14

International Jurisdiction and Defends of Invalidity in
Foreign Patent Infringement Action-Analysis on Judgment on July 13, 2006 of ECJ(C-4/03)Research Fellow: Manabu Iwamoto

Even if an infringement lawsuit is filed based on a foreign patent right, it is deemed that the court does
not reject the suit on the grounds that it is a foreign patent right. With regard to a lawsuit that questions thevalidity of the patent granted in a foreign state itself, it is considered to be reasonable that the court in the
country where said patent was granted has exclusive jurisdiction. In cases where invalidity is claimed as a“defense” against the foreign patent right in the infringement lawsuit, can the court in Japan then examine
this suit? This is the topic of this study. In Japan, there are not many court precedents or previous studies
concerning this matter. Meanwhile, the European Court of Justice rendered a remarkable decision on thissubject on July 13, 2006. It raised considerable debate within Europe. On the basis of the current situationin Japan and of the abovementioned arguments in Europe, this study considers Japan’s responses to thedefense of invalidity of a foreign patent, including the appropriateness of the defense.

Ⅰ Introduction
1

PurposeThis study considers the treatment of the
defense of invalidity in a foreign patent right
infringement lawsuit.
In the previous patent right infringement
lawsuits in Japan, the claim of invalidity as adefense has not been permitted. In this context, ajudgment of the Supreme Court of Japan, April 11,
2000, Minshu (Supreme Court Report (civil
cases)) Vol. 54, No.4 at 1368 (hereinafter referred
to as the “Kilby Case”) held that the court may
judge the invalidity of patent rights, but the
judgment of invalidity in the court decision does
not affect a third party, but only between the twoparties. In response to the Kilby Case, Article104-3 was newly added to the Patent Act by theamendment in 2004. Today, the defense of patent
invalidity is allowed in statute under the Patent
Act in Japan.
In this context, in an infringement lawsuit
which is filed in a court in Japan and is based on apatent right registered in another state, if theinvalidity of said foreign patent right is claimed,
can the court then examine said invalidity?
2

Content of this StudyIn this study, before reviewing the defense offoreign patent invalidity, the court precedents andarguments on the two problems shown in the title
will be examined: the “international jurisdiction”
of patent right related lawsuits and the “defenseof patent invalidity” in Japan.
The defense of invalidity of a foreign patentis raised during court proceedings and ispredicated on determining whether the court has
jurisdiction.
Consequently,international
jurisdiction should be examined first. For instance,
in case of Japan, when an infringement lawsuit
based on a patent right from a state other thanJapan is filed, international jurisdiction involves
the issue of whether a court in Japan has ajurisdiction over said suit or not. Currently, Japan
has no statutes concerning international
jurisdiction. Therefore, in accordance with thedoctrine(*1) of the case law, in cases where thejurisdiction is recognized based on Japanese Codeof Civil Procedure, Japan has jurisdiction inprinciple. (*2) In this section, the issues related tointernational jurisdiction for all patent related
lawsuits are reviewed. Moreover, the author also
makes indications regarding the defense ofinvalidity for patents in Japan.
Based on the abovementioned basic
considerations, the defense of the invalidity offoreign patents will be examined. In this context,
court precedents and arguments in Europe will be
introduced and analyzed because Japan has had
little debate over the problem of the defense ofinvalidity of foreign patents, while Europe has
accumulated court precedents and arguments on(*1) The judgment of the Supreme Court, October 16, 1981, Minshu Vol. 35, No. 7 at 1224.
(*2) In cases where there are “special circumstances,” jurisdiction is not recognized exceptionally. In this regard, thejudgment of the Supreme Court, November 11, 1997, Minshu Vol. 51, No. 10 at 4055.
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this issue. Furthermore, with regard toconstruction of Article 16, paragraph (4) of the“Brussels Convention on Jurisdiction and the
Enforcement of Judgments in Civil andCommercial Matters, 1968” (*3) (hereinafterreferred to as the “Brussels Convention”), whichapplies to the European Community (EC), theEuropean Court of Justice was requested to rulewhether said provision, which stipulates
exclusive jurisdiction, also applies to the defenseof the invalidity of foreign patents. It rendered a
judgment(*4) on the construction on July 13, 2006
(hereinafter referred to as the “GAT v. LuK
Case”). This triggered debate and many excellent
papers on this issue have been presented. (*5) It isconsidered to be very beneficial for Japan to referto these debates.

Ⅱ Current Status in Japanto require injunction based on a patent rightpertaining to the patent in Europe possessed by
the defendant.
(2) A Lawsuit in which Validity Became a
Problem
No court precedents can be found in Japan
where it was requested to confirm whether aforeign patent was valid or invalid as a main
claim; however, there is a judgment of the Tokyo
District Court, October 16, 2003, The Hanreijihou(Judicial Reports), No.1874 at 23 (hereinafterreferred to as “Coral Sand Case”) that indicatedthat exclusive jurisdiction exists with the registrystate of the patent in obiter dictum. Theories are
consistent in the understanding that the registrystate of a patent has exclusive jurisdiction overlawsuits to confirm its invalidity.
2

1International Jurisdiction
Patent Rights

over

the

(1) Infringement Lawsuit
With regard to an infringement lawsuit basedon a foreign patent right, the judgment of theTokyo District Court, June 12, 1953, Kaminshu(Lower Court Report (civil cases)), Vol.4, No.6 at
847 or the judgment of the Supreme Court,
September 26, 2002, Minshu, Vol.56, No.7 at 1551
(hereinafter referred to as the “Card Reader
Case”) rendered judgments on the cases without
considering international jurisdiction. In addition,
it is interpreted that the Card Reader Case also
recognized that the court had an international
jurisdiction for the injunction requirement basedon a foreign patent right. Meanwhile, with regard
to a lawsuit for confirmation of the non-presenceof an infringement, the judgment of the Osaka
District Court, March 29, 2007 (not included in
the court reports) recognized that the court inJapan had jurisdiction and dismissed the claim of
the plaintiff in the case that the plaintiff, who is aJapanese judicial person, requested the defendant,
who is another Japanese judicial person, toconfirm that the defendant did not have the right

Defense of Patent
Japanese Laws

Invalidity

under(1) Kilby Case and its Influence
In the Kilby Case, the court held that “whenit is obvious that there are grounds for theinvalidity of said patent, it is reasonable tointerpret that requests for injunction based on thepatent right and compensation for damages
correspond to an abuse of the right unless there
are special circumstances and they are notallowed.” Due to the Kilby Case, the defense ofinvalidity is permitted as case law doctrine.
(2) Arguments after the Amendment of the
Patent Act
Under the abovementioned circumstances,
Article 104-3 was newly added to the Patent Act
by the amendment in 2004. The difference
between said provision and the doctrine in the
Kilby Case is that it does not impose
requirements for certainty.
3

Summary

In Japan, jurisdiction for a foreign patentright infringement lawsuit is at least not denied(*3) For a Japanese translation of the Brussels Convention, see Yasushi Nakanishi, “Minji oyobi shoujijiken ni okeru
saibankankatsu oyobi saiban no shikkou ni kansuru buryusseru jouyaku (1) (2) (EC Convention on Jurisdiction andthe Enforcement of Judgments in Civil and Commercial Matters, Brussels 1968),” Minshouhouzasshi (The Journalof Civil and Commercial Law), Vol.122, No.3 at 140 infra.
(*4) ECJ 2006.7.13(C-4/03) GRUR int. 2006 S.839=Rev. Crit. DIP 2006, at.904.
(*5) For references, especially as used in this report: Heinze/Roffael, Internatioanle Zusändigkeit für Entscheidungen überdie Gültigkeit ausländischer Immaterialgüterrechte, GRUR Int. 2006, S.787; Kur, A Farewell to Cross-Border
Injunctions? The ECJ Decisions GAT v. LuK and Roche Nederland v. Primus and Goldenberg 2006 IIC 848; Adolphsen,
Renationalisierung von Patentstreitigkeiten in Europa, IPRax 2007, S. 15; Gottschalk, Anmerkung zum EuGH, Urteil
v. 13. 7. 2006, JZ 2007, S.300 ; Stauber/Luginbuehl, Summary of arguments on ECJ Decision – GAT v LuK and Roche
Nederland BV et al. v Primus and Goldenberg, Festskrift till Marianne Levin, Stockholm 2008, pp. 559.
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due to the grounds that the right is a foreign
patent right. On the other hand, the defense ofpatent invalidity under the Japanese Patent Act isalso permitted in principle. However, these facts
do not offer a reply to the issue concerning thedefense of the invalidity of foreign patents.
There are currently no statutes regarding thetreatment of the defense of the invalidity offoreign patents in Japan. In the court precedents,
it is only indicated in the abovementioned Coral
Sand Case. It cannot be said that there is active
theoretical debate on this matter. Despite thissituation, when looking at the increase of global
conflict over intellectual properties, this issue
should be examined more in detail.
In the following, while referring toarguments in Europe, especially the GAT v. Luk
Case, the author examines whether the defenseof foreign patent invalidity should be permitted
and if it is permitted, how the defense should beraised.

Ⅲ Defense ofInvalidity
1

Foreign

PatentCourt Precedents and Arguments inJapan(1) Court Precedents
Among court precedents in Japan, there is
the abovementioned Coral Sand Case, which is
the only case that indicated about the defense of
the invalidity of foreign patents.
In this case, the court confirmed at first thatthe registry state of the patent has an exclusive
jurisdiction over the lawsuit to confirm thevalidity or invalidity of the patent right. And thenthe judgment held that, with regard to thedefense of invalidity, “the judgment of invalidityof said patent” “only affects the parties” and that“it does not become grounds to deny international
jurisdiction or even if the other party alleged thedefense of patent invalidity in the lawsuit torequire an injunction, it does not become grounds
to hinder the proceedings in the trial of saidlawsuit in a court in a state other than theregistry state of the patent.”
It is necessary to note that this finding does
not constitute direct grounds for the argumentsthat led to the conclusion of this case, but isobiter dicta.
(2) Theories
When classifying theories, they are roughly
divided into three types: a theory that does notallow a defense of the invalidity of foreign patents
in the lawsuit; a theory that allows the defense in
principle and a theory that allows the defense
only if the invalidity is obvious. This classification
is based on whether or not the defense ofinvalidity is possible as an issue of jurisdiction.
This means that if a defense of the invalidity offoreign patents is allowed in relation tointernational jurisdiction, it is necessary toconsider it separately from issues of theapplicable law, such as which state’s law shall beapplied for judgment of the appropriateness of the
defense in the court proceedings.
(3) Movement of Legislation for International
Jurisdiction
Deliberations for comprehensive legislation
for international jurisdiction have been initiatedby the “International Jurisdiction Legislation
Committee of the Legislative Council of the
Ministry of Justice,” which was established basedon Consultation No.86 that was submitted on
September 3, 2008. Before the Legislative
Council was established, there was a study group.
This study group made reports including
legislative proposals concerning international
jurisdiction. (*6)
Thelawsuits
concerning
intellectual
property rights are indicated in 5-2 of thereport.(*7) With regard to lawsuits concerning
registration and validity, the legislative proposal
stipulates that the registry state of the rights has
exclusive jurisdiction in both cases. On the other
hand, with regard to the defense of the invalidityof foreign patents, it is explained, on theassumption of the standpoint that even if theinvalidity is alleged as a defense, it does not affectthe jurisdiction, which is a requirement for alawsuit, that the appropriateness of the allegationof invalidity by a defense shall be judged by thestate which granted said patent right. In addition,in certain cases, it allows the stay of court
proceedings in Japan based on the intent of(*6) Kokusai saiban kankatsu kenkyukai (International Jurisdiction Study Group), “Kokusai saiban kankatsu kenkyukai
houkokusho (1) to (6) (Reports of the International Jurisdiction Study Group (1) to (6)),” NBL No.883 (2008) at 37
infra.; NBL No.884 (2008) at 64 infra.; NBL No.885 (2008) at 64 infra.; NBL No.886 (2008) at 81 infra.; NBL No.887(2008) at 114 infra .; and NBL No.888 (2008) at 72 infra .
(*7) Kokusai saiban kankatsu kenkyukai, op. cit., at 6, “Kokusai saiban kankatsu kenkyukai houkokusho (4),” NBL
No.886 (2008) at 87 infra .

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Article 168, paragraph (2) of the Patent Act. (*8)
2Existing Standpoints of Europe

In Germany and the Netherlands, thedefense of the invalidity of foreign patents has
been allowed in their court precedents, as well as
in Switzerland, which is not in the European
Union (EU). In UK, however, courts reject thesuit when the defense is raised. In addition, there
are judgments that do not allow this defense at all
in Belgium and Italy.
3

GAT v. Luk Case

Under these situations in countries in
Europe, The European Court of Justice handed
down a preliminary ruling on the interpretation of
Article 16, paragraph (4) of the Brussels
Convention.
The Brussels
paragraph (4)Convention

Article16,

The following courts shall have exclusive
jurisdiction, regardless of domicile:…
4. in proceedings concerned with theregistration or validity of patents, trade marks,
designs, or other similar rights required to bedeposited or registered, the courts of theContracting State in which the deposit orregistration has been applied for, has takenplace or is under the terms of an international
convention deemed to have taken place;This paragraph stipulates that only theregistry state of the patent shall haveinternational jurisdiction over the judgment of theregistration and validity of patents. The problem
in these statutes is the expression “concerned
with.” It is not clear in the provision whether said
paragraph applies to an infringement lawsuit that
relates to the validity of patents, i.e. in cases
where the judgment of invalidity is required in an
infringement lawsuit. Therefore, there are someroom for interpretation,.
It was the GAT v. Luk Case that indicated acertain answer to this problem.
Judgment of the European Court of Justice,
July 13, 2006 (C-4/03)

The judgment held as follows: since it isdifficult to judge based only on the statutes of
Article 16 of the Brussels Convention, it shall beinterpretedinterpreted according to the purposesof the provision and its systematic position in theConvention; the reason why Article 16 allows
exclusive jurisdiction is because the court in theregistry state of the patent is the best place torender a judgment on the validity of patents; thevalidity and effect of a patent registered in a stateshall be determined by the domestic laws of thestate; this consideration is necessary for thepatent field because many states have special legal
protection systems and in many cases this type oflawsuit is filed at a special court; with regard to
the position of Article 16 in the system, neither
agreement jurisdiction nor jurisdiction byappearance is recognized, or the lawsuit filed
against Article 16 will be rejected and if thejudgment is rendered for the suit, it shall not beapproved or executed; based on the above, Article
16, paragraph (4) shall apply to any form of lawsuitor defense in which the patent validity comes into
question and an exclusive jurisdiction shall beallowed; it does not matter whether it isgenerated at the filing of the lawsuit or after thelawsuit has begun; because the exclusive
jurisdiction has a mandatory character and if it isinterpreted that any infringement lawsuit is notincluded in Article 16, it may cause a problem of
exorbitant jurisdiction, may lead to a weakening of
the predictability of jurisdiction rules, and has therisk of generating parallel international litigation;
moreover, with regard to a counterargument that
exclusive jurisdiction shall be allowed if its is
effective only between parties, the effect shall be
judged by each domestic law, but some laws ofcontracting states grant it effectiveness for third
parties; therefore, this counterargument cannot begrounds for not allowing an exclusive jurisdiction
over the infringement lawsuit.
In other words, the court held that in cases
where the patent validity comes into question,
Article 16, paragraph (4) shall apply and an
exclusive jurisdiction shall be allowed over thecase, regardless of whether the issue was raisedby an action or by raising a defense.
4

After GAT v. Luk Case

(1) Evaluation
This case wascriticized

many

times

(*8) Article 168, paragraph (2) of the Patent Act: “Where an action is instituted …, the court may, if it considers it
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immediately after the judgment was rendered.
Especially, the judgment did not examine
statutes, but rendered a decision in accordancewith the purpose of provisions and the systematic
position of the provision. However, under the
structure of the Brussels Convention that grants
a jurisdiction to the domicile of a defendant inprinciple, Article 16, paragraph (4) should beinterpreted in a limited manner and its scope of
application should be clarified. From thisperspective, the method taken in the judgment
has been criticized because it cannot say that theinterpretation of statutes does not have any
relationship. (*9)
On the other hand, as the grounds thatdecisions on the defense may differ by state, thejudgment indicated it is an issue of the differenceof effects in domestic lawsuits for patent right
infringement. This argument has been criticizedin that there are no contracting states recognizing
the effect of foreign intellectual property rights
and foreign parts of European patents on third
parties so that it does not conflict with Article 16,
paragraph (4) of the Brussels Convention.
There are following substantive criticisms incases where the doctrine of this court isadopted(*10): it may cause the risk that the
judgments on an identical patent right may differ
by state; when a defense is raised after a suit hasentered proceedings, it may ruin the proceedings;
and if infringements are conducted in many states,
plaintiff are required to choose a certain state to
file a lawsuit, as a result ther have to leave otherinfringements conducted in other states.
(2) Proposal for Amendment by CLIP
A joint project of the Max-Planck-Institut fürausländisches und internationales Privatrecht(Hamburg Max Planck Institute for Comparativeand International Private Law) and the
Max-Planck-Institut für Geistiges Eigentum,
Wettbewerbs und Steuerrecht (Munich Max
Planck Institute for Intellectual Property,
Competition and Tax Law), which is called theEuropean Max-Planck Group on Conflict of Laws
in Intellectual Property (CLIP),submitted a
proposal for amendment of Article 22, paragraph(4) of the Brussels I Regulation (Council
Regulation (EC) No 44/2001 of 22 December 2000
on jurisdiction and the recognition andenforcement of judgments in civil and commercial
matters), which corresponds to Article 16,

paragraph (4) of the Brussels Convention) in
response to the above judgment. It is considered
to have several suggestions for Japanese laws so
it is introduced here.
Proposal for Amendment by CLIP
The following courts shall have exclusive
jurisdiction, regardless of domicile:(a) in proceedings, which have as their object
the registration or validity of patents, …
required to be deposited or registered, thecourts of the Member State in which thedeposit or registration has been applied for ….
the courts of each Member State shall haveexclusive jurisdiction, regardless of domicile, inproceedings which have as their object theregistration or validity of any European patent
granted for that State.
(b) The provisions under lit. (a) do not apply

where validity or registration arises in acontext other than by principal claim orcounterclaim. The decisions resulting fromsuch proceedings do not affect the validity or
registration of those rights as against third
parties.

With regard to the expression “concerned
with,” that was unclear in the statutes of Article
16, paragraph (4) of the Brussels Convention, it ischanged to “which have as their object” so that it
specifies objects for cases where registration orvalidity are in question. Besides, it clearlystipulates in paragraph (b) that in cases where
validity or registration arise in the defense ofinvalidity, the registry state of the patent does nothave an exclusive jurisdiction. It also stipulates
that the judgment does not affect to third parties.
This proposal for amendment is based on theabovementioned criticisms to the GAT v. Luk
Case and can be evaluated as appropriate.
However, in practice, the amendment of theBrussels I Regulation became difficult in thisform. It is because of establishment of the New
Lugano Convetion as mentioned later. In addition,
it is an important point that the GAT v. Luk Case
was adopted in the Lugano Convention as its
presumption.
(3) The Lugano Convention and GAT v. Luk
Case
The Lugano Convention is a “Convention on(*9) Kur, op. cit. at 5, at 848.
(*10) CLIP, Exclusive Jurisdiction and Cross-Border IP (Patent) Infringement – Suggestions for Amendment of theBrussels I Regulation, EIPR (2007) p. 198.

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jurisdiction and the enforcement of judgments incivil and commercial matters”(*11) which wasestablished in 1988. The Brussels Convention
and the Lugano Convention have almost the sameprovisions. When interpreting them, judgments
concerned shall be referred to mutually. The
courts of contracting states of the Lugano
Convention, such as Switzerland, have been
considered an interpretation of the Brussels
Convention that is indicated by the European
Court of Justice when interpreting similar
provisions of the Lugano Convention. In thiscontext, judgments or decisions were rendered in
Switzerland that considered the GAT v. Luk Case
when interpreting the Lugano Convention. The
decision of the Commercial Court of Zurich,
October 13, 2006, recognized that Switzerland
had jurisdiction over the infringement lawsuit of acommunity trademark; however it adopted adoctrine of the GAT v. Luk Case in response to
the raising of the defense of invalidity. Then, thecourt suspended the proceedings, established aperiod for the filing of proceedings of invalidity inaccordance with Regulation (EC) No 40/94 (on thecommunity trademark), and held that the
infringement lawsuit would be resumed with noregard to the defense of invalidity if theproceeding was not filed during that period. (*12)
In this way, the GAT v. Luk Case had aneffect outside the EU. Moreover, the effectbecame pronounced when the GAT v. Luk Case
was adopted in the New Lugano Convention.
(4) New Lugano Convention
The amendment of the Lugano Convention
has been considered since 1996. It was passed at
the diplomatic conference held at Lugano on
October 30, 2007 (hereinafter the amended
Lugano Convention is referred to as the “NewLugano Convention”).
Now, Article 22, paragraph (4) of the New
Lugano Convention is examined.
Article 22, paragraph (4) of the New Lugano
Convention(i) in proceedings concerned with theregistration or validity of patents, trade marks,

designs, or other similar rights required to bedeposited or registered, irrespective ofwhether the issue is raised by way of an actionor as a defense, the courts of the State boundby this Convention in which the deposit orregistration has been applied for, has take placeor is, under the terms of a Community
instrument or an international convention,
deemed to have taken place.
(ii) (omitted)
In this paragraph, the wording of“irrespective of whether the issue is raised by
way of an action or as a defense” is added to theprovision of Article 22, paragraph (4) of theBrussels I Regulation. It can be said that thedoctrine of the GAT v. Luk Case was adopted
here.
In response to the New Lugano Convention
that adopted this provision, the adoption of adeclaration using the same wording for the next
amendment of the Brussels I Regulation isscheduled in the ratification instrument of the
New Lugano Convention of the EC. (*13) Therefore,
there is no possibility to amend Article 22,paragraph (4) of the Brussels I Regulation in theform presented by CLIP that allows defense ofinvalidity at least at the early stage.
(5) Remaining Issues after the GAT v. Luk
Case
The GAT v. Luk Case only states that as aninterpretation of Article 16, paragraph (4) of theBrussels Convention, Article 16, paragraph (4)shall apply to the defense of invalidity that was
raised during the lawsuit. It is not clear how to
respond to the case where the defense is raised.
Therefore, two opinions are opposed: an opinion
presuming dismissal or transfer; and an opinion
that the proceedings shall be suspended. (*14) The
decision of the Commercial Court of Zurich,
which adopted a doctrine of the GAT v. Luk Case,takes the theory of staying the proceedings. On
the other hand the Netherlands has adopted
staying in court in the case where the defense ofpatent invalidity became an issue in the main
claim, however the action was dismissed inaccordance with the doctrine of the GAT v. Luk(*11) For a Japanese translation of the Lugano Convention, Yasuhiro Okuda, Kokusai torihikihou no riron (Theories ofInternational Transaction Law), Yuhikaku (1992), at 308 infra.
(*12) Regarding this judgment, Manabu Iwamoto, “Suisu ni okeru kyoudoutai shouhyou mukou no kouben – Churihhi
shoujisaibansho 2006 nen 10 gatsu 13 nichi kettei (Swiss case in which invalidity of community trademark is raised
as a defense: decision on 13 Oct. 2006 in Commercial Court of Zurich),” AIPPI (2009), Vol.54, No.2 at 2 infra .
(*13) Draft by the European Council （9169/08 JUSTCIV 94 CH 28 ISL 15 N 18）.
(*14) Regarding this opposition, Stauber/Luginbuehl, op. cit. at 5, at 607.
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Case. (*15) As mentioned above, there aredifferences in the treatment of the issue by the
courts of each state.
Other arguements concern the treatment of
an defence “in bad faith.” This means a defense,
for example, without the prospect of invalidityand for the purpose only to eliminate thejurisdiction. Moreover, it becomes a question ofwhether Article 16, paragraph (4) of the Brussels
Convention affects matters other than jurisdiction
on the merits . The judgment of the Hague
District Court, September 21, 2006(*16) in the
Netherlands held that in cases where theallegation of invalidity is raised under provisional
measures, a doctrine that the court loses thejurisdiction cannot lead from the GAT v. Luk
Case.
If the defense of foreign patent invalidity is
the main claim of the case, it shall be required tobe dismissed or suspended. However, if the
defense is in bad faith, there is room not to allow
the defense. Or in cases where said defense israised during the proceedings before judging themain claim of the case, such as proceedings forprovisional disposition, there is room to interpretthat the GAT v. Luk Case does not affect it.

Ⅳ Considerations
1

Suggestions for Japanese Laws

I would like to present suggestions forJapanese laws after examining the GAT v. Luk
Case and its influences and the arguments on the
Case.
First, with regard to the character of the
exclusive jurisdiction of international jurisdiction
for judging validity, in conclusion, absolute
grounds that the jurisdiction should be exclusive
cannot be found. It is difficult to say that the
grounds for the argument that the registry stateof patents is the best place for judgment ofinvalidity surpasses the burden of the defendant’s
defense. It will be difficult to find advantages of
exclusive jurisdiction in the judgment of validity.
In this sense, there is no necessity that thejurisdiction “must” belong to the registry state ofpatents. However, on the substantive grounds

that there is the possibility of causing a situation
where the patent is treated as invalid in Japan,
while it remains valid in the registry state of thepatent, it is considered to be reasonable to allow
the registry state to have exclusive jurisdiction
on the judgment of validity from the perspectiveof legal policy.
The abovementioned are problems ofjurisdiction for the judgment of validity. Based on
the above points, it does not also lead to theconclusion that it is impossible for a foreign court
to judge validity. It is unavoidable to say that the
judgment to dismiss an action in which the effectis only between parties understates the interestsof the parties. Therefore, the conclusion that theaction shall be dismissed due to the raising of the
defense of foreign patent invalidity cannot be
supported.
In order to follow the judgment of invalidity
by the registry state of the patent, it is necessary
to keep the stay of proceedings as an option.
Though this is a legislative theory, I wonder if it
is reasonable to design a system in the following
form: in cases where the judgment for theinvalidity of alleged patent infringement ispending in the registry state of the patent or is on
trial during the court proceedings as stated in theabovementioned report of the study group, stay ofthe court proceedings shall be permitted; or incases where it is judged that the deliberation in
Japan is not appropriate, the court can urge its
stay.
Stay requires these considerations; however,
it is an appropriate conclusion that the effect ofinvalidity of foreign patents is limited to being
between the parties and the defense is allowed inprinciple. Therefore, the proposal for amendment
presented by CLIP, as mentioned above, canbasically be supported as a legislative theory inJapan as well. (*17)
2Problems in cases where the Defense of
the Invalidity of Foreign Patents is
AllowedEven if the defense of foreign patent
invalidity is allowed under the jurisdiction, thereis the problem of which law shall be the grounds
for judging the appropriateness of the defense(*15) Regarding these judgments, Bisschop, van der Velden, Lloyd (Translated by the Secretariat) “Tokkyo jiken ni okeru
oushuu no ekkyoutekisochi no doukou (Trend of Cross Border Treatment in Europe for Patent Cases),” AIPPI(2007) Vol.52, No.2 at 66 infra .
(*16) For English translation of this judgment, Mitt. 2007, S. at 285.
(*17) The report of the study group does not have statutes; however, in its explanation, it says that the defense isallowed if it is effective only between parties. Kokusai saiban kankatsu kenkyukai, op. cit., at 6, “Kokusai saiban
kankatsu kenkyukai houkokusho (4),” NBL No.886 (2008) at 88.

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during the court proceedings.
It is reasonable to judge this problem by thelaw of the registry state of the patent. If part ofa foreign patent is judged to be invalid, can the
court then handle the issue of whether the partthat is recognized as valid, is infringed on or not?
With regard to this point, it is interpreted that the
court can recognize a partial invalidity of thepatent since it permits the effect of the defense ofinvalidity only between parties.
As mentioned above, the GAT v. Luk Case
was not clarified the treatment of cases where thedefense was raised in an manner in bad faith.
From the standpoint of this report, it is notconsidered reasonable to allow any defenses
without limit, such as a defense for the purpose ofdelay of a lawsuit. Article 104-3, paragraph (2) ofthe Patent Act stipulates, “Where the court
considers that the materials used for an allegation
or defense under the preceding paragraph aresubmitted for the purpose of unreasonably
delaying the proceedings, the court may, upon amotion or ex officio, render a ruling to the effectthat the allegation or the defense is to bedismissed.” If it is in a case of defense of foreign
patent invalidity, that intent can be applied.
Finally, I would like to discuss a problem withthe defense of foreign patent invalidity and retrial.
In a foreign patent right infringement lawsuit, if apatent is recognized as invalid in the registrystate of said patent after said patent right isjudged as valid, the right that is grounds in thedomestic judgment is extinguished. Whether it
corresponds to grounds for retrial becomes aquestion. Under the Japanese Patent Act, in cases
where the invalidity of a patent becomes final andbinding in the trail for invalidity by the Patent
Office after the judgment assuming the validity ofthe patent is rendered, this is regarded as amodification by administrative disposition thatwas basic of the judgment, as stipulated in Article
338, paragraph (1), (viii) of the Code of Civil
Procedure. Therefore, this decision of invalidity
becomes grounds for retrial. Whether theadministrative disposition, which was the basis of
the judgment as stated above, is recognized as a
judgment of invalidity in a foreign state becomes
another question. This problem will be reviewed
in the future.

The suggestion is different from the judgment of
the GAT v. Luk Case. While it is basicallyallowing the defense of foreign patent invalidity at
the jurisdiction level, it suggests that the law
governing the appropriateness of the defense
shall be the laws of the registry state of thepatent. With regard to stay, though it is alegislative theory, the suggestion alleges that
there is room to allow proactive stay in certain
cases on the assumption that the stay isdiscretionary.
With regard to remaining issues in this study,i.e. various problems under the international civil
proceedings that become problems when the
court recognizes the jurisdiction of Japan in cases
where Japan adopts a defense of foreign patent
invalidity, it is predicted that we cannot lean muchfrom arguments in Europe because they are
moving in a different direction that does not allow
the defense of foreign patent invalidity than Japan,
Regarding the abovementioned, I would like to
set as my future issue the theoretical refinementof the problems of dispositions after allowing thedefense of foreign patent invalidity by drawing
several suggestions from Japanese intellectual
property laws and the Code of Civil Proceedings.

Ⅴ Concluding Chapter
As the mentioned above, I referred to the
GAT v. Luk Case and the subsequent debates in
Europe and then presented a suggestion for Japan.
● 109 ●IIP Bulletin 2009