17

Contemporary Problems on Japanese Patent Law fromthe Perspective of the European Patent Law
Analysis of the Framework on Infringement by Multiple
Infringers under the Patent Law—The Case of Indirect Patent Infringement—
Long-term Overseas Research Fellow: Hisao Shiomi(*)

The regulations on infringement by multiple infringers in recent years, mainly the provisions on indirect
infringement under the intellectual property right (IPR) laws, are inclined to stop the act of tort against
information, which can be infringed in various places, before the actual occurrence of direct infringement.
Furthermore, there has been the trend of considering acts that had been regarded as indirect infringement to be
direct infringement. The expansion of the scopes of the subject matter protected by patent and the acts of working
by legislation as seen in the treatment of computer programs in the 2002 amendment of the Japanese Patent Law
is a measure to simply consider acts that had been regulated under the provisions on indirect infringement as
direct infringement. In addition, this inclination is also observed in the provisions on indirect infringement inexperiment/research, infringement of patents on medical methods, joint direct infringement, and prohibition of
the transfer of equipment for circumventing technological protection measures.
At the same time, rules on infringement by multiple infringers are inseparable from competition policy.
Indeed, competition policy considerations are made with respect to the issue of exhaustion relating to parts ofpatented products, inducement provisions in the Community Patent Convention, prohibition of excessive
enforcement regarding claims for an injunction/destruction of components having other uses, and the issue of
subjective elements (Section 101(ii) and (iv) of the Japanese Patent Law; joint direct infringement).

Ⅰ Statement of the Problem andStructure of the Paper
The inventions for which patent infringementby multiple infringers has been disputed include
software-related
inventions,network-related
inventions, and system products, which were taken
into consideration upon the 2002 amendment of theprovisions on “the practice” of inventions andprovisions on indirect infringement in the Japanese
Patent Law. Later, debate was made over indirect
infringement of patents on medical activities. In thefield of Copyright Law, regulations on equipmentforcircumventing
technologicalprotection
measures have been legislated as regulations
similar to provisions on indirect infringement.
Meanwhile, court decisions have been inclined tofind responsibility in parties other than the direct
infringer, such as in: a case relating to karaoke; theTokimeki Memorial case; and the File Rogue case.
In this manner, infringement of intellectual
property rights by multiple infringers including
those other than the direct infringer is rapidly
increasing. The above phenomena indicate that,when the proprietary nature of information
increases, the intermediary in charge oftransmitting information becomes important not
only as a protector of information, but also as a userandinfringerofinformation.
However,establishmentof
infringement-inducement
provisions was shelved in Japan considering soundtransactions of parts/components and distribution of
information, and legislation of joint direct
infringement is currently under discussion.
Considering such a situation, it would be necessary
to review the significance of the provisions on
indirect infringement as regulations on theseintermediaries.
The study is made by firstly comparing thelegal structure of the provisions on indirect
infringement and the regulations under the Civil
Code and the Patent Law concerning acts ofmultiple parties. Secondly, the amendment of theJapanese Patent Law and the trend of the U.S.
patent law are discussed with focus on theConvention for the European Patent for thecommon market (Community Patent Convention;
CPC) enacted in 1975, which was referred to upon
the 2002 amendment of the Japanese Patent Law
and the enactment of the U.K. law and German law.
Thirdly, the issue of how the current Patent Law
should be adapted to such new phenomena as
digitization and networking of intellectual property
is studied. First, problems that may arise are
identified through comparison with other legal
frameworks and laws of other fields (II). Then theassociation of the various principles under the law
is studied by analyzing individual points of issue (III(*) Associate Professor, Faculty of Law, Kagawa University

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● 122 ●

and IV). In this paper, a patentee is described as X,
an indirect infringer supplying components(products, means) as Y, and a direct infringer as A.
In addition, this paper also takes into view joint
direct infringement in which multiple parties, Y andA, respectively take part in acts of infringement andconstitute an act of direct infringement as a whole,and cases in which Y uses A as a tool and Y also
becomes liable to the acts of A.

Ⅱ Comparison with Other Legal
Principles and Legal Frameworks
1

Joint Direct Infringement

Joint direct infringement originally assumes
cases in which multiple parties (Y and A) carry out
a single act of infringement in distributed
processing of a network, and multiple servers areincluded in the constituent features. When therespective persons thus share working of the partsof the constituent features of a patent, therequirements for joint direct infringement present a
problem in determining whether or not acts ofmultiple persons (Y and A) can be considered as
one and can be deemed as joint “practicing” under
the Patent Law.
There is a view that considers it sufficient tobe able to find a certain link between Y and A,
specifically, to objectively recognize a single jointact (objective association and collaboration) bylooking at the balance with the joint tort under the
Civil Code. However, it is too severe to hold A
liable for infringement of the whole patent rightmerely by involuntarily being combined with thefunctions of other people. Even the mere workingof publicly known art that constitutes part of thepatented invention without intention or negligencewould be patent infringement. Thus, the prevalent
theory is that a party does not need to be aware of
the patent right, but must be aware that he/she isworking the invention as a whole by sharing
respective parts with other parties involved. The
theory cites the Styropeas case, and considers theacts of A as being acts of Y, when Y has recognized
and used the acts of A. Another theory claims that a
subjective intention to jointly commit an offense
and an objective fact of joint commitment of an
offense are required in order to achieve balancewith cases of co-principals. However, it would be
disputable whether or not a requirement for
subjective elements may be introduced to theconcept of working, which adopts a framework ofreal rights. This problem is considered to have thesame nature as the problem of whether subjective
elements, such as the malignancy of the defendant,
may be taken into account when determining the
portion outside the scope of patent claims in anargument of the doctrine of equivalents.

2

Differences with Joint Tort, Relationshipwith Unfair Competition Theory

Indeed, even if the defendant’s parts had
general purposes, a claim for damages may be filed
as long as they satisfy the requirements for joint
tort (Article 719 of the Civil Code) in the case of
inducement by Y. The framework of joint tort was
originally intended for relief of victims, andassumes cases in which Y and A have a certain
collaborative relationship. However, in cases where
the parts for a patented product are distributed
from Y and reach A after going through the hands ofother vendors, Y merely supplies parts that do notconstitute direct infringement, which are outside
the scope of published patent claims. Particularly inindustries where patented products and their parts
are manufactured, sold and distributed in large
quantities, and where products are often
manufactured by assembling parts, a large numberof completely different independent vendors may
be involved in the manufacture and supply of partsfor staple products. Thus, if even the vendors that
do not have specific awareness or discretion
regarding the infringement were held liable for tort,
it would obstruct the manufacture and distributionof parts, and even the manufacture of products.
From a comparative viewpoint, remarkabledifferences are observed between indirect
infringement and joint tort under common law. Firstof all, indirect infringement generally does not
require inducement and conspiracy, but mereawareness would be sufficient. Also, the purpose
for which the provisions on indirect infringementfor “exclusive articles” were introduced under the
Patent Law was that, even where an infringing
article does not include all of the constituent
features of the patent claims, multiple parties may
share the infringing act, such as manufacturing andselling of the parts, thus there could be cases inwhich it is difficult to capture all of the infringers
due to the large number of assembly vendors
involved, and cases in which the patent right cannot
be enforced since the infringing article is assembled
by individuals who are end users. Accordingly, thepurpose was to stop the manufacture/sales of partsat the preparatory phase of infringement on thecondition that they would be used exclusively forthe manufacture of the infringing article in the
future.
In addition, in the case of indirect infringement,
more emphasis should be placed on soundtransactions of the parts in the case of general tort,
and special competition policy consideration should
be given, such as preventing patent misuse bypatentees, in order to achieve balance with the factthat patentees are allowed to claim injunctions for
non-patented parts. In the case of indirect
infringement by a neutral article, the association● 123 ●IIP Bulletin 2004

between Y’s acts and A or the acts of A, will beconsidered instead of merely comparing the claimsof the patented invention and the defendant’s
working mode as in the case of direct infringement.
In other words, the mode of Y’s acts other than Y’s
act of working the invention is taken into
consideration, which indicates a concept that has
the nature of unfair competition law, quite different
from the conventional framework of real rights.
3

Tool Theory and Doctrine of Equivalents

In the Electrodeposited image case (Tokyo
District Court judgment on September 20, 2001,
Hanji, no. 1764: 112), the district court held that,
where it was clear from the manufacturing phase of
the defendant’s product that the dial plate vendor,
which was the purchaser, would conduct the final
process of the manufacture in which release coatedpaper at the back would be removed and a dial plate
would be attached, Y would be deemed to haveworked all processes using Purchaser A as a tool
(hereinafter referred to as the “tool theory”). This
tool theory relaxes the concept of the parties
engaged in the “working,” while it does notdetermine the “tool” nature based on the humanrelationship of dominance or management between
Y and A. The theory is subject to the following
criticism. The tool theory should only be used incases where Y and A have a certain link with eachother, such as in the above-mentioned Styropeas
case. It is inappropriate to apply the tool theory tosuch cases as the electrodeposited image casewhere Y and A have no subjective association andcollaboration. When Y conducts the main processes,
the case should rather be construed in such a waythat the practice of Y is to be within the scope ofequivalents of the claims (which are operated by Y
and A). Even if A did not work the invention in thecourse of trade, it would be considered that therespective requirements of identical function andeffect, interchangeability, and ease of interchange
could be met. Meanwhile, there is also an idea to
use the framework of indirect infringement for theelectrodeposited image case instead of the tool
theory.
4Comparison with Copyright Infringement
by Multiple Parties

Unlike the Patent Law, the Copyright Law
does not have the system of claims or provisions on
indirect infringement, so Third Party Y would haveno foreseeability. In spite of this, Japanese case law
tends to affirm a claim for damages or an injunction
against Y based on a legal framework to expand theusers and infringers by unreasonably recognizing
dominance/management between Y and A or theinterests of Y. In the Supreme Court judgment in

IIP Bulletin 2004

the Club Cat’s Eye case (Supreme Court judgment
on March 15, 1988, Nichiminshû, vol. 42, no. 3:199), the court expanded the users and infringers of
copyright work by making the managers of akaraoke snack bar responsible for the singing at the
bar
based
on
the
requirementsofmanagement/dominance and interests. In the third
instance of the Video Mates case (Supreme Court
judgment on March 2, 2001, Nichiminshû, vol. 55,
no. 2: 185), the court cited the Club Cat’s Eye
decision, and held the karaoke equipment leasing
operator liable for damages based on tort.
Furthermore, in the File Rogue case (Tokyo
District Court decision on April 11, 2002 and Tokyo
District Court decision on April 9, 2002, Hanji, no.
1780: 25), the court broadly interpreted the scopeof infringers, even finding the party that had notformally engaged in the actual use as an infringer,
based on the following requirements: (i) details of
the contributory act; (ii) the extent ofmanagement/dominance by Contributor Y; and (iii)
Y’s interests. Meanwhile, with regard to theTokimeki Memorial case, which was a dispute overa memory card exclusively used for altering thecontent of game software, the view can be divided
between one that finds joint tort with A as a direct
infringer of the right of preserving the integrity and
Y as an indirect infringer (contributor) and one thatconsiders Y as a direct infringer. An investigation
official for the case explains that, whicheverstructure is adopted, Y, which provided the memory
card exclusively used for altering the content of
said game, is liable for damages caused by copyright
infringement. The trend of these court decisions issubject to the following criticisms: Y should befound a copyright infringer even if there were no
management/dominance or interests between A
and Y; in mass-market trading in particular, theextent to which manufacture and sales of articles
used for the infringing products are accountable forthe resulting infringement is more important; theconcept of divisional rights would be diluted; and it
would not be applicable to the P2P technology thatallows direct file exchanges between users, whichis adopted by Gnutella and other service providers
that do not have central servers. With the 1999
amendment of the Copyright Law, provisions were
established to punish acts of altering, etc. rights
management information (Article 113(3) of the
Copyright Law) and acts of manufacturing,
providing, etc. a device/program for circumventing
technological protection measures (Article 120bisof the Copyright Law) as acts of preparing for
infringement.

Ⅲ Dependence Theory andIndependence Theory1● 124 ●

Comparison of Laws

Whether or not an act of direct infringement
by A is an essential premise for establishment of
Y’s indirect infringement presents a question. The
academic theories in Japan also indicate conflicting
views. The theories state as a generality that thequestion should be determined based on thebalance of interests between Patentee X and Third
Party Y, but the types of cases that should beassumed and the concrete considerations thatshould be given need to be studied. In thememorandum on the Community Patent
Convention (CPC), the legislative purpose of thecurrent German law (Law of 1979), and thejudgments by the Federal Supreme Court ofGermany (BGH) in recent years, the provisions on
indirect infringement have changed from thedependence theory (two-step theory) to the
independence theory (one-step theory) based on
the CPC, and indirect infringement is considered as
an independent form of infringement that does not
require direct infringement. Indeed, Article 26(3) ofthe CPC provides that indirect infringement will beestablished in the relationship with a direct infringer
performing acts under Article 30 such as (a) acts
done privately, (b) acts done for experimental
purposes, etc. However, the memorandum on the
CPC does not mention anything about the othercases. In contrast, the U.S. patent law has
consistently adopted the dependence theory eversince the court ruled in Aro Mfg. Co. v. Convertible
Top Replacement Co., 365 U.S. 336 (1691) [Aro I],
341, 342 that the act of A, an owner of a General
Motors automobile that had been produced under amanufacturing license, to replace a worn-out fabricconvertible top is mere repair rather thanreconstruction, thus Y’s act is permissible.
2

Differences in Concrete Effects

Then how do the independence theory and thedependence theory differ in terms of concrete
effects? The first effect of adopting theindependence theory would be that indirect
infringement would be established prior to an act of
direct infringement in theory. The second effectwould be to force A, who has gained the right towork an invention due to the indemnification, to
use the invention for purposes of experiment or
research (Articles 26(3) and 27(b) of the CPC), tobuy non-patented parts from Patentee X instead of
Y. In other words, the indemnification to use theinvention for experimental and research purposes
under Article 27(b) of the CPC will be limited towhen the act has been taken independently without
the assistance of Third Party Y.
3

Private Purpose
In cases in which A is working an invention

within a private domain, such as at home, Article
26(3) of the CPC provides that indirect
infringement is established for Y. The underlying
concept is that Article 26 of the CPC covers
extensive products that are easily worked byprivate and non-commercial users, and indemnified
working by A may expand so broadly that it could
harm the monopoly of Patentee X. In particular,
working in a private domain is expected to takeplace on a large scale in this Internet era. In thebread-making machine case (Osaka District Court
judgment on October 24, 2000, Hanta, no. 1081:
241), the court also ruled as follows: the reason thatthe law limits the scope of effects of patent rights toworking “in the course of trade” is only based on apolicy reason, and not based on an idea thatpatentees should not in the least enjoy the market
opportunities that pertain to the working ofpatented inventions for a private purpose.
4

Experimental and Research Purposes

Article 26(3) of the CPC provides that indirect
infringement will be established for Y who supplies
means (products) to A, who works the invention forexperimental and research purposes. However,major literature criticizes this provision. According
to Article 26(3) of the CPC, a person carrying out
experiment (A) at a research institute cannot
acquire the means (products) necessary for working
an invention, but since Patentee X has no obligation
to provide said means (products), it would
consequently be contrary to the purport of Article
27(b) of the CPC—for the promotion of researchand technology development. This criticism ispremised on a legislative fact that Y’s supply ofcomponents to A for an experimental purpose
usually does not involve large-scale working of theinvention by A.
Contrary to this view, Cornish points out thatthe legislative fact supposed by Article 26(3) of the
CPC is something different. Specifically, he states
that, in many cases, Y, who is X’s competitor, hasbeen supplying the samples for experiment andresearch to A (a medical institution, a research
institute, or a customer) that is working theinvention for experimental and research purposes,
or, Y is a collaborator in the experiment, so Y can beconsidered as a direct infringer. As an extension ofthis view, it can be considered that patent rightsthat become an issue in experiment and research
are not the combination patents that are frequently
found in electric appliances or machinery, but often
patents on substances, such as chemical substancesor pharmaceuticals, so the means (products)
supplied by Y would often be the substance, whichis the subject matter of the patented invention,
instead of one feature or one component of theinvention. Accordingly, Y’s act of supplying may● 125 ●IIP Bulletin 2004

constitute direct infringement in itself, and in sucha case, Y’s liability as an indirect infringer isincorporated into the liability as a direct infringer.
The German Supreme Court judgment, BGH v.
21.2.1989 =GRUR 1990, 997-Ethofumesate, which
was assumed by Cornish, held that Y imported
herbicide, provided it to A (plant protection office)along with data, and actively participated in the fieldtest conducted by A, in which case the said
experiment exceeded an experimental purpose. In
this way, when Y uses A as a tool, Y is considered
as a direct infringer without needing to refer to theconcept of indirect infringement. The only question
left is whether or not Y’s act was for an
experimental purpose. He states that, in moregeneral terms, Articles 26(3) and 27(b) of the CPC
have mainly assumed, as legislative facts, cases inwhich Y conducts an act of direct infringement,
cases in which Y uses A as a tool, and cases inwhich Y and A jointly conduct an act of direct
infringement. This dispute between academic
theories is caused by the differences between thecases that each of them might assume.
5

When A Is a Licensee, a Compulsory
Licensee, a Prior User, or a Joint Ownerof the Patent

Y’s act of supplying would not be considered as
indirect infringement. Although the memorandum
does not indicate the underlying basis for this view,
from Licensee A’s standpoint, it complies with thecompetition law rules in that A is not obligated to
pay Patentee X for non-patented components or tobuy non-patented components solely from Patentee
X. However, Y’s act will be indirect infringement if
A worked the invention beyond the territorial andfield-of-use restrictions of the license.
6

Exhaustion

If A purchases a whole patented product fromX, the patent right for the whole patented productexhausts. However, there is an argument overwhether A’s act of purchasing consumable parts or
replacement parts for a product from Third Party Y
instead of from X to maintain the value and effect of
the whole patented product would be admissible as“repair,” or if it is not admissible as being“reconstruction” of the whole patented product.
This has become a major issue particularly because
Article 26(1) covers neutral articles as well as
exclusive articles and involves the extensive
market of nonpatented components.
Under the U.S. law, infringement has beendenied in all such cases including Everpure, Inc. v.
Cuno, Inc., 875 F.2d 300 (Fed.Cir.1989) (a water
purifier cartridge) and a case relating to adisposable camera ever since the above-mentioned

IIP Bulletin 2004

Aro I judgment. When a patent right exhausts withtransfer of the whole patented product due to an
implied license or exhaustion, supply of
nonpatented components or replacement parts is
not likely to be judged as infringement. In contrast,
German case law considers points including theconcept of the manufacturing, similarity to theprotected subject matter, the natural period of
endurance/consumption, customary distribution
practices, and whether or not the working complies
with the purpose. German courts adopted astandard that is stricter than that in case of
exhaustion regarding whether or not A’s act ofmaintaining the whole patented product byreplacing a part of the patented product purchased
is an act of indirect infringement.
The basis of the concept of finding indirect
infringement can be assumed to be as follows. It is
practically almost impossible to prove the fact that
Y had been aware of the presence of X’s patent or,when most of the components are being purchased
by A for admissible repair, which portion of thesecomponents is supplied for an infringing purpose(e.g., reproduction of the patented product, repair ofan infringing article, or repair of a productmanufactured by a person working the invention fora private purpose or an experimental purpose).
Therefore, in practice, it could limit Patentee X’sright on the combined patent and could liberalize
the market of all the essential components of thepatented product, and furthermore, it could
liberalize an act of supplying infringing products forrepair. Since the special markets related to said
components have been created by Patentee X, Y
should not gain unjust enrichment from supplying
the components that arise from the invention to themarket. Moreover, situations such as where A canbuy the replacement parts from X, but X refuses tosupply the parts to A or sets high prices, and where
Y makes combination sales to A should be regulatedby antimonopoly laws.
However, Patentee X should be prevented
from unreasonably expanding the patent right tononpatented components that are for A’s lawful
working of the invention, and that the purchaser (A)of the patented product should be secured the rightto repair. At the same time, if indirect infringement
is recognized, the patentee would gain exclusive
interests in the parts market on top of once
recovering capital in the market of the patented
product. While the acts prohibited under Article
26(3) of the CPC are banned to prevent the supply
from linking with unauthorized direct infringement,
an act of supplying parts for repair of a purchased
patented product is different in nature. Therefore, itwould be more appropriate to consider that indirect
infringement will not be established in principle.

● 126 ●

Ⅳ Individual
Effects1

Requirements

andWhether Y’s Acts Include Manufacturing
and UseUnder the Japanese regulation, manufacturing
and importing are covered within the acts of Y.
However, Article 26 of the CPC only includes“supplying or offering to supply.” Under theJapanese regulation, Y’s act of use may only besuspended when X’s patented invention is aprocess invention. The use cannot be suspended
when the claims are written as a product invention.
Since the only way to suspend Y’s act of use when
X’s patented invention is a product invention is toconstitute the use as direct working, the issue of
joint direct infringement has been a topic ofdiscussion.
2

Matters Covered by “Products” (Means)
Supplied by Y

The 2002 amendment of the Japanese Patent
Law added programs, etc. to “products” under the
Patent Law (Section 2(3)(i) to (iii) of the Patent
Law)
and
added
“provision
throughtelecommunication lines” to the working of
invention of programs, etc. (Section 2(3)(i) and (iv)of the Patent Law). With these measures, provisionof programs through media and networks became
directly accusable as an act of direct infringement
without needing to apply the provisions on indirect
infringement. However, this amendment could
prompt further application of the Japaneseprovisions on indirect infringement (Section 101 of
the Patent Law) to digital information and to otherintangible matter through the interpretation of“products/articles.” With regard to arguments overwhether or not such intangible matters as drawings
for installing an infringing device would correspondto “products/articles” supplied by Y, German caselaw denied this, but because there are no literal
restrictions, there is still scope to include drawings
in “products/articles.” While know-how andservices could also become essential features of an
invention, Article 26(1) of the CPC may function asa substitute of provisions on inducement andprovisions on contribution, although, as discussed
later, Article 26(2) of the CPC has not recognizedgeneral inducement provisions. Meanwhile, as longas the 2002 amendment of the Japanese Patent Law
has shelved the introduction of general inducement
provisions, it is considered that know-how,drawings, and services should not be included in“products” under the current law.

3

Requirement for Subjective Elements

In a report compiled in the process of enacting
the Japanese Patent Law of 1959, patentees were
imposed the burden to prove such subjective
elements as the awareness and purpose of the
defendant in order to avoid placing unjust
oppression on people who have acted in good faith,since the provisions on indirect infringement are
powerful provisions that allow no rebuttal evidence.
Later, however, this requirement for subjective
elements was deleted, and the “exclusively”
requirement was established. The reason for this is
assumed to be that it is difficult to prove subjective
elements, and for objectively determining
constitution of infringement by considering theprovisions on indirect infringement as a real
expectant right similar to provisions on direct
infringement (Section 100). In the case of
infringement of intangible property, proving
subjective elements of the infringer is difficult forthe patentee either in cases of indirect
infringement or direct infringement (see theprovisions on presumption of negligence in Section
30 of the Utility Model Law and Section 103 of the
Patent Law). Thus, the requirement for subjective
elements was deleted by deciding to objectively
determine the constitution of infringement byconsidering the provisions on indirect infringement
as a real expectant right similar to provisions on
direct infringement (Section 100). It is likely thatthe requirement for the objective element“exclusively” was established to limit constitutionof indirect infringement to acts that inevitably linkwith the original direct infringement. In this way, as
can be seen in the new Section 101(i) and (iii) of theJapanese Patent Law, and the 1970 bill and the 1971
bill of the CPC, the subjective elements are tending
to become unnecessary in the case of exclusive
articles. On the other hand, subjective elements are
required for neutral articles, which are
non-exclusive articles. The 2002 amendment of theJapanese Patent Law was legislated in the form ofadding provisions on neutral articles (Section
101(ii) and (iv)) to the conventional provisions. New
Section 101(ii) and (iv) of the Japanese Patent Law
require that Y’s bad faith must be found in both of
the following: (a) use of said components inworking the invention; and (b) presence of a patent
for the invention. The reason for including (b) isthat it is too severe on Y to be imposed a duty ofcare on whether a patent right exists even for thecontent of working by A.
4

Essential Portion

The purport of the essential portion
requirement is that it indicates that Patentee X’s
invention has created a market for the components● 127 ●IIP Bulletin 2004

and Y has gained profits from it on a basis that said
components are practically related to the invention.
Nevertheless, there is a criticism that the claimed
features are all indispensable features for defining
an invention (Section 36(5) of the Patent Law), andthe essential portion is unpredictable for operators
who are not engaged in inventions or purchasers of
the completed patented products. Thus, thisessential feature is also interpreted in a relaxedmanner in Germany. In contrast, the 2002
amendment of the Patent Law sets forth arequirement: (a matter) “indispensable for solving
the problem with the invention.” The purport ofthis requirement was to concretize the important
portion for an invention. This matter includes tools
and raw materials used for manufacture of products
or use of processes, which are not the constituent
features of the invention. However, it does notinclude things that had been needed from the pastirrespective of the problem to be solved, even if
they were constituent features of the invention.
5

StapleArticlesProvisions

andInducement

The matters that X should claim/prove in acase of indirect infringement differ according to thenature of the component. (1) In the case of an
exclusive article, Y does not need to know who A isor whether or not the article is an exclusive article,
and indirect infringement may be established evenwhen Y and A are not directly related with eachother. (2) In the case of a neutral article (when it
has at least one practical non-infringing purpose),indirect infringement cannot be established unless
Y knows how the component will actually be usedby having some kind of relationship with the actualuser A. Since the infringement cannot beestablished by merely proving that the working of
the patented invention is the most common type ofworking, it would be practically difficult for X toprove that the wholesaler or manufacturer that solda neutral article through a retailer has provided thearticle for an infringing purpose. However, Y may
be held liable for infringement if it has placed aneutral article on the market with an advertisement,
because its intention would be clear from thesituation. As a method of proving such subjective
elements, Y’s recognition must inevitably bepresumed from such circumstances as Y’srelationship with the direct user A, the nature of
the component and the mode of trading, as well as
Purchaser A’s business. (3) In the case of a staple
article (when it has non-infringing purposes and is
distributed on the market), indirect infringement
would not be established in Japan even when Y hascommitted active inducement, and free distributionof staple articles is secured (Section 101(ii) and(iv)). However, the U.S. patent law prohibits Y’s

IIP Bulletin 2004

acts of inducement in general, and does not evenrequire supply of the component (the infringing
purpose is often suggested by the labeling or
advertising). At the same time, in order to prevent
this provision on inducement from extending theexclusive control to staple articles, adjustment ismade by provisions on misuse among others. Now,
the CPC, which has served as the model for Section
101(ii) and (iv) of the amended Japanese Patent Law,
will be examined. Article 26(2) of the CPC is not an
independent provision on inducement, but imposesa strict requirement on establishment of indirect
infringement with regard to special type of means(staple article). The first purport of the latter
sentence of Article 26(2) of the CPC is that aperson (Y) who has induced Customer A to use astaple article and liked the staple article with thepatented invention is not allowed to claim thenature of the article to be a neutral article in an
indirect infringement lawsuit due to estoppel. The
second purport is to secure freedom of supply ofneutral articles that have independent and inherent
market from a patented invention and is not
specially related with the patented invention, and tosecure free trading of products that are usually usedand sold in the market for various purposes.
Next, the scope to which interpretation of
Article 26(1) and (3) of the CPC will be analogicallyapplied to Article 26(2) of the CPC, which is aninducement provision regarding staple articles,
becomes a question. First, the prohibited act of Y islimited to an act of supplying, by reading in Article
26(1) of the CPC. Moreover, also in Article 26(2) of
the CPC, it is necessary for the means to be an
essential feature of the patented invention.
Furthermore, unlike Article 26(1) of the CPC, it iscommon to require direct infringement for
application of Article 26(2) of the CPC (dependence
theory). The reasons are that the inducement
provision is based on joint tort and tortuous liability,
and that an act of inducement (Article 26(2) of theCPC) is not considered to be established without
direct infringement while active inducement
requires a causal relation that direct infringement
would not have been conducted but for the
inducement.
6

Scopes of Claim for Injunction and Claimfor Destruction

Old Section 101 of the Japanese Patent Law
had only made exclusive articles subject to indirect
infringement, but, under new Section 101(ii) and(iv), products or processes are subject to injunction
even if they have other uses. In this case, the claim
for an injunction or destruction should only beaffirmed for the essential portion for working thepatented invention, and the injunction or
destruction would be ordered only when Supplier Y● 128 ●

does not provide sufficient measures for ensuringthat Purchaser A will not use the article for an
infringing purpose. For example, the court may
state, “Y may not supply the component tounauthorized persons to be used for an infringing
purpose.” In the case of joint direct infringement,
only the claim for an injunction of the requisite
system needs to be accepted to eliminate the joint
direct infringement by Y and A. A possible formal
adjudication for a claim for prevention of future
infringement would be, “... may not jointly use....”
However, the injunction or destruction may
inevitably be ordered for the whole article when theessential portion and the other portions are
inseparable or when there is a strong likelihood of
future infringement. In claiming an appropriate
measure for preventing infringement when there isa likelihood of future infringement, if a certain
appropriate measure can be used to order Supplier
Y to only sell the component to authorized parties,
there would be no need to stop Y’s entire act ofsales. Some examples are to obligate Supplier Y todisclose the information to X or to allow Y and A toconclude an agreement between them to the effectthat the articles will not be used for infringing
purposes. Nevertheless, what specific measureswould be effective is a difficult question, and it isdifficult to force Indirect Infringer Y to conclude alicensing agreement with X when there is alikelihood of future infringement.
With regard to the scope of claim for an
injunction or destruction under the inducement
provisions, as long as staple articles can betransferred freely in principle as discussed above, itwould be more appropriate to accept deletion of theprescription of the medicine rather than stopping
the supply of the medicine itself. Similar to use
inventions, there may be cases where the court
may specify the efficacy or usage, or prohibit
description of use on the explanation of efficacy or
the package. The possible main text of thejudgment would be “may not manufacture/sell thestaple articles by inducement” or “may not induce.”

Ⅴ OverallIssuesSummary

andFuture1. As in the analysis of court decisions relating to
the tool theory, indirect infringement, and copyright,
more emphasis should be placed on the causal
relation found in the result caused through joint
acts of Y and A and the objective nature of thecomponent as the requirements for holding Y liable,
rather than the management/dominance of Y over A
and the profits gained by Y. However,supplementary presumption could be made basedon the human relationship between Y and A in theprocess of proving subjective elements in Section
101(ii) and (iv) of the new Japanese Patent Law. In

addition, it is necessary to require subjective
elements between Y and A in order to limit thecausal relation in joint direct infringement.
Nevertheless, there would be a question of whether
subjective elements may be required in direct
infringement committed by “an act of working,”
which has a framework of real rights.
2. Soundness of trade is given consideration withregard to the joint tort under the Civil Code (Article
719 of the Civil Code) and the responsibility of
employer under the Civil Code (Article 715 of the
Civil Code). However, in indirect infringementcases in recent years, the court has been inclined totake a step further and order an injunction against
an act of tort that may bring about infringement by
multiple parties in various locations, before theactual occurrence of direct infringement (see II. 2.,
III. 3., and III. 4.). The expansion of the scopes ofthe subject matter protected by patent and the actsof working by legislation as seen in the treatment ofcomputer programs in the 2002 amendment of theJapanese Patent Law is a measure to simply
consider acts that had been regulated under theprovisions on indirect infringement as direct
infringement, which is one example of the trend to
consider acts that had been regarded as indirect
infringement to be direct infringement. The
distinction between acts of indirect infringement
and acts of direct infringement has become lessclear in indirect infringement in the working of an
invention for experimental/research purposes (III.
3.), prohibition of equipment for circumventing
technological protection measures (II. 4.),infringement of patents of medical methods, andjoint direct infringement (II. 1.), and there is a
growing need to review the concept of “working”
itself.
3. In order to avoid the requirement of “in thecourse of trade” in direct infringement, the legal
framework of the doctrine of equivalents is underreview (II. 3.). In addition, in the issue of
exhaustion, competition policy considerations andregulation under the antimonopoly law are
significant (II. 2., III. 6.). The inducement
provisions under the CPC are subject to estoppel
and the scope of their application is considerably
limited, with strong consideration given to thesoundness of trade of staple articles (IV. 5.).
Consideration should also be given so as to prevent
excessive enforcement in the judgment or its actual
execution
relating
toclaimsforaninjunction/destruction of components having otheruses or acts of inducement (IV. 6.). In this manner,
the modes of infringement by multiple infringers,
centering on indirect infringement, are inextricably
linked with competition policy.

● 129 ●IIP Bulletin 2004