9 The Positive Impact of Intellectual Property
Harmonization on Diversity of National Regulations ofInternational Private Law(*)
Invited Researcher: Petr KOSIK(**)
Intellectual property is a legal area, which is regulated by a number international treaties. One of mostimportant international treaties is TRIPS. According to this treaty each member shall award the nationals ofother member states treatment which is no less favorable than the treatment offered to its own nationals.
Currently, patent infringements with certain international aspects are rapidly increasing. Cases, dubbed“patent wars” are becoming more and more common all around the world. The law governing these disputes isusually either elected by the parties or determined in compliance with the EU Regulations known as Rome I andRome II.
The aim of this research is to compare patent cases with international aspects in Japan, EPO countries
and the European Union (with the focus what is possible direct to preparing Unitary Patent Court). The
research will focus on the analysis of law enforcement with an international aspect. The choice of law rules
which may have an important impact on the result of IP cases with international aspects will be analyzed. Also
the most frequently cited Japanese IP cases will be analyzed. One part of the research will focus on the issue of
exhaustion of rights with international element in Japan and compare this issue with cases and theory in theEuropean Union. This research should point out that the harmonization of intellectual property law will have apositive impact on the diversity of national private international law regulations to Hague Conference Project
for a Global Convention on Jurisdiction, Recognition and Enforcement in Civil and Commercial Matters – An
update including specific proposals for new legislation.

I

Introductiongroups are 1) jurisdiction 2) the doctrine ofequivalence and 3) the exhaustion of rights.

The first step dels with the national andinternational historical background of the issue ofintellectual property. The historical roots ofintellectual property can be traced back to ancient
Greece in 500 BC. “Modern intellectual property”
was however adopted in 1474 in the Republic ofVenice and continued through the United
Kingdom “Statute of Monopolies” (1623), theIndustrial Revolution, and the French patent
system of 1791 (revised in 1844). The
development of intellectual property in thenational field followed development in theinternational field. That development relates toprivate international law. International treaties
were adopted with respect to the principle ofterritoriality. Signing states are obligated to
impose the principles contained in these treatiesin their own legal culture. This research looked at
the national regulations in Japan, China and Korea
in Asia, and in the European Union and selectedstates of the European Union in particular. In thenext step this research focused on three issues
relating to intellectual property and with an
influence on private international law. TheseⅡ The
relationshipbetweenintellectual property law andinternational private law
The definition of intellectual property is
one of the first points. Intellectual property is a
big area which consists of copyright and industrial
property. Both of these groups include subgroups.
For example copyright includes literary works,
performances, phonograms, broadcasts andusually (with exceptions) computer programs.
Copyright law traditionally protected culturalproperty. Computer programs have been included
since 1985 (as a part of technical inventions). On
the other side in the USA and Japan it is possible
to protect software by patent. In Europe a similar
approach is only possible under certain
circumstances (software as part of an invention
implemented by a computer). Industrial property
includesinventions,industrial
designs,
trademarks and in the business field protection
against unfair competition (including brands andtrade secrets). It is necessary to define the areas(*) This is a summary of the report published under the Industrial Property Research Promotion Project FY2013
entrusted by the Japan Patent Office.
(**) Judge, District Court in Usit nad Labem, Czech Republic
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which are the point of interest of this research.
For that definition the TRIPS Agreement, Paris
Convention and Convention Establishing theWorld Intellectual Property Organization is used.
Private international law is based on theprinciple of territoriality. The reason behind thisprinciple is the fact that every state has its own
private international law. This kind of law isunified by international treaties (the best known
are the Hague Conventions about privateinternational
law).
Some
“supranational”
regulations also exist in the field of privateinternational law (and intellectual property law aswell). That “supranational” regulation is in theEuropean Union. Those regulations are known as
Brussels I, Brussels II (this regulation regulates
family law and for this reason is not a matter ofinterest of this research), Rome I and Rome II.
Privateinternationallawregulatesthejurisdictions which will be use in the concrete
cause and the kind of law which will be use as
well. Part of the focus of this research is on thequestion of exclusive jurisdiction.

Ⅲ International treaties relating tointellectual property rights andinternational treaties relating to
private international law– a comparison
International treaties are divided into thetwo basic areas. Those treaties are bilateral andmultilateral. Multilateral international treaties
can be further divided into those that are open to
new members and those that are closed. Anotherdistinction between multilateral treaties isregional (like EPC, ARIPO, OAPI and others) andglobal (like TRIPS, PCT and the WIPO
establishingconvention).
WIPO
divides
international treaties into three groups. These
groups are IP Protection where basic standards
are regulated (e.g. Paris Convention, Bern
Convention, Madrid Agreement and others),
GlobalProtection
Systems
regulatinginternational registration or filing (e.g. Budapest
Treaty; Hague Agreement; Lisbon Agreement;
Madrid Agreement (Marks); Madrid Protocol and
PCT) and Classification treaties creatingclassification systems (e.g. Locarno Agreement;
Nice Agreement; Strasbourg Agreement andVienna Agreement) 1.
Regional intellectual property treaties areimportant. One of the leading regional
international intellectual property organizations
established by the European Patent Convention is

the EPO (European Patent Organization). This
organization deals with patents throughout
Europe, and the force of this organization is in its
membership of the major states like Germany, theUnited Kingdom, France, Spain and Italy.
Furthermore Germany and the United Kingdom
are one of the world leaders in the intellectual
property field.
Out of the international treaties the mostimportant is the Paris Convention for theProtection of Industrial Property from 1883, theConvention Establishing the World Intellectual
Property Organization from 1967, the Patent
Cooperation Treaty (PCT) from 1984, theAgreement on Trade Related Aspect ofIntellectual Property Rights (TRIPS Agreement)from 1994, and the European Patent Convention.
The term industrial property is defined in
the Paris Convention and the minimum whichstates must follow and implement in theirdomestic laws is established by this treaty. The
principle of territoriality forms the basis of thistreaty. The establishment of WIPO is important
as well. It is a truly global organization in
intellectual property, very closely connected with
the PCT. The PCT is managed by WIPO and thattreaty is about the “easiest way” to get patents
around the world. That patents aren’t one patent
for the all Word. According EPC the EPO doesn’t
grant one patent for the all Europe (or member
states of the EPO) as well. Unified European
Patent is coming (with exceptions).

Ⅳ Japanese national treatment andCzech national treatment– a comparison
Japan has a special act about intellectual
property, the Chiteki Zaisan Kihon Hō Act No.
122 of 2002 (Intellectual Property Basic Act)
which sets out the strategic programme of theJapanese government with regard to intellectual
property and the establishment of Intellectual
Property Strategy Headquarters. Japan has anumber of legal regulations in this field, such as,
the Tokkyo Hō, Act No. 121 of 1959 (Patent Act),
Jitsuyō Shinan Hō, Act No. 123 of 1959 (Utility
Model Act); Ishō Hō, Act No. 125 of 1959 (DesignAct); Shōhyō Hō, Act No. 127 of 1959 (Trade MarkAct); and Fusei Kyōso Bōshi Hō Act No. 47 of 1993
(Unfair Competition Act). Copyrights are
generally contained in Chosaku ken Hō Act No. 48
of 1970 (Copyright Act). Litigation related to theenforcement of intellectual property is regulatedby Minji Soshō Hō Act No. 109 of 1996 (Code of

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Civil Procedure). Choice of law is regulated by
Hōno Tekiyō ni Tsūsoku Hō (the Act on the
General Rules of the Application of Laws) from2006. In the Czech Republic the basis forintellectual property is in the fundamental law –the Constitution, especially the part of theConstitution called the Charter of Fundamental
Rights and Freedoms. The international aspect ofintellectual property is regulated in art. 80 as a
special provision of Act No. 91/2012 Coll.,International Private Law. Procedures before theCzech Industrial Office are regulated by Act No.
500/2004 Coll.; Administrative Procedure Code.
Procedures before Administrative Courts inspecial administrative processes (see chapter 6 ofthis research paper for further details) areregulated by Act No. 150/2002 Coll.; Code of
Administrative Justice. Act No. 527/1990 Coll.; on
Inventions and Rationalization Proposals (this law
is like the patent acts of other states) which is a
special law about intellectual property. Other
basic laws relating to intellectual property are:
Act No. 121/2000 Coll., on Copyright and Rights
Related to Copyright and on Amendment of
Certain Acts (the Copyright Act)2, as well as laws
about industrial property as a part of intellectual
property. These are Act No. 441/2003 Coll., on
Trademarks; Act No. 478/1992 Coll., on Utility
Models; and Act No. 207/2000 Coll., on theProtection of Industrial Design and many others.
Business and civil law are also related tointellectual property. Both fields of law have been
regulated by the new civil code, Act No. 89/2012
Coll., Civil Code, since 1 January 2014. The newcivil code also regulates law which is connectedwith intellectual property, such as trade secrets
and competition.
Clearly Japan and the Czech Republic haveintellectual property and industrial property
regulated by numerous different laws and each ofthem comes from a different historical andphilosophical background.

Ⅴ Comparison of the European
Union and EPO with states withenhanced cooperation in Asia
(Japan, China and South Korea)
Private International Law
Private international law in Northeast Asia is
according to the principle of territoriality divided
into national treatment in separate countries. On
the other side in this region Japan, Korea andChina have relatively new systems of privateinternational law. Japanese private international

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is from 2001 and China adopt private internationallaw in 2011. In the European Union privateinternational law is regulated by the Brussels I
Regulation (2000); regarding jurisdiction and therecognition and enforcement of judgments in civil
and commercial matters. There are special
articles about intellectual property in thisRegulation (art. 22 para 4, 27 and 28). Applicablelaw is regulated in the Rome I Regulation (2007)– law applicable to contractual obligations and inRome II Regulation – law applicable innon-contractual obligations. In the Rome I
Regulation intellectual property is regulated
generally and does not have a special chapter.
Intellectual property is not excluded from that
regulation however and there are no limitations
regarding choice of law. Applicable law incontractual obligations is regularly based on thefreedom of choice of law - for contracts. The
Rome II Regulation about non-contractual
obligations has a special provision about the
infringement of intellectual property rights in art.
83. This article, which determines that remedies
in intellectual property cases are governed by thelaw of the country for which protection is soughtor the law of the country where the infringement
occurred. Article 8 para. 3 excludes freedom of
choice of law in the field of intellectual property.
Intellectual Property
Intellectual property in China is regulated
by separate laws such as the PRC4, Trademark
Law (adopted 1982) with later revisions andimplementing rules; PRC, Patent Law (adopted
1984) with later revisions and implementing
rules; PRC, Copyright Law (adopted 1990) withlater revisions and implementing rules; and PRC,
Anti-Unfair Competition Law (adopted 1993).
National treatment in Korea is currently
regulated by the Patent Act (adopted 2011); theUtility Model Act (adopted 2011); the Trade MarkAct (adopted 2011); the Design Protection Act(adopted 2011); the Copyright Act (adopted2011); and the Unfair Competition Prevention andTrade Secret Protection Act (adopted 2011).
Intellectual property in the European Union isregulated by Directive 2004/48/EC of theEuropean Parliament and of the Council of 29
April 2004 on the enforcement of intellectual
property rights. Intellectual property protectionis also covered in other regulations in theEuropean Union. These are Council Regulation(EC) No 207/2009 of 26 February 2009 on theCommunity trade mark; Council Regulation (EC)

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No 6/2002 of 12 December 2001 on Community
designs; Directive 96/9/EC of the European
Parliament and of the Council of 11 March 1996
on the legal protection of databases; Council
Directive of 14 May 1991 on the protection ofcomputer programs and Directive 98/71/EC of theEuropean Parliament and of the Council of 13
October 1998 on the legal protection of designs.
Directives are the minimum with which Member
States have to comply. In the European Union
every State regulates intellectual property by its
own laws and regulations. Council Regulations
are directly applicable as national law. The latest
developments in the European Union seek aunified patent system and a Unified Patent Courtin the European Union (or more precisely forStates with enhanced cooperation within theEuropean Union). That cooperation is regulatedby Council Decision No. 2011/167/EU of
10 March 2011 authorizing enhanced cooperationin the area of the creation of unitary patent
protection and by Regulation (EU) No 1257/2012of the European Parliament and of the Council of
17 December 2012 implementing enhanced
cooperation in the area of the creation of unitary
patent protection. The constitution of the Unified
Patent Court is based on the International
Agreement on a Unified Patent Court. This
Agreement has been signed by the States which
are able to cooperate and is now in the process ofentering into force. Preparations are currently
being made to establish this Unified Patent
Court5.

Ⅵ Disputes arising from intellectual
property law and international
private law maintained before theJapanese Patent Office (comparedwith the Czech Republic andselected EU countries, selected
decisions)
There are two basic forums before which
disputes in patent matters can be resolved. The
first is proceedings before the patent authority
and the second is trials before the courts.
Proceedings before the patent authority are usual
only for applications (typically patents ortrademarks) or disputes concerning validity.
Trials before court are usual for intellectual
property disputes regarding infringement. In the
Czech Republic proceedings before the patentauthority are an administrative process. Thisadministrative process includes appeal against
the first instance decision. It is possible to make aspecial administrative appeal to the Municipal
Court in Prague against a second instancedecision. It is then possible to make a cassation
complaint against the decision of the Municipal
Court in Prague. The Supreme Administrative
Court decides about such cassation complaints.
This is the administrative line. Trials regarding
compulsory licences are also included in theadministrative line but are not the focus of thisstudy. Patent infringement on the other hand isdecided through the civil law line. These cases
are decided by a special court, one chamber of theMunicipal Court in Prague. Appeals against thedecisions of that court go to the High Court inPrague. That court as the court of appeal also hasa special chamber. It is then possible to haverecourse to the Czech Supreme Court against a
High Court decision. There is no special chamber
for intellectual property in this court. In Germany
such litigation is typically an administrative
process before the Patent Authority similar to the
Czech Republic. There are two basic paths.
Administrative procedure before the German
Patent and Trade Mark Office and civil procedure.
As in Europe, Japan also has a two-path system.
One path is a procedure before the Japan Patent
Office (JPO) and the other a procedure before thecivil courts. “In Japan, the Patent Office had
exclusive jurisdiction regarding determinations ofvalidity of a patent until the laws were amended
in 2004 in view of the Supreme Court’s decisionin the Kilby decision6. Now the courts can decide
on an issue of validity of subject patent in an
infringement case 7 , although such a judgment
binds only the parties in the infringement case.8”
Selected disputes (doctrine of equivalence)
Disputes about the validity of patents anddisputes about patent infringement are common
in patent systems. Many problems (problematiccases), examples of disputes, have been based on
the doctrine of equivalence. The doctrine ofequivalence demonstrates the diversity of legal
opinions in different countries. This doctrine ofequivalence is very closely related to theprinciple of territoriality as one of thefundamental principles of international private law,which results in different states having different
solutions to the same questions. The problem of
the doctrine of equivalence is in that: “There isno harmonization and there are no similar
opinions” which could be fatal for the patent
owner or applicant. For the patent applicant there
are only two ways the patent authority or court
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/ INVENTION IS NOT PATENTABLE”, or“THIS
SOLUTIONIS
PATENTINFRINGEMENT / THIS SOLUTION IS NOTPATENT INFRINGEMENT”. The doctrine ofequivalence demonstrates the diversity of legal
opinions. The Epilady case in Europe and the Ball
Spin decision in Japan can be used as examples.
The Epilady case was decided in Germany, theNetherlands, Italy, Belgium, the United Kingdom,
Austria and France. This case illustrates thedifferent scopes of protection and claim
interpretation. The main questions in that casewas the possibility of replacing a substantial partof an invention. For that replacement a technicallyskilled person was not necessary as the task was
too simple. In Japan the question of the doctrineof equivalence is dealt with in the decision of theSupreme Court of Japan on 24 February 1998,
case no. 1994 (O) 1083 known as the Spin Ballcase. According to the Spin Ball case Japan’s
approach to patent claim interpretation is very
strict. According to Art. 69 EPC it is possible touse very limited patent claim interpretation,
while on the other hand according to the Supreme
Court in Japan in the Spin Ball decision it is notpossible at all. The Epilady case was about the
replacement of certain material by other material.
Is this solution patentable? If it is not patentable,
is it patent infringement? For demonstration
purposes the decision of the US Supreme Courtin the Hotchkiss v. Greenwood (1850)9 case canbe cited. This case held that it is not an invention
if is a change of material only (changing of a wooddoor handle to porcelain). A skilled person is able
to make that change without any special activity,
which is necessary for the invention process. In
Germany, the subject is not capable of patent
protection unless it is not possible to be createdby a professional without exercising inventive
activity. Only a skilled performance deserves areward in the form of patent protection. From theSpin Ball decision it is possible to deduce a
different approach in Japan. That decision is aboutsimilar technical solutions, specifically ballbearings placed in a robotic arm. According tothat decision it was possible to use similarsolutions and it was up to the applicant to decide
which solution to patent. If a third party could
easily replace part of the patent the patent holder
should have foreseen this and worded the patent
very carefully. The opinion of the IP High Courtin this case was different than the Supreme Courtin Tokyo. But in light of this case an applicant
from abroad must expect a different approach inJapan than in several countries in Europe.

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Ⅶ Lawsuits
arisingfrom
intellectual property law andinternational private law before
the Japanese courts (comparedwith the status in the Czech
Republic and selected EU
countries, selected decisions)
Validity and infringement of intellectual
property trials.
The validity of intellectual property isclosely connected with the registration principle,
which is in turn linked to exclusive jurisdiction.
The jurisdiction of the state where the right isregistered applies to registration cases orregistration validity cases relating to intellectual
property law and private international law (orEuropean private international law) (Art. 22 para
4). Nationality (or domicile / country ofregistration) in cases based on the registration
principle is not relevant (Art. 22 Brussels I
Regulation introduction). The registration
principle (and territoriality) is closely connected
to copyright according to UK law and US law asillustrated in Lucasfilm v. Ainsworth. The
question of territoriality relating to jurisdiction
was also dealt with in two famous decisions of theEuropean Court of Justice, namely decisions of
the ECJ C-81/87 (Daily Mail case) and C-366/10(IATA case). Another example from the industrial
property field is ECJ C-4/03 GAT v. LuK. Thatcase is a well-known decision about jurisdiction
based on the registration principle in theEuropean Union. Infringement of intellectual
property was decided in Japan in the Card
Reader case, number 2000 (Ju) no.580. Thisdecision is criticized in Japan by academic
authors.
Japan has a little different point of departureto the European approach. In Japan according to
the Card Reader case it is against public order touse (from Japan point of view) inappropriate
foreign law. In this case it was the law of theregistration country that applied. Probably thatapproach is because Japan is an island country
with no direct land neighbours. For Europeans it
is hard to understand the Card Reader decision.
Why is it against the public order to use foreign
patent law especially when the damage wasincurred according to the law of the registration
country? In Europe only in international private
cases is not possible to use foreign law.

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Ⅷ Lawsuits about the exhaustionof rights (compared with thestatus in the Czech Republic andselected EU countries, selected
decisions)Intellectual property rights (registered aswell as unregistered) usually give the creator
exclusive rights over the use of his creation for acertain time. Along with the owner's right to use
his product comes the right to transfer theintellectual property. Once the right is disposed of
it is “exhausted”. Exhaustion of rights is divided
into national exhaustion (which means only
goods placed on the market in the territory of thatmember with the consent of the rights holder canbe sold) or international exhaustion (whichmeans goods placed on the market anywhere in
the world with the consent of the rights holder canbe sold). The latter case gives rise to so-called“parallel importation” 10 . Regional exhaustion
also exists, such as the present Community
exhaustion in the European Union. Thisexhaustion is connected to the TRIPS agreement,
Article 4d in particular, and this is one ofexemptions
fromMost-Favoured-Nation
Treatment. The other exemptions are in Article
4a-c. In Japan the question of national exhaustion
was decided in BBS KRAFTFAHRZEUGTECHNIKAG V RACIMEX JAPAN KK; JAP AUTO
PRODUCTS KK (Case No. H-7 (O) 1988, dated 1
July 1997). The website of the University of
Melbourne, Melbourne school of law labelled thisdecision as a little controversial11. According tothis case patent rights in Japan are exhausted
when the patentee or a person equivalent thereto
assigns a patented product to a third party outside
Japan 12 . Regional exhaustion – Community
exhaustion was decided by the European Court ofJustice in Case 15/74 Centrafarm v. Sterling Drug.
In this case the court decided that if goods
protected by patent are sold in one Member State,
patent protection is exhausted in the other states
as well. In Case C-178/80 Merck v. Stephar the
ECJ held that it is the producer's responsibility if
he places his product in a country where he has
no patent protection. When he placed the goodson this market the patent right was exhausted and
it is not possible to require the same protection as
in the first market. Another case dealing with theexhaustion of rights was case C-19/84 Pharmon v.
Hoechst which is complicated by a compulsory
licence. For this reason the court found that itwas necessary to give the patent owner the
possibility to protect its product in anothermarket (where a patent was also granted).

Ⅸ Assessing the current state ofintellectual property law andprivate international law in thefield of litigation on intellectual
poperty rights
In patent litigation the first question thatneeds to be solved is the issue of jurisdiction.
The next question is applicable law.
In the area of jurisdiction (lex fori) it isimportant to determine whether the case will begoverned by general or exclusive jurisdiction.
Domicile or habitual residence is important in thecase of general jurisdiction. On the other hand theregistration principle is connected to exclusive
jurisdiction. The registration principle is based on
the principle of territoriality, because national
administrations grant registration of intellectual
property, as this is a decision of the national
administration authority. This principle isregulated expressis verbis in the European Union
regulation known as the Brussels I Regulation(Council Regulation (EC) No. 44/2001). Art. 22para 4 expressly mentions exclusive jurisdiction
with respect to intellectual property. The
Brussels regulation is very similar to Article 74
EPC. Exclusive jurisdiction applies in cases
where the rights are registered. This means thata foreign decision would be an interference withthe delegated authority of a sovereign state. The
word interference here means an administrativedecision about protection of any kind of
intellectual property. In Japan in the past thequestion of jurisdiction was solved by decisions
which were a little controversial from a European
point of view. A prime example was the Malaysia
Airlines case13, which was later modified by the
Family Inc Ltd v. Shin Miyahara14. These opinions
were further modified by the Civil Procedure
Code of 2002.
The current situation concerning lawsuits inthe field of international intellectual property isreally complicated. Japan has a different approach
to European counties, and intellectual property
owners must take into account that there are verysignificant differences. International intellectual
property policies are incorporated differently in
different states. It is impossible to say whichapproach is correct and which is incorrect. Everylegal system is based on the history, philosophy
and sociology of that particular country and thehistory and philosophy and sociology (social
structure) of every state is different. Some

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institutions are regulated by international treaties
while other are not. At this point it may benefit totouch on how the Hague Conventions regulate
general, specific and exclusive jurisdiction in
intellectual property cases. The unification ofthese principles relating to jurisdiction is often
criticised as a waiver of sovereignty. On the otherside it is about negotiation between states about
how this specific legal institute will be regulated.
If every state makes concessions the result might
be acceptable for all. If “the major players” in thefield of intellectual property come to a conclusion,
it will be good for the applicants and intellectual
property owners of many countries. Japan and theEuropean Union are two of these major players.

Ⅹ Assessing the current state ofintellectual property law andprivate international law in thefield of litigation on the exhaustionof rights
The exhaustion of rights and parallel imports
has a huge influence on business and inventions
with regard to international relations. Here theprinciple of territoriality will apply as well as inother intellectual property cases with aninternational element. In the BBS case theJapanese court interpreted the principle ofterritoriality according to Article 4bis para. 1 and
2 of the Paris Convention as follows: The
principle of territoriality with regard to patentsmeans that patent rights in each country are
subject to domestic legal provisions insofar as
establishment, transfer, and validity areconcerned. This means that patent rights only
have effect within the geographical limits of suchcountry 15 . The above can be derived frominterpretation of the Paris Convention. Only one
international treaty has any sentence “expressis
verbis” concerning the exhaustion of rights. This
is in article 6 of the TRIPS agreement16. This
article is connected to the principle of National
Treatment and Most-Favoured-Nation Treatment.
There is a unique situation in the European Union,
because of the united European market, where
there are four basic freedoms which are the basic
pillars of this united market. These pillars are thefree movement of goods 17 , free movement of
citizens (legal and natural persons) 18 , freemovement of services 19 and free movement of
capital 20 . Community exhaustion is sui generisinternational exhaustion. There could be a conflict
between community exhaustion and international
exhaustion. Art. 4 of the TRIPS Agreement
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exception in para. d) address this problem. The
European Union and the united market of theEuropean Union were established before theconclusion of the TRIPS Agreement.
The Japanese approach may open the door toparallel imports. Here it is necessary for
producers to be extremely careful when selling
any patent protected goods. The solution might
be to include provisions in agreements stipulatingthat exports to other countries are not allowed.
Only a famous (and possibly slightly controversial)decision from Japan and a few famous decisions
from the European Union have been shown here.
In these examples it is possible to see thedifferent opinions in different countries.

Ⅺ Recommendation regarding thecurrent situation
The decisions in similar cases in the field ofintellectual property are often too different. It is
first necessary to resolve the question ofjurisdiction. It is problematic for a foreign country
to accept the decision of another state (if it isabout the validity of registered intellectual
property). There is no big issue regarding thevalidity of court decisions between the parties
only. However the cross-border enforcement of
those decisions could be problematic. There aresome applicable international principles which areto some extent sufficient for the current situation,
however, it would be good if there were a special
international treaty regulating jurisdiction in thefield of intellectual property or if the Hague
project included in an international treaty about
jurisdiction a part about jurisdiction in intellectual
property. On the other hand according to theprinciple of territoriality, independent states havetheauthority
toregulatethemselves.
Harmonization and independence of counties
have two poles. One pole is harmonization (tohave as much as possible unified). That could besomething which is good for applicants and they
will have certainty about decisions on their matter.
The other side is the diversity of independent
states with their own historical, social, andphilosophical background. This is somethingwhich should be taken into account.
In case of the doctrine of equivalence and theexhaustion of rights, there is no international
regulation. In the case of the doctrine ofequivalence it could be a problem, because this
doctrine is not regulated expressis verbis in

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inter-state regulations. This is an academic topic
with an overlap in practice (and with significant
impact on participants). The exhaustion of rights
is a topic which could be regulated easily byinternational treaties. National states haveregulations about the exhaustion of rights and it
could be fruitful for international business if thisissue were unified. This unification could have an
economic impact on international business. The
unification of the topic of exhaustion of rights
could by one of the most important steps in theharmonization of intellectual property in the fieldof private international law.
1

http://www.wipo.int/treaties/en/ (accessed 24 January
2014)2
http://www.wipo.int/wipolex/en/details.jsp?id=962(accessed 16 January 2014)
3
Rome II Regulation Art. 8 (1) The law applicable to a
non-contractual obligation arising from an infringementof an intellectual property right shall be the law of thecountry for which protection is claimed. (2) In the caseof a non-contractual obligation arising from an
infringement of a unitary Community intellectual
property right, the law applicable shall, for any questionthat is not governed by the relevant Community
instrument, be the law of the country in which the actof infringement was committed. (3) The law applicable
under this Article may not be derogated from by anagreement pursuant to Article 14.
4
PRC – People’s Republic of China
5
http://www.unified-patent-court.org/ (accessed 22
January 2014)
6
Texas Instruments v. Fujitsu Ltd., judgment rendered on
11 April 2000, Supreme Court, Hei10 (o) 364, Minshu
Vol 54, No. 4, p. 1368. The decision held that a patentcannot be enforced under the theory of “abuse of rights”
if a clear ground for invalidity is found, even though thepatent had not yet been invalidated by the Japan Patent
Office (see para 3:37, “Historical Background and the
Kilby Decision”).
7
Patent Act, Act No.121 of. 1959, art 104ter (Japan)
8Abe, Ikubo & Katayama; Japanese patent litigation,
second edition; West and Thomson Reuters business,
London 2012, pg. 132
9U.S. Supreme Court, Hootchkiss v. Greenwood – 52 U.S.
11 How. 248 (1850)
http://supreme.justia.com/cases/federal/us/52/248/(accessed 15 January 2014).
10
Daniel Gervais; The TRIPS Agreement, draft history
and analysis, third edition; Thomson Reuters (Legal)
Limited, London 2008, pg. 19811
http://www.law.unimelb.edu.au/files/dmfile/download8eb71.pdf(accessed 9 December 2013).
12
Kaoru Kuroda and Eiji Katayama, Efforts to establish
clear standards for exhaustion in Japan, 7 Wash.J.L.
Tech. & Arts pg. 518,
http://digital.law.washington.edu/dspace-law/handle/17
73.1/1133 (accessed 9 December 2013)
13
Malaysia Airline System Berhad, 35 MINSHU 7-1224(Sup Ct, 16 October 1981)

14

Family Inc Ltd v. Shin Miyahara, 51 MINSHU 4055
(Sup Ct, 11 November 1997)
15
Thomas Hays, Case Note BBS Kraftfahrzeugtechnik
AG v. Racimex Japan KK; JAP Auto Products KK, Japan
opens the door to parallel imports of patented goods;
pg.5,
http://www.law.unimelb.edu.au/files/dmfile/download8eb71.pdf (accessed 9 December 2013)16
For the purposes of dispute settlement under thisAgreement, subject to the provisions of Articles 3 and
4 nothing in this Agreement shall be used to address
the issue of the exhaustion of intellectual property
rights.
17Art. 28 TFEU
18
Art. 45 TFEU
19
Art. 56 TFEU
20
Art. 63 TFEU

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