1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

The Japanese Patent Law governs patents. The Japanese Constitution makes no reference to patents.

Soon after Japan opened its borders to the world, the first patent law – the Patent Monopoly Act – was issued in 1885. The Patent Law of 1959 – the original form of the current legislation – was issued after continuous major revisions to the Patent Monopoly Act. Since then, further revisions to the Patent Law have resulted in its current incarnation.

Japan joined the Paris Convention in 1899; the Patent Cooperation Treaty in 1978; and the Patent Law Treaty in 2016.

1.2 Who can register a patent?

The inventor of an invention is entitled to register a patent (Article 29 of the Patent Law). In the case of joint inventors, the patent application must be filed by all of them (Article 38).

The inventor's right to register a patent may be transferred based on an agreement or on general succession, including inheritance (Article 33(1)). While the inventor must be a natural person, the inventors' successors of the right to register a patent may be either natural persons or legal persons, such as companies or universities.

Where the inventor is an employee, the right to register the patent rests with his or her employer, if this is stipulated in the employment contract, company regulation or similar agreement (Article 35(3)).

2 Rights

2.1 What rights are obtained when a patent is registered?

The patent holder has the exclusive right to exploit the patented invention commercially. Where the patent relates to a product (including a computer program), the patent holder enjoys the right to produce, use, assign, lease, export or import the product, or offer it for assignment or lease. Where the patent relates to a process, the patent holder enjoys the right to use that process. Where the patent relates to a process for producing a product, the patent holder enjoys the right not only to use the process, but also to use, assign, lease, export or import the products produced by that process, or offer them for assignment or lease (Articles 68 and 2(3)(i) to (iii) of the Patent Law).

However, where an exclusive licence is granted to a licensee, this shall not apply to the extent that the exclusive licensee is licensed to exclusively work the patented invention (Article 68).

2.2 How can a patent owner enforce its rights?

Once the Japanese Patent Office (JPO) has registered a patent, the patent holder may demand that a person that is infringing or likely to infringe its exclusive right cease or prevent such infringement (Article 100(1)(2) of the Patent Law). The patent holder is entitled to demand damages in case of infringement (Article 415 of the Civil Code). If the infringer does not agree to the patent holder's demands, the patent holder may file suit before the Tokyo District Court or the Osaka District Court, depending on the jurisdiction (Article 6(1)(i)(ii) of the Code of Civil Procedure).

If either party is dissatisfied with the first-instance judgment, it may appeal to the Tokyo High Court (IP High Court) (Article 6(3) of the Code of Civil Procedure).

If either party is dissatisfied with the judgment handed down by the Intellectual Property High Court, it may file a final appeal with the Supreme Court (Article 311(1) of the Code of Civil Procedure). The final appeal may be filed on the grounds that the judgment violates the Constitution or that critical mistakes in judicial procedure were made (Article 312(1)(2) of the Code of Civil Procedure).

2.3 For how long are patents enforceable?

The duration of a patent is 20 years from the filing date of the patent application (Article 67(1) of the Patent Law). This means that the patent is enforceable from the date of registration until 20 years from the filing date.

The duration of a patent right may be extended by filing a request for patent term extension (Article 67(2) of the Patent Law). For more detailed information, please see question 3.6.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

The Japanese Patent Office (JPO) controls the registration procedure.

3.2 What is the cost of registration?

The JPO applies the substantive examination principle and has an examination request system. The applicant must pay:

  • an application fee when filing a patent application;
  • a fee when filing a request for examination; and
  • a registration fee in the first, second, and third years in which the patent is registered.

The amount of the fees varies depending on the number of claims, regardless of whether the claims are independent or dependent.

In the case of examination and registration fees, reductions and exemptions are available for small and medium-sized enterprises, individuals, universities and other applicants if certain conditions are met.

3.3 What are the grounds to reject a patent application?

The grounds for rejection of patent applications are set forth in Article 49 of the Patent Law as follows:

  • An amendment to the description, claims or drawings attached to a request exceeds the scope of the original matters described in the application Article 17-2(3) of the Patent Law).
  • The invention does not fulfil the requirement of unity of invention (Article 17-2(4)).
  • The applicant is a foreign national that is not domiciled, resident or established in Japan and certain conditions are not met (Article 25).
  • The patent application does not relate to an invention (Article 2(1); Article 29(1)).
  • The invention is not industrially applicable (Article 29(1)).
  • The invention was publicly known, publicly worked, described in a publication or made available to the public through electric telecommunication lines prior to filing (Articles 29(1)(i) to (iii)).
  • The invention could have been easily made based on a publicly known invention prior to filing (Article 29(2)).
  • The invention of the present application is identical to an invention or device disclosed in the description, claims or drawings originally attached to an earlier application which was published after the present application. However, this shall not apply if the inventors or the applicants are the same (Article 29-2).
  • The invention is likely to disrupt public order, corrupt public morals or harm public health (Article 32).
  • The right to obtain a patent is owned jointly, but the application has not been filed jointly by all the joint owners (Article 38).
  • The patent application is not filed on the earliest date (Articles 39(1) to (4)).
  • The invention is not patentable under the provisions of any relevant treaty (Article 49(1)(iii)).
  • The invention does not meet the enablement requirements (Article 36(4)(i)).
  • The invention does not meet the support requirements (Article 36(6)(i)).
  • The invention does not meet the clarity requirements (Article 36(6)(ii)).
  • The invention does not meet the conciseness requirements (Article 36(6)(iii)).
  • The invention does not meet requirements specified by an order of the Ministry of Economy, Trade and Industry (Article 36(6)(iv)).
  • The invention is part of a group of inventions that do not fulfil the requirement of unity of invention (Article 37).
  • The applicant does not provide a sufficient explanation in response to a notice that the known literature is not described (Article 49(5)).
  • The application is written in a foreign language and the description, claims or drawings attached to the request are not within the scope of the matters written in foreign language (Article 49(6)).
  • The applicant does not have the right to the file for a patent (Article 49(7)).

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

Prioritised examination is available under the Patent Law. If a party other than the applicant is working the invention claimed in a patent application, the JPO commissioner may have examination of the patent application prioritised over other applications (Article 48-6).

An accelerated examination system is also available for:

  • working-related applications;
  • internationally filed applications;
  • applications filed by small and medium-sized enterprises, individuals, universities, public research institutes and so on;
  • applications relating to green technologies;
  • earthquake disaster recovery support-related applications; and
  • Asian Business Location Law-related applications.

By requesting accelerated examination, an applicant will receive the results more quickly than in the case of normal examination.

The JPO also offers a super-accelerated examination system. Where an applicant files a patent application which qualifies as both a working-related application and an internationally filed application, or where a start-up files a working-related application, the applicant may request super-accelerated examination and receive the results more quickly than in the case of normal examination or accelerated examination.

Furthermore, the JPO was one of the initial founders of the Patent Prosecution Highway (PPH) programme. The PPH enables an application whose claims have been found patentable by the office of first filing to undergo accelerated examination at the office of second filing through a simple procedure on request of the applicant, on the basis of bilateral office agreements.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

In general, all types of claims or claiming formats are permissible in Japan.

However, omnibus claims may not be accepted in some cases and use claims may not be accepted depending on the examiner.

Product-by-process (PBP) claims are not permissible due to a lack of clarity, except where it is impossible or impractical to identify the invention without PBP claims based on a decision of the Supreme Court.

Furthermore, inventions of a method for operating on, treating or diagnosing humans are also not permissible, on the grounds that they are not industrially applicable.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

There are no mechanisms to extend patent terms, such as adjustments due to JPO examination delays, in Japan.

However, if there is a period during which the patented invention cannot be worked due to a lack of permissions required by law for safety reasons, the patent term may be extended for up to five years by filing a request to register this extension (Article 67(2)).

3.7 What subject matter is patent eligible?

Article 29, Paragraph 1 of the Patent Law provides: "An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following". With regard to ‘the following', please see question 3.3.

Therefore:

  • subject matter that does not qualify as an invention is not patentable;
  • subject matter which is not created using technical ideas utilising the laws of nature is not patentable (Article 2(1));
  • even if the subject matter qualifies as an invention, an invention which is not industrially applicable is not patentable; and
  • any invention that is liable to violate public order, morality or public health is not patentable (Article 32).

Any subject matter which does not fall under the above categories may be regarded as patentable. However, the subject matter must meet other requirements in order to be patent eligible. For details of those requirements, see question 3.3.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

If the examiner rejects the application, the applicant may appeal to the Trial and Appeal Department of the JPO within three months of the mailing date of the examiner's rejection decision (Article 121(1)). If the appeal is rejected following its examination by a panel of Trial and Appeal Department judges, the applicant may commence legal action before the Tokyo High Court (the IP High Court) within 30 days of the mailing date of the appeal decision (Article 178(1)(3)).

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

The validity of an issued patent may be challenged before the Japanese Patent Office (JPO). It is also possible to seek the invalidation of a patent in infringement litigation (Article 104(3)(i) of the Patent Law). The JPO provides for two ways to challenge the validity of a patent after it has been granted: a patent opposition (Article 113) and an invalidation trial (Article 123).

4.2 How can the validity of an issued patent be challenged?

As discussed in question 4.1, there are two ways to challenge the validity of an issued patent: a post-grant opposition and an invalidation trial. Post-grant opposition is an ex parte procedure. Anyone may file an opposition against a patent with the JPO commissioner within six months of publication of the patent in the Gazette (Article 113). In contrast, a patent invalidation trial is inter partes. It may be requested at any time, but only by an interested party (Article 123(1)). It is also possible to seek the invalidation of a patent in infringement litigation (Article 104-3(1)).

4.3 What are the grounds to invalidate an issued patent?

The grounds for invalidation in patent invalidation trials (Article 123(1)) are as follows:

  • An amendment to the description, claims or drawings attached to a request exceeds the scope of the original matters described in the application Article 17-2(3) of the Patent Law).
  • The applicant is a foreign national that is not domiciled, resident or established in Japan and certain conditions are not met (Article 25).
  • The patent application does not relate to an invention (Article 2(1); Article 29(1)).
  • The invention is not industrially applicable (Article 29(1)).
  • The invention was publicly known, publicly worked, described in a publication or made available to the public through electric telecommunication lines prior to filing (Articles 29(1)(i) to (iii)).
  • The invention could have been easily made based on a publicly known invention prior to filing (Article 29(2)).
  • The invention of the present application is identical to an invention or device disclosed in the description, claims or drawings originally attached to an earlier application which was published after the present application. However, this shall not apply if the inventors or the applicants are the same (Article 29-2).
  • The invention is likely to disrupt public order, corrupt public morals or harm public health (Article 32).
  • The right to obtain a patent is owned jointly, but the application was not filed jointly by all the joint owners (Article 38), except where the assignment of the patent has been registered based on a demand under Article 74(1).
  • The patent application is not filed on the earliest date (Articles 39(1) to (4)).
  • The patent was granted in violation of the provisions of any relevant treaty (Article 123(1)(iii)).
  • The invention does not meet the enablement requirements (Article 36(4)(i)).
  • The invention does not meet the support requirements (Article 36(6)(i)).
  • The invention does not meet the clarity requirements (Article 36(6)(ii)).
  • The invention does not meet the conciseness requirements (Article 36(6)(iii)).
  • The description, claims or drawings attached to the request with respect to a patent based on a foreign-language application are not within the scope of the matters written in the foreign language (Article 123(1)(úD)).
  • The applicant does not have the right to the file for a patent (Article 123(úE)), except where the right to file the patent application has been transferred pursuant to a special provision for registration of the transfer (Article 74(1).
  • The patent holder becomes unable to own the patent right pursuant to the provision of enjoyment of the rights of a foreigner, or the patent violates a treaty after grant (Article 123(1)(vii)).
  • A correction to the specification, claims or drawings attached to the application for the patent has been made inappropriately. (Article 123(1)(úG)).

With regard to the grounds for revocation in patent oppositions, please see question 4.8.

4.4 What is the evidentiary standard to invalidate an issued patent?

Unlike in the United States, the criteria for post-grant invalidation through either an opposition or an invalidation trial are the same as those applicable during patent examination.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

Third parties may challenge the validity of a patent post-grant by filing a patent opposition with the JPO Commissioner (Article 113). The grounds for revocation in patent opposition procedures are set out in question 4.8. Third parties that have no interest in the matter may not request a patent invalidation trial (Article 123(2)).

4.6 Who can oppose a granted patent?

Anyone can file a patent opposition in Japan (Article 113(1)). However, a patent invalidation trial may be requested only by an interested party (Article 123(2)). In patent infringement litigation, the defendant can file a plea seeking invalidation of the patent (Article 104-3(1)). A plea for patent invalidation can also be filed by any party that cannot request a patent invalidation trial (Article 104-3(3)).

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

A patent opposition must be filed within six months of publication of the patent in the Gazette. In contrast, a patent invalidation trial may be requested at any time – even after the patent has expired (Article 123(3)).

4.8 What are the grounds to file an opposition?

The grounds for revocation in patent opposition proceedings are as follows (Article 113(1)):

  • An amendment to the description, claims or drawings attached to a request exceeds the scope of the original matters described in the application Article 17-2(3) of the Patent Law).
  • The applicant is a foreign national that is not domiciled, resident or established in Japan and certain conditions are not met (Article 25).
  • The patent application does not relate to an invention (Article 2(1); Article 29(1)).
  • The invention is not industrially applicable (Article 29(1)).
  • The invention was publicly known, publicly worked, described in a publication or made available to the public through electric telecommunication lines prior to filing (Articles 29(1)(i) to (iii)).
  • The invention could have been easily made based on a publicly known invention prior to filing (Article 29(2)).
  • The invention of the present application is identical to an invention or device disclosed in the description, claims or drawings originally attached to an earlier application which was published after the present application. However, this shall not apply if the inventors or the applicants are the same (Article 29-2).
  • The invention is likely to disrupt public order, corrupt public morals or harm public health (Article 32).
  • The patent application is not filed on the earliest date (Articles 39(1) to (4)).
  • The patent was granted in violation of the provisions of any relevant treaty (Article 113(1)(iii)).
  • The invention does not meet the enablement requirements (Article 36(4)(i)).
  • The invention does not meet the support requirements (Article 36(6)(i)).
  • The invention does not meet the clarity requirements (Article 36(6)(ii)).
  • The invention does not meet the conciseness requirements (Article 36(6)(iii)).
  • The description, claims or drawings attached to the request with respect to a patent based on a foreign-language application are not within the scope of the matters written in the foreign language (Article 113(1)(úD)).

With regard to the grounds for invalidation in patent invalidation trials, please see question 4.3.

4.9 What are the possible outcomes when an opposition is filed?

In Japan, unlike in the United States, there is no procedure to decide whether to initiate a patent opposition or invalidation trial with evidence which satisfies the standards of proof. In a patent opposition or an invalidation trial, the patent will ultimately be revoked, maintained or maintained with corrections. The patent holder will be given at least two opportunities to make corrections in both an opposition and an invalidation trial.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

The legal criteria for both patent oppositions and invalidation trials are the same as those for patent examination. As patent opposition is an ex parte procedure, the burden of proving that the patent should be revoked rests with the JPO. As an invalidation trial is inter partes, the burden of proof rests with the party that commenced the trial.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

If the patent holder is not satisfied with the decision in a patent opposition, it may appeal to the Tokyo High Court (IP High Court), with the JPO commissioner as defendant, because the opposition procedure is ex parte. The opponent cannot appeal (Article 178) (Article 179).

By contrast, either party may appeal the decision in a patent invalidation trial to the Tokyo High Court (IP High Court) if it is dissatisfied with the trial decision, because the patent invalidation trial procedure is inter partes (Articles 178 and 179).

5 Patent enforceability

5.1 What makes a patent unenforceable?

Patents are unenforceable if they are subject to any of the grounds for invalidation (Article 104-3 of the Patent Law).

Unlike in the United States, in Japan a patent applicant is not required to submit an information disclosure statement (IDS); patents are enforceable regardless of an IDS submission.

A patent right further cannot be exercised if enforcement would violate the Antitrust Law. Please see question 11.1.

In May 2014 the IP High Court ruled that if the holder of standard-essential patents seeks an injunction against a prospective licensee that would ordinarily be granted a licence under the ‘fair, reasonable and non-discriminatory' condition, this is deemed an abuse of right (2013-(Ra)1007) (Civil Code, Article 1(3)).

5.2 What are the inequitable conduct standards?

As outlined in question 5.1, patents are not enforceable if enforcement would violate the Antitrust Law or is deemed an abuse of rights in the Civil Code.

5.3 What duty of candour is required of the patent office?

The Patent Law does not require a strict duty of information disclosure, as in the case of the IDS in the United States. As mentioned in question 5.1, patents are unenforceable if they are subject to any of the grounds for invalidation.

The Patent Law stipulates that if an applicant which is entitled to file for a patent does not disclose published literature or a published invention, this will constitute grounds for rejection. However, the patent will not be invalidated merely because the publication has not been disclosed (Article 49(1)(v)).

6 Patent infringement

6.1 What Constitutes Patent Infringement?

The unauthorised working of an invention by a third party may be regarded as patent infringement.

Under the Patent Law (Articles 2(3)(i) to (iii)), the ‘working' of an invention involves the following activities:

  • where the invention is a product:
    • producing, using, assigning or leasing the product;
    • if that product is a computer program, providing it through electric telecommunication lines; and
    • exporting or importing the product, or offering it for assignment or lease (including displaying the product for the purpose of assignment or lease);
  • where the invention is a process, using the process; and
  • where the invention is a process for producing a product, using, assigning, leasing, exporting or importing the product produced by the process, or offering it for assignment or lease.

In addition, the following acts constitute indirect infringement (Article 101(1)):

  • where the invention is a product, producing, leasing, assigning or importing, or offering for assignment or lease, any goods that are used exclusively to produce that product commercially;
  • where the invention is a product, producing, assigning, leasing or importing, or offering for assignment or lease, any items commercially, excluding those widely distributed in Japan, if:
    • they are used to produce the patented product;
    • they are indispensable to solve the problems addressed by the invention; and
    • the invention is known to be a patented invention and the items are used to work the invention;
  • where the invention is a product, possessing the product for the purpose of assigning, leasing or exporting it commercially;
  • where the invention is a process, producing, assigning, leasing or importing, or offering for assignment or lease, any item to be used exclusively in the commercial use of the patented process; and
  • where the invention is a process, producing, assigning, leasing or importing, or offering for assignment or lease, any items commercially, excluding those widely distributed in Japan, if:
    • they are used to work the process;
    • they are indispensable to solve the problems addressed by the invention; and
    • the invention is known to be a patented invention and the items are used to work the invention; and
  • where the invention is a process for producing a product, possessing a product produced by that process for the purpose of assigning, leasing or exporting it commercially.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes. The Supreme Court judgment in the Ball Spline Bearing case (24 February 1998) specified the following requirements in relation to the doctrine of equivalents:

  • The relevant portion is not an essential part of the invention.
  • The purpose of the patented invention can still be achieved and the same function or effect can be performed by replacing this portion with the product.
  • This replacement could be easily arrived at by a person with ordinary skill in the art at the time of the product's manufacture.
  • The product is not publicly known and a person with ordinary skill in the art could not easily arrive at the product at the time of filing the patent invention.
  • There are no circumstances such as the intentional exclusion of the product from the claims during prosecution of the patent application.

The court held that where a product meets these requirements, it should be regarded as equivalent to the elements of the patent claim and as falling within the technical scope of the patent, even if the relevant portion of the claimed invention is different from the product.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

A patent holder cannot exercise its patent right in jurisdictions in which the patent has not been granted. Therefore, if a patent has been granted in Japan only, any party that infringes the patent outside Japan is not liable for that infringement.

A specific type of infringement equivalent to induced infringement in the United States is not recognised in Japan.

6.4 What are the standards for wilful infringement?

Under private law, ‘wilful infringement' is intentional infringement committed in the expectation of achieving a certain result. However, unlike in the United States, punitive damages cannot be imposed for wilful infringement in Japan.

6.5 Which parties can bring an infringement action?

The Patent Law entitles a patent holder and an exclusive licensee to seek an injunction and claim for damages. They can file an infringement suit when their patent or exclusive licence is infringed (Articles 100(1) and 102(1) to (4) of the Patent Law).

6.6 How soon after learning of infringing activity must an infringement action be brought?

A patent holder or exclusive licensee must file an infringement suit within three years of learning of the infringement, due to the applicable limitation period for seeking damages for a tort action under the Civil Code. Under the statute of limitations, the right to claim damages expires after three years (Article 724 of the Civil Code).

In addition, under the statute of limitations, a claim for unjust enrichment must be brought within 10 years of the infringing act (Article 167(1) of the Civil Code).

In order to seek an injunction, the patent must be valid at the time the decision on infringement is rendered. For example, if the remaining patent term is less than one year, the patent holder cannot expect to gain a practical advantage from litigation, since the right may no longer be valid by the time the decision is issued.

6.7 What are the pleading standards to initiate a suit?

Litigation commences once a complaint is filed.

6.8 In which venues may a patent infringement action be brought?

As outlined in question 6.9, patent infringement litigation may be filed at the Tokyo District Court or the Osaka District Court, depending on jurisdiction.

6.9 What are the jurisdictional requirements for each venue?

The Code of Civil Procedure stipulates that:

  • an action generally falls under the jurisdiction of the court at the place where the defendant is located (Article 4);
  • an action involving a property right falls under the jurisdiction of the court at the place where the obligation is fulfilled (Article 5); and
  • an action for tort falls under the jurisdiction of the court at the place where the tort occurred (Article 5).

If the relevant place falls under the territorial jurisdiction of the Tokyo High Court, the Nagoya High Court, the Sendai High Court or the Sapporo High Court, the infringement suit falls under the exclusive jurisdiction of the Tokyo District Court. Likewise, if the relevant place falls under the territorial jurisdiction of the Osaka High Court, the Hiroshima High Court, the Fukuoka High Court, or the Takamatsu High Court, the action falls under the exclusive jurisdiction of the Osaka District Court (Article 6 of the Code of Civil Procedure).

Consequently, an infringement suit may be filed at the place where the defendant is located. A claim for damages may be filed with the court at the place where the infringing acts (eg, the sale of infringing products) occurred or the place where the plaintiff is located, with either the Tokyo District Court or the Osaka District Court having jurisdiction accordingly.

6.10 Who is the fact finder in an infringement action?

The fact finding is conducted by the court. There is no jury system in civil courts in Japan.

6.11 Does the fact finder change based on venue?

No.

6.12 What are the steps leading up to a trial?

No steps leading up to trial are required in Japan. Litigation commences once a complaint is filed.

6.13 What remedies are available for patent infringement?

The patent holder or its exclusive licensee (hereinafter the ‘rights holder') may claim damages and seek an injunction for patent infringement at either the Tokyo District Court or the Osaka District Court.

The amount of damages is determined by either one of the following methods (Articles 102(1) to (3) of the Patent Law):

  • an amount which is calculated by the following formula:
    a × (b-c) + d
    where:
    a = the profit per unit of products which would have been sold by the rights holder if there had been no infringement;
    b = the quantity of articles assigned by the infringer within the production capability of the rights holder;
    c = a quantity which, for whatever reason, could not have been sold by the rights holder (hereinafter called the ‘specific quantity'); and
    d = the amount of money that the rights holder would have received for a licence fee for that quantity exceeding the production capability or specific quantity;
  • the amount of profits which the infringer has gained by the infringement; or
  • an amount equivalent to a licence fee.

To determine the amount of damages, the amount of compensation for damages which the rights holder would have received to permit the specific working of the patented invention may be calculated in light of an agreed amount between the parties on the premise that infringement has been found (Article 102(4) of the Patent Law).

With regard to the right to seek an injunction, the rights holder may demand that a party which has infringed or is likely to infringe the patent or exclusive licence cease or prevent such infringement (Article 100(1)(2) of the Patent Law).

6.14 Is an appeal available and what are the grounds to appeal?

Appeals in patent infringement suits fall under the exclusive jurisdiction of the Tokyo High Court (IP High Court) (Article 6(3) of the Code of Civil Procedure).

A party that disagrees with the judicial decision of the Tokyo District Court or the Osaka District Court may appeal to the Tokyo High Court.

A party that disagrees with the judicial decision of the Tokyo High Court may file a final appeal with the Supreme Court (Article 311(1) of the Code of Civil Procedure), but only on the grounds that the judgment reflects an error in interpretation of the Constitution or that a serious error was made in the procedure of the judgment (Article 312 (1)(2) of the Code of Civil Procedure).

7 Discovery

7.1 Is discovery available during litigation?

Unlike the United States, Japan has no discovery system.

7.2 What kinds of discovery are available?

As mentioned in question 7.1, Japan has no discovery system.

In order to assist with the collection of evidence, if it is possible that a patent has been infringed, forthcoming revisions to the Patent Law provide that neutral technical experts can enter a factory where the alleged infringement is likely taking place and conduct an on-site investigation, in order to verify the infringement and submit a report to the court accordingly. The revisions should take effect in 2020 (Articles 105-2 to 105-2-10 of the Patent Law).

7.3 Are there any limitations to the amount of discovery allowed?

As mentioned in question 7.1, Japan has no discovery system.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

Generally, the tribunal will define the claim terms when examining the assertions and evidence of the plaintiff and the defendant, before it starts examining the amount of damages.

8.2 What is the legal standard used to define claim terms?

The Patent Law provides that the technical scope of a patent invention is to be defined based on statements in the scope of the claims (Article 70(1)).

Article 70(2) further provides that the meaning of the terms in the scope of the claims is to be interpreted in view of the statements in the description and drawings.

The doctrine of file wrapper estoppel is also applicable.

8.3 What evidence does the tribunal consider in defining claim terms?

As mentioned in question 8.2, the Patent Law provides that the technical scope of a patent invention is to be defined based on statements in the scope of the claims (Article 70(1)).

Article 70(2) further provides that the meaning of the terms in the scope of the claims is to be interpreted in view of the statements in the description and drawings.

If the claim terms still cannot be clearly defined, technological common knowledge – including technical books, dictionaries and so on – available at the time of filing will be considered.

If the patent holder asserts an interpretation which is different from that determined in the examination stage during the infringement litigation, the doctrine of file wrapper estoppel will apply. This means that it is not permissible to change the assertion during infringement litigation.

9 Remedies

9.1 Are injunctions available?

Injunctions are available. The Patent Law stipulates that a patent holder or its exclusive licensee may request an infringer or a likely infringer to cease or prevent the infringing act (Article 100(1))

9.2 What is the standard to obtain an injunction?

The procedure for seeking an injunction is different from that for seeking compensation for damages and does not require that subjective requirements – such as proof of willful misconduct or negligence – be met. If an infringing act is objectively found, the rights holder can seek an injunction.

A patent holder or an exclusive licensee is restricted from seeking an injunction where a non-exclusive licence has been granted by an arbitration decision of the Japan Patent Office commissioner (Articles 83 and 92 of the Patent Law) or the minister of economy, trade and industry (Article 93 of the Patent Law), or where an injunction constitutes an abuse of rights (Article 1(3) of the Civil Code). As yet, no such arbitration decisions have been issued in Japan.

With regard to an abuse of rights, as discussed in question 5.1, in May 2014 the IP High Court ruled that if the holder of standard-essential patents seeks an injunction against a prospective licensee that would ordinarily be granted a licence under the ‘fair, reasonable and non-discriminatory' condition, this is deemed an abuse of rights (2013-(Ra)1007) (Civil Code, Article 1(3)).

In addition, where the infringer sold infringing products only in the past and is unlikely to sell them in the future, the rights holder cannot seek an injunction.

9.3 Are damages available?

If a patent is infringed through wilful misconduct or negligence, causing the patent holder to incur losses or damages, the patent holder can seek compensation for damages in accordance with the Civil Code (Article 709)

Negligence is presumed under the Patent Law (Article 103). Therefore, the alleged infringer must prove that there was no negligence. However, it is almost impossible to prove this in Japan.

9.4 What types of damages are available?

As mentioned in question 6.13, the amount of damages is determined using one of the following methods (Articles 102(1) to (3) of the Patent Law):

  • an amount which is calculated by the following formula:
    a × (b-c) + d
    where:
    a = the profit per unit of products which would have been sold by the rights holder if there had been no infringement;
    b = the quantity of articles assigned by the infringer within the production capability of the rights holder;
    c = a quantity which, for whatever reason, could not have been sold by the rights holder (hereinafter called the ‘specific quantity'); and
    d = the amount of money that the rights holder would have received for a licence fee for that quantity exceeding the production capability or specific quantity;
  • the amount of profits which the infringer has gained by the infringement; or
  • an amount equivalent to a licence fee.

To determine the amount of damages, the amount of compensation for damages which the rights holder would have received to permit the specific working of the patented invention may be calculated in light of an agreed amount between the parties on the premise that infringement has been found (Article 102(4) of the Patent Law).

9.5 What is the standard to obtain certain types of injunctions?

According to the Civil Provisional Remedies Law, a preliminary injunction is available only where necessary to prevent major losses or urgent risks (Article 23(2)). However, as a matter of fact, a preliminary injunction is available where a patent holder manufactures and/or sells the patented products and can prove that the alleged infringer is involved in the infringing acts.

In addition, the patent holder must make a security deposit in order to obtain a preliminary injunction.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Unlike in the United States, punitive damages are not available in Japan. As mentioned in question 9.4, the amount of compensation for damages which the rights holder would have received to permit the specific working of the patented invention may be calculated in light of an agreed amount between the parties on the premise that infringement has been found (Article 102(4) of the Patent Law).

With regard to the amount of royalties as regulated under Article 102(3) of the Patent Law, the patent holder is free to claim an amount of compensation for damages which exceeds the amount as determined under that article (Article 105(5) of the Patent Law).

9.7 Are sanctions available?

While the patent holder may file a request for an injunction and seek compensation for damages from an alleged infringer, no further sanctions are available. The Civil Procedure Code sets forth general provisions on sanctions in litigation.

9.8 What kinds of sanctions are available?

If a witness fails to appear at a court hearing without legitimate reason, he or she must bear any court costs incurred due to his or her absence, as well as an administrative fine of up to JPY 100,000 and potentially imprisonment (Articles 192 and 193 of the Civil Procedure Code).

If a witness refuses to give testimony in court without legitimate reason, the above provisions apply mutatis mutandis (Article 200 of the Civil Procedure Code).

The same provisions apply where a witness refuses to swear an oath without legitimate reason (Article 201(5) of the Civil Procedure Code).

If a third party does not comply with an order to submit a document, it will be subject to an administrative fine of up to JPY 200,000 (Article 225 of the Civil Procedure Code).

9.9 Can a party obtain attorneys' fees?

Japanese law does not apply the ‘loser pays' rule, which requires the losing party to pay the winning party's attorneys' fees. However, if the damages claimed are based on an unlawful act, not on unjust enrichment, a certain percentage of the compensation for damages (usually 10%) is additionally awarded as the equivalent to attorneys' fees; although this does not reflect the amount of attorneys' fees actually incurred in practice.

9.10 What is the standard to obtain attorneys' fees?

As mentioned in question 9.9, the claim for damages should be based on an unlawful act. A certain percentage of the compensation for damages is additionally awarded, although this does not reflect the amount of attorneys' fees actually incurred in practice.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

The Patent Law provides for the grant of both exclusive licences (Articles 77(1) to (5)) and non-exclusive licences (Articles 78(1) and (2)). Under an exclusive licence, the licensee is the only party that may work the patented invention; even the patent holder itself cannot do so. An exclusive licence must be registered with the Japanese Patent Office (JPO).

An exclusive licence may be transferred with the consent of the patent holder, except where it is transferred together with the business in which it is worked or in case of inheritance or other general succession (Article 77(3)). The patent holder's consent is also required where the licensee wishes to set a pledge on the exclusive licence or grant a non-exclusive licence to other parties (Article 78 (4)).

A non-exclusive licence may be granted to more than one party in general and need not be registered with the JPO. A so-called ‘monopolistic non-exclusive licence' grants a non-exclusive licence to only one counterparty to a contract. It is similar to an exclusive licence, except that it allows the patent holder to reserve its own right to work the patented invention. If there is another party that wishes to conclude a non-exclusive licence, it can obtain a sub-licence from the monopolistic non-exclusive licensor.

10.2 What limits can a patent owner impose on a licence?

The patent holder may limit the duration, scope and geographical area in the terms of either an exclusive licence (Article 77(2)) or a non-exclusive licence (Article 78(2)).

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

The Antitrust Law provides that it does not apply to any acts that are deemed to constitute the exercise of rights under the Copyright Law, the Patent Law, the Utility Model Law, the Design Law or the Trademark Law (Article 21).

Therefore, the Antitrust Law applies only to acts which are deemed not to constitute the exercise of patent rights.

Even though an act may be superficially recognised as constituting the exercise of a patent right, it is not recognised as such if it does not meet the purpose of the Patent Law. The Antitrust Law shall apply to these kinds of acts.

The Japan Fair Trade Commission has established Guidelines for the Use of Intellectual Property under the Antitrust Law. The guidelines set out some examples of acts that are not recognised as constituting the exercise of patent rights, including the following:

  • private monopolisation and unreasonable restraint;
  • unfair trade practices;
  • the imposition of limitations on the scope of the use of technology; and
  • the imposition of other limitations.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.