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Trends Relating to Patent Infringement Litigation in JAPAN
January 27-28, 2015AIPLA Mid-Winter Institute
IP Practice in Japan Committee Pre-Meeting SeminarShimako Kato
1
- Five Good Reasons to File Lawsuits in Japan -
Contents
1. Background
2. Current Status
3. Five Good Reasons to File Lawsuits
in Japan
2
1. Background
Osaka Tokyo
Court system in Japan (for patent cases)
4
IP High Court
Supreme Court
Tokyo/Osaka
District Court
1st instance
JPO
(Board of Appeal)
2nd instance
Final instance
Patent Infringement Lawsuit
IP High Court
Appeal/ Invalidation Trial
Final instance
Supreme Court
IP Divisions in Courts
Court Division Judge Judicial Research Official(Chosa-kan)
IP High Court 4 18 11
Tokyo District Court 4 16 7
Osaka District Court 2 6 3
5
At the date of January 1, 2015
Characteristic 1 - Technical support for patent cases
Judicial research official
(Chosa-kan)Technical adviser
Expert witness
Status Full-time court official Part-time court official Not a court official
Term of office No statutory term in general Two years No term
Remuneration Salary paid for full-time official
Allowance paid for each case
Fee for an expert opinion
Nature of explanation or
opinion
Carry out research on necessary matters as ordered by the court and report the research results. The research results may not be adopted as evidence.
Provide easy-to-understand explanations on scientific matters as the court’s adviser. The explanation may not be adopted as evidence.
Provide expert opinion on specific matters as requested by the court. The opinion may be adopted as evidence and relied on in the judgment.
6Source: http://www.ip.courts.go.jp/eng/documents/expert/index.html
Characteristic 2 – Validity ChallengeValidity Challenge is possible both before the infringementcourts and JPO (invalidation trial).
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Infringement court JPO
Invalidity defense Invalidation trial
So called “Double track system”
Characteristic 3 – Procedure (More rely on written argument)
8
ComplaintFiled
Oral Hearing (1)
PreparatoryHearing (1)
30days 40days 40days 40days 50days40days
PreparatoryHearing (2)
PreparatoryHearing (3)
PreparatoryHearing (4)
40days
30days
PreparatoryHearing (7)
PreparatoryHearing (5)Technical Presentation
PreparatoryHearing (6)Judges opinion revealed
Settlement
Oral Hearing (2)
Damage Calculation Stage
Judgment
PreparatoryHearings for settlement
PreparatoryHearing (8)
Model timeline of patent infringement lawsuits (Based on the Osaka district court’s model)
Defendant-Answer
Plaintiff-Infringement argument
Defendant-Rebuttal to Infringement-Invalidity defense
…….Plaintiff-Rebuttal to Invalidity -Infringement arguments
Technical Presentation
2. Current Status
9
Patent litigation filings (1997-2009)
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[US]Filed
34,214Decided
1,269
[GERMANY]※Filed
9,200Decided
3,660
[JAPAN]Filed
2,789Decided
730
※ Estimate of invention patent infringement litigation filings.Total for 2009 estimated at 1400, including utility model and inventorship/ownership
Source :”Where to win – Patent friendly courts revealed –” Managing Intellectual Property , www. Managingip.com September 2010
How do cases end?
11
Source: JPO
(2004-2013) (1995-2008) (2006-2009)
Patentee’s Winning Rate (District Court)
Judgment (43%)
Settlement (38%)
Withdrawal (13%)
Others (4%)
Trial Judgment (3.5%)
Summary Judgment (8%) Settlement (88.5%)
Japan (2013)
US (2009)
Source: JPO
3. Five Good Reasons to File Lawsuits in Japan
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1st Reason: Reliable Factual Finding on Technical Matters
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Opinion of experts,examined by jury.
Written opinion of expert,examined by Judges
Expert Opinion
Expert Opinion
Research result Judicial research official:
Full-time support
Explanation
Technical Advisor :Mostly at technical presentation
(Paper)
Judge
2nd Reason: Climate Change (1)
Judgment (a) Settlement (c)Year In favor of patetee (b) In favor of patentee (d)2006 27 5 50 27 42%2007 33 13 39 23 50%2008 25 13 49 29 57%2009 20 8 50 37 64%
Patentee's winning rate (b)+(d)/(a)+(c)
::
(1) Changes in courts • Actual winning rate of patentee (29th division of the Tokyo District Court)
• Upholding rate by the IP High Court regarding Invalidation Trial Decisions
Increasing
Pro-patent tendency
Source: JPO
Source: Hanrei Times No.1324 (2010) p.58
14
15
2nd Reason: Climate Change (2)(2) Discussion for enhancing stability of patents
•Recent discussion in the government (Intellectual Property Strategy Headquarters) - How to undermine effects of challenging validity of the patents?-
Proposed ideas:
- Introduction of “the clear and convincing evidence” standard
- Restriction of reasons for invalidity
- Introduction of “clarity requirement” in case of judging validity of the patents before infringement courts.
- Abolishment of Art.104 ter of the Patent Act (Abolishment of double track system)
3rd Reason: Speed (1)
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Average duration of IP cases in district courts Average duration (month)Number of incoming cases
1992 1994 1996 1998 2000 2002 2004 2006 2008 2010 2012
Incoming casesAverage duration
Source:”Report for study on acceleration of proceedings” Supreme Court of Japan
3rd Reason: Speed (2)
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Source:”Report for study on acceleration of proceedings” Supreme Court of Japan
1996 1998 2000 2002 2004 2006 2008 2010 2012
within 6 months from 6months to 1 year
from 1 year to 2 years
from 2 years to 3 years
from 3 years to 5 years more than 5 years
Duration of IP cases in district courts
4th Reason: Reasonable Cost
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MEDIAN LITIGATION COSTS (Thousand)
PATENT INFRINGEMENT SUIT, ALL VARIETIES 2005 2007 2009 2011 2013
End of discovery $350 $350 $350 $350 $350Inclusive, all costs $650 $600 $650 $650 $700
End of discovery ― ― ― ― $1,000Inclusive, all costs ― ― ― ― $2,000
LESS THAN $1 MILLION at RISK
$1-$10 MILLION at RISK
Source: AIPLA “Report of the Economic Survey 2013”
Around $ 59,000 to $236,000
Source: EPO "Assessment of the impact of the European patent litigation agreement (EPLA) on litigation of European patents" February 2006
Cost for a small to medium-scale patent litigation in the 1st instance
Cost for a small to medium-scale patent litigation in the 1st instance
Around $ 80,000 to $250,000 (by supposition)
5th Reason: Attractive Market
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$ 1,010billion
$ 953billion
Size of the market
Pharmaceutical products (2011)Mobile communication (2012) Source: “White paper on Information and Communications in Japan 2013” , Ministry of Internal Affairs and Communications, Japan
Source : “DATABOOK 2013”, Japan Pharmaceutical Manufacturers Association