Practical cross-border insights into patent law

Patents

2022
12th Edition
Contributing Editor:

Katharine Stephens
Bird & Bird LLPISBN 978-1-83918-146-7
ISSN 2044-3129
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Patents 2022
12th Edition

Publisher
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Contributing Editor:

Katharine Stephens
Bird & Bird LLP

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Table of Contents

Expert Analysis Chapters
1

Litigating AI Patents
Katharine Stephens & Toby Bond, Bird & Bird LLP

8The Ascension of the Abstract Idea Exception
Scott A. Hogan, Reising Ethington P.C.

15

Means-Plus-Function Treatment for Computerised Inventions since Williamson v. Citrix Online, LLC
D. Stuart Bartow, Duane Morris LLP

19

The Effect of the FRAND Commitment on Remedies
Ken Adamo & Eugene Goryunov, Law Office of KRAdamo & Haynes and Boone

Q&A Chapters
23
31

39

Australia
Bird & Bird LLP: Jane Owen & Rebecca Currey
BrazilSiqueiraCastro Advogados: Eduardo Ribeiro Augusto,
Ornella Nasser & Giovanna Rocha Carneiro da Silva
CanadaBereskin & Parr LLP: Melanie Szweras & Anastassia
Trifonova

47

FranceGowling WLG: Céline Bey & Clémence Lapôtre

65

Germany
Gleiss Lutz: Dr. Matthias Sonntag & Dr. Herwig Lux

74

84

NorwayAcapo AS: Stein Gjøen & Helen Christie

151

RussiaPETOŠEVIĆ Russia: Natalia Osipenko & Mayya Pak

158

SwedenSetterwalls: Martin Levinsohn & Per Lidman

166

TaiwanTIPLO Attorneys-at-Law: J. K. Lin & H. G. Chen

176

ThailandRouse: Fabrice Mattei & Manoon Changchumni

IsraelGilat, Bareket & Co., Attorneys at Law /Reinhold Cohn Group: Adv. Eran Bareket

193

102

Japan
Chuo Sogo Law Office, P.C.: Naoko Nakatsukasa

128

145

184

Italy
FTCC Studio Legale Associato: Filippo Canu

120

MyanmarRouse: Fabrice Mattei & Moe Mynn Thu

India
LexOrbis: Rajeev Kumar, Varun Sharma &Joginder Singh

93

110

138

Korea
Lee International IP & Law: Yoon Suk Shin,
Dong-Hwan Kim, Hyang-Jin Kim & Kyu-Bok Lim
Malaysia
Shook Lin & Bok: Michael Soo Chow Ming, Wendy Lee
Wan Chieh, Nikko Aik Mun Shin & Annabelle Koh Jing Yi
MexicoOLIVARES: Daniel Sánchez & Sergio L. Olivares

TurkeyOfo Ventura Intellectual Property & Litigation:Özlem Futman & Yasemin Aktas
UkraineGorodissky & Partners (Ukraine) Law Firm, LLC:
Oleg Zhukhevych & Maksym Bocharov

203

United Arab Emirates
Cedar White Bradley IP LLC: David Harper

210

United Kingdom
Bird & Bird LLP: Katharine Stephens & Audrey Horton

222

USA
Mintz: Michael T. Renaud & Matthew A. Karambelas

230

VietnamPham & Associates: Pham Vu Khanh Toan

238

ZambiaDENTONS ERIC SILWAMBA, JALASI AND LINYAMALEGAL PRACTITIONERS: Joseph A. Jalasi, Jonathan
Chileshe & Andrew Simunyola

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Chapter 13

Japan

Japan

Chuo Sogo Law Office, P.C.

12

Patent Enforcement

1.1 Before what tribunals can a patent be enforced
against an infringer? Is there a choice between tribunals
and what would influence a claimant’s choice?

Patent rights can be enforced either in the Tokyo District Court,
which has exclusive jurisdiction over intellectual property casesin eastern Japan, or in the Osaka District Court, which has exclusive jurisdiction over such cases in western Japan. A defendant’s domicile or the place where the infringement occurreddetermines which of these courts has jurisdiction. In addition,
if the plaintiff seeks monetary damages, the plaintiff’s domicile will determine which of the two courts will have jurisdiction. Provisional injunctions may also be brought in the Tokyo
District Court or the Osaka District Court.
Patent cases brought before these two courts are heard by
their respective Intellectual Property Divisions that specialise
in intellectual property cases. Intellectual Property Divisions
have a long history going back to the 1960s. The Intellectual
Property High Court (“IP High Court”), which is a special
branch of the Tokyo High Court, has exclusive jurisdiction overappeals of patent cases from both the Osaka District Court andthe Tokyo District Court.
1.2 Can the parties be required to undertake mediation
before commencing court proceedings? Is mediationor arbitration a commonly used alternative to court
proceedings?

There are no such requirements. Neither mediation nor arbitration is commonly used with respect to patent enforcement.
1.3 Who is permitted to represent parties to a patentdispute in court?

Attorneys are qualified and permitted to represent parties toa patent dispute in court. In Japanese practice, patent agents(patent attorneys – benrishi ) are also permitted to representa client in: (1) revocation procedures or other cases (without
restriction); and (2) patent infringement cases, but only if he/she (x) has passed the specific examination, (y) has obtained
a supplementary registration of specific infringement lawsuit
counsel, and (z) represents the same client in the same courtcase with an attorney.

Naoko Nakatsukasa

1.4 What has to be done to commence proceedings,
what court fees have to be paid and how long doesit generally take for proceedings to reach trial fromcommencement?

The proceedings commence by filing a complaint with a courtof competent jurisdiction. A complaint should set out material facts and arguments that support the merits of each asserted
claim. When the complaint is filed, the plaintiff must pay a
court fee which varies depending on the amount in dispute.
For example, if the plaintiff seeks damages of 50,000,000 yen,
the court fee would be 170,000 yen. The amount in disputefor non-monetary remedies, such as injunctive relief, is calculated based on a formula set out by the court. A complaint isthen served on the defendant(s) by the court along with thesummons. The first court hearing usually occurs four to six
weeks after the complaint is filed.
1.5 Can a party be compelled to disclose relevant
documents or materials to its adversary either before orafter commencing proceedings, and if so, how?

Although Japan does not have an extensive American-style
discovery system, the law provides for document production incertain cases. It is generally each party’s responsibility to collectand submit evidence which it considers necessary to prove its caseor rebut the case of its adversary. However, under Article 105 of
the Patent Act, the court may, upon the motion of a party, order theother party to produce documents that are required to prove thealleged infringement or to calculate damages. In addition, under
Article 104-2 of the Patent Act, a defendant who denies that specificconditions of an article or process claimed by the plaintiff constitute alleged infringement is compelled to show evidence that clarifies the specific conditions of its act. Under Article 104, where thepatent covers a process for producing a product, where the productwas not publicly known prior to the filing of the patent application,
the defendant may be compelled to show evidence that its products
are produced by a process other than the patented process.
1.6 What are the steps each party must take pre-trial?
Is any technical evidence produced, and if so, how?

There is no specifically required pre-trial procedure. Certain
pre-trial motions such as Inquiry Prior to the Filing of an Action
and the Collection of Evidence Prior to the Filing of an Action areavailable under the Civil Procedure Code (Article 132-2 and Article132-4). The scope of pre-trial activities is generally documentary.

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1.7 How are arguments and evidence presented at thetrial? Can a party change its pleaded arguments before
and/or at trial?

only by the Constitution and the laws. However, as a matterof practice, judges tend to be bound by precedents, to promotelegal stability.

Arguments and evidence are presented by each party at eachcourt hearing, which takes place once every four to six weeks(see question 1.8), generally based only on documents. A party
can change its pleaded arguments unless the court finds that (i)under Article 157 of the Civil Procedure Code, the new argument has been presented after the submission deadline either
intentionally or through gross negligence and that allowing the
new argument would delay the conclusion of litigation, or (ii) theprior argument is found to constitute an admission of arguments
or facts presented by the adversary.

1.12 Are there specialist judges or hearing officers, andif so, do they have a technical background?

1.8 How long does the trial generally last and how longis it before a judgment is made available?

Intensive hearings are not conducted. It generally takes 12–24
months from the filing of a complaint until a first instance judgment is issued. During this period, a court hearing normallytakes place once every four to six weeks. Each court hearing
lasts 30–60 minutes. In a patent infringement case, proceedings are managed in accordance with guidelines set out by the
court. Courts have adopted a two-phase proceeding format:
the court first examines whether the alleged infringement has
occurred (stage of infringement examination); and then, if an
infringement has been found, the court moves to the secondphase proceedings where the amount of damages are assessed(stage of assessment of damages).

Judges of the IP High Court and the Intellectual Property
Divisions in Tokyo and Osaka District Courts (see question 1.1)
are special judges who handle only IP cases. Although they haveconsiderable experience in IP matters, very few have a technicalbackground. Experts with knowledge and experience in relevant fields are asked to participate as technical advisors. The
court that hears the case designates the most suitable experts,
including university professors and researchers (approximately
60% of the total) and researchers of private corporations (12%of the total), on a case-by-case basis. They provide judges andthe parties with explanations on technical matters involved in
the case, and may participate in proceedings to clarify issues,
help examine evidence or assist in settlement conferences.
Unlike technical advisors who are assigned to each case, judicial
research officials participate in proceedings of all cases relating
to IP matters and carry out necessary technical research.
1.13 What interest must a party have to bring (i)infringement, (ii) revocation, and (iii) declaratory
proceedings?

(i)

1.9 Is there any alternative shorter, flexible or
streamlined procedure available? If so, what are
the criteria for eligibility and what is the impact onprocedure and overall timing to trial?

There is no such procedure available.
1.10 Are judgments made available to the public? If not
as a matter of course, can third parties request copies of
the judgment?

Any person desiring to have access to a case record, including a
judgment, is entitled to file a request with the clerk of the court,
specifying the case number and the names of the parties to thecase. However, only an interested party can request a copy of acase record including a judgment. In addition, the courts releaseon their website certain judgments that they consider carry
important precedential value. Selected IP-related judgments areavailable on the IP Judgment Database on the courts’ websites(in Japanese only) and on the IP High Court website (in both
Japanese and English). The Japan Patent Office website also
provides, in both Japanese and English, selected appellate decisions against the examiner’s decisions.
1.11 Are courts obliged to follow precedents fromprevious similar cases as a matter of binding or
persuasive authority? Are decisions of any otherjurisdictions of persuasive authority?

Japan is a civil law country, hence courts are not legally obliged
to follow precedents from previous cases. Article 76, Paragraph
3 of the Constitution of Japan states that judges shall be boundPatents 2022

(ii)

To bring an action for infringement, a party must be theowner of a patent or an exclusive licensee whose interest isregistered with the Japan Patent Office (senyo-jisshiken-sha).
Although jointly owned patents may not be assigned,
pledged or licensed without the consent of all of the joint
owners, each co-owner has a separate, independent right tobring an infringement suit and seek injunctions based onsuch co-owner’s interest in the patent. Unregistered exclusive licensees may make demands for monetary damages,
but may not seek injunctions (there is some debate on thisissue, but no court decision has yet addressed it to date).
Revocation proceedings are not available through thecourts. A party seeking a patent revocation must file avalidity challenge with the Japan Patent Office. However,a defendant in an infringement litigation in court canraise invalidity as a defence and, if the judge finds that thepatent should be invalidated, the judge will so rule in thedecision, and will not allow enforcement of the patent. It
has been a general practice in Japan for defendants to raise
invalidity defence in infringement litigation and, at thesame time, file a revocation proceeding in the Japan Patent
Office. It should be noted that, under the rule applicablefrom April 2012, in cases where a defendant files a revocation proceeding in the Japan Patent Office, a request forcorrection of the patent cannot be filed but only be raised
in a Trial for Invalidation proceeding within a limited time
period (see question 2.1).

1.14 If declarations are available, can they (i) address
non-infringement, and/or (ii) claim coverage over atechnical standard or hypothetical activity?

Although filing separate lawsuits to confirm certain status,
such as status to file an application of the patent, is possible,
declaratory proceedings in patent infringement litigation are notavailable.

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1.15 Can a party be liable for infringement as asecondary (as opposed to primary) infringer? Can a party
infringe by supplying part of, but not all of, the infringing
product or process?

1.19 Is it a defence to infringement by equivalence thatthe equivalent would have lacked novelty or inventive
step over the prior art at the priority date of the patent(the “Formstein defence”)?

Yes. The following acts are deemed to constitute patent
infringement:■
the manufacture, sale, import, etc., as a business, of a partof or entire product to be used exclusively for the manufacturing of a patented product or use in a patented process(Article 101-1, 101-4 of the Patent Act); and■the manufacture, sale, import, etc., as a business, of a partof or entire product (excluding products widely distributed in Japan) to be used for the manufacture of a patented
product or use of a patented process and indispensable
for solving a problem by an invention, knowing thatsuch invention is patented and that a part of or the entire
product is to be used for the manufacturing, etc. of theinvention (Articles 101-2, 101-5 of the Patent Act).

Yes. See the fourth requirement of infringement under thedoctrine of equivalents in question 1.17.

1.16 Can a party be liable for infringement of a process
patent by importing the product when the process iscarried on outside the jurisdiction?

1.21 Are infringement proceedings stayed pending
resolution of validity in another court or the Patent Office?

If the patent covers the process for producing a product,
importing the product when such process is carried on outsideof Japan constitutes patent infringement.
1.17 Does the scope of protection of a patent claim
extend to non-literal equivalents (a) in the context ofchallenges to validity, and (b) in relation to infringement?

The scope of protection of a patent claim extends to non-literalequivalents in relation to infringement but not in the context ofchallenges to validity. Under the doctrine of equivalents, a productor process that does not literally infringe on a claim may still befound to infringe on it if all of the following five requirements are
satisfied: (i) the different part is not essential to the invention; (ii)the replacement of such part still achieves the objectives of theclaimed invention, as well as the function and effect of the invention; (iii) the replacement of such part would have been obvious
to those skilled in the art at the time of the manufacturing or saleof the allegedly infringing product or process; (iv) the allegedly
infringing product or process was novel or was not obvious inlight of prior art at the time of the filing of the invention; and (v)there are no particular circumstances showing that the allegedly
infringing product or process was intentionally excluded from thescope of the claim during prosecution.

1.20 Other than lack of novelty and inventive step, what
are the grounds for invalidity of a patent?

Other grounds for invalidity include: (i) lack of industrial applicability; (ii) insufficiency of disclosure in a written description(lack of enablement); (iii) lack of support of the scope of claimby the descriptions and drawings; (iv) violation of public order,
morality or public health; (v) in case of jointly owned application, lack of filing by all the co-owners; and (vi) grant of thepatent to a person who is not entitled to it.

No. Although the validity challenge can be raised both in the
court and at the Japan Patent Office, under Article 104-4 of the
Patent Act, once a judgment of infringement becomes final andbinding, a subsequent decision for revocation at the Japan Patent
Office has no effect on the earlier final court judgment. Also,if a decision to invalidate a patent at the Japan Patent Officehas become final and binding prior to a court’s judgment (i.e.,either the patentee did not appeal to the IP High Court, or the
IP High Court affirmed the decision of the Japan Patent Office),the patent is deemed never to have existed.
1.22 What other grounds of defence can be raised inaddition to non-infringement or invalidity?

Other grounds of defence in addition to non-infringement
or invalidity are: (i) grant of a statutory licence due to a prioruser right; (ii) use of the patented invention for experimental
or research purposes; and (iii) exhaustion of patent rights. An
experimental use defence covers the use of a patented invention in a clinical trial necessary for filing an application for theapproval of generic drugs. There is some debate over whether
the use of a research tool patent constitutes an infringement, but
no court decision has yet been rendered on this issue.
1.23 (a) Are preliminary injunctions available on (i) an
ex parte basis, or (ii) an inter partes basis? In each case,what is the basis on which they are granted and is there arequirement for a bond? Is it possible to file protective letterswith the court to protect against ex parte injunctions? (b) Are
final injunctions available? (c) Is a public interest defence
available to prevent the grant of injunctions where theinfringed patent is for a life-saving drug or medical device?

1.18 Can a defence of patent invalidity be raised, and if
so, how? Are there restrictions on such a defence e.g.
where there is a pending opposition? Are the issues ofvalidity and infringement heard in the same proceedings
or are they bifurcated?

Patent invalidity can be raised as a defence in a patent litigation
lawsuit. It may be raised regardless of whether there is a pending
opposition at the Japan Patent Office. The judge generally instructs
the defendant as to when to submit such defence, if at all. An invalidity defence may be dismissed if (i) it has been presented intentionally or through gross negligence after the deadline for doing
so and it would delay the proceedings, or (ii) it is submitted solely
for the purpose of unreasonably delaying the proceedings. Issuesof validity and infringement are heard in the same proceedings.

(a)

(b)

Preliminary injunctions are available on an inter partes basis
in cases where two requirements are met, namely: (i) the
court finds prima facie evidence of infringement; and (ii) it
is necessary to avoid substantial detriment or imminent
danger to the patentee. A bond must be posted.
Final injunctions may be available where: (i) the court
finds infringement; and (ii) the infringing activities are still
carried on by the defendant or are likely to be carried on.

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(c)

Theoretically, a public interest defence is available where
the grant of injunctions is recognised as an abuse of rights.
However, compulsory licensing is considered a measure tobalance the exercise of right by the patentee and the public
interest.
1.24 Are damages or an account of profits assessedwith the issues of infringement/validity or separately?
On what basis are damages or an account of profits
assessed? Are punitive damages available?

Damages or an account of profits are accessed separately after theissues of infringement/validity. Courts have adopted a two-phaseproceeding format: the court first examines whether the alleged
infringement has occurred (stage of infringement examination);and then, if an infringement has been found, the court moves tothe second-phase of proceedings where the amount of damages
are assessed (stage of assessment of damages). The patentee may
claim the following damages from the infringer: (i) the profit per
product that would have been sold by the patentee multiplied by
the amount or number of products actually sold by the infringer;(ii) the profits earned by the infringer; or (iii) the amount equivalent to the royalty to which the patentee would have been entitled. Under the Patent Act, those who infringe on a patent rightare presumed to be negligent when committing the infringing act,
even if they had no actual knowledge of the existence of the patent.
Accordingly, damages start to accrue upon the commencement of
the infringing act after a patent is granted. Punitive damages are
not available.
1.25 How are orders of the court enforced (whether they
be for an injunction, an award of damages or for any
other relief)?

■

■

■

An injunction is enforced by means of an Indirect Compulsory
Execution, whereby the court orders the obligor to pay the
obligee a certain amount of money that is found to bereasonable for securing performance of the obligation.
An order of disposal of products constituting infringement
or the removal of facilities used for the infringement isenforced by the measure of the Substitute Execution, whereby
the court allows the obligee to execute such disposal orremoval as a substitute for the obligor.
An award of damages is enforced by the Compulsory Execution
where the obligee can seize the assets of the obligor.
1.26 What other form of relief can be obtained for patent
infringement? Would the tribunal consider granting
cross-border relief?

Together with seeking injunctive relief, a patentee may seekother measures necessary to prevent the infringement, including
disposal of products constituting such infringement and removal
of facilities used for the infringement. Cross-border relief by theJapanese court is not available, but a foreign judgment may be
enforced if all of the conditions stated in Article 118 of the Civil
Procedure Code are met.
1.27 How common is settlement of infringement
proceedings prior to trial?

Around 40–50% of cases are settled prior to the first instancejudgment.
Patents 2022

1.28 After what period is a claim for patent infringement
time-barred?

Injunctive relief is available as long as a patent is validly registered and has not expired. A claim to seek monetary damages
is time-barred three years after a patentee becomes aware of theinfringement and the identity of the infringer, or 20 years after
the infringement takes place, whichever comes earlier. In cases
where an applicant seeks compensation by sending a warning
letter to an alleged infringer after publication of an application,such claim is time-barred three years after a patent is granted.
In addition, patentees’ claims for monetary damages equivalent
to reasonable royalties based on unjust enrichment grounds are
subject to a 10-year statute of limitations.
1.29 Is there a right of appeal from a first instancejudgment, and if so, is it a right to contest all aspects of
the judgment?

A first instance judgment of the Tokyo District Court or the
Osaka District Court can be appealed to the IP High Court,
which is the exclusive court to hear such appeals. It is theconcerned party’s right to contest any and all aspects of thejudgment.
1.30 What effect does an appeal have on the awardof: (i) an injunction; (ii) an enquiry as to damages oran account of profits; or (iii) an order that a patent be
revoked?

When an appeal or a motion for complaint is filed for the awardof: (i) an injunction; (ii) an enquiry as to damages; or (iii) an
order that a patent be revoked, the competent court for suchappeal arranges issues and evidence, examines evidence andfinds facts. The court, after examining the facts and the application of law by the prior instance, renders a decision (i) revoking
the judgment or an order in prior instance, or (ii) dismissing anappeal or a motion.
1.31 Is an appeal by way of a review or a rehearing? Can
new evidence be adduced on appeal?

Proceedings in an appeal are a continuation of those in the first
instance. New evidence can be adduced.
1.32 How long does it usually take for an appeal to beheard?

The first court hearing on appeal proceedings usually occurs
three to four months after an appeal is filed.
1.33 How many levels of appeal are there? Is there areright to a second level of appeal? How often in practiceis there a second level of appeal in patent cases?

A party dissatisfied with a decision of an appeal court may thenappeal to the final appellate court. In principle, the Supreme
Court handles appeals against a judgment rendered by a highcourt. A final appeal may only be filed on specific limited
grounds as stipulated under the Code of Civil Procedure.

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1.34 What are the typical costs of proceedings to a first
instance judgment on: (i) infringement; and (ii) validity?
How much of such costs are recoverable from the losing
party? What are the typical costs of an appeal and arethey recoverable?

The typical costs of proceedings up to a first instance judgment
on both infringement and validity include: (i) court fees; and(ii) attorneys’ fees. Court fees vary depending on the amountinvolved in a dispute (see question 1.4). Court fees paid to thecourt can be recovered from the losing party by filing a petition for determination of such fees. The amount of the attorneys’ fees depends on the complexity of the case and the amountin dispute. Some attorneys charge on an hourly basis in cases
involving patent infringement or invalidity, while others charge(i) a fixed initial fee, and (ii) contingent fees payable if their clientsprevail. Attorneys’ fees are not recoverable from the losing party.
However, the court generally awards approximately 10% of theadmitted amount in dispute to the patentee as part of damages.
Outlines of the typical costs of an appeal are about the same.

22

Patent Amendment

2.1 Can a patent be amended ex parte after grant, and if
so, how?

Yes. A patent can be amended after having been granted by filinga request for a Correction Trial with the Japan Patent Office.
Corrections, limited in scope, can be made on claims, descriptions, or drawings attached to the application (see question 2.3).
It should be noted that, under the rule applicable from April
2012, a request for a Correction Trial may not be filed while any
revocation proceedings or opposition proceedings are pending;however, as an alternative, a patentee can request a correction in
a Trial for Invalidation proceeding within a limited time period
designated by the examiner.
2.2 Can a patent be amended in inter partes revocation/
invalidity proceedings?

A patentee can file a request of correction in a Trial forInvalidation proceeding only within a limited time period designated by the examiner.
2.3 Are there any constraints upon the amendmentsthat may be made?

The scope of correction is limited to: (i) narrowing the scopeof claims; (ii) correcting errors or incorrect translations; (iii) clarifying ambiguous statements; or (iv) correcting a statement ofclaims which cites other statement of claims to untie such citation.
Furthermore, corrections cannot exceed the scope of disclosurein the application and may not substantially enlarge or alter thescope of claims. In a Correction Trial (but not in a correction in
a Trial for Invalidation proceedings), claims can only be amended
to the extent that they are still patentable after the amendments.

3 2 Licensing
3.1 Are there any laws which limit the terms uponwhich parties may agree a patent licence?

The Antimonopoly Act limits certain terms in patent licenceagreements. For example, terms that restrict prices may violate theAntimonopoly Act and thus may not be included in a patent licence.
In addition, a provision requiring the licensee to assign all rights or
grant an exclusive licence to the licensor for any improvement attributable to the licensee is also considered to be an antitrust violation.
Moreover, restrictions on buyers, raw materials and components or
distributors may violate the Antimonopoly Act, if such terms arefound to harm fair competition in the relevant market and no reasonable grounds for such restrictions are found. Additional details andexamples of these and other potential violations are discussed in the
Guidelines for the Use of Intellectual Property under the Antimonopoly Act issued
by the Japan Fair Trade Commission (JFTC). An English version isavailable on the JFTC’s website.
3.2 Can a patent be the subject of a compulsory
licence, and if so, how are the terms settled and how
common is this type of licence?

A compulsory licence may be granted as (i) a statutory non-exclusive licence, or (ii) an awarded non-exclusive licence. A statutory non-exclusive licence is granted if a prior user right is foundwhen a person unknowingly used the invention in its businessor in substantial preparations for business prior to the filing of
the patent. In cases involving a prior user right, the payment ofroyalties is not required. Another example could arise when aperson unknowingly uses an invalidated patented invention inits business or in substantial preparations for business prior to
the registration of the request for a Trial for Invalidation. In
such a case, the licensee is required to pay a reasonable royalty.
An awarded non-exclusive licence is granted when a person
makes a request to a patentee to use an invention that has notbeen sufficiently and continuously used for three years or longer.
If an agreement is not reached between the parties, the person
desiring to use the invention may request the Commissioner of
the Japan Patent Office for a grant of a non-exclusive licence.
The grant would specify the scope of the licence and the amountof the royalty. Another example would be a licence concerning
public interests or with dependent inventions. However,awarded non-exclusive licences have rarely been requested.

4 2 Patent Term Extension
4.1 Can the term of a patent be extended, and if so, (i)on what grounds, and (ii) for how long?

Patents on pharmaceutical products and agrochemicals may be
extended for up to five years, subject to regulatory approval inboth cases.

52

Patent Prosecution and Opposition

5.1 Are all types of subject matter patentable, and if
not, what types are excluded?

The Patent Act recognises inventions as “highly advanced creations of technical ideas utilising the laws of nature”. Therefore,
ideas that do not utilise the laws of nature, such as simple mathematical theories or formulae, are not patentable. Because
an invention must be a creation of technical ideas, the mere
discovery of living things or non-living substances is not patentable. However, a computer program may be patentable if it
expresses information processing by software cooperating withhardware resources. A business method may be patentable if
it is implemented by using a computer program. Products of© Published and reproduced with kind permission by Global Legal Group Ltd, London

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genetic engineering such as genes, vectors, recombinant vectors,
proteins, and monoclonal antibodies are patentable.
5.2 Is there a duty to the Patent Office to disclose
prejudicial prior disclosures or documents? If so, what
are the consequences of failure to comply with the duty?

Under Article 36(4)-2 of the Patent Act, applicants are required
to disclose any prior art references known to the applicants atthe time of the filing. In addition, the examiner may request theapplicant to submit additional prior art references and failure to
do so may result in a rejection of the application by the examiner. However, there is no affirmative legal duty to submit prejudicial prior art to the examiner.
5.3 May the grant of a patent by the Patent Office be
opposed by a third party, and if so, when can this be done?

The grant of a patent by the Japan Patent Office may be challenged by a third party in (i) an opposition to a granted patent(“Opposition”), or (ii) a Trial for Invalidation, both of which are
to be brought before the Japan Patent Office.
The Opposition mechanism was once abolished but subsequently re-adopted in 2014, and has been available since April 1,
2015. Any third party who desires to oppose a granted patentcan file an Opposition before the Japan Patent Office within six
months after the issuance of notice in the Official Gazette for thepatent. The grounds for Opposition are the same as the grounds
for invalidity (see question 1.20), but the grounds in connection
with ownership of a patent such as a false inventorship or violationof joint application by co-owners are excluded. If the examiners
at the Japan Patent Office find that a patent should be revoked, apreliminary revocation notice will be given to the patentee. The
patentee may then rebut such preliminary notice by submitting an
opinion letter and may request to make corrections to the claims,
specifications, or drawings of the patent. The patentee is entitled to appeal to the IP High Court against a revocation decisionby the Japan Patent Office; however, no appeal can be brought
against the decision to maintain the patent.
Trial for Invalidation is also a proceeding before the Japan Patent
Office to invalidate a patent. However, the standing to file an application for a Trial for Invalidation is limited to interested parties,
such as an alleged infringer. The standing to apply for a Trial forInvalidation based on the ownership of a patent is limited to a partyor parties who have the right to obtain the patent. There is no time
limitation for the filing of an application for a Trial for Invalidation.
A party dissatisfied with a decision to invalidate or maintain apatent is entitled to appeal it to the IP High Court.
5.4 Is there a right of appeal from a decision of the
Patent Office, and if so, to whom?

An appeal must be brought before a panel of administrative
judges at the Japan Patent Office. There is a right of appeal
from a decision of examiners at the Japan Patent Office under
the following circumstances:■
An applicant who has received a decision rejecting a patentapplication has the right to file a request for a trial challenging such decision of refusal.
■
An interested party (see question 5.3) who is dissatisfied
with a decision to grant a patent is entitled to file for a Trial
for Invalidation.

Patents 2022■

An interested party who is dissatisfied with a decision to
grant an extension of the patent is entitled to file for a Trial
for Invalidation of an extended registration.
■
A patentee may file a request for a Correction Trial to seek
approval for the correction of the descriptions, claims ordrawings in the patent application.
Any appellate decision made by a panel of administrative
judges at the Japan Patent Office may be appealed to the IP High
Court.
5.5 How are disputes over entitlement to priority andownership of the invention resolved?

Under Article 74(1) of the Patent Act, a true inventor who has
the legitimate right to obtain a patent may file a suit to request an
assignment of the patent by the patentee (a false owner). If suchtransfer is ordered by the court and registered, the patent right atissue is deemed to have belonged to the true inventor from the
beginning. A person challenging the ownership of an invention
may also file for a Trial for Invalidation with the Japan Patent
Office and assert that the patent should be invalidated on the
grounds that it has been granted to the wrong person.
5.6 Is there a “grace period” in your jurisdiction, and if
so, how long is it?

Yes. There is a one-year grace period in Japan. Either an action
against the will of the inventor or an action by the inventor,
taken within the one-year period before an application for apatent, may be granted an exception for lack of novelty.
5.7

What is the term of a patent?

A patent expires 20 years after the filing of an application for it.
Patents for pharmaceutical products and agrochemicals may be
extended for an additional five-year period.
5.8

Is double patenting allowed?

Double patenting is not allowed in Japan.

62

Border Control Measures

6.1 Is there any mechanism for seizing or preventing
the importation of infringing products, and if so, howquickly are such measures resolved?

Japan Customs (“Customs”) enforces against entries of goods
infringing on intellectual property rights at the border. A
patentee can request Customs to initiate Identification
Procedures where Customs detects infringing goods in imports
or exports. If such request is filed with Customs, details of therequest are published on Customs’ website. When suspected
goods are detected, Customs notifies the patentee and theimporter of relevant information. Both parties are entitled tohave the opportunity to submit their opinions and evidence
within 10 working days after receiving a formal “Notificationof Initiation Letter”. The patentee may conduct a sample examination on condition that all the requirements for such procedure are satisfied and a bond is posted. Importers, on the other© Published and reproduced with kind permission by Global Legal Group Ltd, London

107

108

Japan

hand, may follow the practice of Voluntary Disposal. Based on
the opinions and evidence from both parties, and the opinionsfrom experts who may be appointed by Customs, Customs will
determine whether or not the suspected goods infringe on thepatent’s rights. Such determinations are expected to be madewithin one month. If the decision that the goods infringe on
the patent becomes final, Customs may confiscate and destroy
the infringing goods.

72

Antitrust Law and Inequitable Conduct

7.1 Can antitrust law be deployed to prevent relief forpatent infringement being granted?

Defences based on antitrust laws are rarely raised.
7.2 What limitations are put on patent licensing due toantitrust law?

See question 3.1 above.
7.3 In cases involving standard essential patents, aretechnical trials on patent validity and infringement heard
separately from proceedings relating to the assessmentof fair reasonable and non-discriminatory (FRAND)
licences? Do courts set FRAND terms (or would they doso in principle)? Do courts grant FRAND injunctions, i.e.
final injunctions against patent infringement unless anduntil defendants enter into a FRAND licence?

Yes. Trials on patent validity and infringement are heard separately from proceedings relating to the assessment of FRAND
licences. Courts may set FRAND terms if it is necessary torender a decision in dispute. Courts would grant FRAND injunctions against patent infringement but not on the cases where thealleged infringer is willing to receive a FRAND licence.

82

Current Developments

been sold by the patentee multiplied by the amount or numberof products actually sold by the infringer within the limits of theability of the patentee to work the patented invention, provided,
however, that if there are circumstances where the patentee could
not have sold all or a part of such products, an amount of suchproducts are deducted from the damages. On February 28, 2020,
the Grand Panel of the IP High Court rendered a decision in relation to damages under Article 102-1, holding that: (i) “productsthat would have been sold by the patentee” only need to be products of the patentee that compete with the infringing products;(ii) “ability of the patentee to work” only needs to be a potential
ability and the ability to work exists if the product can be suppliedby subcontracting or the like; and (iii) “circumstances the patentee
could not have sold” are, for example, the presence of a difference in the business forms, prices between the patentee and theinfringer, presence of other competitive products in the market,
sales efforts of the infringer, and presence of differences in performances of the infringing products and the products of the patentee.
8.2 Are there any significant developments expected in
the next year?

There is no pending case at the Grand Panel of the IP High
Court at this moment (May 2021).
8.3 Are there any general practice or enforcement
trends that have become apparent in your jurisdiction
over the last year or so?

There have been an increasing number of patent infringement caseswith findings of infringement under the doctrine of equivalents.
The first requirement (i.e., that “the different part be not essential
to the invention” – see questions 1.17 and 8.1) has been the focusof the debate. The determination of what constitutes “the essential part” tends to be an abstract concept, making it more difficult
to apply the doctrine. The parties or judges try to deal with theconcept by making an analogy to prior art, to avoid the interpretation of the essential part of the invention becoming too broad.

8.1 What have been the significant developments inrelation to patents in the last year?

Under Article 102-1 of the Patent Act, the patentee may claim thedamages from the infringer the profit per product that would have

© Published and reproduced with kind permission by Global Legal Group Ltd, London

Patents 2022

Chuo Sogo Law Office, P.C.

Naoko Nakatsukasa is a partner at Chuo Sogo Law Office, P.C., admitted to practise law in Japan and New York. She assists clients withlitigation and dispute resolution of intellectual property and general corporate matters, and counsels clients concerning patent-, trade mark-,
copyright-, design- and unfair competition-related issues. She has substantial experience in domestic and international business transactions. Naoko serves as a director and corporate auditor of listed companies in Japan. Her publications include “Legal Consultation on
Patents” (co-author), “How to consider an Invention’s effect on its intended uses in the examination of non-obviousness”, “Equivalent Infringement
and Dismissal of Allegations Advanced Out of Time” and “Indirect Infringement on Non-Exclusive Use Products and Exercise of An Injunction”. Naoko
graduated from Kyoto University in 1992 and was admitted to the Japanese Bar in 1994. She received an LL.M. degree from Northwestern
Pritzker School of Law in 2005. Naoko is fluent in both Japanese and English.
Chuo Sogo Law Office, P.C.
Kohda Building, 11th Floor
2-10-2 Nishi-Tenma, Kita-ku
Osaka
Japan

Tel:
Email:
URL:+81 6 6365 8111
nakatsukasa_n@clo.gr.jp
www.clo.jp/english

Chuo Sogo Law Office, P.C. is an international business law firm founded
in 1968 by Tsugujiro Nakatsukasa. Within the scope of its corporate,commercial and litigation practices, the firm assists clients with intellectual property matters, including patent, trade mark, copyright, and unfair
competition matters, as well as related litigation and dispute resolution.
The firm has three offices in Japan: Osaka; Tokyo; and Kyoto.
www.clo.jp/english

Patents 2022

© Published and reproduced with kind permission by Global Legal Group Ltd, London

109

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