The “Double Track”
system in Japan
Kenjiro Furuya
Judge - Intellectual Property High Court of Japan
1-1-4 kasumigaseki, chiyoda-ku Tokyo 100-8933, Japan+81 (0)3-3581-1710

Contents
1. Current System
2. Background
3. Problem Outline
4. Recent Patent Act Reform• Restrictions on retrial for infringement judgments

5. Effect on Court Proceedings
6. Post-Grant Opposition System
11. Current System

What is the “Double Track” System in Japan?

2

Two Processes for Challenging Validity

Patentinfringement
lawsuit

Trial forinvalidation

District Ct.

IPHCSupreme Ct.

Infringement
or NotInfringement
or NotInfringementor Not

Valid or Invalid

Valid or Invalid

Valid or Invalid

JPOIPHC

Supreme Ct.

Valid or Invalid

Valid or Invalid

Valid or Invalid

3

Two Processes for Challenging Validity• Trial for invalidation at the JPO(Article 123 (2) of the Patent Act)• The Defense of patent invalidity in a patent
infringement lawsuit(Article 104 - 3 (1) of the Patent Act)

4

Article 123 (2) of the Patent Act“(2) Any person may file a request for a trial forpatent invalidation; provided, however, that
where a request for a trial for patent invalidation
is filed on the ground that the patent falls underitem (ii) of the preceding paragraph (limited tocases where the patent is obtained in violation ofArticle 38) or item (vi) of the preceding paragraph,only an interested person may file a request for a
trial for patent invalidation.”
5Article 104 - 3 (1) of the Patent Act“(1) Where, in litigation concerning theinfringement of a patent right, the said patent isrecognized as one that should be invalidated by ainvalidation trial, the rights of the patentee may not
be exercised against the adverse party.”6

2. Background
From “Single Track” to “Double Track”

7

Before The Supreme Court Decision (~2000)

Patentinfringement
lawsuit

Trial forinvalidation

District Ct.

IPHCSupreme Ct.

Infringement
or NotInfringement
or NotInfringement
or NotJ P O.

IPHC

Supreme Ct.

Valid or Invalid

Valid or Invalid

Valid or Invalid

8

Before The Supreme Court Decision (~2000)
District Ct.
Patentinfringement
lawsuit

Trial forinvalidation

Infringement,
but should be invalid

Infringement
or NotSuspend thecourt
proceedings

Resume theproceedings

J P O.

IPHCSupreme Ct.

Valid or Invalid

Valid or Invalid

Valid or Invalid

9Final & Binding
Decision
Patent is Invalid

Suspension of Court
Proceedings
Article 168 (2) of the Patent Act“(2) Where an action is instituted or a motion fororder of provisional seizure or order of provisional
disposition is filed, the court may, if it considers it
necessary, suspend the court proceedings until thetrial decision becomes final and binding.”
10

Supreme Court Decision(April 11, 2000)“When it is clear that the patent in issue hasreasons to be invalidated, requesting an injunctive
relief and payment of damages based on thepatent right should be deemed as an abuse ofpatent right and prohibited unless there are special
circumstances."11Patent Act of 2004
Established the Patent Invalidity Defense

Article 104 - 3 (1) of the Patent Act“(1) Where, in litigation concerning theinfringement of a patent right, the said patent isrecognized as one that should be invalidated by ainvalidation trial , the rights of the patentee may
not be exercised against the adverse party.”
12

From “Single Track” to “Double Track”

Patentinfringement
lawsuit

Trial forinvalidation

District Ct.

IPHCSupreme Ct.

Infringement
or NotInfringement
or NotInfringement
or NotValid or Invalid

Valid or Invalid

Valid or Invalid

J P O.

IPHC

Supreme Ct.

Valid or Invalid

Valid or Invalid

Valid or Invalid

13

3. Problem Outline
Double Track system creates other problems

14

Problems created by theDouble Track system• Possibility of contradictory judgments• Possibility ofsettlement)

retrial(delay15

final

disputeCourts
Patentinfringement
lawsuitInfringement
or NotValid or Invalid

1. Final & Binding
Decision Patent is invalid.
 Patent is valid.
Compensate for damages.
 Non-infringing patent, etc.

JPO
Trial forinvalidation

Valid or Invalid

2. Final & Binding
Decision Patent is valid.
 Patent is invalid.
16Retrial?

The decision is made by
the court about thedefense of patent invalidity

The decision to invalidate
the patent is made by JPO

retrospectiveeffect> relative effect17

What is the retrospective effect?
Article 125 of the Patent Act“Where a trial decision to the effect that a patent isto be invalidated has become final and binding, thepatent right shall be deemed never to haveexisted.”18

Retrial Proceedings
Article 338 (1) (ⅷ) Code of Civil
Procedure“(1) Where any of the following grounds exist, an appeal
may be entered by filing an action for retrial against a
final judgment that has become final and binding;(viii) The administrative disposition, based on which thejudgment pertaining to the appeal was made, has been
modified by a subsequent administrative disposition.”19

Courts
Patentinfringement
lawsuit

The decision
to orderinjunction andpayment ofdamages

Retrial?
supportJ P O.
JPO
Application
proceedings

Patent IssuancemodifyAdministrative
disposition

20

The decision
to invalidate
the patent
Administrative
disposition(subsequent)

Trial forinvalidation

Several cases reveal that a final and binding
court judgment in a patent infringement lawsuit
can be overruled via retrial, because the metes
and bounds of a patent could be modified by afinal and binding decision in a trial forinvalidation or for correction after the said court
judgment.

An obstruction to speedy andefficient dispute settlements21

4. Recent Patent Act
ReformRestriction of retrial for infringement judgment

22

Amendment of the Patent Act in 201１
Reform Bill
March 11, 2011 Decision made, submitted to the Diet
May 3, 2011

Passed by the Diet

June 8, 2011

PromulgatedＡｐｒｉｌ ，2012

Enforced23

Revised as:
Parties of a patent infringement lawsuit, for which
the court has already issued its final and binding
judgment, are prohibited from requesting a retrial,
based on the following JPO trial decisions, whichbecome final and binding after the said court
judgment.
1) A trial decision that invalidates a patent or aregistration of extension of duration.
2) A trial decision that approves a correction andis designated by Cabinet Order.
24

5. Effect on Court
Proceedings

25Plan for trial:
Article 147-3(1)Procedure

CodeofCivil“(1) The court, when it finds it necessary in order toachieve a proper and prompt trial in light of thecomplexity of a case which involves a number of orcomplicated matters to be examined or any othercircumstances concerned, shall consult with bothparties and formulate a plan for trial based on theoutcome of the consultation.”26

Dismissal of allegations or evidence
advanced outside the appropriate
time:
Article 157
Procedure(1)

CodeofCivil“(1) With regard to allegations or evidence that aparty has advanced outside the appropriate timeintentionally or by gross negligence, the court,
when it finds that such allegations or evidence will
delay the conclusion of the suit, may make anorder of dismissal upon petition or by its own
authority.”27

Infringement& Valid?

Infringement or Not
Defense of patent invalidity(based on invention A)

How much was thedamage ?
Defense (based onDismiss !
invention B )Trial for validity (basedon invention B )28

Possibilityof Retrial6. Post-grant Opposition
SystemSystem abolished in Japan

29

2003
Amendment

1994
Amendment

Pre-grant
opposition
Post-grant
opposition
Trial for invalidation

30

present

Pre-grant Post-grant Trial for
Trial foropposition opposition invalidation invalidation(Before 2003
amendment)(After 2003
amendment)

Purposeexamination

reexamination

settling
disputes
betweeninterested
partiessettling
disputes
betweeninterested
parties

Period3 months

6 months--

Demandant

any person

any person

interestedparties

any person

Proceedingdocumentary
examination

documentary
examinationin principle

oralproceedings inprinciple

oralproceedings inprinciple

31

Thank you for your attention!

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