The Decision does not distinguish the reasonsfor invalidation in the category.
(iii) Apparent existence of reason
The Decision required apparent existence of areason for invalidation. This requirement premisesthat the patent in question remains in effect until
the appeal decision of invalidation becomes final
and conclusive (Section 125, Patent Law). The
Decision considers this requirement as a necessary
element to exclude claims based on patent rights
deriving from the administrative disposition with adecision to grant a patent. This requirement ofapparent existence also contributes to theprevention of conflict between the judgments in a
lawsuit and an appeal for invalidation.
(iv) Special circumstances
The idea of “special circumstances” wasprovided as an exception, by keeping in mind that
there might be cases where it can not be said thatthe patent in question is invalid even if there exists
a reason for invalidation because of the highprobability of an amendment to be permitted for thepatent.
(4) Effect of Abuse of Right(i) Relationship with the conclusion in an appeal
for invalidation
If an appeal decision of invalidation has become
final and conclusive first, the patent in question
shall be deemed never to have existed (Section 125,
Patent Law), and the case in the infringement
lawsuit is automatically dismissed.
Before an appeal decision of invalidation
becomes final and conclusive, if it is found to bedifficult in a lawsuit to judge on the apparent
existence of a reason for invalidation of the patent,
it is possible to resort to the system of suspending
the lawsuit.
If, in a lawsuit, an injunction was rendered or aclaim for damages was admitted for the reason that
it is not apparent whether there exists a reason forinvalidation of the patent, and then the appeal
decision of invalidation has become final andconclusive, it is possible to apply for a new trial
with the court.
Conversely, if, in a lawsuit, a defense of abuseof right was admitted for the reason that there
apparently existed a reason for invalidation of apatent, thus the claim of the patentee wasdismissed, and then it was decided in an appeal
before the Patent Office (and in a subsequentlawsuit againstthe appeal decision) that the patent
is not invalid, it would be difficult for the patentee
to claim remedies as far as only those facts are
considered.
(ii) Relationship with other lawsuits
Relationship with a third party
It is understood that the apparent existence ofa reason for invalidation of patents has only arelative effect applied only to the parties and thecase concerned. However, when it is decided in a
lawsuit that there apparently exists a reason forinvalidation of the patent in question, it is very
unlikely that, a different decision would be rendered,as far as the same reason for invalidation is claimed
and the same evidence is submitted in other lawsuits.

● 45 ●IIP Bulletin 2002

Relationship with another lawsuit between thesame parties
A defense of abuse of right is workable only
when determining the reasons for the decision anddoes not create res judicata. It is a case law theory
in effect in Japan not to admit the collateral estoppel.
Although, claims against such a defense might be
restricted under the principle of faith and trust, it is
a common understanding that it has no legal effectin other lawsuits.
(5) Judgment on Reason for Invalidation ofPatents in Infringement Lawsuits(i) Effect of the Supreme Court decision
Demand of speeding up legal proceedings
It is thought that the decision will push trials
in many of the cases that have been pending for along time to speed up the proceedings. One of thefactors that has been critically alleged to delay thetrials of patent infringement lawsuits in Japan may
have been removed accordingly.
Settlement of dispute in a single procedure
It is thought that an appeal for invalidation of apatent seeks absolute invalidation of the patent inquestion (Section 125, Patent Law), whereas
defense of the abuse of right in an infringement
lawsuit is a relative method for defending against
enforcement of a patent right.
(ii) Reinforcement of expertise and cooperation of
courts and Patent Office
With respect to patent and utility model
infringement lawsuits, as competition jurisdiction of
the Tokyo District Court and the Osaka District
Court is granted (Article 6, Code of Civil
Procedure), most of such lawsuits are pending
before either of both District Courts. Investigation
Officers are dispatched from the Patent Office tothe special sections at both District Courts (Article
57, Court Organization Law). In this sense, systemfor cooperation of both institutions is sufficiently
prepared for the proceedings to try the apparent
existence of a reason for invalidation before thecourts of infringement lawsuits.
There are currently not many cases utilizing
the provision of Section 71(2) (Commission forExpert Opinion) of the Patent Law. This is an issue
to be discussed in the future.
With the establishment of the notification
system in the Patent Law Section 168 (3) and (4),it has become possible for both institutes to know
the pending proceedings of appeals for invalidation,
lawsuits against appeal decision and infringement
lawsuits.
(6) Considerations with Respect to Invalidationof Patent in Future(i) Judgment on validity of patents in infringement
lawsuits
Issues relating to legislative theory to admit adefense of invalidation of patents in infringement
lawsuits:
The following are expected to be raised as

IIP Bulletin 2002

issues for legal consideration.
(a) The decision to grant a patent is anadministrative disposition with a tentative validity.
Therefore, judging that a patent is invalid in an
infringement lawsuit as civil action without
revocation by the competent administrative officeor court might be inconsistent with generaladministrative law theory.
(b) Viewing the above point (a) from a different
angle, the cases stipulated in Section 123 of the
Patent Law should be interpreted as legallyprovided cases for “revocation” in administrative
disposition, though the term “invalidation” is usedin the present law. If a patent involves any of suchcases, would it be possible to treat the patent as
substantively invalid, though the decision to grant
the patent includes only a defect that enables
revocation?
(c) With respect to amendments to patent claimsas the “special circumstances” that the Supreme
Court was keeping in mindm, if a defense ofinvalidation of a patent in a infringement lawsuit isadmissible, how would such amendments fallingunder an administrative disposition be handled?
It is further necessary to pay attention to thefollowing points from the viewpoint of policy
making.
(d) If the element that existence of the reason forinvalidation of a patent should be apparent isremoved from the legal theory of the Supreme
Court decision as a legislative idea, a much higher
burden might be imposed on the trial of
infringement lawsuits, thus it is likely to prolong
the proceedings of infringement lawsuits again
which have been once speeding up.
(e) If the element of apparent existence isremoved and a defense of invalidation is directly
admitted while the appeal system for invalidation ofpatents is preserved, the decisions of lawsuits andappeals would conflict with each other more often,
damaging the legal stability.
(f) If a defense of invalidation of patent is admitted
in infringement lawsuits, would the right of thepatentee not be weakened more than under thecurrent law?
Issue in a case where a defense of invalidationof patent in infringement lawsuits is given theabsolute effectIt would directly conflict with Section 125 of
the Patent Law, thus possibly makes it difficult tomaintain the appeal system for invalidation ofpatents.
The issue of the legislative theory thatamendment to patent claim should be allowed
in infringement lawsuit where a defense ofinvalidation of the patent is admitted
Under the current law, an amendment to apatent claim is thought to be a new administrative
disposition to change the administrative dispositionof a decision to grant a patent. If such a disposition● 46 ●

were judged by other organizations than the Patent
Office, it is question whether such a judgment
would be appropriate. In addition, if the opportunityof substantial correction such as partial invalidationor partial disclaimer is preserved, a patent whichshould have exclusive effect would be different in
the scope of right by case or parties. This would
cause legal instability.
(ii) Invalidation of patent in future
The Supreme Court decision that admitted thejudgment on the apparent existence of a reason forinvalidation of a patent in lawsuit adopted thetheory of abuse of right to draw the most proper
conclusion under the current patent system inJapan. It is expected that the elements and effectsof legal theory provided by the Supreme Court will
be more concrete and the legal practice will operate
more smoothly with time in the course ofaccumulation of decisions by lower courts.
How the defense should be dealt with ininfringement lawsuit is an extremely material issue
related to the fundamentals of the patent system. It
is necessary to fully discuss the role that has been
played by the Patent Office, maintenance ofexpertise of courts, and the entire system withrespect to patent disputes. The system design
should be consistent with administrative law theory
and civil proceedings theory.
2 Settlement of Dispute in a Single
Proceedings of Patent Appeal and Lawsuit
against Appeal Decision(1) What is the Issue?
In precedents to date, the lawsuits against
appeal decisions have been divided according toeach reason, that is, for invalidation or rejection, in
spite of the fact that the cases are related to thesame patent or patent application. This is due to thelegal theory of the decision by the Grand Bench of
the Supreme Court in 1976 mentioned later. As aresult, there inevitably arise situations where acase is tried repetitively between lawsuits against
appeal decisions and appeals like a ball game, thus
causing it almost impossible to settle the depute ina single proceedings as demanded. Such situations
are further extended by the decision by theSupreme Court in 1999.
This problem resulting in an obstacle to realizefor disputes to be settled in a single proceedings
will be discussed below from the viewpoint of bothinterpretation and legislation theories.
(2) Scope of Trial in Lawsuits against Appeal
Decision(i) Summary of decision by Grand Bench of theSupreme Court in 1976
In the decision by the Grand Bench of theSupreme Court on March 10, 1976 (Minshu, Vol. 30,
No. 2, p. 79) (hereinafter called “the 1976 Supreme
Court Decision”), the scope of trial in lawsuit

against appeal decision of invalidation was limited,
and then such limitation was applied to lawsuit
against appeal decision of rejection. The 1976
Decision states that such limitation in the scope oftrial, which constitutes a basis in lawsuit against
appeal decisions of invalidation, can be understoodin the following two steps: a) “The subject of thetrial should be directed to only the mattersregarding the specific reason for invalidation
actually disputed in the appeal and judged in thetrial”; b) With respect to the identification of such areason for invalidation: b-1) each item of theprovisions for the reasons for invalidation and eachprovision of violation respectively constitutes an
independent reason for invalidation, and b-2) further,“the claims of invalidation corresponding to a
specific fact publicly known and corresponding toother publicly known fact respectively constituteseparate reasons.”
In the 1976 Supreme Court Decision, thereasons for invalidation not asserted in the appeal
proceedings (hereinafter called “Reasons Not
Asserted”) and reasons asserted and tried but notjudged in the appeal decision (“Reasons Not
Judged”) are excluded from the scope of trial inlawsuit against appeal decision.
It will bediscussed whether or not the legal
ground constituting the reasoning a) above as, thepremise, is appropriate.
(ii) Consideration from the viewpoint ofadministrative Procedure Law(a) Subject matter of lawsuit
As far as the general theory of the subject
matter of lawsuits for revocation is applied to thelawsuit against appeal decision, the subject matterof lawsuit against appeal decision will not be divided
or separated byevery reason for invalidation or
rejection. Therefore, the scope of trial in lawsuit
against appeal decision should not be limited
according to the separation of the subject matter ofthe lawsuit. Possible limitation of the scope of trial
should be directed to nothing more than limitationof the production of subject matter (as describedlater).
(b) Possibility to justify limitation of production ofsubject matter (commonly applied to appeal forinvalidation and appeal against examiner’s
decision of rejection)
Conventional theories are as follows:(b-1) Theory of appeal decision, rule of material
evidence, etc.
(This idea lacks legal basis)(b-2) “Decision making” theory and omission of
instance.
(This idea also lacks legal basis)(b-3) Noting of reasons.
(This idea also lack sufficient grounds to justify
the limitation of the scope of trial)(b-4) “Benefits of demanding careful trial andjudgment before the competent administrative● 47 ●IIP Bulletin 2002

office in the stage prior to lawsuit” or “benefits ofgoing through prior trial and judgment”
The possibility to justify the limitation of
production of the subject matter commonly applied
to appeals for invalidation and appeals against
examiner’s decisions of rejection is limited to“benefits of demanding careful trial and judgment
before the competent administrative office in thestage prior to lawsuit”, “benefits of going throughprior trial and judgment”, etc. This point seems tohave been adopted as the legal grounds of the 1976
Supreme Court Decision. Such benefits are,however, considered as the benefits for prior trial
after all. Prior trial as prerequisite are roughly
divided into: a) prior trial at the overall case level,and b) prior trial at the level of each reason forrejection or invalidation.
In the case of the first-mentioned level, it isapparent under the current legal system that there
must be prior trial including the case of reasons for
non-technical rejection or invalidation. However, inthe case of the latter-mentioned level, there
should need only be technical expertise at the
Patent Office (Department of Appeal). The 1976
Supreme Court Decision imposes by rule andrigidly limitations on the scope of trial by both legal
provisions and publicly known facts. Therefore, trial
by the technically competent authority must be
repeated even regarding reasons for non-technicalrejection or invalidation, inevitably creating
situations of alternate trials in lawsuits and appeals
like a ball game, which substantially prevents
prompt disposal of proceedings.
In addition, the flow of proceedings of patentappeal and lawsuit against appeal decision requires
participation of two types of technical experts: a)appeal examiners for patents, and b) court
investigators for industrial property (patents).
Under the circumstances, from the viewpoint ofpromoting the above-mentioned “benefits”, it isdifficult to agree to the repeating of appeals throughunexceptional admission of the limitation of
production of the subject matter. There will be no“benefits” or necessity to repeat the appeal forpatent under the careful supporting systems ofexperts mentioned in b) above in the sacrifice of thedemand of “speedy” proceedings.
As described above, it is legally groundless toimpose limitations on any assertion of new reasonsfor invalidation or rejection (including Reasons Not
Asserted and Reasons Not Judged) on the groundsof the aforementioned “profit”.
(c) Possibility of limitation to assertion (specific tolawsuit against appeal decision of rejection)(c-1) Consideration under the current law
Under the current legal system (Section 17,
Patent Law), there is no opportunity to amend
patent claims in a lawsuit (lawsuit against appeal
decision of rejection). If the production of facts orevidences that were not claimed in examination and

IIP Bulletin 2002

appeal is admitted in the lawsuit without limitation,
it would mean that the plaintiff would be deprived ofthe procedural opportunity to challenge suchproduction by the amendment of claims. Therefore,
some people may say that the limitation of suchproduction cannot be helped. However, such
limitation on the aforementioned grounds will apply
only to such items as not claimed, but not to items
that were not subjected to judgment. Therefore,such limitations themselves cannot support thetheory of the 1976 Supreme Court Decision.
(c-2) Legislative theory
To enable disputes to be settled in a single
procedure, it is necessary to prevent the situation
like a ball game by modifying the aforementioned
legal system itself. Discussions based on this kindof legislative theory are essential to prevent delayof proceedings and to settle disputes in a single
procedure.
(iii) Discussions from viewpoint of substantial
appropriatenessAs described above, the 1976 Supreme Court
Decision places too much emphasis on considering
the appropriateness of the unexceptional limitationof production. It pays less attention to speedy
proceedings.
(iv) Discussions from viewpoint of substantialconsistency
with
other
patent-related
decisions
Even though admitting the difference between
absolute effect (in the case of lawsuit against appeal
decisions) and relative effect (in the case of
infringement lawsuit), whereas in lawsuits against
appeal decision, such a position is taken that
disputes should be settled only by dividing by eachpublicly known fact, as the 1976 Supreme Court
Decision, in infringement lawsuits, the validity
should be judged as a whole as far as the defense ofabuse of right is admissible.
In addition, the position in the Supreme Court
decision in the Ball Spline Case is, although it was
an incidental question for judgment on applicabilityof the doctrine of equivalents, that court ofinfringement lawsuit shall judge disputes as awhole without prior appeal for patent with respect
to similar subject to novelty and inventive step.
Therefore, it is not possible to reasonably
account for substantial consistency with thosedecisions.
(3) Consequence of Appeal Decision ofInvalidation in Case that Decision for
Reduction of Scope of Patent Claim
becomes Final and Conclusive Pending
Lawsuit against Appeal Decision ofInvalidation(i) Summary of the Supreme Court decision on
March 9, 1999, Minshu Vol. 53, No. 3, p. 303(and the Supreme Court decision on April 22,
1999, Minshu No. 193, p. 231)
It is judged that while lawsuit against appeal● 48 ●

decision of invalidation is pending, if the appeal
decision of amendment becomes final andconclusive for the purpose of reducing the scope of
the patent claims, the appeal decision of invalidation
can be revoked without any conditions.
(ii) Consideration of the legal theory of the abovecase law
This Supreme Court decision in 1999 is not
appropriate because it lacks legal grounds.
a) This 1999 Decision is based on the 1976
Decision in leading to the aforementioned conclusion.
As described above, however, the legal theory of
the 1976 Decision itself lacks legal grounds.
b) Even if premised on the 1976 Decision, in casethat judgment on reason for invalidation about
amended claim is made as part of judgment in theappeal decision of amendment in question as towhether or not so-called the independent requirement
for patent is fulfilled, the “benefits of prior patentappeal” condition is also satisfied. Therefore, thereasoning of limitation of production (the limitationof the scope of trial) on the grounds that such“profit” is not damaged lacks legal grounds.
Under the Supreme Court decision in 1999, it
will be possible to prevent the appeal decision ofinvalidation of the patent in question from becoming
final and conclusive for a long period by tacticallyrepeating requests for appeal for amendment inorder to achieve trivial reduction of the patentclaims. As a result, it becomes possible toexclusively own patents that ought be held
invalidfor a long period. Such a situation runs
contrary to the aims and spirit of the Patent Law.
Considering the above, it can be said that thetheory of the aforementioned Supreme Court
decision in 1999 lacks legal grounds, and therefore,
may not be materially appropriate.
(4) Legislative Theory
As the 1976 Supreme Court Decision and theSupreme Court Decision in 1999 lack legal grounds
under the current law, such case law should bechanged by a new decision. If there is no prospectof such a change in case law in the near future, a
new legislation is necessary for denying the caselaw theory.
3

Desirable Trials in Appeal Procedures(1) Introduction
Generally, appeals are divided into two
categories: One is appeal against the examiner’s
decision, or a appeal against certain administrative
disposition made during the prosecution of patentapplications; and the other is appeal in the form of
the inter-partes trial, or appeal between the parties
in the adversarial system.
In the procedures of appeal against examiner’s
decisions and appeal for amendment, proceedings
are not conducted in an adversarial manner, and oral
trial examination (Section 145(1), Patent Law) ininter-partes proceedings involves no direct trial orquestioning of both parties concerned. Therefore, it
is not precise to call them “quasi-judicial procedure
structure” in the meaning that it refers to aprocedure similar to ordinary civil action. In theinter-partes trial in particular, proceedings have astructure analogous to so-called adversarial systemsuch that trial is conducted in principle in the oral
hearing (Section 145(1), Patent Law). Therefore,
for appeal decisions as conclusion of the trial, it isrequired to secure for appeal examiner to be careful
and reasonable, for the parties concerned to begiven the opportunity to consider if they will bringlawsuit against the appeal decision, and to clarify
the subject matter to be examined by the court as
to the correctness of the appeal decision. Further,
considering that appeal procedure substantiallyfunctions as proceedings of first instance, it is quite
important to operate the trial in the appeal
proceedings properly and promptly, as required bylaw.
From the viewpoint described above,
discussions will be made below as to how the trial
in the appeal proceedings should be dealt with.
(2) Application of Civil Action Procedure andPrinciple of Ex Officio Proceedings(i) Application of Civil Action Procedure
Section 151 of the Patent Law provides thatsome provisions of the Code of Civil Procedure
with respect to litigation procedure shall apply, withnecessary moderations, to the appeal procedure.
This means it is required that the procedure ofevidence examination of civil action is applied intaking evidence in the appeal procedure, and suchexamination of evidence is conducted strictly.
(ii) Principle of ex officio proceedings in appeal
procedurePrinciple of ex officio proceedings
The principle of ex officio proceedings is anidea that includes the principle of ex officio
proceedings and principle of ex officio examinationof evidence. It seems general understanding, as thereason that the principle of ex officio proceedings is
adopted in the appeal procedure, that third parties
are strongly interested in the grant and loss ofpatent rights having absolute effect, and that, as aresult, appeal examiners at the Patent Office areresponsible for attending to the grant and loss ofpatent rights from the standpoint of public interest.
However, the principle of ex officio
proceedings in the appeal procedure is at thediscretion of the appeal examiner in chief or boardof appeal, and such discretion must be exercised ina suitable manner that the Patent Office canperform its duties in the public interest and withcertain limitations.
Limitation of discretion
In the administrative law theory, discretion isdivided into “binding discretion (regulatory
discretion)” and “free discretion (convenient● 49 ●IIP Bulletin 2002

discretion)”. The principle of ex officio proceedingsin the appeal procedure will fall under the aforesaid
binding discretion.
Namely, if the principle of ex officio
proceedings has been exercised beyond the scopeof discretion authorized to appeal examiners at the
Patent Office, the decision rendered as the result of
trial would be an illegal administrative dispositionand should be revoked accordingly.
Situations and issues of the exercise ofprinciple of ex officio proceedings(a) However, the issue of attribution of rights as in
the case of a misappropriated application cannot be
discussed in terms of public interest. This kind ofissue rather belongs to areas where the adversarial
system in civil action, including the principle ofadmission (confession) so that the principle of ex
officio proceedings inherently should not be
exercised. When exercised, it should be done
carefully and with some restraint.
(b) Since the Kilby Case Decision by the Supreme
Court, decisions by lower courts based on the legal
theory of abuse of right have been rendered one
after another and from practical view point, suchoperation that seems almost to admit the defense ofinvalidation of patent in infringement lawsuits.
Under the circumstances, it is quite natural that thepresent appeal system for invalidation of patents isquestioned. The time has now come to review thesystem of infringement lawsuit and appeal forinvalidation to seek settlement of disputes in asingle proceedings.
What is most vital for the appeal system in thetransitional period is to indicate guidelines for the
defense of abuse of right for infringement lawsuits
through appeal decisions after a speedy, proper
trials, while making use of the characteristics of theappeal proceedings that appeal examiners astechnical experts judge the cases. From thisviewpoint, it is necessary to consider the exercise
of principle of ex officio proceedings so as tooperate with some restraint.
(iii) Improvement and speedy proceeding of appeal
trial
At any rate, what is promptly sought now for
the desired trial in the appeal procedure is proper,
speedy proceedings.
To lead oral proceedings to a speedy, proper
decision in appeal, the proceedings should befurther improved, and questioning of both parties
should be conducted before oral proceedings, orissues and points of trial should be notified inadvance.
For such improvement and speedy, proper
proceeding of the trial, the ability to advance andcontrol the proceedings is required of the appeal
examiner in chief, who should always takeinitiatives to work out “trial plans”, to lead theboard of appeal, and to seek the cooperation of theparties concerned.

IIP Bulletin 2002

4

Issues concerning Section 167 of the
Patent Law(1) Introduction
Section 167 provides that “When a final andconclusive trial decision in a trial under Section
123(1) or 125(bis)(1) has been registered, no one
may demand a trial on the basis of the same facts
and the same evidence”. This is a provision toabsolute effect what is called the prohibition of
double jeopardy. This provision causes a problem interms of the right of access to the courts because itprohibits a third party who had no opportunity toparticipate in the trial procedure to demand a newtrial. There is no such provision in foreign major
legal systems. This chapter describes the issues ofSection 167.
(2) Scope and Time of Application of Section
167(i) Scope of application
A “final and conclusive decision” of a appeal
for invalidation of patent under Section 167 means
the final and conclusive decision that the request
for invalidation is not admitted. The effect ofprohibition of double jeopardy in this instanceextends to not only the parties of the appeal but
also to third parties who did not participate in theappeal proceedings.
(ii) Time of application
According to the decision by Dai Shinin andcommon belief , the application of Section 167 wasdetermined as of the time of the appeal decision. In
recent years, however, the Supreme Court held
after amending the decision by Dai Shinin that it isdetermined as of the time of demand for trial.
(3) Issues of Section 167 of the Patent Law(i) Relationship with third party’s right of accessto the courts
Section 167 says that after registration of a
final and conclusive trial decision that the claim ofinvalidation is not admitted, no one may demand a
new trial on the basis of “the same facts and thesame evidence”. This effect of prohibition of double
jeopardy extends to not only the parties of theappeal but also to third parties who did notparticipate in the appeal proceedings. This issue
needs further consideration in relation to the rightof access to the courts as a basic human rightguaranteed by Article 32 of the Constitution ofJapan.
First of all, the legislative intention of thisSection is to avoid conflict of final and conclusive
appeal decisions. The Section also assumes that
exclusion of a demand for a new trial will notprejudice a third party’s interests because it isexpected that the truth is discoveredby adopting
the principal of ex officio examination of evidence(Section 152, Patent Law).
In the case of appeal decisions of invalidity,
however, while the patentee participates as a party● 50 ●

in the appeal proceedings and lawsuit against theappeal decision, there is no opportunity for third
parties to participate in both of the proceedings. As
a result, balancing both is not dealt with.
The Supreme Court in its decision seeks
grounds for prohibition of double jeopardy into theidea that “to admit repetitive trials for invalidationon the basis of the same facts and the sameevidence will damage legal stability and run
contrary to the Patent Law’s purposes of protection
and utilization of inventions”.
However, Section 167 is only effective forstability of patent rights in the case of demanding a
new trial on the basis of the same facts and thesame evidence. The Section does not necessarily
eliminate demanding for invalidation of a patent
granted through defective administrative dispositionon the basis of other reasons for invalidation orevidence. The instability of proprietary rights insuch limited situations will probably not run
contrary to the Patent Law’s purposes of protection
and utilization of inventions or prejudice national orsocial interests, though it might prejudice thepatentee’s interests.
For the reasons, even if provision of Section
167 were completely deleted, no substantial
inconvenience would arise for the overall patent
system so that it would be desirable from theviewpoint of legislative action.
(4) Relationship with Limitation of Scope ofTrial
The appeal system for invalidation is thought
to be meaningful in that it requires any person toact in presumption of valid patent unless the patent
is declared invalid in the final and conclusive appeal
decision andit ensures unitary judgment on
invalidation, making a re-trial of patent requirements
unnecessary in the enforcement of the patent right.
With the Kilby Case Decision by the Supreme
Court, however, the significance of existence of thesystem is again questioned. Some people strongly
assert that judgment on invalidation of patents
should be made in infringement lawsuit.
Given these points, such countermeasures
should be taken as to extend the scope of the trial
in lawsuits against appeal decision, so that disputes
over invalidation of patents will be settled speedily
and, if possible, in a single procedure.
However, because Section 167 of the Patent
Law provides that the effect of prohibition of double
jeopardy for the final and conclusive appeal decisionextends to third parties who had no opportunity toparticipate in the appeal proceedings, the scope ofthe trial in lawsuits against appeal decisions mustbe limited in order to make the extent of prohibitionof double jeopardy as narrow as possible, and tominimize prejudice to third parties’ interests. In
addition, according to the reasoning of the decisionby the Grand Bench of the Supreme Court, even if
the wording “no one” were deleted from the text of

Section 167 to limit its effect to only the parties
concerned, it is possible to attach a reason for
limiting the scope of effect, thus leaving room forextended interpretation. Section 167 is in factplaying the role of an obstacle to the extension of
trial scope.
The aforementioned points also indicate that itis desirable to completely delete Section 167 as awhole as legislative measure.
5

Characteristics
ofInvalidation of Patents

Reasonsfor(1) Introduction
It is thought that there are two types of reason
for invalidation of patents depending on what will
be required in the judgment on such reasons; thefirst one requires technical expertise, and thesecond one requires knowledge of the Civil Code.
Therefore, it is said as efficient that appropriate
subject shall judge on invalidation of patents
according to the characteristics of the reason forinvalidation in question. These points are discussed
below.
(2) Classification of the Reasons forInvalidation of Patents(i) Classification by contents
The reasons for invalidation of patents set
forth in Section 123(1) are classified depending on
the contents, as follows:
Elements regarding subject of right (patentee,
etc.)
Elements regarding objects of right(patentability, etc.)
Elements
regardingdescriptionofspecifications and the like
Elements regarding amendment or correction.
Violation of treaties(ii) Classification by characteristics of Reasons forinvalidation
This classification includes reasons appropriate
to be judged as a legal matter by court rather than
the Patent Office (elements about subject), andreasons appropriate to be judged by the Patent
Office as a competent technical expert authority(novelty, inventive step, etc.).
(iii) Reasons for invalidation possible to be judged
by court
The “apparently” indicated in the Kilby Case
Decision by the Supreme Court should, as
expressed in the decision itself, be interpreted as
requiring a certain degree of “apparently”. It is not
likely to require “apparently” in some specificallyhigh degree. Such “apparently” should be enoughfor the judge as to have a strong conviction leading
to the judgment that “if an appeal is demanded, thepatent is definitely expected to be invalidated when
the appeal decision becomes final and conclusive.”
According to the elements of infringement ofequivalents admitted in the Ball Spline Case, an● 51 ●IIP Bulletin 2002

infringement court is required to make judgmentson technical matters similar to non-obviousness,such as ease of replacement and exclusion of prior
art,.
Therefore, the “apparently” stated in the Kilby
Case Decision by the Supreme Court should not be
considered to restrict the scope of reasons forinvalidation that can be judged by the court. Theinterpretation should be that the court may judge
all reasons for invalidation no matter what thecharacteristics of such reasons are.
(iv) Recent decision by Supreme Court on reasonsfor invalidation of misappropriated applications
The decision by the Supreme Court of June 12,2001 (“O” No. 1918, 1997) held that reasons forinvalidation such as novelty and inventive stepshould be primarily left to the judgment of the
Patent Office, but a misappropriated application canbe directly judged by a court because of no dispute
over technical judgment.
(v) Necessity for review of allocation of power andauthority between the Patent Office and courts
in consideration of characteristics of reasonsfor invalidation of patents
It is desirable to judge on the existence of any
reason for invalidation of a patent before an
infringement court in advance of the judgment on
infringement in order to speed up the disputesettlement, as shown in the Kilby Case Decision by
the Supreme Court. However, the judgment on
invalidation in an infringement lawsuit may bemade depending on the settlement of the case, andit can also work in judgment in the infringement
lawsuit. Any judgment by an infringement court on
reasons for infringement creates only a relative
effect as an incidental question of the case becausesuch a judgment is rendered as a reason for thedecision and has no effect as a precedent (resjudicata). Therefore, regardless of the judgment by
the infringement court, it is necessary to provide
some place to invalidate the patent.
If it is possible to dispute any and all reasonsfor invalidation of patent in an infringement lawsuit,the disputes will be able to be solved in a single
proceeding between the parties, and there will be
no need to seek the absolute effect in the decision.
If a person still wants to seek the absolute effect,
the procedure to invalidate the patent will beenough.
On the other hand, the appeal system forinvalidation of the Patent Office is useful as a place
to confirm validity of right before institution of adispute, apart from infringement lawsuits. This is
why the existence of the appeal system forinvalidation has been considered meaningful. The
function to integrate the routes toward judgment on
invalidation and to implement screenings will
reduce the excessive burden on the courts andcontribute to speedy proceedings of infringement
lawsuit.

IIP Bulletin 2002

Assuming that judgments on invalidity will be
dealt with by both of the Patent Office and courts,
while reasons for invalidation based on legal
matters are better judged before the court, if such
judgment is removed from the appeal procedure forinvalidation before the Patent Office, it means thatthe body of judgment will be divided between the
courts and the Patent Office depending on the typesof reasons for invalidation. For example, in the caseof a dispute over invalidation of a patent, if the bodyof judgment is divided between the Patent Officeand the court according to respective reasons forinvalidation, it would separate the place of the
dispute, which is contrary to the direction seeking
settlement of disputes in a single proceedings to
speed up the procedure. Therefore, changing of the
body of judgment according to the types of reason
for invalidation will not be useful.
6

System of Post-Grant Opposition ofPatent and System of Appeal forInvalidation(1) Introduction
Having introduced a post-grant opposition
system as adopted in many of major countries(Revised in 1994), the opposition system in Japan
achieved international harmonization and becomesto contribute to solving problems inn speeding up
the grant of rights as pointed out in the previous
pre-grant opposition system. Upon introduction of
the post-grant opposition system, discussions weremade about the relationship with the appeal system
for invalidationalready established. It was pointed
out by the Industrial Property Council (Kogyo
Shoyuuken Shingikai) that the post-grant opposition
system and appeal system for invalidation should
coexist, while the relationship of both systems
should be made clear in terms of qualification of
opponent and appellant, periods for opposition andappeal, etc. During the course of discussions, it was
proposed that both systems be integrated into asingle system, but eventually, both systems wereleft in coexistence after adjustment of theirrespective features.
In this chapter, consideration will be given to
how these systems should be.
(2) Comparison of Post-grant Opposition
System and Appeal System for Invalidation
The post-grant opposition system is designed
to promote the reliability of patents. If a patent
opposition is filed, the Patent Office examines
whether or not its decision to grant the patent inquestion was right, and corrects any defects foundin the examination. On the other hand, appeal
system for invalidation is utilized by any personwith an interest as one means of defense in patent
infringement lawsuit, etc. It is designed to settle
disputes between the parties regarding the
propriety of the decision made by the Patent Office.

● 52 ●

(3) Situation of Utilization of Post-grant
Opposition System and Appeal System
for Invalidation(i) Situation of utilization of post-grant opposition
systemThe number of opposition filed in the
post-grant opposition system was 5,700 in the year
2000, which was substantially the same as in theprevious year. In the year 2001, however, thenumber of oppositions decreased, which is thought
to be due to the decrease in the number ofdecisions to grant patents and the ratio of thenumber of decisions to grant to the number ofpatent applications rather than a reduction in needsof the system. In addition, the ratio of the numberof oppositions by individuals in the system is muchhigher than the ratio of the number of appeals forinvalidation made in the name of individuals.
(ii) Situation of utilization of appeal system forinvalidation
The number of appeals for invalidation
increased in 2000 to 296, as compared with 91 in
1991. With the increase in patents infringement
lawsuits, the number of appeals for invalidation has
also increased.
(4) Meaning of Post-Grant Opposition System
and Points at Issue Concerning its
Relationship with Appeal system forInvalidation(i) Evaluation of current state of the system
The post-grant opposition system is designed
to administratively review possible defective
decisions to grant patents so as to correct thedefect at an early stage after the grant through asimplified procedure extensively accessible to third
parties from the viewpoint of public interest.
Because only seven years have passed since
the introduction of the post-grant opposition
system, it is too early to make a full evaluation of
the system at this point. However, the fact that
6,000 oppositions are filed each year indicates that
there is a certain amount of need for the system.
From the viewpoint of public interest, defective
decisions to grant patents should be reviewed as
early as possible after granting of the rights. In
addition, it is necessary to review the possible
burdens on the Patent Office that may arise,because the number of appeals for invalidation is
expected to increase if the post-grant opposition
system is abolished.
On the other hand, the appeal system forinvalidation is considered to be one means of defenseof a party concerned against an infringement lawsuit.
Therefore, it is different from the post-grant
opposition system in that only the party concerned mayproceed with the trial in the inter-partes procedure,with no limitation on the application period.
A defense of material invalidation has been
admitted in infringement lawsuit since the Kilby
Case Decision by the Supreme Court. Nevertheless,the appeal system for invalidation is meaningful inthe following respects:
It is possible to receive
an appeal decision having absolute effect;
it ispossible to use it as preventive action before ainfringement lawsuit is brought;
it is possible todispute invalidity of a patent at relatively low
expense and in a straightforward administrative
procedure. Therefore, it is necessary to organize
the relationship with the post-grant opposition
system by taking the above points into account.
(ii) Issues of post-grant opposition system
In the post-grant opposition system, it isnecessary to secure opportunities for argument by
third parties, because it has been pointed out thatno satisfactory opportunities for argument are
given to opponents at present.
In the post-grant opposition system, it ispossible to bring the case before the Tokyo High
Court against an appeal decision revoking a patent.
However, such a lawsuit is not permitted against aappeal decision maintaining a patent. In this case,the means reserved in practice is to demand an
appeal for invalidation. This situation is said to be
acting as an obstacle to the speedy settlement ofdisputes including a lawsuit against appeal decision,and it will therefore be necessary to seek thepossibility of instituting lawsuit against such a
decision maintaining a patent.
(iii) Administrative procedure for revocation ofpatentBased on the current state of the post-grant
opposition system and the appeal system forinvalidation, discussions on the desired administrative
procedure for revocation of patents should be madein terms of clearly allocating the roles between
administrative trail proceedings and judicial
proceedings.
In that case, consideration should be given to
removing any complication, avoiding conflict between
decisions, and measures against prolonged settlementof disputes, while making use of the characteristics
of administrative trial proceedings: The procedure
should be inexpensive and straightforward;
qualification of appellants;
a preventive procedurefor disputes; and absolute effect of decisions.
7

Advisory Opinion System (Hantei Seido)(1) Track Record of Use of the Advisory
Opinion System
The use of the advisory opinion system has
increased year by year, reaching 121 cases in FY
2000 (total number for patents and utility models),
it is rapidly increasing six times compared to thenumber of 19 in 1996.
(2) Basic Direction of Advisory Opinion
SystemIn a long term, the advisory opinion Systemshould be specifically focused, as appropriate as, onsuch fields “administrative services” based on the● 53 ●IIP Bulletin 2002

users’ opinions and development of such privateorganizations for alternative dispute resolution as
the Japan Intellectual Property Arbitration Center.
As one of the efforts in shifting the focus ofservice, it is necessary to reinforce cooperation
between the advisory opinion system and the
Arbitration Center. It will take considerable time for
the Arbitration Center to train its personnel to becapable of providing technical judgments necessary
for its arbitration service. Therefore, when the
Arbitration Center utilizes the advisory opinion
system to supplement its technical judgment
capability in part of its arbitration service, thematters can be tried in preference to the otherpending cases before the Patent Office.
It will also be necessary to focus the use of theadvisory opinion system on areas that necessarily
require urgent decisions on rights by administrative
authorities, as in the case of prohibition of imports
infringing intellectual property rights (cross borderinjunction).
Further, it is also important to improve accessby lawyers and patent attorneys. In addition, fromthe viewpoint of prompting autonomous settlementof disputes between the parties concerned, it is alsomeaningful to make access to the advisory opinion
system easier for regional enterprises.
The advisory opinion system itself is not alegally binding system and require neither oralproceedings nor open door examination of evidence.
In order for the system to focus on areas that
require prompt decisions by an administrative office,such as exploitation in cross border injunction, it will
be necessary to improve aspects of the proceduresin the system so that it can speedily dispose of
disputes using such measures as the Internet.
One of the advantages of alternative dispute
resolution is that it enables closed-door settlementof disputes, with privacy and trade secrets of theparties concerned being kept confidential. In thecurrent advisory opinion system, however, opinions
as a result are made public.
To enable the system to function as a means ofautonomous settlement of disputes between theparties concerned, the procedure should be
conducted behind closed doors. However, it is notenough if the opinions are not made public on theoperational aspect only. It should be expressly
provided for by law that such opinions shall not in
principle be made open to the public.
To utilize administrative resources effectively
in presumption of the continued existence of theadvisory opinion system, further consideration
should be given for developing the system that will
conform with features of the needs.
8

Suggestions from the U.S. System(1) Introduction
In the U.S., judgment on invalidation of patents

IIP Bulletin 2002

is made in principle by a court in infringement
lawsuit or lawsuit for confirmation of invalidation.
Under the circumstances, the reexamination system
was introduced in 1981. In the reexamination
system, however, the prior art that can besubmitted was limited to patents or publications(Sections 30 and 302, U.S. Patent Law), and theguarantee of a procedure for claimants was notsatisfactory. Therefore, it has been recognized froman early stage that the system has its own
limitations.
To supplement these limitations, theinter-partes reexamination system was introduced
by a revised Law in 1999.
The mutual relationship between the inter-partes
reexamination system and civil lawsuit in the U.S
system is helpful for our discussions regarding
legislative improvement in Japan. This matter will
be discussed below.
(2) Mutual Relationship of Procedures
The mutual relationship between theinter-partes reexamination system and civil lawsuit
is described below.
(i) In case of preceding reexamination
If a preceding result of the reexamination
invalidates a patent, the patent is deemed to havenever been registered, and the subsequent lawsuit
for infringement becomes unnecessary.
On the other hand, if the patent is maintained by adecision in the reexamination, such a judgment will
be binding in subsequent civil lawsuit between theparties.
(ii) In case of preceding civil lawsuit
If a preceding decision of the civil lawsuit
found the patent invalid, the current case law holds
that such the finding substantially has absoluteeffect.(Blonder-Tongue v. University of Illinois
Foundation, 402 U.S. 313 (1971))
If a preceding decision of the civil lawsuit
found the patent valid, the party concerned is not
permitted to demand any inter-partes reexamination(Section 317(b)). Although this kind of express
provision for ordinary reexamination does not exist,
it was expressly declared that the U.S. Patent andTrademark Office would not admit a demand forreexamination in such a case. (In Re Pearne, 212
USPQ 466 (1981))(iii) In case that a preceding decision was overturned
by a subsequent decision invalidating a patent
After a decision maintaining the validity of apatent has become final and conclusive, if thepatent was found invalid in a subsequent lawsuit
against another defendant, the preceding decision
will not be revoked.
Although there is no specific provisionapplicable to such case that the patent was revoked
in a reexamination demanded by another person
after the preceding decision similar to the above
case, it is likely that analogy as mentioned above
can be applied.

● 54 ●

Conversely, if the patent was found valid in apreceding decision of an inter-partes reexamination,and subsequent decision of an inter-partes
reexamination or a lawsuit found the patent invalid,
the party of the preceding reexamination can also
assert invalidation of the patent.
(3) Summary of Situation in Japan
In Japan, the Kilby Case Decision by theSupreme Court has made it possible for an
infringement court to judge on apparent invalidityof a patent. The meaning of this situation will bebriefly discussed below with reference to the U.S.
system.
(i) Elements for apparent invalidity
The situation in Japan after the Kilby Case
Decision by the Supreme Court is, from only theoutcome of the lawsuit, quite similar to thesituation in the U.S. where a decision of invalidation
may be rendered without condition. In the U.S.
system, invalidation must be also clear andconvincing for rejection of the exercise of a patentright based on a claim of invalidation in lawsuit.
(ii) Meaning of Kilby Case Decision by theSupreme Court
One of the problems before the Kilby Case
Decision by the Supreme Court was the “unobvious
practice”, that is, to deny infringement through theinterpretation limited to embodiments or othermethods without directly judging on validity of thepatent. In this sense, the Kilby Case Decision by
the Supreme Court, which admitted judgment on
apparent invalidity of patent, has made the practiceclearer than before.
(iii) Problems in Kilby Case Decision by theSupreme Court
Although a decision of invalidation was
rendered in practice, the Decision states that it isan abuse of right and not necessarily a decision ofinvalidation. This holding is creating “anotherunobviousness”.
(iv) Possibility of decision on invalidation by court
Section 178(6) of the Patent Law provides thatan action with regard to the matters on which a trial
may be demanded may be instituted only against a
trial decision. Namely, a lawsuit for revocation of apatent or a lawsuit for confirmation of invalidity of apatent may not be brought before court
independently of the appeal for invalidation. Even
though, it is thought that seeking a decision on
invalidation will not be excluded in other cases.
Given the U.S. system where it is possible toclaim invalidation in lawsuit without condition, it
would be rather natural that a infringement court inJapan can decide on invalidation. There is not muchdifference in the substantive laws under theConstitution between Japan and the U.S.A.
(v) Meaning of legislation
From the viewpoint of creating an“understandable system”, it should be made clear
in legislation that a judgment on invalidation may bemade in infringement lawsuit. At the same time,
adjustment between infringement lawsuit andappeal for invalidation should be provided for inrules. These points will be discussed below.
(4) RelationshipbetweenDecisionofApparent Invalidity in Infringement
Lawsuit and Appeal System forInvalidation(i) Meaning of judgment of apparent invalidation
If a judgment of apparent invalidation isrendered in civil lawsuit, the judgment itself is notbinding. Other conclusions can be given in
subsequent invalidation trial proceedings.
It is thought, however, that such patent as may
be finally and conclusively decided as apparently
invalid will probably not be judged otherwise by the
Patent Office.
(ii) Meaning of appeal system for invalidation
Even if it has become possible to judge on
invalidation in infringement lawsuit, maintaining asystem for revocation of patents in the proceduresat the Patent Office will be quite natural. In fact, thereexamination system in the U.S. has been further
reinforced as an inter-partes reexamination system,and they are currently considering revision of laws
to make the system stronger. What should beconsidered in such a case is to establish amechanism by which a conclusion rendered in one
procedure will be respected in other procedures.
(5) Issue of Amendment
The Kilby Case Decision by the Supreme
Court held that there can be a case where no abuseof right will be found due to special circumstancesthat the patent remains valid by such an
amendment as to enable the infringement lawsuit
to be maintained. However, if a further procedure
for amendment is taken before the Patent Office, it
may in some cases not be desirable for speedy
settlement of disputes.
To cope with a similar problem, a multiple
claim system is in effect in the U.S. A similar
measure might also be adopted in Japan (i.e., noamendment is admissible). An alternative measure
may be to make adjustments by admitting
equivalent infringement.

Ⅲ Issues and Proposed Measures
for Appeal System
The following table shows what issues are
involved in the system and what measures should
be adopted to overcome such issues. In putting the
proposed plans into practice, however, they should
be considered in detail.

● 55 ●(Research: Tatsuya Misawa)

IIP Bulletin 2002

IIP Bulletin 2002

● 56 ●

Background

Advisory
Panelfor
Reforming the Judicial
System /Legislative Council of Civil
Procedure Law
2. Disputes concerning (1) Function of Kilby Case Decision ofvalidity of patents, etc. infringement
the Supreme Court in
court
April 2000

1. Future Position of
district courts andhigh courts

Checking Items

Proposed Measures

Results of judgment on invalidation in infringement lawsuit will be recorded in thepatent register to ensure transparency of status of rights.

Proposal 4 New administrative lawsuit and adoption of "lawsuit for revocation ofpatent"Appeal lawsuit against the JPO as defendant.
The decision will be binding on the JPO, and necessarily have absolute effect.
Infringement lawsuit and lawsuit for amendment can be consolidated.
(II) Utilization of results of judgment on invalidation in infringement lawsuit

Proposal 3 The JPO will participate in (similar) lawsuit of issues, and absoluteeffect will be given.

Proposal 2 Response through civil lawsuit
Proposal 2 - The requirement of the Kilby Decision will be relaxed.
(No absolute effect)
The requirement of "there must be apparently any reason for invalidation ofpatent" should be removed, and "the defense and claim of invalidation" should
be directly admitted.
Proposal 2 - Issues should be admitted in judgment on invalidation.
(Absolute effect will be given)
Raising of issues will be admitted in judgment on invalidation as in the decision in
Blonder-Tongue Case.

(2) Action beyond the scope of Kilby Decision
Allocation of power and authority will be changed beyond the scope of the Kilby
Decision, which requires limitation of enforcement of right based on abuse ofright.

(i) Request for definition and extension of Kilby (I) How judgment on invalidation should be handled in infringement lawsuit
Decision(1) Action within the scope of Kilby Decision(ii) Judgment on invalidation having absolute effect Proposal 1 - All requirements shown in Kilby Decision will be provided in law.
Proposal 1 - Defense of abuse of right will be eased by defining the meaning
and criteria of judgment of requirements such as "There is apparently a reason
for invalidation of patents" and "There are no special circumstances".

(i) Reinforcement of ability to respond to Organizational action to improve expertise
specialized lawsuit
Concentration of exclusive jurisdiction to Tokyo and Osaka District Courts
Concentration of exclusive jurisdiction to Tokyo High Court (like CAFC)(ii) Integration of case law

Issues● 57 ●IIP Bulletin 2002

Background

Proposal 4 Introduction of "partial disclaimer"
A patent amendment reducing the scope of the claims will be treated as adisclaimer of the patent right to that extent.

Proposal 3 Adoption of "partial invalidation" only applicable to the parties.
The claim will be separated into valid part and invalid part, and only the valid partwill be left with a remark ”as described in schedule”, thus partially admitting thedemand. (Practice before German Patent Court)

Proposal 2 Speedy proceedings of appeal for amendment
If an appeal for amendment is requested, the JPO will conduct speedy
proceedings to render appeal decision.
The independent patent requirement will be removed from amendments.

Issues
Proposed Measures
Securing of opportunity of "amendment" as defense Proposal 1 Removal of opportunity to amend in infringement lawsuit
against judgment on invalidation in infringement lawsuit Once infringement lawsuit is brought, amendments will not be permitted.

(v) The JPO does not participate in lawsuit against trial
decision.

Proposal 5 Introduction of "lawsuit for amendment of patent"
any decision of lawsuit admitting an amendment will be binding on the JPO.
lawsuits against Infringement, for revocation of patent and for amendment will
be consolidated to enable the settlement of disputes in a single proceeding.
(3) Administrative · Sharing roles between (i) If an opposition, a trial for invalidation, and lawsuit for Proposal 1 Integration of the systems into the opposition systemprocedure
for administrative appeal and infringement become pending simultaneously, the (The trial system for invalidation should be revoked)
proceedings may become complicated.
revocation of patent judicial procedure
Proposal 2 Integration of the systems into a single invalidation trial system(Administrative appeal ischaracterized by inexpensive (ii) If opposition and trial for invalidation become pending (The system for opposition should be revoked)
and straightforward procedure, simultaneously, it may cause conflict of judgment
relaxed qualification of between the two proceedings, and the burden on the Proposal 3 Introduction of a system for "trial for revocation of patent"
applicants, and preventive patentee may increase because of double proceedings. · Some new system may be established by introducing the merits of two systems.
and generally forcible and(iii) If as a result of failure in the opposition, a trial for
effective decisions.
invalidation was demanded, the settlement of disputes· Social cost of administrative may be prolonged.
and judicial decision)(iv) If no additional evidence is presented in theproceedings of the opposition and trial for invalidation,
the dispute will not be settled in a single proceeding.

Checking Items
2. Disputes concerning (2) Amendment ofvalidity of patents, patent in infringementetc.
lawsuitIIP Bulletin 2002

● 58 ●

Background(i) Remand of case due to admission of motion for Proposal 1 Limitation of opportunities for amendment in lawsuit against trial
decisionamendment
Limitation of demands for trial for amendment while lawsuit against trial(ii) Notification of new reason after dismissal and decision is pending
Perfection of proceedings at trial and reinforcement of the capability of trial
remand of trial decision
examiner in chief for directing the procedure(III) Adjustment of proceedings
Provision of intellectual property experts having knowledge of technology(ii) Avoidance of confusion arising from the conflict (II) Sharing of information between infringement courts and the JPO· Information on history of proceedings and assertion and evidence of parties
in trial results at court and the JPO
concerned at district courts will be utilized by the JPO.
· Such information at the JPO will be utilized by district courts.

Issues
Proposed Measures(i) Reduction of burden arising from concurrent (I) Commission of expert testimony on validity or invalidity in response to arequest by the court or the parties concerned.
parallel proceedings before court and the JPO

Proposal 2 Extension of the scope of trial at high courts
Admission of addition of new grounds for invalidation and revocation at highcourtsSecuring of opportunities for amendment as means of defense.
Proposal -1 Introduction of a simplified amendment system for addition ofgrounds for invalidation and revocation
Proposal -2 Introduction of a system to request amendment during lawsuit(2) Shifting of cases The Case of Stocking (iii) Notification of new reason after dismissal and Proposal 1 Perfection of trial in trial and appeal proceedings
between court and Frame, Grand Bench at remand of trial decision
Proposal 2 Extension of the scope of trial at high courts
trial tribunal in trial Supreme Court, March
Admission of addition of new reasons for rejection at high courtsfor examination and 1976
Securing of opportunities for amendment as means of defense.
opposition to rejection
Proposal -1 Introduction of a simplified amendment system for addition ofand lawsuit against
reasons for rejection
trial decisions
Proposal -2 Introduction of a system for amendment of applications during
lawsuit
5. Disputes over (1) Cross border Cooperation with public Speedy judgment on ownership
Formation of a simplified expert testimony system
infringement of
injunction
authorities
patent rights(2) Review of the Training of private ADR
Shifting of the role of judgment to the private sectorrole of judgment
organizations(2) Improvement ofcourt systems
4. Improvement of (1) Shifting of cases The Case of Large Squaresystems of lawsuit between court and Steel Tubes, Supreme
against trial decisions trial tribunal in trial Court, March 1999
for opposition andinvalidation
andlawsuit against trial
decisions

Checking Items
3. Functional tie-up (1) Functional tie-up
between the JPO and between the JPO
infringement courts, and infringement
and improvement courtsof court systems