Guidelines for IP Conciliation Proceedings at the Osaka District Court
September 1, 2019
21st and 26th Civil Divisions
Osaka District Court
As from October 1, 2019, the 21st and 26th Civil Divisions of the Osaka District
Court will start operating the practice of IP conciliation under the new framework. The
method of filing a petition, the guidelines for conducting proceedings and other featuresof the new IP conciliation are as described below.
For the basic framework and characteristics of the new IP conciliation, please referto the "Explanation of the New IP Conciliation at the Osaka District Court" attachedhereto (hereinafter referred to as the "attached explanation").
1. Case filing with the conciliation division(1) Court
IP conciliation is available at the Tokyo District Court or the Osaka District Court. IP
conciliation proceedings are handled by the divisions specialized in IP cases establishedin these courts.
For the guidelines for IP conciliation proceedings at the Tokyo District Court, pleaserefer to the information posted on its website. Below is an explanation of the guidelines
for IP conciliation proceedings at the Osaka District Court.
(2) FilingAt the Osaka District Court, the 10th Civil Division in charge of conciliation cases(hereinafter referred to as the "conciliation division") administers the reception of IP
conciliation cases. Any person who wishes to use IP conciliation is required to submit anagreement on jurisdiction, a written petition for conciliation, documentary evidence anda description of evidence (hereinafter referred to as "documentary evidence with adescription thereof"), and other necessary documents and to pay the required fees to theconciliation division. When these are completed, the case is received as an IP conciliation
case.
(3) Agreement on jurisdiction
In principle, a conciliation case is under the jurisdiction of a summary court.
Therefore, in order to use IP conciliation at the Osaka District Court, it is necessary tosubmit an agreement on jurisdiction prepared in the names of both parties to the effectthat the parties agree to designate the Osaka District Court as the court of jurisdiction overtheir conciliation case (Article 3, paragraph (1) of the Civil Conciliation Act). The same1

applies when using IP conciliation at the Tokyo District Court.
(Sample Agreement on Jurisdiction)
Petitioner: Company X
Respondent: Company Y
Agreement on Jurisdiction
The parties indicated above hereby agree to designate the Osaka District Court as
the court of jurisdiction over the conciliation case for payment of licensing fees, as
specified in the attached written petition for conciliation.
[Date][Address (…, Osaka Prefecture)]
Petitioner: Company X
Representative director of the petitioner: [Name]Counsel for the petitioner: [Name], Attorney at law [Seal][Address (…, Tokyo)]
Respondent: Company Y
Representative director of the respondent: [Name]Counsel for the respondent: [Name], Attorney at law [Seal](4) Written petition for conciliation
In the written petition for conciliation, the petitioner is required to state the details of
the desired solution in the section for the "object of the petition," and the cause of thedispute, the point of contention between the parties, the background, the negotiation
history and other relevant matters in the section for the "points of the dispute."(Sample Written Petition for Conciliation)
Petition for Conciliation
Revenue stamps[Date]
To: Osaka District Court
Counsel for the petitioner: [Name][Seal]

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

2

Conciliation case for payment of licensing fees
Value of the subject matter for which conciliation is sought: [Amount of revenue stamps affixed: [] yen
Amount of postage stamps for prepayment: [] yen] yen

Object of the Petition
The petitioner seeks conciliation to confirm that the respondent's product specified
in the attached list <Omitted> falls within the technical scope of the petitioner's patent
specified in the attached list <Omitted> and to determine the amount of reasonable
licensing fees to be paid by the respondent in the future.
Points of the Dispute
1. Details of the petitioner's invention<Omitted>
2. Process of the respondent's product development<Omitted>
3. Negotiation history<Omitted>
4. Allegations of both parties<Omitted>
Means of Evidence
Exhibit Ko 1: Patent registry
Exhibit Ko 2: Patent bulletin
Exhibit 3: Photography report
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 qualification
36. Agreement on jurisdiction(5) Certificate of qualification as counsel
A lawyer (attorney at law) is qualified to serve as counsel for conciliation (Article 8,paragraph (2) of the Rules of Civil Conciliation; Article 22 of the Civil Conciliation Act;
Article 22 of the Non-Contentious Procedures Act), and is required to submit a power ofattorney.
A patent attorney who intends to serve as counsel for conciliation is required tosubmit a written application for permission to serve as counsel with a power of attorney.
Since a conciliation case is categorized as a non-contentious case (Article 22 of the Civil
Conciliation Act), Article 6-2 of the Patent Attorneys Act does not apply. Accordingly, inorder to serve as counsel for conciliation, a patent attorney must obtain permission fromthe conciliation committee (Article 8, paragraph (2) of the Rules of Civil Conciliation) or
the court (Article 22 of the Civil Conciliation Act; Article 22 of the Non-Contentious
Procedures Act).
(6) Handling of IP conciliation cases
IP conciliation is expected to be suitable for such cases as where the point ofcontention between the parties is clear, and the parties can reach an agreement on thedetails of how to solve the dispute once the court’s opinion is available on the issue (3.(1)of the attached explanation).
Speedy proceedings expected for IP conciliation (2.(4) of the attached explanation)
may be difficult in such cases as those with complicated backgrounds or involving a broad
range of issues (3.(2) of the attached explanation). However, if a case involves a dispute
over intellectual property (1.(2) of the attached explanation) and the requirements such as
an agreement on jurisdiction are satisfied, it is accepted and handled as an IP conciliationcase.
2. Proceedings conducted by the IP division
After a case is received as an IP conciliation case, its proceedings are conducted by
the 21st or 26th Civil Division which are specialized in IP cases (hereinafter referred toas the "IP division").
(1) Submission of documents
When submitting briefs (including a written petition and written answer) anddocumentary evidence with a description thereof, each party must submit a duplicate copy
for each member of the other party and three copies for use by the conciliation committee;
in a case in which a judicial research official is expected to take part, one additional copy
is required, in addition to the original to be kept for the court's records.
4Briefs and other documents must be submitted to the conciliation division upon thefiling of the case, and then submitted to the IP division after the reception procedure iscompleted.
(2) Conciliation committee
When a case is received as an IP conciliation case, the court designates a judge of theIP division as the chief conciliator in charge of conciliation (hereinafter referred to as the"chief conciliator").
The court then sets up a conciliation committee by designating two conciliationcommissioners (two lawyers, or one lawyer and one patent attorney), in accord with thedetails of the case and the dispute.
(3) Judicial research official
When necessary, the court orders a judicial research official to administer someaffairs such as conducting research on the case e.g., when technical matters are involvedin the dispute.
Legally, a technical advisor may also administer some affairs (Article 22 of the Civil
Conciliation Act; Article 33 of the Non-Contentious Procedures Act), but it would be rare
for a technical advisor to be involved in IP conciliation, which aims at speedy proceedings(2.(4) of the attached explanation).
(4) Referral to conciliation
With regard to an IP case which has been brought to court as an ordinary litigationcase, a judge of the IP division may, by their own authority, refer the case to conciliation
when finding it appropriate to do so (Article 20 of the Civil Conciliation Act). When thishappens, the IP case is handled as a conciliation case by assigning the judge in charge ofthe IP case as the chief conciliator (with a few exceptions) and designating IP conciliationcommissioners to form a conciliation committee.
(5) Date for conciliation proceedings
Usually, IP conciliation proceedings are held at the IP division's room for preparatory
proceedings. Both parties are required to appear at the IP division's court clerk office.
(6) Use of telephone and video conference systems
Either or both of the parties may attend proceedings using a telephone or videoconference system if they are located in remote places or it is appropriate for other reasons(Article 22 of the Civil Conciliation Act; Article 47 of the Non-Contentious Procedures
Act). Please consult with the court for the use of these systems.
3. Outline of IP conciliation proceedings (how proceedings go on)(1) General points of note
A. In order to ensure speedy proceedings, which is aimed at by IP conciliation (2.(4) of5

the attached explanation), both parties must make sure to submit their briefs anddocumentary evidence with a description thereof as early as possible so that theconciliation committee can examine them in a timely manner.
B. It is desired that both parties be properly prepared at each stage during proceedings
so that they can clearly indicate the details of the desired solution of the dispute,
express their opinions to the conciliation committee and hold negotiations with eachother to reach an agreement.
C. At each stage during proceedings, the conciliation committee may express advice or
its opinion as of that time and suggest the direction of a solution.
D. When the parties agree on the solution of their dispute and conciliation is establishedsuccessfully, the IP conciliation case is closed and no more proceedings are heldthereafter. The IP conciliation case is also closed when the court issues an order under
Article 17 of the Civil Conciliation Act (explained below), conciliation ends
unsuccessfully, or the petition for conciliation is withdrawn.
(2) Designation of the first date for proceedings
The court designates the first date for proceedings within about six weeks from thefiling of the petition for conciliation.
(3) Submission of a written answer
The court requests the respondent to submit a written answer stating its
counterarguments against the petitioner's arguments, and documentary evidence with adescription thereof that supports the counterarguments, about ten days prior to the firstdate for proceedings.
(4) Course of proceedings on the first date
A. Both parties summarize and explain the points of contention verbally to theconciliation committee based on their prior preparation, if necessary.
B. Both parties prepare an explanation of the shape and structure of the product indispute and provide it to the conciliation committee on the date for proceedings, ifnecessary. If they intend to bring a large article to the court for the purpose of using
it as part of such explanation, they must notify the court beforehand.
C. Both parties should bring their employees who are in charge of IP affairs or haveknowledge of the details of the explanation mentioned above or the background of
the dispute to the court on the date for proceedings.
D. The conciliation committee hears explanations from both parties, and if it finds that
additional briefs and documentary evidence with a description thereof are necessary,it directs the parties to submit supplementary documents by the second date forproceedings.
6E. As mentioned in (1) C. above, the conciliation committee may present its opinion on
the first date for proceedings and encourage the parties to negotiate or direct them toconsider the direction of a solution by the second date for proceedings.
(5) Designation of the second date for proceedings
The court designates the second date for proceedings in consideration of the timerequired for both parties to submit their additional allegations and evidence (about fourto six weeks) or the time required for them to consider the direction of a solution (about
two to three weeks).
(6) Course of proceedings on the second date
A. The conciliation committee discusses with both parties their additional allegations
and evidence. Unless under special circumstances, additional allegations andevidence must be submitted by the second date for proceedings.
B. As mentioned in (1) C. above, the conciliation committee may present its opinion on
the second date for proceedings and encourage the parties to negotiate or direct themto consider the direction of a solution by the third date for proceedings.
(7) Designation of the third date for proceedings
When both parties finish submitting their allegations and evidence, the court
designates the third date for proceedings in consideration of the time required for theconciliation committee to prepare for disclosing its determination or the time required forboth parties to consider the direction of a solution.
(8) Course of proceedings on the third date
A. Unless under special circumstances, the conciliation committee prepares by the third
date for proceedings to verbally disclose its determination or opinion on the issues.
B. Based on the conciliation committee's determination thus disclosed, both parties holdthe final discussion and negotiation with each other, with a view to reaching anagreement between them.
C. When the parties reach an agreement, conciliation is established successfully and theIP conciliation case is closed (explained in 4.(1) below).
D. Even if conciliation is not established successfully on the third date for proceedings,
the conciliation committee may designate the fourth and subsequent dates forproceedings if there is a possibility that the parties will reach an agreement.
E. If there is no likelihood of the parties reaching an agreement, the conciliationcommittee either issues an order under Article 17 by its own authority (explained in4.(2) below) or decides the conciliation to be unsuccessful (explained in 4.(3) below).
4. Closure of the IP conciliation case(1) Successful conciliation
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When an agreement is reached between the parties and it is entered in the record,conciliation is established successfully and the IP conciliation case is closed.
The matters entered in the record have the same effect as a court judgment (Article
16 of the Civil Conciliation Act; Article 267 of the Code of Civil Procedure).
(2) Order under Article 17
If conciliation is unlikely to be successful, the court may, by its own authority and to
an extent that does not contradict the objectives of the parties' petitions, issue a necessaryorder to resolve the case after hearing the opinions of the conciliation commissioners,
giving consideration to the equitable treatment of the interests of both parties, and taking
into account all relevant circumstances. This is called an order in lieu of conciliation ororder under Article 17 (Article 17 of the Civil Conciliation Act).
If an order under Article 17 becomes final and binding without objection, it is to havethe same effect as a court judgment (Article 18 of the Civil Conciliation Act; Article 267of the Code of Civil Procedure).
(3) Unsuccessful conciliation or withdrawal of petition
If there is no likelihood of the parties reaching any agreement and the court does notissue an order under Article 17, the conciliation committee may decide that theconciliation is unsuccessful (Article 14 of the Civil Conciliation Act).
Except when an order under Article 17 is issued, the petitioner may withdraw thepetition without the respondent's consent (Article 19-2 of the Civil Conciliation Act).
The IP conciliation case is closed when conciliation ends unsuccessfully or thepetition for conciliation is withdrawn.
5. Relationship between the closure of the IP conciliation and the filing of an IP lawsuit(1) Carryover of fees, etc.
If conciliation ends unsuccessfully, and the petitioner files a lawsuit with regard to
the claim for which conciliation has been sought, within two weeks after receiving thenotice of unsuccessful conciliation, the amount of fees paid when filing a petition for
conciliation is deducted from the amount of fees required for filing an action (2.(2) of theattached explanation; Article 19 of the Civil Conciliation Act; 5, paragraph (1) of the Act
on Costs of Civil Procedure).
If an action is filed within the prescribed period after conciliation ends unsuccessfully,
the effect of interruption (postponement of completion) of prescription by reason of thefiling of a petition for conciliation is maintained (Article 151 of the Civil Code; Article
147 of the amended Civil Code).
(2) Judge in charge
If IP conciliation ends unsuccessfully, and an IP lawsuit is filed with regard to the8claim for which conciliation has been sought, the Osaka District Court assigns the IP
lawsuit to a panel excluding the judge who served as the chief conciliator in the IPconciliation case.
If an IP litigation case that has been referred to conciliation is brought back tolitigation proceedings as a result of the revocation of the order of referral to conciliation,
the case is, in principle, handled by the judge who was previously in charge of the case.
(For information concerning the assignment of a judge in charge of IP conciliation
and a judge in charge of IP litigation with regard to the same case at the Tokyo District
Court, please refer to the Tokyo District Court website.)9