Guide to IP Conciliation Proceedings
29th, 40th, 46th and 47th Civil Divisions
Tokyo District Court

As of October 1, 2019, the 29th, 40th, 46th and 47th Civil Divisions of the Tokyo
District Court will start operating new practice for conciliation concerning intellectual
property rights (hereinafter referred to as "IP conciliation"). The purpose, points to notewhen filing a petition, a proceedings model and other features of IP conciliation are as
described below. IP conciliation will also start at the Osaka District Court as of the samedate. For more details, please refer to the website of the IP Division of the Osaka District
Court (relevant information to be posted around September 2019).
The proceedings model described herein is assumed only for the purpose of presenting
a model case. Please note that how proceedings develop in actual cases may differ
depending on the policy of each conciliation committee and the characteristics of each case.
In order to ensure fruitful proceedings, participants in the proceedings are requested tomeet the deadlines designated by the court for submitting briefs and documentary evidence.

1. Outline of IP conciliation
IP conciliation is designed to solve disputes over intellectual property rights in a simple
and speedy way, which may arise in business activities, through consultation between theparties based on documents submitted by deadlines and in reference to advice and opinions
obtained from the conciliation committee composed of the judge of the IP division andexperts such as lawyers and patent attorneys with vast experience in dealing with IP cases.
IP conciliation is a judicial service providing the third dispute resolution tool within theframework of the existing law, which is unique and different from litigation and provisional
disposition.

2. Characteristics of IP conciliation
IP conciliation has the following characteristics.

1(1) Flexible
In IP conciliation, the parties can arrange the object for resolution as they wish inlight of the circumstances of the negotiations between them. While the primaryobjective of IP conciliation is to solve a dispute through mutual consultation at court,
the parties can also choose to go back to out-of-court negotiations in reference to theadvice from the conciliation committee. They can also consider whether or not to filea lawsuit or a petition for an order of provisional disposition, while taking into
consideration the developments in the conciliation proceedings.
(2) Speedy
Any party in negotiations may file a petition for IP conciliation at either the
Tokyo District Court or the Osaka District Court based on an agreement on
jurisdiction by the parties. It is presumed that by this stage, the parties in dispute havesorted out the issues to a certain degree through negotiations and they haverespectively kept the relevant documents at hand. Based on this premise, in IP
conciliation, the parties are asked to submit their allegations and evidence by the firstdate for proceedings, and in principle, the conciliation committee is supposed topresent its opinion verbally by the third date for proceedings. IP conciliation is thus
designed to achieve speedy resolution of dispute.
(3) Expertness
IP conciliation, which is conducted by the conciliation committee composed of
the judge of the IP division and experts such as lawyers and patent attorneys with vast
experience in dealing with IP cases, stand in comparison with litigation andprovisional disposition in terms of expertise available. Judicial research officials may
also administer some affairs ordered by the conciliation committee.
(4) Closed to the public
As with the case of ordinary civil conciliation proceedings, IP conciliation
proceedings, including the fact that a petition for conciliation has been filed, areclosed to the public. This enables the parties to pursue resolution of the dispute while
keeping the existence of the dispute itself unknown to any third party.

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3. Disputes covered by IP conciliation(1) Cases covered
Subjects for which IP conciliation may be sought are basically the same as
subjects of litigation on intellectual property rights, including disputes over patentrights, utility model rights, design rights, trademark rights, copyrights, layout-design
exploitation rights, acts of unfair competition prescribed in the Unfair Competition
Prevention Act, and unauthorized use of another person' name or portrait foradvertising purposes or commercial purposes (excluding news reporting purposes).
(2) Cases suitable for IP conciliation
Cases suitable to be addressed in IP conciliation include disputes which havearisen during negotiations between the parties, in which the issues are not socomplicated or have been identified through negotiations, and the parties wish tosolve them through mutual consultation.
On the other hand, litigation proceedings and provisional disposition proceedings
may be more suitable than IP conciliation to solve disputes in cases such as where:
the right holder seeks an injunction to suspend the other party's products quickly; theright holder claims a large amount of damages and there are many issues; therelationship of trust between the parties has already been damaged and it seems to bedifficult to solve the dispute based on mutual concession; the right holder faces theother party's claim of invalidity of the patent right, and it may take a considerable
time to determine the validity.
For example, disputes suitable for IP conciliation include, but are not limited to,the following types of disputes:(i)

Disputes over the similarity of trademarks(ii)

Disputes over the existence or non-existence of the prior user's right for
trademarks(iii) Disputes over the existence or non-existence of copyright infringement(iv) Disputes over the amount of damage caused by infringement of intellectual
property rights(v)

Disputes over the existence or non-existence of wrongful acquisition of trade3

secrets(vi) Disputes over the existence or non-existence of imitation of the configuration ofgoods(vii) Disputes over the existence or non-existence of infringement of patent rights(limited to cases where the issues are simple or have been identified throughnegotiations)(viii) Disputes over the ownership of patent rights(xi) Disputes over licensing fees

4. Filing a petition for IP conciliation(1) Jurisdiction
While summary courts have jurisdiction over conciliation cases (Article 3,
paragraph (1) of the Civil Conciliation Act), IP conciliation cases are, due to theexpertness and technical knowledge required for their solution, to be handled byeither the Tokyo District Court or the Osaka District Court based on an agreement on
jurisdiction by the parties. A sample form of an agreement on jurisdiction is provided
in Attachment 1.
(2) Points to note when filing a petition
A. Information required to be specified in a written petition
A party filing a petition for IP conciliation must submit a written petition for
conciliation to the court (Article 4-2, paragraph (1) of the Civil Conciliation Act). In
the written petition for conciliation, the petitioner must state matters such as theobject of the petition and the points of the dispute (the items of Article 4-2, paragraph(2) of the Civil Conciliation Act; Articles 3 and 24 of the Rules of Civil Conciliation;
Article 1, paragraph (1) of the Rules of Non-Contentious Case Procedures). A sample
form of a written petition for conciliation is provided in Attachment 2.
When stating the object of the petition and the points of the dispute, please notethe following points.
(a) Object of the petition○ The object of the petition must be stated specifically to the same extent as the4object of the claim is stated upon filing a lawsuit if it is possible to clearly specify
what the petitioner claims against the respondent, such as when making a claim
for an injunction or damages or seeking a declaration of the non-existence of
these claims.
[Example 1]
The respondent shall pay the petitioner XXXX yen with an amountaccrued thereon at the rate of 5 percent per annum for the period from [Date]until the completion of payment.
[Example 2]
The respondent shall not transfer, display for the purpose of transfer, or
import the products specified in the attached list of products.
The respondent shall dispose of the products specified in the attached listof products.
[Example 3]
It is hereby declared that the respondent has neither the right to claim an
injunction against the petitioner to suspend the goods specified in the attachedlist of goods based on the trademark right specified in the attached list of
trademark rights, nor the right to claim damages against the petitioner basedon a tort due to infringement of that trademark right.
[Example 4]
The respondent shall deliver the documents specified in the attached listof trade secrets to the petitioner.
[Example 5]
It is hereby declared that the petitioner holds the right to obtain a patent
for the invention specified in the attached list of inventions.
○ Even if it is impossible to clearly specify what is claimed against the
respondent to the level described above, the petitioner must make efforts to state
the object of the petition as clearly as possible.
[Example 6]
The respondent shall restore the petitioner's account on the online

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shopping site managed and operated by the respondent, and thereby enable thepetitioner to continue to operate its store on the webpage specified in theattached list of webpages.
[Example 7]
The respondent shall alter the posts on the website specified in item 2 of
the attached list of websites, to the extent that viewers will not confuse thiswebsite with the petitioner's website specified in item 1 of the same list.
[Example 8]
The amount of licensing fees payable by the petitioner to the respondent
for producing and selling the products specified in the attached list of
products shall hereby be determined.
○ If a petition for IP conciliation is filed for the purpose of promoting thenegotiations with the respondent and it is impossible to clearly specify what isclaimed against the respondent, the object of the petition may be, for example,
described as follows, depending on the case.
[Example 9]
The petitioner and the respondent shall coordinate the terms andconditions of a stock purchase agreement between them to the extent they canagree upon.
(b) Points of the dispute
In a written petition for IP conciliation, the petitioner must state the points ofthe dispute, including the details and background of the dispute, the petitioner's
arguments on the issues and counterarguments against the respondent's
arguments, the history of the past negotiations, and how the petitioner wishes tosolve the dispute.
B. Submission of evidence
The petitioner must submit a copy of the evidence for proving the facts stated as
the points of the dispute, together with a description of evidence (Articles 3 and 24of the Rules of Civil Conciliation; Article 45, paragraph (1) of the Rules of NonContentious Case Procedures; and Article 137, paragraph (1) of the Rules of Civil

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Procedure). Before filing a petition, the petitioner should consider preparing written
statements of persons who are familiar with the situation and submitting them as
documentary evidence.
In order to ensure that substantial proceedings can be held from the first date forproceedings, it is requested that the petitioner submit all items of documentary
evidence intended to be used in the proceedings before the first date for proceedings.

5. Points to note when drafting a written answer
The respondent, after receiving a written petition, must submit a written answer,
documentary evidence, a description of evidence, and other necessary documents to thecourt ten days prior to the first date for proceedings (about six weeks after the filing of thepetition). In the written answer, the respondent must state whether the respondent admits ordenies each of the facts alleged in the written petition, and specifically state the facts ofdefense and facts of rejoinder. If the respondent has any idea of a solution to propose to thepetitioner, it should also be included in the written answer.
It is requested that the respondent submit all items of documentary evidence intended
to be used in the proceedings before the first date for proceedings.

6. Composition of the conciliation committee
The conciliation committee is to be composed of three members: one judge of the IP
division and two experts such as lawyers and patent attorneys with vast experience indealing with IP cases. In cases in which technical matters are involved in the dispute, suchas a dispute concerning a patent right, a judicial research official may administer someaffairs ordered by the conciliation committee.

7. Procedural flow
IP conciliation is held on the premise that the parties have engaged in negotiations
beforehand. The parties are asked to submit their allegations and related evidence by the
first date for proceedings, and the conciliation committee is supposed to present its opinion

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verbally by the third date for proceedings. In an easy case, the conciliation committee may
present a conciliation proposal earlier than on the third date for proceedings, whereas, in acase in which it takes time to coordinate the contents of an agreement between the parties,
the committee may hold proceedings four or more times, taking the wishes of the parties
into consideration.
If either or both of the parties are located in remote places, proceedings may be heldusing a video conference system or similar device.
The conciliation committee's opinion includes not only the committee's determinationon the issues, but also its view to the effect that in light of the difficulty of proof and thecomplexity of the case, solution through litigation or provisional disposition is moresuitable. Taking into consideration the committee's opinion, the parties may choose tocontinue consultation through conciliation proceedings, or to terminate conciliation
proceedings (due to unsuccessful conciliation or withdrawal of the petition), and then go
back to out-of-court negotiations or file a lawsuit or a provisional disposition.
A model of IP conciliation is provided in Attachment 3. This model is assumed only
for the purpose of presenting a model case. As mentioned earlier, please note that how
proceedings develop in actual cases may differ depending on the policy of each conciliationcommittee.

8.

Relationshipbetweenconciliation

proceedings

andsubsequent

litigation

proceedings
If, after conciliation ends unsuccessfully or the petition is withdrawn, a lawsuit is filedwith regard to the same claim as the claim for which conciliation was sought, the litigation
proceedings of this lawsuit are to be conducted by judges of divisions other than thedivision to which the judge who served as a member of the conciliation committee belongs.

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Attachment 1

Sample Agreement on Jurisdiction

Petitioner: Company X
Respondent: Company Y

Agreement on Jurisdiction
The parties indicated above hereby agree to designate the Tokyo District Court as thecourt of jurisdiction over the conciliation case for a declaration of the non-existence of aclaim for an injunction and another claim, as specified in the attached written petition for
conciliation (draft).
[Date][Address]
Petitioner: Company X
Representative director of the petitioner: [Name][Address]
Counsel for the petitioner: [Name], Attorney at law[Seal][Address]
Respondent: Company Y
Representative director of the respondent: [Name][Address]
Counsel for the respondent: [Name], Attorney at law[Seal]* The details of the dispute sought to be solved by conciliation are allowed to be specified
in this form instead of attaching a written petition for conciliation (draft).

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Attachment 2

Sample Written Petition for Conciliation

Petition for Conciliation
Revenue stamps[Date]
To: Tokyo District Court
Counsel for the petitioner: [Name][Seal]

Indication of the parties: As specified in the attached list of parties <Omitted>

Conciliation case for a declaration of the non-existence of a claim for an injunction andanother claim
Value of the subject matter for which conciliation is sought: [Amount of revenue stamps affixed: [

] yen

] yen

Amount of postage stamps for prepayment: [] yen

Object of the Petition

The petitioner seeks conciliation to the effect as follows:
The respondent has neither the right to claim an injunction against the petitioner to suspend
the goods specified in the attached list of goods <Omitted> based on the trademark rightspecified in the attached list of trademark rights <Omitted>, nor the right to claim damages
against the petitioner based on a tort due to infringement of that trademark right.

Points of the Dispute

1. Background of the dispute, etc.

10<Omitted>

2. The petitioner's logo is not similar to the respondent's trademark<Omitted>

Means of Evidence

Exhibit Ko 1: Photographs of the goods
Exhibit Ko 2: Trademark register…

Annexed Documents
1. Duplicate copy of the written petition
2. Copy of documentary evidence
3. Description of evidence
4. Power of attorney
5. Certificate of all registered information (certificate of qualification)
6. Agreement on jurisdiction

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Attachment 3

Proceedings Model
After the filing of the petition for conciliation before the first date for proceedings○ The petitioner submits to the court a written petition for conciliation stating theobject of the petition and the points of the dispute, annexed documents including
an agreement on jurisdiction, documentary evidence, a description of evidence, andother necessary documents.
○ The respondent submits to the court a written answer, documentary evidence, adescription of evidence, and other necessary documents ten days prior to the firstdate for proceedings (about six weeks after the filing of the petition).
○ When a petition for IP conciliation is filed, the court designates conciliationcommissioners, and if the case merits the involvement of a judicial research
official, the court issues an investigation order to a judicial research official. The
court then adjusts the schedule and designates a date for proceedings on which thecounsels of both sides can appear at court.

On the first date for proceedings (about 6 weeks after the filing of the petition)○ The court confirms the issues and identifies the facts based on the written petition for
conciliation, the written answer and the items of documentary evidence submitted, andhears both parties' wishes and requests, toward solving the dispute through consultation
between the parties.
○ From the viewpoint of ensuring fruitful proceedings from the first date for proceedings, it isdesired that persons who are familiar with the dispute (e.g., persons in charge of the IP
divisions) appear in court.
○ In some cases, if the issues are simple and can be judged from the written allegations anddocumentary evidence submitted by the parties, the conciliation committee may present its
opinion or suggest the direction of a possible solution on the first date for proceedings.
○ If the conciliation committee finds any points that need to be supplemented in the
allegations and evidence of the parties, it instructs the parties to submit supplementary
allegations and evidence.

● Successful conciliation● Unsuccessful conciliation / Withdrawal of petition⇒ Out-of-court negotiations between the parties⇒ Litigation / Provisional disposition

Continue12On the second date for proceedings (3 weeks to 1.5 months after the first date for proceedings)○ If the parties submit supplementary allegations and evidence, the conciliation committee
holds discussions with the parties, and continues to hear the parties' wishes and considers aconciliation proposal, in an effort to encourage the parties to reach an agreement.
○ In some cases, the conciliation committee may present its opinion or suggest the direction ofa possible solution on the second date for proceedings.
● Successful conciliation● Unsuccessful conciliation / Withdrawal of petition⇒ Out-of-court negotiations between the parties⇒ Litigation / Provisional disposition

Continue

On the third date for proceedings (3 weeks to 1.5 months after the second date for proceedings)○ In principle, the conciliation committee verbally presents its opinion to the parities by thethird date for proceedings, with regard to the committee's determination on the issues orwhether it is appropriate to pursue a solution by litigation or provisional disposition.
○ If the conciliation committee has already presented its determination on the issues and theparties have started consultation about the conciliation proposal, the parties go on with theirconsultation, with the aim of reaching successful conciliation. Even if conciliation has notbeen established successfully by the third date for proceedings, if there is a prospect for theparties to reach an agreement through consultation and the parties wish to continue theconciliation proceedings, the proceedings are continued.
○ If the conciliation committee presents its determination on the issues on the third date forproceedings, the parties hold discussions on the conciliation proposal based on thecommittee's determination, with the aim of reaching successful conciliation on that date. If
the parties wish to continue the conciliation proceedings, the proceedings can also be
continued.
○ Having heard the conciliation committee's determination, the parties can also choose tostop using the conciliation proceedings and go back to out-of-court negotiations.
○ If the conciliation committee presents a view that the case is suitable to be solved throughlitigation or provisional disposition proceedings, the conciliation proceedings terminate due
to unsuccessful conciliation or withdrawal of the petition, and the parties consider filing alawsuit or petitioning for an order of provisional disposition.

(Continue)● Successful conciliation● Unsuccessful conciliation / Withdrawal of
petition⇒ Out-of-court negotiations between the parties⇒ Litigation / Provisional disposition● Successful conciliation● Unsuccessful conciliation / Withdrawal of
petition⇒ Out-of-court negotiations between the parties⇒ Litigation / Provisional disposition13