7.1 History of the patent system
This section outlines a brief history of the patent system in Japan, including the patent law, the Japan Patent Office (JPO), the Intellectual Property High Court (IP High Court) and the intellectual property (IP) divisions of other courts.1
7.1.1 History of patent law
The establishment of a patent system in Japan coincided with the opening of the country and its emergence as a modern industrialized nation state during the Meiji era.2 A patent system was considered necessary to support modernization efforts during this period. The Meiji Government enacted a patent law in 1871. However, it was not used and so was abandoned the following year. The first substantial patent law – the Patent Monopoly Act – was enacted on April 18, 1885, and the first patents were granted in August 1885, the very first being for “Hotta’s Method for Rust Stopping Paint and Painting Method.”3 In 1899, Japan became a member of the Paris Convention for the Protection of Industrial Property.4 At this time, foreigners were admitted into the Japanese industrial property system.
A 1921 revision of the patent law formed the basis of the current patent system in Japan. Its provisions included a “first-to-file” system, employee ownership of patent rights and an opposition system.5 The 1921 law was replaced in 1959 by the current Patent Act,6 which has been the subject of a number of amendments, including to ensure compliance with the Patent Cooperation Treaty (PCT).7
7.1.2 Japan Patent Office
The JPO was first established in 1885. Korekiyo Takahashi was its first Director General and was also instrumental in the development of the Patent Monopoly Act of 1885.8 By 1886, the JPO had received 1,384 applications and granted 205 patents. In 1968, Japan became the country with the highest number of patent and utility model applications filed per year – a position it held until 2005.9 When Japan acceded to the PCT in 1978, the JPO became an international searching authority under the PCT.10 The JPO is now one of the world’s largest patent offices, and its examination departments and Trial and Appeal department (TAD) are organized across a wide range of technical fields.11
7.1.3 Patent application trends
The number of patent applications filed with the JPO increased as Japan’s economy grew. However, patent applications have decreased in recent years. For example, in 1970, approximately 459,000 patent applications were filed with the JPO, compared to 289,200 patent applications in 2021.12 As for the number of PCT applications by country of origin, Japanese PCT applications have increased since the ratification of the PCT in 1978, with the exception of 2014, 2020 and 2021. In 2021, 49,040 Japanese applications were filed using the PCT procedure, behind China and the United States of America (U.S.).13
Figure 7.1 shows the total number of patent applications (direct and Patent Cooperation Treaty (PCT) national phase entry) filed in Japan from 2000 to 2021.
7.1.4 History of specialized intellectual property courts
Japanese courts have worked for many years to establish a specialized and expert system to handle cases related to IP rights. The IP High Court and IP divisions of the district courts have developed through a series of steps, the most significant of which are set out below.14
18.104.22.168 Intellectual property divisions of the Tokyo High Court
Prior to the establishment of the IP High Court, IP-related cases were dealt with by specialized divisions of the Tokyo High Court. A 1948 amendment of the Patent Act vested the Tokyo High Court with exclusive jurisdiction in relation to appeals against decisions of the JPO. This led to the creation of the Fifth Special Division in November 1950, which handled all IP-related cases in the Tokyo High Court alongside general civil appeal cases.
In March 1958, a division that specialized in IP and handled only IP-related cases was established as one of the civil divisions of the Tokyo High Court to replace the Fifth Special Division. Over time, the number of specialized divisions increased to four.
A Grand Panel system was introduced by the Act for Partial Revision of the Code of Civil Procedure, etc., which came into effect on April 1, 2004.15 The Grand Panel consists of five judges who hear actions relating to patents (so-called technology-related actions).16 At the same time, the Sixth Special Division was created within the Tokyo High Court to handle Grand Panel cases.
22.214.171.124 Intellectual property divisions of other courts
In 1961, a special division that handled IP-related cases and general civil cases was established within the Tokyo District Court. In 1964, a similar division was established in the Osaka District Court. Currently, the Tokyo District Court has four divisions that specialize in IP-related cases, and the Osaka District Court has two such divisions. The Osaka High Court also has a division that handles IP-related cases as well as general civil cases.17
126.96.36.199 Act for Establishment of the Intellectual Property High Court of 2004
The slowed economy of Japan increased awareness of the need to promote the creation, protection and use of IP in order to revitalize the economy. In June 2001, the Justice System Reform Council released an opinion paper that recommended the reform of various court processes, including those related to cases that required expertise for the purpose of “enhancing comprehensive measures.”18
The Intellectual Property Policy Outline, published in July 2002, included a suggestion for the creation of an exclusive jurisdiction of the Tokyo District Court and the Osaka District Court, so that specialized IP divisions in those courts could function as an independent “patent court.”19 These recommendations led to discussions of the possibility of creating an IP High Court to enhance the resolution of litigated disputes relating to IP rights.
In June 2004, the Act for Establishment of the Intellectual Property High Court was enacted.20 The purpose of the Act was to increase the effectiveness and efficiency of court proceedings for IP-related cases and to foster a specialized judicial system. The IP High Court was established on April 1, 2005, as a special branch of the Tokyo High Court. At this time, the four specialized divisions for IP-related cases and the Sixth Special Division of the Tokyo High Court were converted into four divisions and a Special Division of the IP High Court.
As of July 2021, the Grand Panel of the IP High Court has delivered 14 judgments.