12 Desirable IP Litigation in Japan- from the Viewpoint of Expert Testimony about Foreign Law (*)
Research Fellow: Yuko KUSAMA
When an international IP dispute occurs in Japan, foreign law is established to solve the dispute in somecases, although it is difficult to conduct research on foreign law. Due to the lack of an effective foreign law
research method on the part of the court, a litigant needs to prove the content of foreign law. Such judicial
practice could cause a bias to the content of foreign law, which should be established as a norm. This practice
adopted by the Japanese courts handling international litigation is one of the factors that have contributed tocreating the situation where Japanese companies that hold IP rights have to be prepared for the risk of having
to initiate litigation in foreign countries.
In this study, in order to find a solution to improve the current situation, I examined the possibility forJapanese courts to use the expert testimony system to establish foreign law from the viewpoint of privateinternational law and evaluated the possible effects of the foreign law expert testimony systems in othercountries on the Japanese courts’ way of solving international IP disputes. The ultimate purpose of this study isto promote Japanese companies’ active use of Japanese courts from a long-term perspective.

Ϩ Introduction
The globalization of corporate activities has
been globalizing IP disputes. For example, in acase where civil remedies such as the payment ofdamages are needed for IP right infringement, notonly Japanese law, which is the lex fori, but also
foreign law is sometimes established based on adecision of the governing law made under theprovisions of the private international law. 1
However, due to the practical difficulty in
examining foreign law, the appropriateness of theestablishment of foreign law is sometimes
questioned.
Traditionally, the treatment of foreign law injudicial proceedings has been a topic of discussion.
It has been considered that, since foreign law is“Law” in Japan, it should be established as a
judicial norm in the same manner as domestic law
and that, since it is actually difficult to grasp the
specific content of foreign law. Therefore, judges
are not required to strictly interpret and establish
it as “Law”. This discussion has been conductedagainst the backdrop where the practice of letting
litigants present and prove the content of foreign
law has been justified. It would be desirable toassist judges to enhance their knowledge tounderstand the content of the foreign law thatthey are going to adopt as a judicial norm. Suchassistance should be provided by enabling the usean expert testimony system and a central
information management system concerning
foreign law, for example.2 However, such systems
are not yet fully functioning in Japan.
In the modern world, companies of various
sizes conduct business in other countries. When adispute occurs, if foreign law is established for
resolution of the dispute based solely on thepresentation of a litigant, the financial difference
between the two litigants would directly affectthe accuracy of their information about foreignlaw, which is to be adopted as a norm. Thissituation is not desirable from the perspective of
the fairness of judicial proceedings. To solve thisproblem, this study has clarified the influence of
conventional judicial practices on actual court
cases and proposed an effective solution tointernational IP disputes in Japan from theperspective of improvement of an expert
testimony system.

ϩ Establishment of foreign law within
the framework of the studies on
private international law
Academic theories3
Both the private international law and thecivil procedure law lack clear statutory provisions
1(*) This is an English translation of the summary of the report published under the Industrial Property Research
Promotion Project FY2014 entrusted by the Japan Patent Office. IIP is entirely responsible for any 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 2015 Vol.24● 76 ●

regarding the judicial practice of using foreign law
as a judicial norm and examining and determining
the content of foreign law. For this reason,academic theories have been used forsupplementary purposes.
This problem has been traditionallydiscussed as the issue of so-called “proof of
foreign law” in the field of the studies on privateinternational law. This discussion has handled theissue of whether Japanese courts should treat
foreign law as a norm and reached the conclusionthat “foreign law should be treated as Law.”
Based on this understanding, it has been widely
accepted that the research on the content offoreign law should be conducted by judges ex
officio.
On the other hand, there has been anothertheory that, while the research on the content offoreign law should be conducted ex officio in
principle, the adversary principle should also be
adopted. This interpretation was made from theperspective of the burdens on judges and thelimitations to the methods for studying thecontent of foreign law. However, the opponents
have pointed out that, if the adversary principle isintroduced to the research on the content offoreign law, the difference between litigants interms of the capability to conduct research on
information about law could affect the result of
litigation and therefore that the introduction of
the adversary principle is problematic in thisrespect.
Either way, these academic theories
concluded that foreign law may be established asa norm and that the ex officio principle should beapplied to the research on the content of foreign
law and the establishment of foreign law inprinciple, while permitting the establishment offoreign law under the adversary principle for theconvenience of judicial practices.
2

Court cases
On the other hand, in many court cases,
academic circles expressed their concerns about
the theory adopted by the court holdings withregard to the establishment of foreign law. In
recent years, in some non-IP-related cases towhich foreign law should be applied, the court
denied international jurisdiction for such casesand handed down a judgment to the effect that
judicial proceedings should be avoided.
Under these circumstances, in the following
IP litigation, the establishment of foreign law was
disputed. Chronologically, Judgment of the
Nagoya District Court dated February 6, 1987

“Case of seeking payment of damages for theviolation of a license agreement; in which theGerman law is the governing law of theagreement,” Judgment of the Supreme Court
dated September 26, 2002 “Card reader case; inwhich the court avoided establishment of the U.S.
patent law and applied Japanese law,” Judgment of
the Tokyo District Court dated October 16, 2003
“Coral sand case; to which the U.S. patent law
was applied,” Judgment of the Supreme Court
dated June 8, 2001 “Ultraman case; to which theThai patent law was applied,” Judgment of theTokyo District Court dated February 24, 2004
“Ajinomoto aspartame case; to which theJapanese patent law was applied,” Judgment of
the Tokyo District Court dated September 30,
2010 “Case of seeking participation by succession
in the litigation to claim for assigned credit; theChinese copyright law,” Judgment of the Tokyo
District Court dated March 31, 2010 “Case of
seeking an injunction, etc. against copyright
infringement; the U.S. copyright law,” Judgmentof the Intellectual Property High Court dated
November 28, 2011 “Case of seeking payment ofdamages for violation of trade secret; theTaiwanese copyright law,” Judgment of the Tokyo
District Court dated March 25, 2011 “Case of
seeking payment of damages for trademark
infringement; the trademark laws of Japan, China,
South Korea, and Taiwan,” and Judgment of theTokyo District Court dated October 10, 2013
“Case of seeking payment of damages for
trademark infringement; to which the Japanese
patent law was applied by avoiding the evaluationof the trademarks registered in Europe and South
Korea.”In the aforementioned court cases, thepractice of establishing foreign law may becharacterized by the following three features: (1)the application of Japanese law without
determining the governing law, (2) the applicationof Japanese law based on interpretation, and (3)the adoption of the content of law presented byeither party without any questioning.
3

Features and problems found in the
court holdings that established foreignlaw
In the aforementioned court cases, to what
extent was the ex officio principle implemented interms of the content of foreign law? From theaforementioned court cases, I selected the court
holdings in which the possibility of establishingforeign law was examined. I found that thecontent of foreign law presented as a norm in a

● 77 ●IIP Bulletin 2015 Vol.24

court holding is identical with the content offoreign law presented by either litigant. In otherwords, in the court cases where foreign law wasestablished, it may not be found that information
about foreign law obtained ex officio waspresented as a judicial norm. The content offoreign law presented in a holding as a norm islimited to the content presented by either
litigant.
Such practice raises a question from theperspective of fair litigation proceedings. If there
is a dispute about the content of foreign law, it iscommon for the litigants to present the content of
law in a manner biased to their respective
interests. In consideration of the facts that judges
are not required to have knowledge about foreign
law to carry out their work and that the Code ofCivil Procedure permits the litigants to proveforeign law, it may be considered that there arereasons why the judge recommend the litigants topresent the content of foreign law or why thelitigant’s attorney who is expecting such
recommendation proactively presents the content
of foreign law to the judge. However, thesepractices indicate the existence of fundamental
limitations of the ex officio principle.

Ϫ Treatment of foreign law under
the Code of Civil Procedure
1

Expert testimony
Under the Code of Civil Procedure, the ex
officio principle may be applied to foreign law byeither of two methods in order to support andsupplement the understanding, knowledge, anddecision-making capability of judges. 4 In thispaper, expert testimony will be examined. Expert
testimony by a court is usually conducted in
response to a request for expert testimony
submitted by a litigant. Litigants are required toclarify the subject matter that needs to be provenby expert testimony. Opinions are divided among
academic circles studying the Code of Civil
Procedure as to whether a court has the authority
to order expert testimony ex officio even if alitigant has not filed such request. As far as
domestic positive law is concerned, the dominantacademic theory denies the legitimacy of ex officio
expert testimony. However, as far as foreign law
is concerned, it is commonly accepted that judges
have the authority to order expert testimony ex
officio.5
In reality, courts rarely order expert
testimony. In most cases, a litigant requests
expert opinions about the matters that could be

IIP Bulletin 2015 Vol.24

regarded as the subject matters of expert
testimony. They submit a report about the expert
opinions to a court as written evidence. In otherwords, by either method, the expert testimony
system is rarely used in order to clarify thecontent of foreign law.
2

Current state of expert testimony about
foreign law
There must be reasons why the litigant’s
written evidence but not the expert testimony
system is used to prove the content of foreign law.
From the viewpoint of the litigants, if they file arequest for expert testimony, they would have to
pay the cost of expert testimony in advance. Thisobligation to bear the cost may be considered to
be a major reason. Another reason for thelitigants’ hesitation in requesting the court toorder expert testimony is that, even if they file arequest for expert testimony, the opinions of theexpert witness appointed by the court would notnecessarily benefit them. It may be pointed outthat litigants do not have sufficient motives to use
the ex officio expert testimony system.
Furthermore, the accuracy of the content offoreign law tends to reflect the financial
difference (court costs) between the litigants. For
example, since patent infringement litigation, etc.
tends to be fought between large companies, thelitigants are particularly prone to use the private
expert testimony system, which allows thelitigants to present information compatible with
their argument in an efficient and advantageousmanner.
On the other hand, from the viewpoint ofcourts, there are the problems of difficulty insecuring a sufficient budget in advance because it
would be impossible to charge the cost of ex officio
expert testimony to the defeated litigant and thefundamental problem of difficulty in appointing
appropriate expert witness. Unless these problems
are solved, the use of the expert testimony systemitself may not be promoted.
As described above, the current Japanesejudicial system may not be considered to beoffering effective means to grasp the content offoreign law.

ϫ Perspective
study

adopted

in

this

As
described
above,
regardingtheestablishment of foreign law in litigation in Japan,
judicial practices are inconsistent with the legal
theory that advocates the ex officio principle.

● 78 ●

Consequently, such inconsistency is presumed tohave affected the fairness of judicial proceedings
to certain extent. 6 To improve the current
situation, it would be reasonable to focus on
courts, which have the authority to establish
foreign law, and to examine the problem from theperspective of establishing an appropriate system
to provide practical solutions to the problem offundamental limitations of the ex officio expert
testimony about foreign law.7

Law. Under the Code of Civil Procedure, while it
is common to see both litigants present thecontent of foreign law, the court separately orders,
ex officio, the institution to prepare its expert
opinion. In this way, the consistency between thelegal theory and judicial practices is partiallyattributable to the strict application of the ex
officio principle to the establishment of foreignlaw, which may be observed in judicial
precedents.

Ϭ International comparison of expert
testimony about foreign law(2) Expert testimony about foreign law by
the Max Planck Institute for Comparativeand International Private Law10(i) Institution
This institute has been managed by theGerman federal government and providing expert
testimony since 1965. In Germany, like in Japan,
judges are not required to receive education about
foreign law before serving as judges. Thisinstitute has long been playing the role ofsupplementing the knowledge of judges. Even
now, this is one of the major responsibilities ofthis institute.
The major clients of the institute’s foreign
law research service are the Federal Courts ofJustice of Germany, and law firms andgovernment agencies in Germany. The institutereceives more than 100 requests per year, but
actually accepts 70 to 80 requests per year.
The
institutehasresearchersoncomparative law specialized in each jurisdiction.
For example, it has researchers on Japanese law
as well. It is possible to prepare expert opinions
within a relatively short period of time in the caseof laws of European countries, even though thoselaws are foreign law. However, it is difficult tocollect information about law of Asian and Muslim
countries. While the institute does not impose
any limitations in terms of the jurisdiction andlegal fields that can be covered by its research, it
seems to be indispensable to have researchers
specialized in each jurisdiction.
The compensation for expert opinions is paid
not to individual researchers but to the institutebased on the procedural rules specified in theFederal Constitutional Court Act. The unit priceper hour is about 30,000 to 40,000 yen.

Not only Japan but also other countries
sometimes face the situation where theestablishment of foreign law becomes necessary
as a result of complying with private internationallaw. In particular, Germany and Switzerland, like
Japan, have adopted the ex officio principle forforeign law research and have established aneffective expert testimony system to implement
the principle. This means that the legal theories
and judicial practices are consistent in thosecountries. Therefore, examination of thesecountries’ expert testimony systems to establish
foreign law would give us an insight into theJapanese expert testimony system.
The following sections briefly describe theexpert testimony systems used to establish
foreign law in Germany and Switzerland, identify
the difference between their expert testimony
systems and the Japanese system, and clarify theissues that should be discussed in the process ofrevising the Japanese expert testimony system.
1 Germany8(1) Ex officio principle in Germany
In Germany, Article 293 of the German Codeof Civil Procedure is considered to be the basis
for the ex officio expert testimony about foreign
law. 9 The provision states that foreign law
requires proof only to such extent as they are
unknown to the court and that, in theestablishment of these legal norms, the court is
not limited to the evidence brought forward by
the parties; it is empowered to make use of othersources of knowledge and to order whatever isnecessary for the purpose of such utilization. In
short, only in a case where a judge is unable toconduct research on the content of foreign law,would the judge order a third party’s legal
testimony ex officio. In this case, the judge will
utilize expert opinions provided by the Max Planck
Institute for Comparative and International Private(ii) Method of expert testimony
Researchers who have finished a doctoral
course, e.g., university professors, will be
appointed as expert witnesses. When an expert
witness is appointed, neutrality is ensured bychecking whether there are any grounds for● 79 ●IIP Bulletin 2015 Vol.24

challenging him/her. Regarding the written
opinions prepared by expert witnesses, courts
may conduct questioning on them. Since expert
opinions will be used solely for the purpose of
supplementing judges’ knowledge about foreignlaw, expert opinions have no binding power overcourts.
Such expert opinions are prepared mainly inGerman. This is probably because major clients
consist of domestic courts. If a researcher
receives a request from a court, the researcher
would notify the court of the expected length oftime necessary to prepare expert opinions basedon the type of the request such as the requested
jurisdiction, legal field, and depth of the answer(the amount of information such as foreign law,
judicial precedents, and interpretation ofacademictheories).
Aftersending such
notification, the court would follow the procedure
to accept a request in consideration of thelitigation schedule.
Regarding the issue of whether the court’s
failure to establish foreign law constitutes
grounds for appeal, i.e., so-called failure toestablish foreign law, an appeal may be filed inGermany in principle. Therefore, from theviewpoint of courts, expert opinions of suchinstitute have been utilized as effective means to
implement the ex officio principle.
2 Switzerland11(1) Ex officio principle in Switzerland
In Switzerland, Article 16 of Switzerland’s
Federal Code on Private International Law
specifies that the content of the applicable foreign
law shall be established ex officio. Like Germany,
Switzerland has adopted a strict ex officio
principle concerning foreign law. In order toimplement such principle, expert opinions fromthe Swiss Institute of Comparative Law are used.
Under the Swiss Civil Procedure Code, while it iscommon to see both litigants present the content
of foreign law, the court separately orders, ex
officio, the institute to prepare an expert opinion.
Therefore, as is the case with Germany, theconsistency between the legal theory and judicial
practices is partially attributable to the strict
application of the ex officio principle to theestablishment of foreign law, which may beobserved in judicial precedents.

IIP Bulletin 2015 Vol.24(2) Expert testimony about foreign law by
the Swiss Institute of Comparative
Law 12(i) Institution
The Swiss Institute of Comparative Law has
been managed by the Swiss government andproviding expert testimony since 1982. In
Switzerland, like in Japan and Germany, judges
are not required to receive education about
foreign law before serving as judges. Thisinstitute has long been playing the role ofsupplementing the knowledge of judges. Even
now, this is one of the major responsibilities of
the Institute.
Unlike Germany, the institute provides
foreign law research service to large and diverse
clients such as the Federal courts of Switzerlandand other domestic courts, domestic law firms,
notaries public, the government, government
agencies, domestic companies, and individuals.
The institute accepts requests for research fromforeign courts as well. Interestingly, under thissystem, Japanese courts are allowed to request
such service from the institute.13 The institutereceives slightly less than 300 requests per year,
but actually accept 200 or so per year.
The
institutehasresearchersoncomparative law specialized in each jurisdiction.
While the institute does not impose any
limitations in terms of the jurisdiction and legal
fields that can be covered by its research, it
seems to be indispensable to have researchers
specialized in each jurisdiction.
The compensation for expert opinions is paid
not to individual researchers but to the institutebased on the federal procedural rules concerning
the fees to be paid to research institutes. The unit
price per hour is about 60,000 to 70,000 yen (notmore than 100,000 yen) per hour).
(ii) Method of expert testimony
Expert witnesses are appointed from among
researchers who have finished a doctoral course,e.g., university professors, and those who havebeen employed as experts of foreign law researchat research institutes. In particular, the Swiss
Institute of Comparative Law is expected to play
an important role in research of comparative law
and therefore has many experts on non-European
jurisdiction as well. Any expert witness who has
experience of working as a consultant forcompanies, etc. for a certain period of time would
be challenged. In this respect, a decision as towhether there any grounds to challenge an expert
witness tends to be made based on judicial● 80 ●

precedents in a relatively relaxed manner. With
the consent of an expert witness, a court may
conduct questioning about his/her expert opinions.
Since expert opinions will be used solely for the
purpose of supplementing judges’ knowledge
about foreign law, expert opinions have no binding
power over courts.
When expert opinions are prepared, thelanguage requested by a client is used wheneverpossible. Unlike the situation in Germany, theSwiss Institute of Comparative Law accepts
requests not only from courts in Switzerland but
also from courts in other countries. The length oftime necessary to prepare a written opinion isdetermined through direct negotiations between
the client and the researcher in charge. The
length of time is determined based on acomprehensive evaluation of various factors, e.g.,
the time necessary to prepare expert opinions
estimated based on the requested jurisdiction,legal field, and depth of the answer (the amount of
information such as foreign law, judicial
precedents, and interpretation of academic
theories), the client’s budget, and litigation
schedule.14
Regarding the issue of whether the court’s
failure to establish foreign law constitutes
grounds for appeal, i.e., so-called failure toestablish foreign law, an appeal may be filed in
Switzerland in principle. Therefore, from theviewpoint of courts, expert opinions of thisinstitute have been utilized as effective means to
implement the ex officio principle.
3

Summary
In Germany and Switzerland, research
institutes provide information to supplement theknowledge of courts about foreign law. We canlearn a lot from these countries, which haveadopted means to implement the ex officio
principle and created a system to establish
foreign law. However, due to the absence of suchresearch institute like the ones in those countries,
Japanese courts would have difficulty inappointing neutral expert witnesses. It would also
be necessary to discuss how to cover the cost ofexpert testimony. Regarding these issues, insightmay be drawn from these research institutes inGermany and Switzerland by studying the
purpose of establishing these institutes, theirexpert testimony fees, and their way of ensuring
the credibility of expert opinions.
Furthermore, it may be pointed out that, inJapan, even though the Supreme Court found thatthe failure to establish foreign law constitutes

grounds for appeal, the system to supplement theknowledge of courts has not been functioning
sufficiently. A comparison between the situationin Japan and the situations in Germany and
Switzerland in this respect would raise theawareness of the necessity to establish an
appropriate system in Japan.

ϫ Access to information on foreignlaw
Under private international law, the issue of
how to collect information about foreign law has
been recognized as a challenge common to all
countries that needs to be solved. Discussions
have been conducted based on the idea that it
would be desirable to build an informationexchange system about foreign law by concluding atreaty.
1

Draft Hague Convention concerning
access to foreign law
Prior to the preparation of this draft, Europe
had an information exchange system about
foreign law under the London Treaty (European
Convention of 7 June 1968 on Information on
Foreign Law [signed by 43 countries]). However,
due to the ambiguity of the content of theprovisions, the Convention was not expected toincrease the number of signatory countries. By
using the consent of the London Treaty as a basic
form, a revision of the Hague Convention (The
Access to Foreign Law in Civil and Commercial
Matters) was attempted.15
The London Treaty contributed to solving
civil and commercial cases through international
judicial cooperation as described below. First, an
institution needs to be established under thesupervision of the judicial authorities. Via theinstitution, Country X, which is a signatory
country, may request Country Y to provide
information on its law (legal provisions, judicial
precedents, theories, etc., that are necessary for
litigation). Country Y cooperates in theinstitution’s research and provides Country X
with information on its law. If the institution isunable to respond to a request for suchinformation due to various reasons such as thehigh level of technicality of the content ofCountry Y’s law, which should be established inlitigation, the institution usually obtains
necessary information from third-party experts in
Country Y and then provides the information to
the judicial authorities of County X. 16 Suchmechanism of the system has the advantage in● 81 ●IIP Bulletin 2015 Vol.24

that the system can be used between countries
with different legal cultures as well, because eachcountry is requested to independently create asystem of providing information on its own law
and to participate in mutual exchange of
information between signatory countries uponrequest. By using this mechanism as a basic form,
the study group preparing a draft Hague
Convention has been discussing the appropriate
level of clarity that should be achieved by revising
the existing provisions.
2

Relationship between the Japanese
legal system and the draft Convention
The mechanism of the system created under
the draft Hague Convention gives an insight into
how to improve the current Japanese expert
testimony system. Such system may beconsidered to be extremely useful in the sensethat it would enable courts to implement the ex
officio principle. In other words, such Convention
would have the effect of establishing rules about
expert witnesses and expert testimony costs. In
the case of a lawsuit involving a dispute about anissue related to foreign law, the convention would
enable the court to obtain information on thecontent of foreign law that could serve as a norm
regardless of whether a litigant requests expert
testimony or not. Moreover, the establishment ofa public institution would ensure the neutrality of
the information about foreign law. Also, theGerman system is insightful in that any lawyer
who has received a request from the institutewould be given a status as an expert witness.
The draft Hague Convention designs asystem that can be used by any clients, notlimited to courts or government agencies, toexchange information on foreign law at any time,
not limited to the time of litigation. From theperspective of implementation of the ex officio
principle, such system designed by the draft
Convention would be particularly useful when acourt is a client. The system may be considered
to be very beneficial in Japan since it provides
information to a wide range of service users inorder to prevent the financial difference between
the litigants from causing difference in theircapability of collecting information.

Ϯ Japanese research system about
foreign law
The study on foreign countries’ expert
testimony systems about foreign law as describedabove has revealed that the major issues that

IIP Bulletin 2015 Vol.24

need to be discussed before revising the Japaneseexpert testimony system are as follows.
The first issue (Issue 1) is budget. The
necessary amount of budget would change
depending on what type of research institute isgoing to be created. The second issue (Issue 2) isthat, since the institution in charge of expert
testimony must be required to provide neutral
information on foreign law, the following two
ways should be used to ensure its neutrality: theestablishment of a neutral institution in advanceor the use of an existing institution by further
clarifying the grounds on which a candidate forexpert witness may be challenged. At the sametime, persons with good language capabilities andthe appropriate physical facilities necessary for
research (literature information, database, etc.)
should also be introduced to such institution. The
third issue (Issue 3) is that it is necessary to
specify the types of clients who can obtain
information on foreign law (the types of service
users). These are some of the issues that need tobe discussed. In the following sections, theseelements will be combined in a comprehensive
and synergistic manner in order to examine whattypes of expert testimony institution could beestablished to conduct research on foreign law.
The amount of expert testimony fee (or researchfee) and the payer of the fee would change
depending on the type of expert testimony
institution.
Either way, this paper will focus on themethod of obtaining fair information on foreign
law without depending on expert testimony
privately provided by litigants and will propose
some tentative models.17
1

Establishment of an internal agency
within courts
In the first model case, an internal agency
will be established within a court. Regarding
Issue 1, the judicial budget must be increased.
However, while a future increase in the number ofinternational litigations in Japan is considered to
be inevitable, if judicial proceedings must be
conducted within a limited budget, the expected
situation where expert testimony on foreign law
is not necessarily required for every internationalcase would ironically have a positive effect. The
number of cases of such litigations would nothave a fundamental effect on the determination of
the amount of budget. It is necessary to further
consider whether the expert testimony fee shouldbe paid from the acquired budget or covered by
the court costs shouldered by the defeated party.

● 82 ●

Regarding this point, based on an academic theory
about the Code of Civil Procedure, some people
have pointed out that it is completely possible tocover the expert testimony cost with taxpayers’
money in consideration of the nature of theexpert testimony system (supplementation of theknowledge of judges).
Regarding Issue 2, since this type of
institution has neutrality, the credibility of legal
information may be ensured. Thus, it is necessary
to consider assigning persons to the position withaccess to information on foreign law. 18 At thesame time, for appropriate research on foreign law,
it is necessary to make continuous efforts toimprove the physical facilities of the internal
agency such as literature and databases. It is also
desirable to establish a central system to manage
the expert opinions submitted by such agency.

conducted by a private institution. Since clientsare courts, it will be easier to maintain thefairness of legal information. It will be importantto challenge inappropriate expert witnesses(Their past activities should be examined.
Further discussions should be made to determine
whether the institution as a whole or anindividual expert witness should be challenged).
Also, it would be necessary to develop a bidding
system in order to determine to which law firm arequest should be made.
The most advantageous point about using
the international network of international law
firms is that it would allow efficient acquisition of
information on foreign law. In this respect, courts
would find this model useful from the perspectiveof litigation schedule.
42

Establishment of an independent
institution outside of courts
The second model is the establishment of an
independent institution not within courts but
outside of courts. Regarding Issue 1, e.g., thejudicial budget, expert testimony fee, and thelanguages used in expert testimony, the approachis the same as the one adopted in the model casedescribed in 1 above. Regarding Issue 2, it ispossible to consider that the neutrality of theoperator of the external institution ensures theneutrality of legal information provided by theinstitution (regarding this point, please refer tothe argument about Switzerland). Regarding
Issue 3, since an institution is establishedexternally, it is possible to separately determine
to what extent the range of users of the legal
information service should be expanded.

3

Use of international law firms, etc.
outside courts
In the next model case, international law
firms, etc. will be used to provide information tocourts within the existing judicial framework
without creating a new institution. Regarding
Issue 1, i.e., judicial budget, in order to reducethe cost, it is desirable to use the existing
international law firms. An expert testimony fee
should be determined as is the case with themodel cases described in 1 and 2 above. The good
point of this model is that the number of cases inwhich the establishment of foreign law is sought
does not affect the expert testimony fee. Unlike
the case described in 2, Issue 2, i.e., theneutrality of legal information, would become
particularly important because research would be

Use of international law firms via an
external institution other than courts
This model case is the same as the model
described in 3 above with regard to Issue 1 andIssue 2. From the perspective of making thismodel efficient enough to replace a bidding
system, some people made a proposal that theneutral institution established outside of courts inadvance will assign a request from a court to a law
firm that is capable of providing the requested
information (also, the law firm should have nogrounds for being challenged).
5

Summary
In the preceding section, we proposed somemodels of feasible expert testimony systems. In
the following section, I will summarize how the ex
officio expert testimony system would affect theinterests of litigants and benefit them.
First,
companies(more
specifically,
attorneys of companies) choose to use a private
expert testimony system because they hope toestablish foreign law in the manner that would
support the validity of their arguments rather
than receiving the court’s fair interpretation oflaw. Thus, they are not necessarily motivated tosupport the ex officio expert testimony system.
Still, there is a possibility that the narrowing of
the legal information gap between litigants withdifferent financial means may be recognized as
one of the benefits of choosing Japan as a forum
for solving a dispute.
On the other hand, from the perspective of
the amount of work conducted by attorneys, eachlaw firm as a whole would shoulder heavier
responsibilities as a result of accepting requests
for research from courts. However, they are● 83 ●IIP Bulletin 2015 Vol.24

merely required to provide legal information froma neutral and objective perspective just for the
purpose of supplementing the knowledge ofcourts. Since they are not expected to collectstrategic legal information, their work would not
be so difficult.
Lastly, it should be pointed out that theexpert testimony system about foreign law isvery useful for courts from the perspective ofachieving the consistency between a legal theoryof the academic sector and actual judicial
practices, i.e., strict implementation of the ex
officio principal and appropriate establishment offoreign law by courts. Any of the above-describedmodels could provide a court with a morereasonable, efficient means of research thanmaking a judge conduct research on the content
of foreign law in each case. These models would
be consistent with the practice of permitting anappeal on the grounds of the failure to establish
foreign law.

2

3

4

ϯ Conclusion
Regarding Japanese litigation practices, theissue of “appropriate establishment of foreign law”
has long remained unsolved. This study was
conducted to answer the question of why it isdifficult for Japanese courts to order expert
testimony about foreign law ex officio and to
examine the possible models of a new expert
testimony system about foreign law. The
establishment of an infrastructure to obtain
information on foreign law is especially needed in
the field of IP laws, which are frequently revised.
Currently, it is considered to be important topromote the use of Japanese courts to solve
disputes about international business. In recent
years, a lot of attention has been paid to the trendof so-called forum shopping in IP litigation.19 I
hope that the proposals made in this paper will
accelerate the internationalization of the Japanesejudicial system so that people around the world
will choose Japanese courts as forums for dispute
resolution.

1

When solving a dispute under the private internationallaw, it is considered under the principle of equality ofdomestic law that the court needs to seek
establishment of the law that is the most applicable tothe legal act in question without being confined by theapplicability of substantive law. Therefore, basically, it
is interpreted that Japanese courts should handle
foreign law in an equal manner to domestic law.

IIP Bulletin 2015 Vol.24

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6

7

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Regarding the establishment of foreign law under
private international law and the characteristics of IP
litigation, it should be noted that, even if any IP rightsuch as patent right, trademark right, copyright, ortrade secret is registered in another country, theJapanese court could exert international jurisdiction
over cases involving claims for payment of damages,
etc. for the infringement of such right and that foreign
IP law could be applied to such cases. Also, in cases toseek payment of damages, etc. for the violation of alicense agreement, the interpretation and application offoreign law could become necessary. In the case wherea civil remedy is sought against infringement of suchproprietary right, if it is necessary to refer to foreign
law to make a determination, it should be noted thatsuch case is not affected by the principle of territorial
jurisdiction adopted by positive law.
This is different from the argument about expert
testimony (technical testimony), expert investigators,
and judicial research officials in IP litigation.
For detailed information about competing theories inJapan, please refer to the report.
The two methods are (1) commission of examination(Article 186 of the Code of Civil Procedure) and (2)expert testimony (Article 180, paragraph (1) of theCode of Civil Procedure, Article 99, paragraph (1) and
Article 129, paragraph (1) of the Ordinance for
Enforcement of the Code of Civil Procedure).
A type of expert testimony initiated not by courts but
by litigants themselves is commonly called private
expert testimony.
Regardless of whether expert testimony is initiatedeither by courts or litigants, expert opinions are notbinding on judges. Theoretically speaking, since those
opinions merely serve as supplementary materials, thisdoes not seem to be causing any problem. However, as
described above, in litigation practices, if a litigant
obtains information through private expert testimony
and presents it to the court, it could be cited in the
court holding. This practice has created the situation
where court judgment tends to reflect the biased
information provided by either litigant about thecontent and interpretation of foreign law. Therefore,
the problem of establishing foreign law with some bias
remains unsolved and continues to threaten thefairness of judicial proceedings.
The purpose of this paper is not to attempt to review
academic theories about the issue of proving foreign
law. Based on the so-called “Heikinteki saibankan riron”(average judge theory) (Akira Mikazuki, “Gaikokuhou
no tekiyou to saibansho” (Establishment of foreign law
andcourts) [Sawaki
andAoyoma,Kokusaiminjisoshouhou no riron (Theory of the international
code of civil procedure), p. 239], this paper has
examined the issue based on the recognition that it isnecessary to devise a system for foreign law researchby courts. Due to space constraints, this paper has
minimized the footnotes. For further information,please refer to the report.
For the latest trend in German with regard to thediscussions about proof of foreign law, please refer toMartin Schmidt-Kessel, Rechtsvergleichung und
Rechtsvereinheitlichung 24, German National Reports

on the 19th International Congress of Comparative
Law ͆Proof of and Information about Foreign Law͇[Oliver Remien], 223. (2014). Regarding the expert
opinions of Max Planck Institute for Comparative andInternational Private Law, its activities are reported in
Tätigkeitsbericht 2012, Max Planck Institut fürauslämdisches und internationals Privatrecht Hamburg.
9
In Germany, the source of private international law is
codified in Articles 3 to 46 of the Ordinance for
EnforcementoftheGermanCivil
Code(Einführungsgesetz zum Bürgerlichen Gesetzbuch(EGBGB)). However these provisions do not specify
the procedure by which foreign law should bedetermined and established. Therefore, the basis forestablishment of foreign law should be considered to beprovided by the provisions of the German Code of Civil
Procedure (Zivilprozessordnung, ZPO). A Japanesetranslation is available by Doitsu minji soshou houten(German code of civil procedure) (Housoukai, 1993)
published by the Judicial System and Research
Department of the Minister’s Secretariat. Please also
refer to Swiss Institute of Comparative Law, The
Application of Foreign Law in Civil Matters in the EU
Member States and its Perspectives for the Future[Germany].
10
The outline of the expert testimony method of the Max
Planck Institute for Comparative and International
Private Law is presented based on the author’s fieldresearch. Since IP litigations in Germany are mostly
filed for the purpose of seeking an injunction, ajudgment will be handed down in only about half of
those litigations. Therefore, it seems to be quite rare
for the institute to directly receive a request for
research on foreign law in the field of intellectual
property. However, this institute has actually provided
expert opinions about copyrights and trademarks.
11
For information on the latest trend in the discussions
about proof of foreign law in Switzerland, please refer
to Swiss National Reports on the 19th International
Congress of Comparative Law “Proof of andInformation about Foreign Law” [Shaheeza Lalani &Ilaria Pretelli], 107-134 (2014).
12
The outline of the expert testimony method of the
Swiss Institute of Comparative Law is also presented
based on the author’s field research. It also seems to berare for the institute to directly receive a request for
research on foreign law in the field of intellectual
property. As is the case with the German Institute, theSwiss Institute has actually provided expert opinions
about copyrights and trademarks.
13
On average, on an annual basis, the Institute receives
about two requests for expert testimony from foreign
courts. Basically, such courts are often located inAustria, France, Germany, or Lichtenstein. In fact, theInstitute would accept requests from courts of any
country. For further details about its activities, pleaserefer to Institut suisse de droit comparé Rapport
annuel 2003-2013(http://www.isdc.ch/en/institut.asp/4-0-10003-5-4-0/).
14
There is an option of ordering simple research thatcovers only basic matters (foreign law, judicial
precedents, etc.)
15
The website on the Hague Conference on Private

International Law made available to the public theminutes of the discussion meetings held to prepare a
draft convention. This draft convention was prepared
not only for IP litigation but for a wide range ofinternational civil disputes (The Hague Conference on
Private International Law. (http://www.hcch.net/),under ͆Work in progress͇ then ͆General Affairs͇:
http://www.hcch.net/index_en.php?act=progress.listin
g&cat=5 (confirmed in April 2015)). However, in thecurrent stage, since this discussion has been postponed,
it is expected to take more time to prepare a draft.
16
Regarding relationships with any country other than
European countries, it is possible to expand thecontent of the London Treaty by concluding a bilateralagreement.
17
Please refer to the report for information about thediscussions and proposals of establishment of a system
to provide access to information on foreign law without
using expert testimony.
18
If the service is used only by Japanese courts, expert
testimony could be provided in Japanese.
19
Michael C. Elmer, C. Gregory Gramemopoulos, Global
Patent Litigation How and Where to Win, BNA (2014).

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