3 Effect of Patent Rights in Light of the Diversification of
the Manner of Exercising Rights (*)
Amidst the recent rapidly changing environment surrounding patents such as the development of open
innovation, diversification of the types of patentees and globalization of the economy, some people say that
restrictions should be imposed on the exercise of the right to seek an injunction, if necessary, in order topreventobstacles to the promotion of innovation. For example, they argue that such restrictions should be
imposed on a patentee's right to seek an injunction if the patentee is a patent troll, or if the patent that thepatentee holds is a standard-essential patent or a patent that is insignificant in terms of the contribution ratio
for the product. In recent years, since the judgment for the eBay case was handed down, there has been an
increase in the number of judgments where the court dismisses a claim for an injunction in the U.S. In Japan, acourt handed down a judgment for a case where a claim for an injunction was made based on astandard-essential patent. In this way, both in and outside Japan, courts have been handing down judgments forcases involving the issue of the right to seek an injunction.
In this research, we collected the latest information in Japan and studied the situations in other countries
that have deep relationships with Japan from the perspective of the legal systems and court decisions related to
the right to seek an injunction and also from the perspective of international discussions on this issue. The
purpose of this research is to provide a basis for further discussions on how to restrict the right to seek an
injunction.

I

Concise Summary

1

Introduction

Amidst the recent rapidly changing
environment surrounding patents such as thedevelopment of open innovation, diversification of
the types of patentees and globalization of theeconomy, there has been a call for restrictions on
the exercise of the right to seek an injunction, if
necessary, in order to prevent obstacles to thepromotion of innovation. They argue that such
restrictions would become necessary dependingon the purpose or manner of exercising the rightto seek an injunction, the business type of theholder of such right, etc.
For example, they point out that such
restrictions should be imposed on a patentee's
right to seek an injunction in the case where thepatentee is a patent troll, in the case where suchright is exercised based on a patent that isinsignificant in terms of the contribution ratio forthe product, or in the case where the right is
exercised based on any patent that could cause
the hold-up problem related to standard
technologies. Due to the need for discussions on
the appropriateness of the restriction on the rightto seek an injunction in the aforementioned cases,
research titled "Research on the Effect of Patent
Rights in Light of the Diversification of theManner of Exercising Rights" was conducted as apart of the FY 2010 Research on the Issues
Related to the Industrial Property System. The
conclusion of this research is "Currently, there is
no domestic need for restrictions on the right toseek an injunction."
However, since the report of this FY2010
research was issued, some judicial decisions havebeen made in the past several years with regard
to the right to seek an injunction. In addition,
given the increasingly globalized businessactivities of Japanese companies, it would bemeaningful to examine and analyze such mattersas their needs for legal systems related to theright to seek an injunction in other countries thathave deep relationships with Japan and thecurrent state of international discussions on this
topic.
Based on the results of the FY2010 research,
we collected the latest information in and outside
Japan and conducted the following research inorder to provide a basis for further discussions
primarily on the issue of restrictions on the rightto seek an injunction.
- We established a committee consisting of a totalof 10 persons, namely, four persons with
relevant knowledge and experience, four
experts from industrial circles, one attorney andone patent attorney. The committee held ameeting three times in order to examine the(*) This is an English summary by Institute of Intellectual Property based on the FY2013 JPO-commissioned researchstudy report on the issues related to the industrial property rights system.
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current situation in Japan related to the issue ofthe right to seek an injunction and the state ofdiscussions in other countries and regions withregard to the issue of restrictions on the right toseek an injunction.
- We conducted a questionnaire survey on 1,092
organizations (911 JIPA member companies, 61
small
and
midsize
companies,
59
foreign-affiliated companies, 11 NPEs, 50
universities and TLOs) in order to collectinformation concerning the need for restrictions
on the right to seek an injunction and thepossible effects of imposing such restrictions aswell as the need for legal systems related to theexercise of such right. We received responses
from 390 organizations.
- In order to collect information on the merits anddemerits of restrictions on the right to seek an
injunction and the detailed reasons forsupporting or opposing the introduction of
restrictions on the right to seek an injunction,
we conducted an interview survey on 11
organizations selected from the respondents tothe domestic questionnaire survey.
- In order to collect information on the latest
systems related to the right to seek an
injunction and the trend in court decisions inother countries, we conducted an overseas
questionnaire survey in nine countries andregions, namely, the U.S., the U.K., Germany,
France, the Netherlands, Spain, South Korea,
China and Taiwan. We also conducted researchon the recent developments related to theEuropean Commission and the system ofEuropean patents with unitary effect.
- Using books, academic papers, court precedents,
research papers, Council reports, database
information, online information, etc., we
examined, organized and analyzed informationon the systems of major countries including
Japan for seeking an injunction, measuresagainst patent trolls especially in the U.S.,
recent developments in Europe (the European
Commission and the system of European
patents with unitary effect), and the recent
developments related to the IPR ad hoc group of
the ITU.

Ⅱ Current situation in Japan
concerning the right to seek an
injunction
1

Injunction issued under the Japanese
patent system(1) Details of the right to seek an injunction
The current Patent Act specifies that apatentee or exclusive licensee may demand aperson who infringes or is likely to infringe thepatent right or exclusive license to stop or
prevent such infringement (Article 100,
paragraph (1) of the Patent Act). The Patent Act
was established as a law to grant rights. As one of
the effects of a patent right, the right to seek an
injunction is granted. The right to seek an
injunction is interpreted as a right of claim basedon a real right and may be exercised only if theoccurrence of patent infringement can beobjectively proved because no subjective
requirements, such as "intentional act" or"negligence," is imposed.
(2) Restrictions on the right to seek an
injunction
Restrictions are imposed in some cases suchas the case where the Act on Prohibition ofPrivate Monopolization and Maintenance of Fair
Trade (hereinafter referred to as the"Antimonopoly Act") is applied, the case where
the “abuse of right” defense is raised, the casewhere the patent invalidity defense is raised, orthe case where a compulsory license is granted.
Each case is briefly explained below.
The Antimonopoly Act specifies that "Theprovisions of this Act do not apply to acts found toconstitute an exercise of rights under the(omitted) Patent Act (omitted)" (Article 21 of the
Antimonopoly Act). However, the Antimonopoly
Act may be applied to any case that is not in linewith the objectives of the IP system or that isagainst the purpose of said system inconsideration of the purpose and manner of theact in question and the significance of its effect oncompetition.
Regarding the case of Apple v. Samsung, theTokyo District Court decided not to accept arequest for a preliminary injunction by holdingthat the act of exercising the right to seek an
injunction based on the patent right in question
without fulfilling the obligation to conduct a goodfaith negotiation for a patent subject to a FRAND
declaration constitutes an abuse of right(February 28, 2013).1 This case is regarded as acourt precedent where the court recognized theoccurrence of patent infringement and the validityof the patent right in question, but did not accept
a claim for an injunction on the grounds that theact of making such a claim constitutes an abuse ofright.
Article 104-3 of the Patent Act specifies that

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a suspected infringer may make an allegation ofpatent invalidity and that restrictions shall be
imposed on the right to seek an injunction if "saidpatent is recognized as one that should beinvalidated by a trial for patent invalidation."
A non-exclusive license may be granted for athird party's invention based on an award
rendered by the JPO Commissioner or the
Minister of Economy, Trade and Industry in thecases where (a) the invention has not been
worked for three years or longer (Article 83 of
the Patent Act), (b) a patented invention uses
another person’s patented invention (Article 92 of
the Patent Act), or (c) the working of a patented
invention is particularly necessary for the public
interest (Article 93 of the Patent Act). If a
non-exclusive license is granted based on anaward, the patentee would be prohibited fromexercising the right to seek an injunction.
(3) Countermeasures that may be taken inlieu of an injunction for future
infringement
If restrictions are imposed on the exercise of
the right to seek an injunction, the patent
infringement by a third party would continueeven after a trial. For this reason, restrictions on
the right to seek an injunction would raise theissue of whether it is necessary to provide
monetary compensation for the damage caused by
the continuation of the act of infringement inaddition to the compensation for the damage that
incurred in the past. Regarding this issue,
according to the Supreme Court judgment for thecase concerning the noise pollution of US Yokota
Air Base (Judgment of the Third Petty Bench of
the Supreme Court of May 29, 2007) 2 , it isconsidered difficult to file an action for future
performance against a continuing act of tort. It
has been pointed out that it would be almost
impossible in practice to receive damages for a
future act of patent infringement.
(4) Injunction-issuing organizations otherthan courts
One of the injunction-issuing organizations
other than courts is customs. There is aprocedure to determine whether the suspected
infringing goods that are regarded as IP infringing
goods by customs are actually infringing goods
are not. If customs follows this procedure andrecognize some suspected infringing goods as
infringing goods, customs would seize anddispose of those infringing goods.

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In the case of Apple v. Samsung concerning apatent subject to a FRAND declaration (2011 (Yo)22027, 22098, the case where a request was filed
to seek a court order for provisional disposition
based on a patent right), the court found that theact of exercising the right to seek an injunction
based on the patent right in question without
fulfilling the good faith negotiation obligation
constitutes an abuse of right.
2

Judicial system (Payment of court costs
and attorneys' fees)

In principle, the losing party must pay the
court costs (Article 61 of the Code of Civil
Procedure), provided, however, that the winning
party bears the court costs in certain cases(Articles 62, 63 and 64 of the Code of Civil
Procedure).
According to the respective items of Article 2of the Act on Costs of Civil Procedure, each party
must bear the attorneys' fees, which are notincluded in the aforementioned court costs.
3

Discussions on the right to seek an
injunction

If any act of IP infringement is subject to an
injunction, it would have an excessive effect onpracticing entities such as companies. Ironically,
however, it could hinder "industrial development,"
which is the purpose of the Patent Act (Article 1of the Patent Act). It has been pointed out that
restrictions should be imposed on the exercise of
the right to seek an injunction depending on the
purpose or manner of exercising the right to seek
an injunction, the business type of the holder ofsuch right, etc. Specifically, the following opinions
are presented in the domestic discussions on theright to seek an injunction and also in research
reports.
 Claim for an injunction by patent trolls(Opinions of those who support restrictions)- The right to seek an injunction would be
unnecessary for non-practicing entities.
- Industrial development could be hindered.
- The judgment for the eBay case was reasonable.
- Greater burdens would be imposed oncompanies.
- Since the amount of damages determined by
Japanese courts is usually smaller than theamount determined by U.S. courts, an

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injunction is an important tool for patent trolls)

to prevent infringement.
- This has not caused any problem in Japan.

(Opinions of those who oppose restrictions)- Due to the difference between Japan and the
U.S. in terms of legal systems, the criteria
adopted by the eBay judgment would be difficult
to introduce to Japan. The introduction of thesecriteria may not be considered to have solved
the problem in the U.S.
- It would be impossible to solve the problem
through legal revisions.
- In Japan, there are only a few means to deter
infringement.
- Patent rights would be weakened.
- It is difficult to define patent trolls.
- Such restrictions on the right to seek an
injunction in Japan would provide grounds for
obtaining weak patent rights in emerging
countries.

 Claim for an injunction
standard-essential patent

based

on

a

(Opinions of those who support restrictions)- Such a claim would cause damage not only tothe participants in the technical standardization
process but also to the society as a whole.
- The "hold-up" problem caused by outsiders
would have a great effect.
(Opinions of those who oppose restrictions)- Since an injunction would be issued in anothercountry, it would be useless to make efforts onlyin Japan.
- Practicing entities would refuse to participate inlicensing negotiations.

 Claim for an injunction based on a patent that isinsignificant in terms of the contribution ratio(Opinions of those who support restrictions)- If an injunction is sought for the whole productbased on a patent that is insignificant in termsof the contribution ratio, it would have a great
effect.
(Opinions of those who oppose restrictions)- If an injunction is sought based on a patent thatis extremely insignificant in terms of thecontribution ratio, the principle of abuse of rightwould become applicable.
- In the case of a patent that is insignificant interms of the contribution ratio, it would be easy

Ⅲ The right to seek an injunction inother countries and regions
In this research, we requested law firms, etc.
in the countries and regions covered by thisresearch (the U.S., the U.K., Germany, France,
the Netherlands, Spain, South Korea, China andTaiwan) to gather information. Based on thefindings of this research, we examined thesystems, court decisions and the discussions in
those countries and regions concerning
injunctions from the following perspectives.
- Injunction issued under the patent system The details of the right to seek an
injunction
 The grounds for the right to seek an
injunction
 The requirements for accepting aclaim for an injunction
 The existence or absence of
discretionary power of a court indetermining whether to accept aclaim for an injunction
 The effect of a claim for an injunction
 The procedure for enforcing an
injunction
 Restrictions on the right to seek an
injunction
 Restrictions
based
on
the
competition law
 Other restrictions on the right toseek an injunction
 Systems that could restrict the rightto seek an injunction
 Existence or absence of difference intheplacementofrestrictions
depending on the type of holder ofthe right Countermeasures taken in lieu of an
injunction against future infringement
 Organizations other than courts that canissue an injunction
 Court cases- Judicial system- Discussions on the right to seek an injunction
The following section describes thesituations in other countries mainly from theperspective of the uniqueness of their systems
and the trend in court decisions and discussions.

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1

U.S.

In the case of a patent infringement lawsuit,
the basic remedy (remedy under law) is damages,
and there is a provision that specifies that courts
shall be given no discretionary power. On theother hand, a provision concerning a claim for an
injunction is a discretionary provision. An
injunction may be issued as an equitable remedy
at the discretion of a judge.
Until the Supreme Court handed down theeBay judgment, while courts took into
consideration the following four factors listed in(a) to (d) when determining whether to issue an
injunction, they would
almost automaticallyissue a permanent injunction if infringement andvalidity have been adjudged as long as special
circumstances do not exist.
However, in the eBay judgment, the U.S.
Supreme Court held that a decision as to whether
to issue an injunction should be made inconsideration of the following four factors:(a) the plaintiff has suffered irreparable damage;(b) any remedy, such as monetary damages,
available under law is considered to beinappropriate as compensation for thedamage;(c) the equitable remedy can be justified inconsideration of the balance of harms
between the parties concerned; and(d) the grant of an injunction would serve thepublic interest.
Consequently, courts are currently required
to take all of the four factors stated in the eBay
judgment, especially the factors (a) and (c), into
consideration. An increasing number of courts
hand down judgments where the court recognizes
patent infringement, while not issuing apermanent injunction. As far as an injunction
issued through the ITC (International Trade
Commission) procedure, the CAFC handed down
a judgment that the four equitable factors neednot be taken into consideration. However, the"White House Task Force on High-Tech Patent
Issues" 3 announced by the U.S. government inJune 2013 as measures against patent trolls
recommended a change in the ITC standard for
issuing an injunction in order to better align itwith the traditional four-factor test stated in theeBay judgment. There was a case where, in
response to the ITC's decision to prohibit import,
the USTR (United States Trade Representative)
refused to accept this decision.4
Moreover, with regard to a patent subject to a

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RAND declaration, a judgment was handed down
for the case of Microsoft v. Motorola (W.D. Wash,
Case No. C10-1823-JLR). In the judgment, thecourt approved a royalty rate much lower than theamount claimed by the patentee by applying the
traditional Georgia-Pacific Factors after modifying
those factors and ordered the payment thereof.
Furthermore, a law named the Innovation Act
was submitted to the House of Representatives of
the U.S on October 23, 2013. The Act passed theHouse of Representatives on December 5, 2013.
2

U.K.

Like in the U.S., an injunction is an equitable
remedy in the U.K.. Courts are always given
discretionary power to consider issuing an
injunction. In the case where a court determines
whether to make a decision not to issue an
injunction against the defendant as an exception
in the case where infringement of an effective
patent has been proved, it is currently widely
accepted to apply the guideline presented in thecase of Shelfer v. City of London Electric Lighting
Co (No.1).
In the U.K., there is an academic paper
stating that PAEs (Patent Assertion Entities) are
not common in the U.K. due to the facts that the
U.K. charging system would request the PAE wholost a trial to bear not only its own costs but also
those of the defendant and that it is difficult toobtain a software patent or business model patentin Europe.
3

Germany

Article 139 (1) of the German Patent Act
permits the grant of an injunction. In any lawsuiton the merits, the court is not given discretionary
power. However, the court is given somediscretionary power to issue a preliminary
injunction.
Furthermore, in Germany, a FRAND
declaration is considered to be "pactum de nonpetendo" (agreement not to sue). There is aprecedent that any patentee who has made a
FAND declaration shall be considered to haveagreed not to sue (LG Mannheim, InstGE 13, 65).
However, as this is a judgment handed down by a
district court, the legal status of a FAND
declaration is still highly debatable under German
law.

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It is permitted to seek an injunction under
Article L. 611-1, 613-3 and 613-4 of the French
patent law as long as the objective fact that patent
infringement occurred may be proved. No
requirements other than the recognition of patent
infringement are imposed. While judges have nolegal obligation whatsoever to issue an injunction,
courts almost automatically issue an injunction inpractice if the court recognizes infringement.

Regarding a case where an injunction wassought based on a standard-essential patentsubject to a FRAND declaration, a court handed
down a judgment that "it may be considered that,in light of the purpose, spirit, etc. of the patent
law, there is a need to restrict the exercise of therights of the patentee of the standard-essential
patent in question" (Judgment for the case of
Samsung v. Apple concerning prohibition ofpatent infringement handed down by the Seoul
Central District Court on August 24, 2012).

5

8

4

FranceNetherlands

No requirements are imposed other than thefulfillment of the requirement specified in Article
53(1) of the patent law of the Netherlands. Courts
have discretionary power to decide not to issue
an injunction even if a claim for an injunction
satisfies the necessary requirements.
In the case of Samsung v. Apple(ECLI:NL:RBSGR:2011:BT7610, District Courtof the Hague), the court stated that the FRAND
declaration obliged Samsung to conduct
negotiations concerning the conclusion of a
FRAND license agreement and that, in view ofthe fact that Samsung refused Apple's request,
Samsung's act of filing a claim for an injunction
with a court based on its patent right may beconsidered to constitute an abuse of right.
6

Spain

Article 63-1 of the patent law of Spain
permits the issuance of an injunction.
The requirements for issuing an injunction
differ depending on the purpose of injunction. For
example, if the purpose of an injunction is to stop
the act of infringement, an injunction may be
issued if infringement and patent validity havebeen adjudged. If the purpose of an injunction isto remove the means for producing infringing
goods, the court may issue an injunction upon
fulfillment of the requirement that such removal
is indispensable for prevention of the continuationof the act of infringement.
7

South Korea

The issuance of an injunction under Article
126 of the patent law of South Korea would
require the facts that an injunction has been
claimed by "a person entitled to make a claim for
an injunction" and that "the fact of infringement
has been proved."

China

Chinese laws have multiple provisions that
permit a claim for an injunction. More specifically,
it is common to consider Articles 11 and 60 of theChinese Patent Law and Articles 118 and 134 of
the General Rules of the Civil Law as the legal
grounds for permitting a claim for an injunction.
There are no requirements that must be met
before a court issues an injunction as long as thecourt has found that the patent is effective andthat the infringement has actually occurred. Even
if an act of infringement is recognized, there aresome cases where, based on a Guiding Opinion
from the Supreme People's Court of the People's
Republic of China, a court does not order
discontinuation of the infringement or gives anorder for the payment of royalties in lieu of anorder for discontinuation of the infringement fromthe following perspectives.
(a) public interest or the balance between public
interest and patentee's interests(b) prevention of an abuse of a patent right(c) practical impossibility of the discontinuationof the infringement(d) The existence of the grounds for the belief
that the patentee would not take any action
against patent infringement and would not
exercise the right against the practicing
entity (laches)
Furthermore, there are some cases whererestrictions are imposed on the exercise of theright to seek an injunction based on astandard-essential patent. The grounds for theserestrictions is the statement contained in 2008
Minshantazi No. 4 that "(omitted) if a patentee
finds his/her patent adopted as a standard of thenation, industry or region as a result of his/herparticipation in the process of establishing astandard or based on his/her consent, thepatentee would be deemed to have allowed other

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would not constitute an act of patent infringement
specified in Article 11 of the Patent Act. The
patentee may demand certain royalties from any
person working the patented invention. However,
the amount of payment shall be lower than theregular royalties. If the patentee agrees to waive
his/her rights for royalties, necessary action
should be taken accordingly." In addition, there isa court case where the court imposed restrictions
on the patentee's exercise of rights based on the
aforementioned document (Hebei High Court(2011) Yiminshanzhongzi No. 15).

(3) Evaluation of the eBay judgment inother countries
In the U.S., during the period from the day ofthe eBay judgment to November 2012, District
Courts handed down 222 judgments and ordered
an injunction in 165 judgments out of the 222
judgments, which accounted for about one-fourthof the total number.
There is a paper stating that a comparison
between the period from 2001 to 2006 and theperiod from 2007 to 2012 with regard to the win
rate and the amount of damages has shown thatthe win rate of practicing entities was higher
during the period 2007 to 2012, whereas the win
rate of NPEs was lower during the same period.

9

Ⅳ Statistics of major countries
regarding patent infringement
lawsuits

TaiwanAn injunction may be issued under Article 96of the Patent Act of Taiwan. Under law, the rightto seek an injunction is regarded as an exclusive
right of the patentee. As long as a certain productfalls within the scope of a patent right, a court isrequired to issue an injunction unless aninjunction violates Article 148 of the Civil Code of
Taiwan (the primary purpose of exercising a rightshall not be to damage public interests or cause
damage to others).
10 International discussions(1) Discussions at the ITU-T
At the ITU (International Telecommunication
Union), discussions are held with regard to theissue of whether to permit a claim for an
injunction
againstinfringementofastandard-essential patent, clarification of the
RAND
requirements,
transferofastandard-essential patent, and the effect of a
RAND declaration after an assignment. The
ITU-T is considering reflecting the results of the
discussions in its patent policy, etc.
(2) Discussions in Europe
Regarding the case where both Samsung andMotorola Mobility sought injunctions from courts
based on their respective standard-essential
patents for cell phones, the European
Commission has given preliminary opinions (toSamsung on December 21, 2012, and to Motorolaon May 6, 2013) that their act constitutes anabuse of dominant market position, which isprohibited by Article 102 of the Treaty on the
Function of the European Union (TFEU).

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We conducted research on the number ofpatent infringement lawsuits during the period
from 2008 to 2012 in the U.S., China, South Korea,
Taiwan and Japan and also on the number ofpatent infringement lawsuits during the period
from 1997 to 2009 in the U.K., Germany, France
and the Netherlands.

Ⅴ Resultsofthequestionnaire survey

domestic

We conducted a domestic questionnaire
survey in order to collect information about
domestic users' experience in infringement
lawsuits, the need for restrictions on the right toseek an injunction, the possible effect of such
restrictions, and the need for legal systems
related to the exercise of rights.
The results of this domestic questionnaire
survey will be explained in detail in the section
titled "VIII. Conclusion."

Ⅵ Resultsof theinterview survey

domestic

We conducted a domestic interview survey inorder to collect information about specific court
cases in the past over the issue of the right toseek an injunction, the merits and demerits of therestrictions on the right to seek an injunction andthe detailed reasons for supporting or opposing
the restrictions on the right to seek an injunction.
The results of this domestic interview survey
will be explained in detail in the section titled"VIII. Conclusion."

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Ⅶ Opinion of each committee

member on the exercise ofrights1

Discussions at the committee

At the committee established for thisresearch, the committee members exchanged
opinions about "restrictions on an injunction in
general," "a claim for an injunction made by aso-called patent troll," "a claim for an injunction
made based on a standard-essential patent," "aclaim for an injunction mad based on a patent thatis insignificant in terms of the contribution ratio"and "the issues for further discussions." Their
opinions about "the issues for further discussions"are presented in the following section.
(The issues for further discussions)- In the domestic questionnaire survey, a question
was asked as to whether the merits of therestrictions on an injunction would outweigh the
demerits. However, such a question would
oversimplify the issue to be discussed.
Discussions should be made on how to
maximize the merits of the injunction system,
while controlling the demerits cause by theabusive use of the system.
- The issue of an injunction needs to be discussed
from broader perspectives such as the issue ofraising the level of the inventive steprequirement for a patent and the need for amechanism for industrial development to beachieved through it.
- Discussions from the perspective of whether toimpose restrictions in the case of a patentsubject to a FRAND declaration would beoversimplifying the issue. Discussions should
be made from the perspective of when to impose
restrictions such as how to determine theexistence or absence of good-faith negotiations.
- A litigation system could have an effect on theactivities of patent trolls. From the perspectiveof restrictions on an injunction, it is desirable todesign a patent system in such a way that thesystem will not motivate any person to seek an
injunction. For example, the losing party should
be required to bear the litigation costs. It would
be beneficial to study the litigation systems ofother countries and analyze them from thisperspective.
- It is important to identify a consistent rule todistinguish the circumstances where theexercise of the right to seek an injunction ispermissible from the circumstances whererestrictions should be imposed thereon.
- In the pharmaceutical industry, there might be
an international standard for iPS cells. In thatcase, the industry could face the same issue as
the issue of standard-essential patents.
- Discussions should be expedited in order toreach a conclusion concerning the issue ofrestrictions on the exercise of the right to seek
an injunction by a so-called patent troll and theissue of restrictions on the exercise of the right
to
seek
an
injunction
based
on
a
standard-essential patent at an early date.
2

Opinion of each committee member
concerning the exercise of rights

Each industry is expected to have a different
opinion regarding the exercise of rights. Various
opinions were presented mainly from thecommittee members from legal circles and fromindustrial circles such as "Restrictions on theright to seek an injunction based on the patentright and problems related to legal proceedings
and future issues" from Mr. Seiji Ono, "Thepractice and principle of the exercise of rights in
the Japanese auto industry" from Mr. Takeshi
Sasaki, "The principle of the restrictions on theright to seek an injunction in the pharmaceuticalindustry" from Mr. Hirotsugu Takayama,"Overview of the right to seek an injunction" from
Mr. Kenichi Nagasawa and "Restrictions on theright to seek an injunction" from Mr. Shigeto
Hatae.

Ⅷ Conclusion
1

Domestic trend in the exercise of theright to seek an injunction by so-called
patent trolls and opinions of industrial
circles, etc.

(1) Current activities of so-called patenttrolls and the effect thereof
The results of the domestic questionnaire
survey have shown that, in Japan, 40 (11.4%) outof the 351 respondents said they had received
warnings from patent trolls.
Also, the results of said survey have shownthat 60 (15.6%) out of the 384 respondents said
they were currently concerned about patent trolls
taking advantage of patent rights granted inJapan.

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(2) Future activities of so-called patenttrolls
The results of the domestic questionnaire
survey have shown that 210 (54.7%) out of the
384 respondents said that patent trolls would
become problematic in Japan in the future.
Next, we conducted a domestic interview
survey and asked whether the activities of patenttrolls would be intensified in the future. Some
respondents said that they would become
problematic in Japan in the future. Asked about
the reasons for their outlook, some of those
respondents pointed out the recent development
where patent were transferred from companies
that went out of business to non-practicing
entities (NPEs) and their experience of sufferingfrom the exercise of rights by NPEs, while other
respondents pointed out that, although noproblems had emerged in their field of business
yet, they could face the problem of patent trolls if
the scope of their business expands into otherfields. On the other hand, some respondents said
that patent trolls would not intensify theiractivities in Japan. They attributed their outlook
to the difference between Japan and the U.S. interms of the litigation system by saying that, inJapan, in comparison with the U.S., it is difficult
for the plaintiff (patentee) to prove infringement
due to the lack of a discovery system in the
judicial proceedings and that the court costs(including attorneys' fees) that the defendant(suspected infringer) is required to pay are
relatively small, which has created a judicial
environment advantageous for defendants, andalso that such an environment gives little
incentive for a settlement with patent trolls andthat the amount of damages approved by a court
would be small even if the plaintiff wins the case.
(3) Restrictions on an injunction sought bya so-called patent troll
Asked about the merit of imposing
restrictions on the right to seek an injunction ofpatent trolls, about 70% of the respondents said
"stable continuation of their business." About
one-fourth of the respondents replied that the
demerit would be "the resulting restrictions on an
injunction sought by any person other than patenttrolls." Having said that, about 70% of the
respondents said the merits would outweigh the
demerits. Some respondents pointed out the needfor proper definitions of the types and acts ofpatent trolls that should be subject to restrictions.

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Domestic trend in the exercise of theright to seek an injunction based onstandard-essential
patentsandopinions of industrial circles, etc.

(1) The exercise of the right to seek an
injunction based on standard-essential
patents and evaluation thereof
The results of the domestic questionnaire
survey have revealed that, regarding the act of
exercising the right to seek an injunction basedon a standard-essential patent, 35 (35.0%) out of
100 respondents replied that such an act had
already become problematic. 32 (32%) out of 100
respondents considered that "such an act would
become problematic in the future." Three
respondents (3.0%) said that such an act had not
and would not become problematic.
(2) Restrictions on an injunction sought
based on standard-essential patents
70% of the respondents said that the merit of
imposing restrictions on the exercise of the rightto seek an injunction based on standard-essential
patents would be "the prevention of a claim for an
unreasonably high amount of damages." 50% of
the respondents said that the demerit would be"the suspected infirnger's refusal to havelicensing negotiations or longer negotiations."
Having said that, slightly more than 60% of the
respondents said that the merits of theintroduction of restrictions would outweigh the
demerits. 49 (55.1%) out of 89 respondents said
that the effect of a FRAND declaration is "thegood-faith negotiation obligation of the patentee."In the domestic interview survey, many
respondents said that, regarding the right to seek
an injunction based on a patent subject to a
FRAND declaration, restrictions may be imposedon the exercise of the right to seek an injunction
against any licensee who has been taking part innegotiations in good faith.
3

Domestic trend in the exercise of theright to seek an injunction based on apatent that is insignificant in terms of
the ratio of contribution to a productand opinions of industrial circles, etc.

(1) Evaluation of the exercise of the right toseek an injunction based on a patentthat is insignificant in terms of the ratioof contribution to a productAccording to the results of the domestic
questionnaire survey, with regard to the act of

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seeking an injunction against the manufacturing
or sale of the whole product despite the low ratioof contribution to the whole product, 107 (49.8%)
out of 215 respondents considered that such an
act would be problematic in the future. 39 (18.1%)
respondents said such an act had not and would
not become problematic. 37 respondents (17.2%)
said that it had already become problematic.
(2) Restrictions on an injunction sought
based on a patent that is insignificant interms of the ratio of contribution to a
product
In the case of a patent that is insignificant interms of the ratio of contribution to a patented
product, to the question as to which is moresignificant, the merits or the demerits of therestrictions on the right to seek an injunction, 91(42.7%) out of the 213 respondents said they
were not sure. 89 respondents (41.8%) said themerits outweigh the demerits. 33 respondents(15.5%) said the demerits outweigh the merits. In
the domestic interview survey, we asked aquestion as to whether to impose restrictions on
the exercise of the right to seek an injunction
based on a patent that is insignificant in terms of
the ratio of contribution to a product. The
opinions of the respondents were divided. Some
respondents who supported such restrictions said
that restrictions should be imposed only on theexercise of the right to seek an injunction in bad
faith. On the other hand, other respondents who
opposed such restrictions said that it would be
difficult to define "contribution ratio."
4

Opinions of industrial circles withregard to the need for legal systems
related to the exercise of rights

In the domestic questionnaire survey, we
asked respondents' opinions about the existing
system to restrict the right to seek an injunction
based on a patent right (the provisions (onlicenses, etc.) of the Patent Act, the doctrine ofabuse of rights, the anti-monopoly act). 93(26.3%) out of 353 respondents said that theexisting system was sufficient. 80 respondents(22.7%) said that the existing system wasinsufficient. 180 respondents (51.0%) said they
were not sure.
5

announced the "White House Task Force on
High-Tech Patent Issues." In this announcement,
the U.S. recommended that the ITC's criteria for
permitting a claim for an injunction should be
modified in such a way that they come into linewith the four factors mentioned in the eBay
judgment. Consequently, the Office of the UnitedStates Trade Representative decided to overturnthe decision to prohibit the import of Apple
products made by the ITC in August 2013.
Many of the European countries covered bythis research require the losing party to bearcourt costs including attorneys' fees. For thisreason, some people said that, currently, they
were not concerned about the "patent troll"
problem so much (probably because the rule that
requires the losing party to bear the costs makes
it difficult for any person to file an infringement
lawsuit based on a patent that is likely to berecognized as invalid.). Moreover, some people
point out that another reason would be theabsence of pure software patents and purebusiness model patents in Europe.
In Europe, the establishment of theIntegrated European Patent Litigation System hassignificantly enlarged the geographic scope of an
injunction. Some industrial circles expressed
concerns about the abuse of the system (theIntegrated European Court has discretionary
power). The European Commission presented apreliminary opinion that Samsung's andMotorola's acts of exercising their rights based onstandard-essential patents constitute abuses of
their dominant market positions (December 2012
and May 2013).
(Reseacher : Kosuke TAKAHASHI)
1

2011 (Yo) 22027, 22098, the case where a request was
filed to seek a court order for provisional disposition
based on a patent right.
2
Judgment 2006 (Ju) 882 of the Third Petty Bench of theSupreme Court of May 29, 2007, Hanji No. 1978, at 7
3
"FACT SHEET: White House Task Force on High-Tech
Patent Issues"
http://www.whitehouse.gov/the-press-office/2013/06/04/fact-sheet-white-house-task-force-high-tech-patent-iss
ues
4
The document sent from the USTR to the ITC.
http://www.ustr.gov/sites/default/files/08032013%20Let
ter_1.PDF

Trends in the U.S. and Europe withregard to injunctions
In

June

2013,

the

U.S.

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