IP Litigations ｉｎ Ｊａｐａｎ:
Recent Trends and Future Perspectives

29 January 2016
Mitsuyasu Matsukawa
Judge, Administrative Affairs Bureau
Supreme Court of Japan1

Basic Information on Japan
 Population: around 120 million

 GDP: around 4~5 trillion USD

 PatentApplication (2014): 325,989
Request for examination (2014): 245,535
 Modern legal/judicial system wasestablished around the end of 19th
century (after the end of Samurai era)
Categorized as continental law (civil law),2
but also affected by common law

Courts in Japan (General) 47 prefectures, each of whichhas 1 district court as 1stinstance (Hokkaido has 4)
50 district courts
 8 high courts as 2nd instance Supreme Court as final instancein Tokyo3

Special Jurisdiction ruleon IP litigations (1st instance) Exclusive jurisdiction over patent cases

Tokyo District Court and/or Osaka District
Court ONLY have jurisdiction.
 Non-exclusive jurisdiction over trademark,copyright, design right cases
Tokyo District Court and/or Osaka District
Court have jurisdiction but (a)other district(s)court may also have jurisdiction depending on
the location of dispute.
4TokyoPatent cases
OsakaTrademark,copyright, designright cases5

IP divisions
in Tokyo/Osaka District Court
TOKYO 4 IP divisions

OSAKA 2 IP divisions
Each “division” has at least 3 judges (sharing 1 room)→ All IP cases in Tokyo/Osaka District Court are heard
by a panel of 3 judges of IP division, not a single judge
6Judges’ chamber

7Average Time Intervals From Commencement toDisposition at First Instance (months)
35
31.9
30
25.0 25.7
2520
15

23.7
23.1

21.6
22.7

23.1
15.6

18.3

16.8

13.5
13.8

1012.514.4

15.7 15.7

14.8

13.7 13.4

13.4

15.1

50

• Judges play an active role in case management under our docket system in Japan.
• Generally recognized Strength: predictability of judgment, cost and speed 8

Types of IP litigationsin 1st instance (2014): 552 cases
Commercial
Code,etc
5.4%

Right ofauthors for acomputer
program
2.2%

UnfairCompetition
Prevention
Act
23.4%

Copyright
Trademark
18.1%
13.9%

Patent33.0%

Utility model
right
0.9%
Design right
3.1%
9

Which district court handles IP case?
(2012-2014)
 Majority are in Tokyo/Osaka District Courts

even under non-exclusive jurisdiction
Copyright

Trademark
Others
20.5％
Osaka
19.3％

Others
22.8％

Tokyo
60.6％

Osaka
8.1％

Tokyo
72.2％

10

Intellectual Property High Court(Established in April 2005)
TOKYO 4 divisions
1-1) Appeals of all patent cases (Tokyo/Osaka District Court)
1-2) Appeals of all types of IP cases from Tokyo District Court
and its neibouring district courts2) Litigations against appeal/trial decisions made by JPO(mainly patent validity)
11

Procedures for Patent Infringement Disputes
Infringement procedure
1st instanceTokyo/OsakaDistrict Court
Infringement

2ndinstance3rdinstance

IPHighCourt

SupremeCourt

1stinstance2ndinstance

Injunction/Damage

Defense of Invalidity

Invalidity procedure
JPOInvaliditytrial12

Defense of Invalidity in Infringement Litigation

Article 104 - 3 (1) of the Patent Act
Amendment of Patent Act in 2004
(Effective from April 1, 2005)“ Where, in litigation concerning theinfringement of a patent right, the said
patent is recognized as one that should beinvalidated by an invalidation trial , therights of the patentee may not beexercised against the adverse party.”
13Number of IP Appeal Cases, and Average Time Intervals
From Commencement to Disposition (IP High Court)*～March 31 2005 Tokyo High Court
Commenced
Disposed（AverageTime Intervals From Commencement to Disposition (months)（(Number of cases)(months)

150

20.0

128
114

113
109

109

105
96

100

87
10.4
9.0
50

109

90

88

95

108
101

104101
90 91

88 90

114

15.0

99

10.0

10.0

9.8
8.5

8.5
7.7
7.6
7.5
Above figures are reported by the Administrative Bureau of Supreme Court of Japan.

7.7
6.7
5.00
（(Year)

2003

2004

2005

2006

2007

2008

2009

2010

2011

2012

2013

0.0 14

Number of Suit Against Appeal/Trial Decision made by
JPO, and Average Time Intervals From Commencement toDisposition (IP High Court) *～March 31 2005 Tokyo High Court
Commenced
Disposed
Average Time Intervals From Commencement to Disposition (months)（(Number of cases)(months)

800

20.0

693

700

18.0

619
600
500

534

589

609

527

566

16.0

591
543

14.0

496 49412.4

12.6

443 442

437

400

9.4
300
200

463
444 453 457
413
407

429
353

8.6

9.1

8.0

7.5

7.2

7.5

8.0

12.0
10.0

8.0

7.6
6.0

Above figures are reported by the Administrative Bureau of Supreme Court ofJapan.

4.01002.002003(Year)

2004

2005

2006

2007

2008

2009

2010

2011

2012

2013

0.015

Judicial Research Officials
ElectricityMachinery

Chemistry

Full-time court officers
with specialized knowledge in science/technology
Assigned to IP High Court (11)Tokyo District Court (7)Osaka District Court (3)Engaged in all Patent litigations
to support judges in technological issues* The function seems similar to that of assessors in Singapore

Office of Judicial Research Officials

17

Technical Advisors
Medicine
Telecommunications

Biotechnology

Nanotechnology

Computer Programming

EnergyApplied Physics

Part time court members (more than 200): university professors etc*All belonging to 3 courts: IP High Court, Tokyo District Court, Osaka District Court

Designated for a case which contains highly difficult
technological issues.
18Explanatory sessions
Presentation by both parties (attorneys)
Alleged infringing productFrank discussion

VideogramPresentation software

視覚的・効果的な説明

Questions by judge,
Judicial Research Official,
Technical Advisor

Response by parties
and attorneys

Deepening the understanding
on technological matters etc

19How to evaluate IP litigation system?
 Quality of judgments, efficiency of procedure (IP Hub

Master Plan 5.2 in Singapore) Winning rate for patentees?
* Does it correspond with the value of fairness?
* Does the rate in judgments only have a statisticalsignificance?
In Japan, judges play a role for settlement, disclosing
their view on liability issues after hearing.
Many cases for patentees end by court settlement(having the same legal effect as judgments).
20
Focus on statistics on judgments only is misleading.

Rate of patentee’s successin patent infringement litigations*Research by Institute of Intellectual Property (2015)
Judgments & Court Settlements (2011-2013)
Court settlement
against patentees 8%

Judgments forpatentees 15%

Judgments against
patentees 45%

Court settlementsfor patentees 28%

Patentee’s success
43%～47%

Access to record of court
settlement is restricted 4%21

For further development of IP
litigations and rules in Japan Academics will play significant role.
 All IP judgments in SC, IPHC, and IP divisionsof Tokyo/Osaka DCs are on the website (noregistration, no charge).
Analyzed, discussed and criticized byscholars (incl. seminar, conference, etc)
Development cycle between judges/legal
practitioners and scholars
 Discussion on strengthening document
production procedure is under way (typically22
for cases of process claim).

International Activities
 IP judgments are translated into English on

IP High Court website.
→ Sharing our IP judgments internationallyDevelopment cycle in international field “IP judgments listed by topic” on the web23

“IP judgments listed by topic”
in IP High Court website
http://www.ip.courts.go.jp/eng/hanrei/judgments_list/index.html

24International Symposium: Toward the Future of the Judicial System forIntellectual Property ~Commemorating the 10th Anniversary of IP High25
Court ~ (Tokyo, 20 April 2015)

Cooperation in Asia
 “The Project on IP Rights Protection and Legal

Consistency for Improving Business Environment
in Indonesia”* Long-term Experts are dispatched from Japan.
* The judiciary in Japan cooperates on the project.
 Japan also can learn through the project.
Mutually beneficial (Not one way)
Harmonization of IP rules through this cycle IP, mutual gateway to judicial systems as a whole26

IP High Court’s Judge’s participation
in IP Seminar in Indonesia (December 2014)
27Useful website (English)
 IP High Court
http://www.ip.courts.go.jp/eng/index.html* Guidebook of IP High Court
http://www.ip.courts.go.jp/eng/documents/thesis/141006_setuguusiryo/index.html* IP judgments listed by topic
http://www.ip.courts.go.jp/eng/hanrei/judgments_list/index.html

 Japanese Law Translation
http://www.japaneselawtranslation.go.jp/?re=02

 Japan Patent Officehttps://www.jpo.go.jp/28