Institutional Identity in Intellectual Property:
Comparative Perspectives on the Importance of Soft Law inJapan’s IP High Court *Invited Researcher: David TILT * *This paper uses a comparative methodology to investigate the legal context in which
Japan’s Intellectual Property High Court was introduced, drawing on the experience of theCourt of Appeals for the Federal Circuit in the USA and the Unified Patent Court in theEU. Rather than focusing on the substantive legal position of these courts – harmonised
broadly by international legal instruments – this paper instead focuses on the soft-lawdynamics that animate the intra-jurisdictional dynamic. In this sense, the emphasis shifts
from promoting harmonisation through substantive legal reform and into understanding
how the relationship between, for example, an apex court and a specialised court can
impact the process of harmonisation. These experiences are used to reflect andcontextualise some potential reforms for the Japanese system that would promote both theinternal consistency of Japan’s patent regime and its ability to contribute in theinternational dimension.

I. Main Themes
Starting from an analysis of the Japanese shift in policy priorities regarding
intellectual property in the early 2000s, the establishment of the IP High Court is –in a background of global intellectual property harmonisation supported by theTRIPS Agreement – one of the most significant elements of Japanese intellectualproperty. The IP High Court occupies an important position between that of aharmonising specialist court (providing an eventual meeting point for claims
originating in court-based litigation and from patent office validity disputes) and aThis is a summary of the report published under the 2019 Collaborative Research Project onHarmonization of Industrial Property Right Systems under a commission from the Japan Patent Office.
** S.J.D. Candidate in International Business Law, Central European University, Hungary.
*isymbolic representation of Japan’s commitment to the empowerment of innovative
communities.
Japan is not the first country to introduce a specialised court for intellectual
property, though it is the most significant in terms of its institutional positioning –dealing with actual cases rather than just administrative reviews, as well asprovisions for technical advisors that assist the judges in technical matters.
However, the problems that the IP High Court will face in its development, both interms of its institutional identity and contributions towards further harmonisationin patent law, have important similarities with the specialised courts of otherjurisdictions.
Understanding the context in which the IP High Court was created – in bothits political and legal dimensions – is important because it demonstrates the values
that animated these legal reforms. The emphasis from very early on appears to havebeen strengthening the position, at least in patent law, of rights-holders and theireconomic contributions. The focus on patent law, as well as the CAFC as a model
specialised court, becomes clear when linked with the economic context of Japan at
the time – following the ‘lost decade’ and the dip in economic performance
following strong post-war years, the Japanese Government were looking for ways
to strengthen the international position of the Japanese market.
The IP High Court was essentially constructed from the intellectual property
divisions of the Tokyo High Court, rather than creating a completely original court.
The support of business and industry appears to be a particularly prominent elementof the legal dynamic here. While industry supported the idea of a specialised courtthat dealt with intellectual property disputes to provide increased harmonisationand stability, there was opposition to the creation of a ninth High Court wit hsubject-matter jurisdiction – the compromise in the implementation being that theIP High Court would be created from the divisions of the Tokyo Court, which
already had significant intellectual property expertise, as the transformed
foundation of the IP High Court.
The first part of the paper considers improvements to harmonisation from anational perspective, that is, adjustments to patent law as it currently exists in Japanto promote a greater level of harmonisation. In this, the role of the court and thedevelopment of the double-track problem – where the validity of a patent can beassessed by both the court and the patent office – is considered, as well as Japan’s
important historical legal development through transplantation.

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While the reforms were centred on Japan’s transition towards being an ‘IPbased nation’, the emphasis on specific institutions in the reform makes it clear thatpatent law is at the centre of this project. The IP High Court and its exclusive
jurisdiction in patent law is one such example, but also when considering theestablishment of a specialised court at all – the Court of Appeals for the Federal
Circuit (CAFC) was a central part of the US plan to regain economic strength andhas obvious parallels with the Japanese economic situation of the 1990s.

II. Court of Appeals for the Federal Circuit (CAFC)
The CAFC is an important institution when considering how harmonisation
in intellectual property can be undermined by the institutional dynamics that emerge
between a specialised court and the apex court – the US arrangement highlights theconflicts between the Supreme Court and the CAFC, whereas in the Japanese context
a similar dynamic appeared between the IP High Court and the Japan Patent Office(JPO). The Supreme Court and the CAFC have differed in their interpretations of
the direction of patent law, with the Alice decision in particular highlighting theflexibility with which the CAFC can filter Supreme Court decisions to realise amore patent-friendly approach.
In contrast to the legal context prior to the establishment of the IP High Court,
intellectual property cases were not as centralised or concentrated in the US. Circuit
diversity and the negative effect that circuit splits had on patent law specificallywas one of the driving reasons behind establishing the CAFC. The circuit diversity
in appeal courts – coming from the fact that court circuits have their jurisdiction
assigned geographically – led to specific areas of the US that were considered tobe highly sympathetic to patentee litigants and other circuits that developed areputation for a more cynical perspective in patent disputes.
This incentivised a huge degree of forum shopping for patent litigants, wherethe outcome of infringement litigation could be influenced significantly by whichpart of the country the patent owner filed in. While fragmentation and forumshopping in any legal system can be problematic, specifically in the context of
intellectual property and patents, the effects were particularly significant especially with the frequency with which injunctions are granted and the level ofdamages that are routinely awarded in the US courts.

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III. Europe and the Unified Patent Court (UPC)The UPC, on the other hand, explores the promotion of international
harmonisation and the role of courts when they are the specific emanations of apolitical regime or project. The UPC and the project of a truly European patent
more generally, have had a troubled history – though generally not because of thepatent element (which had remained stable throughout most of the proposals), andinstead the difficulty of agreeing an enforcement framework that adequatelybalances national interest with efficiency and stability of patent rights. For the IP
High Court, the experience of the UPC stresses that the importance of deriving its
legitimacy and authority from positive contributions to harmonisation andresponsiveness to industry needs, rather than a political legitimacy that is subject
to changes in government and government priorities.
The inefficiencies of both the national approach and the EPO application are
particularly significant in this context of enforcement that the UPC was intended toremedy. The patents that are granted are all independent national patents andtherefore a company claiming patent infringement must file a lawsuit in each
Member State they wish to enforce their patent in. Given the degree to which mostMember States are connected (in many cases, physically connected), as well thelinguistic diversity, the costs in bringing enforcement proceedings in multiple
Member States at the same time can be prohibitively expensive. This would beparticularly the case for small businesses who lack the international presence andare trying to defend their patented invention against a much larger company.
A key element of the UPC, and a contribution to the political balancing ofcreating a new (almost) pan-EU patent court, is the creation of technical divisions.
These divisions represent a degree of further specialisation within the UPC as acourt system that deals exclusively with patent cases. The UPC itself consists ofseveral divisions - with a Court of First Instance that has a central division
established in Paris, and further specialised divisions in both London and Munich.
Local divisions of the UPC provide more representation more consistently
throughout Europe. The jurisdiction of the court, as the only court that is
empowered to hear disputes about EPUEs, covers all of the participating States. In
this respect, judgments rendered by the UPC in terms of infringement and validity
apply throughout the territory - though the licensing of a EPUE can be done on aiv

Member State-level basis, where a licence would be granted for a specific part of
the territory.

IV. Conclusions
By contextualising the development of the IP High Court with that of th e
CAFC and UPC, there are several areas of patent law that could be adjusted toimprove national and international harmonisation. The first of which addresses thedouble-track problem, in which this paper suggests a return of power to the JPO as
the exclusive arbiter of patent validity. The issue in this context, from an analyticalpoint of view, is not that patent validity can be considered by both the court andthe JPO, it is rather that the Japanese system sits awkwardly between an explicitly
common law or civil law approach.
The introduction of an amicus-style procedure, drawing on the innovative
approach of the IP High Court in Apple v Samsung, should be formally introduced
for cases that are technologically or legally significant. The focus of both the propatent reforms of the US and the IP-based nation project in Japan was the experienceof industry users – complaints about stakeholder engagement have been aroundsince the start of the bilateral US-Japan talks, and a pared-down amicus system isa way of broadening the perspectives on the legal issues affecting specifictechnologies (predominantly emerging or disruptive technologies).
Finally, a system for the creation of thematic divisions of IP High Court isset out. Drawing on the European experience of establishing the UPC (as well as
the associated difficulties of political balancing in its negotiation and arrangement),
it is suggested that the establishment of regional divisions of the IP High Court thatare technologically-specific would promote existing domestic expertise and moreinternational collaboration through technology-specific interactions (reliant, ofcourse, on a renewed commitment to translating decisions into English). The
regional divisions would be significant in their technological expertise, but would
also be an important component of the IP High Court’s wider activities – while theIP High Court already organises many events in Tokyo, it reinforces the historicalcentralisation of Tokyo in Japan. By distributing limited legal functions to technicaldivisions outside of Tokyo, the IP High Court could have a broader impact in its
outreach activities (such as conferences and symposia), as well as reinforcing thevcommitment to the cycle of intellectual property for innovative communities acrossJapan.

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