１

Desirable Effect of Patent Rights in Light of the Diversifying
Forms of Exercising Rights (*)

The forms of exercising patent rights have been diversifying in response to the increasing interestin the value of patent rights as property rights. There is also an industrial method in which it is not themonopoly of technology but the use of common technology by many people that promotes thedevelopment of the entire industry. Given this situation, skepticism has arisen of the desirable effects ofpatent rights, in particular, of the exercise of the right to seek an injunction.
Laws, regulations, and court precedents in other countries were studied with regard to thepossibility of the right to seek an injunction being denied in consideration of certain circumstances
despite infringement of a patent right being found. As a result, in the United States, many judgments
have been found to restrict the right to seek an injunction, while there are a small number of such
judgments in China. In the United Kingdom, the right can be restricted under the legal system; however,restrictions have been admitted only in special circumstances. In Germany, there is a judgment that held
the possibility that the denial of granting a license will constitute an illegal act under specificcircumstances; however, there is no judgment that has restricted the right to seek an injunction. For
France, South Korea, and Taiwan, no judgment that restricted the right to seek an injunction was found.
In this study, an interview survey was conducted on recognition in Japan, and a committee consisting ofintellectuals from industrial and academic circles held discussions.

Ⅰ Introduction
Some people assert that the right to seek an
injunction should be restricted as needed,
depending on the purpose and form in which theright is being exercised and the corporate
structure, etc. of the right holder. This restriction
would prevent the promotion of innovation frombeing inhibited amid today’s significant changes
in the environment surrounding patents,
includingprogressof
open
innovation,
diversification of patentees, and a globalized
economy. The following are cited as specific cases
where the exercise of the right to seek an
injunction should be restricted:
・ where the right is exercised by a patenttroll;
・ where the right is exercised based on apatent that scarcely contributes to therelevant product;・ where the right is exercised in a mannerthat will cause a holdup in standard
technology.
In advancing discussion on the desirable
effects of patent rights, as countries could havevarious and different views, it is necessary, in thecurrent situation in which Japanese companies’
activities are globalizing, to hold a comprehensive(*)

discussion in light of the diversification of theforms of exercise of rights. This can beaccomplished through surveys on the legal
systems relating to the effect of patent rights inother countries that are closely related to Japan
as well as on the situation of discussions aroundthe world.
Therefore, we conducted a survey on thesituation surrounding the exercise of the right toseek an injunction in other countries as well as aninterview survey on exercising the rights basedonJapanese
patentsbydomestic
companies/research institutes and their views on
the exercise of rights. The purpose of the surveys
is to prepare basic data to be used in considering
the desirable effects of patent rights in light ofthe diversification of the forms of exercise ofrights. We also held discussions on the desirable
effects at a committee consisting of persons oflearning and experience and intellectuals inindustrial circles, etc.
examination and user needs while focusing
on the quality management method for the
trademark examination adopted at overseas
intellectual property offices and external
evaluation thereof (evaluation of the trademark
examination by applicants and representatives).
We conducted this study for the purpose ofThis is an English translation of the summary of the report published under the Research Study Project on Issues
with Industrial Property Rights System FY2010 entrusted by the Japan Patent Office. IIP is entirely responsible forany errors in expression or description of the translation. When any ambiguity is found in the English translation,
the original Japanese text shall be prevailing.
●

IIP Bulletin 2011 Vol.20

1 ●providing basic data useful for considering
desirable trademark examination from thestandpoint of external users and the quality.

Ⅱ Situation Surrounding the Exercise of
the Right to Seek an Injunction in
Other Countries
We asked law firms, etc. in countries andregion subject to the surveys (United States,
China, Europe (United Kingdom, Germany, andFrance), South Korea, and Taiwan) to cooperate in
the surveys. In this chapter, based on the survey
results, lawyers who are familiar with the legal
systems of the relevant countries and region
explain the situation surrounding the exercise of
the right to seek an injunction in each country
and region. This chapter provides explanations
about the situation in each country and region
with regard to the grounds, legal nature, etc. of
the right to seek an injunction, requirements for
an injunction being granted, execution of an
injunction, the possibility of a demand for
injunction being restricted, court precedents,
monetary compensation in cases where an
injunction is not granted, the relationships
between restrictions on the right to seek an
injunction and compulsory license, relationships
with international conventions (including the
TRIPS Agreement), the exercise of patent rights
in relation to winning lawsuit ratio/settlement
ratio in lawsuits, and the existence of methods ofseeking an injunction other than institution of alawsuit with the court.
1

United States

The US patent law stipulates that the basics
of relief (legal relief) in a patent infringement
lawsuit shall be damages and that the court shallnot be granted discretion (Section 284).
On the contrary, for injunction, the US patentlaw includes a discretionary provision to theeffect that an injunction is an equitable relief, andthe judge may grant an injunction at his/her
discretion (Section 283).
Until the eBay Supreme Court decision was
rendered, the CAFC had granted injunctions topatentees who have won a patent infringement
lawsuit in almost all cases. However, even before
the eBay decision, there were court precedents inwhich the court did not grant an injunction forsuch a case.
The eBay decision indicates four elements●that should be taken into consideration in
deciding whether to grant an injunction, but does
not indicate cases in which an injunction should
not be granted. Almost all subsequent cases inwhich the district court did not grant an
injunction in its judgment fall under cases (1)where the patentee only grants licenses for thepatent and does not work the patent, (2) where
the patent constitutes a small part of the relevant
product or system, (3) where the patent is a
special patent that is different in nature fromconventional patents, like business model patents,or (4) where the patent is vague in terms of thescope of right or there is a doubt about thevalidity of the patent.
Out of 166 judgments rendered after theeBay decision but before the end of January 2011
with regard to injunction, an injunction was
granted in 125 judgments (accounting for 75%)
while it was not granted in 41 judgments(accounting for 25%). However, it is impossible tospecify the influence of the eBay decision as thenumber of relevant cases is still small.
As a method of seeking an injunction otherthan the institution of a lawsuit with the court, it
is possible to seek an injunction through the ITC
proceedings. The CAFC decision in 2010
indicates that requirements for injunction at the
ITC differ from those at the district court and that
it is not necessary to take into consideration four
elements under equity law that have been
adopted since the eBay decision.
2

China

Where a patent infringement is found, ademand for injunction is also accepted in principle
in China under related law in the same manner as
in other countries. A demand for injunction isrestricted only in extremely exceptional cases,
for example, cases where a demand for injunction
falls under the abuse of right under the Civil Law
and cases where a compulsory license is granted
under the Patent Law.
Despite this legal principle, a demand for
injunction could be restricted due to various
factors in China. The largest ground for such
restrictions is the fact that the “Outline of the
National Intellectual Property Strategy,” issued in2008 as a national basic comprehensive strategy
for intellectual property, particularly specifies“preventing abuses of IPRs” as one of thestrategic focuses, and provides, in (14), as
follows: “Formulate relevant laws and regulations
to reasonably define the scope of intellectual
2 ●IIP Bulletin 2011 Vol.20

property. Prevent abuses of intellectual property.
Maintain fair market competition. Safeguard the
public lawful rights and interests.”
Following said provisions, central and local
governments provide for restrictions on the rightto seek an injunction based on an intellectual
property right in various forms.
In this manner, although there are national
policies and legal provisions that can serve as thebasis for restrictions on the right to seek an
injunction based on a patent right, there havebeen few cases in which the patentee faced
restrictions on the exercise of the right to seek an
injunction. However, there is a good likelihood ofa future increase in cases in which the right toseek an injunction is restricted in relation toadverse interests, such as public interests and thedevelopment of the entire society and economy orscience and technology.
3

United Kingdom

In the United Kingdom, injunction is anequitable relief, and an injunction is granted at
the court’s discretion at all times. However, as
infringement of a patent right means infringementof the right to exclusively work the invention, an
injunction against infringement is ordinarily
legitimate and is deemed to be an appropriate
relief. The fact that an injunction goes against
public interests and the fact that an injunction
against the defendant’s acts is significantly
imbalanced are cited as major defenses that canbe made by the defendant in order to get awayfrom the injunction even where an infringement
has been proven. However, both of these
defenses are hardly accepted. In particular, there
is no recent court precedent in which the court
accepted such a defense, except for cases underparticularly limited circumstances.
4

Germany

Section 139(1) of the German Patent Act
provides that any person may file a demand for an
injunction at any time in principle where there isan illegal infringement or danger of repetition, ora danger of first perpetration. There is norestriction set on the right to seek an injunctionor the exercise thereof. The right to seek an
injunction is restricted under the Patent Act only
where the Federal Government of Germany hasordered that the invention is to be used in theinterest of public welfare (Section 13 of theGerman Patent Act) or where the Federal Patent●

IIP Bulletin 2011 Vol.20

Court has granted a compulsory license to a
specific person (Section 24 of the German Patent
Act). The right to seek an injunction could be
restricted where the abuse of a market-dominantposition (relationships with compulsory licenses
under competition law), a FRAND declaration,
abuse of rights, or general provisions of the Civil
Code is applicable.
The European Court of Justice and theFederal Court of Justice of Germany determined,
in some judgments, that where a patentee is acompany that occupies a market-dominantposition, the patentee’s refusal to grant a license
constitutes an illegal act that can lead to an abuseof the market-dominant position under specificcircumstances. There have been disputes, amongscholars and in lower court precedents inGermany, about whether an alleged infringer canassert the right to request licensing as a defense
in an infringement lawsuit when requirements for
a compulsory license under competition law aresatisfied. In the Orange-Book-Standard decision,
the Federal Court of Justice held that where thepatentee is abusing his/her market-dominantposition, the alleged infringer may assert theright to request licensing as a defense. However,the Federal Court of Justice also held that thepatentee’s act is deemed to be abusive and illegal
only in the following case: Only where the alleged
infringer has made a proposal to conclude an
unconditioned license agreement of which
content does not allow the patentee to refuse theconclusion and which will bind the alleged
infringer him/herself, the patentee’s refusal toconclude the license agreement falls under aviolationoftheprovisionprohibiting
discriminative or anticompetitive acts, and thedefendant has already worked the invention
subject to the patent right and complies with the
obligation that the defendant comes to bear in
return for the license during the period ofworking if the license agreement is concluded.
In addition to this, the right to seek an
injunction could be restricted based on theprohibition of abuse of rights in general or the
principle of equilibrium under the Civil Code.
However, there has been no such court precedent so
far. On the other hand, there are lower court
precedents, etc. holding that a right holder whoneither produces nor distributes patented products
themselves can enjoy an injunctive relief in principle.
5

FranceIn France, the right to seek an injunction

3 ●against a patent infringement is the legitimate
right of patentees that is granted for the purposeof restoring the monopoly of an invention by apatent where an infringement has been found. Aslong as an objective element, the infringement ofa patent right, has been established, the court has
an obligation to order an injunction, and the judge
must accept a demand for injunction unless acompulsory license has been granted and the
injunction contravenes the compulsory license. In
this regard, the right to seek an injunction differsfrom the right to claim compensation for damages
for which good faith is taken into consideration
where the infringer is an indirect infringer.
As the right to seek an injunction originatesin the protection of intellectual property rights,
an injunction may be demanded only within theframework of patent infringement lawsuits at the
court of law. There are two types of injunctions:those based on a lawsuit on the merits andprovisional injunctions made as a tentative
measure.
6

South Korea

The right to seek an injunction against an
infringement prescribed in the Patent Act is oneof the most effective means by which a patentee
or an exclusive licensee can eliminate those who
infringe his/her own right.
Patentees and exclusive licensees can
exercise the right to seek an injunction. For
monopolistic non-exclusive licensees, many
people think that such licensees can exercise theright; however, the court takes a stance of
denying that view.
For execution of a final and binding judgment
accepting a demand for injunction against an
infringement, the indirect compulsory method
prescribed in the Civil Execution Act is mainly
utilized in practice.
There is also a controversy on the necessityof reasonably restricting the exercise of the rightto seek an injunction against an infringement.
Many people take the stance that the court mustorder an injunction against an infringement if thedemandant proves the fact of the infringement;
and no case has been confirmed in which thecourt did not order an injunction against the
infringement where the fact of the infringementof the patent right has been proven. However, in
relation to the exercise of a trademark right,
there is a case in which the court dismissed ademand for injunction based on a trademark rightfor the reason of abuse of rights. In addition to●this, there are views that the consideration underequity law indicated in the e-Bay decision in the
United States must be reflected in law and thatthe theory of prohibition of abuse of rights must
be applied.
As for means of injunction against an
infringement other than that under the Patent Act,
it is possible to suspend infringement against
intellectual property right through the Korea
Trade Commission based on the Act on Unfair
Trade Practice Investigation and Relief on
Industrial Damages. It can be said that rightholders need to consider relief procedure throughthe Trade Commission because injunction against
an infringement by the Trade Commission can beproceeded with more promptly than demand for
injunction against an infringement through civil
lawsuit.
7

TaiwanPatent right (the term “patent” in Chinese
includes patent of invention, utility model, anddesign) is recognized as an intangible property
right or quasi-real right. Where a patent has beenor is likely to be infringed, it is possible todemand elimination or prevention of theinfringement owing to the nature of these rights
as “exclusive rights.” If a right holder files ademand for an injunction against an infringement
for elimination of the infringement and as soon as
the court finds that the defendant’s act
constitutes an infringement of the patent right,
the court will order the defendant to prohibit acts
such as the manufacturing, selling, and use of
products infringing the right, irrespective ofwhether subjective requirements, such as theinfringer’s intention or negligence, are satisfied.
On the other hand, when a patent right has
been infringed, it takes considerable time before a
judgment becomes final and binding even if aright holder files a lawsuit and wins the lawsuit.
Therefore, it is possible to realize the right toseek an injunction even before a judgment
becomes final and binding, through application forprovisional disposition (provisional disposition
setting a provisional position). Such cases are
numerous. However, the Intellectual Property
Court takes a stricter attitude with regard to therequirements for provisional disposition that sets
provisional state, on the basis of thecharacteristics of intellectual property cases.
According to statistical data, the ratio of cases
where a provisional disposition that sets aprovisional position is permitted is not high.
4 ●IIP Bulletin 2011 Vol.20

Ⅲ Situation and Views at Domestic
Companies/Research Institutes
For the purpose of collecting information
about the exercise of rights based on Japanese
patents and the views of the exercise of rights,
we conducted an interview survey targeting 25
large companies, mainly those in the
manufacturing industry, two SMEs/venturecompanies, and three universities/research
institutes.
We conducted the interview survey fromsuch perspectives as the policy for the exercise ofrights, use of the right to seek an injunction inlicensing negotiations and lawsuits, the situationof sending and receipt of warning letters, views ofwhether the right to seek an injunction should be
restricted, influence on corporate activities to becaused by the imposition of restrictions on theright to seek an injunction, whether the patentright that serves as a basis for the exercise ofrights functions effectively, and whether response
differs depending on the subject of the exercise ofrights.

Ⅳ Each Committee Member’s View of
Exercise of Rights
As views of the exercise of rights areaffected by the situation of the industry, thischapter describes views of the exercise of rights
of mainly committee members who areintellectuals in industrial circles.
This chapter includes consideration bycommittee member Yoichi Okumura, titled“Actual Conditions and View of Exercise of Rights
Based on Patent Rights in the PharmaceuticalIndustry,” considerations by committee member
Masaaki Takao, titled “View of One Electronics
Manufacturer,” considerations by committee
member Koichi Tamura, titled “Actual Conditions
and View of Exercise of Rights in the Japanese
Automobile
Industry,”
considerations
bycommittee member Yuji Toda, titled “In the Caseof the Electric Industry,” considerations bycommittee member Hiroshi Miyauchi, titled“Actual Conditions and View of Exercise of Rights
in the Industry,” considerations by committee
member Hidehiko Yashima, titled “Perspective of
One Chemical Company,” and considerations bycommittee member Toshiaki Eto, titled“Propriety of Restrictions on Right to Seek an
Injunction Seen from the Current Situation ofJapan.”●IIP Bulletin 2011 Vol.20

Ⅴ Conclusion
In this study, we conducted surveys on
problems with the exercise of rights based on
patent rights from a broader perspective and inlight of future international negotiations, based on
the situation where patent rights are notsufficiently protected in Asian countries andregions.
The results of the surveys on the exercise ofrights in other countries and the matters pointed
out by committee members at workshops
revealed that there were concerns about theprotection of patent rights in China. We thus
consider it necessary to conduct surveys on theprotection of patent rights in Asian countries,
including China, as one of the future tasks
concerning the protection of patent rights.
Incidentally, according to the results of theinterview survey in Japan and the matters pointed
out by committee members, although someindustries in Japan have expressed opinions about
patent trolls, there has been no significant change
in the situation. There are also opinions that pointout the importance of the significance of the rightto seek an injunction based on a patent right, inparticular, the importance of protection of patentrights in Asian countries. Therefore, it cannot be
said that there is the necessity of restricting theright to seek an injunction in Japan at present,
and it is necessary to ensure consistency with thepolicy of Japan, which asserts the protection ofpatent rights in Asian countries and regions,through international negotiations. It is thus hard
to find the necessity of taking measuresconcerning the right to seek an injunction within
Japan.
(Senior Researcher: Kumiko IMAI)

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