An International Guide to
Patent Case Management for Judges

7.3 Judicial institutions, jurisdiction and personnel

This section provides an overview of the key judicial institutions of the patent system in Japan, including IP divisions of the Tokyo District Court and Osaka District Court, the IP High Court and the Supreme Court. The role and jurisdiction of each institution are outlined, as well as the relevant review or appeal structure. This section also describes the role of key personnel at these institutions, including district court and IP High Court judges and Supreme Court Justices. The role of specialized court officers, such as judicial research officials and technical advisors, is also discussed. In Japan, there is no jury for civil cases including IP cases.

7.3.1 Specialized intellectual property judiciary

Japan has adopted a three-tier court system in relation to civil matters (see Figure 7.8), such as those relating to the Patent Act. For example, in a patent infringement lawsuit, a party who is dissatisfied with the judgment of a court of first instance (the Tokyo District Court or the Osaka District Court) can appeal to the court of second instance (the IP High Court), and a party who is dissatisfied with that decision can appeal to the court of third instance (the Supreme Court). The Court Act, the Code of Civil Procedure and other related laws determine which court has jurisdiction over each case.¹¹⁵

Source: Judicial Administration Structure for IP Disputes provided by the Supreme Court of Japan, available at www.wipo.int/wipolex/en/judgments/j-admin/jp.html.

7.3.2 Tokyo District Court and Osaka District Court

7.3.2.1 Jurisdiction

A patentee may file a civil lawsuit seeking an injunction against, or damages for, an alleged infringement of a patent.

Patent infringement lawsuits handled by a district court are under the exclusive jurisdiction of the Tokyo District Court or the Osaka District Court. One or both of these courts will have jurisdiction depending on the location of the defendant, the plaintiff (if damages are sought) and where the infringement occurred. The Tokyo District Court has jurisdiction if this location is in the northern or eastern parts of Japan, and the Osaka District Court has jurisdiction if the location is in the southern or western parts of Japan.¹¹⁶

For the period from 2014 to 2021, approximately 30 percent of patent infringement cases that came before the Tokyo District Court and Osaka District Court were settled. Of the remainder, 21 percent had the claim upheld, 44 percent were dismissed, 2 percent were dismissed without prejudice, and 2 percent upheld confirmation of the nonexistence of obligation. In 2021, the average duration of an IP case handled by the Tokyo District Court or Osaka District Court (from commencement to a final decision) was 15.2 months.¹¹⁷

The Tokyo District Court has made the following documents available in English (via the IP High Court website):

• Guideline for Proceedings of Patent Infringement Suit; and
• Guide to IP Conciliation Proceedings.¹¹⁸

The Osaka District Court has made the following documents available in English (via the IP High Court website):

• Flow of Procedures for a Patent / Utility Model Right Infringement Suit;
• Instructions for Proceedings of the Stage for Examination on Damages;
• Guidelines for IP Conciliation Proceedings at the Osaka District Court; and
• Explanation of the New IP Conciliation at the Osaka District Court.¹¹⁹

See Section 7.6 for more information about the district court process in relation to patent infringement lawsuits.

7.3.2.2 Key personnel

7.3.2.2.1 District court judges

As of April 1, 2021, the Tokyo District Court had 12 judges in four divisions that specialize in IP-related cases, and the Osaka District Court had 5 judges in two divisions. District court judges are appointed by the Cabinet from lists of candidates nominated by the Supreme Court. Most district court judges start their careers as assistant judges. Assistant judges are allowed to serve on the bench but are not authorized to deliver a judgment as a single-judge panel; they usually sit as a member of a three-judge panel. In certain circumstances, the Supreme Court may appoint an assistant judge to hear a case as a single-judge panel.¹²⁰

7.3.2.2.2 Conciliators

The IP divisions of the Tokyo District Court and Osaka District Court provide IP conciliation services. Part-time judicial officers called “conciliators” settle civil disputes through conciliation proceedings in which they have the same level of authority as a judge. They are generally appointed from among attorneys with at least five years’ experience in practice.¹²¹

7.3.2.2.3 Expert court officials

The Tokyo District Court, Osaka District Court and the IP High Court employ technical advisors and judicial research officials to help ensure the efficiency of court proceedings and the accuracy of decisions that involve highly specialized technical issues. The role of these expert court officials – in both the district courts and the IP High Court – is discussed in Sections 7.3.3.3.3 and 7.3.3.3.4.¹²²

7.3.3 Intellectual Property High Court

The IP High Court plays a very important role in setting the rules in relation to patent validity and patent infringement. It exercises jurisdiction over both administrative lawsuits against decisions made by the TAD of the JPO and patent infringement lawsuits. If the IP High Court finds an error in the decision of the TAD of the JPO or a district court, it may correct it and also establish the proper interpretation of patent law.

7.3.3.1 Jurisdiction over administrative lawsuits in relation to Japan Patent Office decisions

As noted in Section 7.2.3.4, a person may file a revocation action (an administrative lawsuit) with the IP High Court against the following TAD decisions:

• an appeal decision to refuse an invention in an appeal against an examiner’s decision of refusal;
• a decision to revoke a patent in an opposition to the grant of patent;¹²³ or
• a trial decision in either a trial for invalidation or a trial for correction.¹²⁴

Each of these lawsuits is under the exclusive jurisdiction of the IP High Court, as the court in charge of the first instance.¹²⁵ In an ex parte case, such as a trial against an examiner’s decision of refusal, the JPO Commissioner will be the defendant. In the case of an inter partes case, such as a patent invalidation trial, the party unsuccessful at the JPO will be the plaintiff.

In 2021, the average duration of an administrative lawsuit in relation to a decision of the TAD, handled by the IP High Court (from commencement to a final decision), was 9.8 months.¹²⁶

The IP High Court is required to determine whether a TAD decision is legally correct. If it reverses the decision, it will remand the case to the JPO for further proceedings. The TAD will then conduct the proceedings again and make another decision that a patent right is either granted, corrected or revoked. If the IP High Court finds that the JPO decision in relation to an examiner’s decision of refusal is legally incorrect, it can only revoke the JPO decision. The IP High Court has no authority to grant a patent.

The IP High Court has made a number of documents available in English, including:

• Proceedings of Suits against Appeal/Trial Decision Made by the JPO (For Patent/Utility Model), which provides information for parties regarding preparation; and
• Flow of Procedures in the Intellectual Property High Court of Suits against Appeal/Trial Decision Made by the JPO (Patent/Utility Model), which sets out the process.¹²⁷

See Section 7.5 for a detailed description of the IP High Court process for administrative lawsuits in relation to JPO decisions.

7.3.3.2 Jurisdiction over patent infringement lawsuits

Any appeal against a patent infringement decision of the district courts is under the exclusive jurisdiction of the IP High Court.¹²⁸ The scope of the review of the IP High Court is not limited to legal issues. The court may decide on factual as well as legal issues.

In 2021, the average duration of an IP case handled by the IP High Court (from commencement to a final decision) was 7.0 months. Section 7.6 provides more information about the IP High Court process in relation to patent infringement lawsuits.

7.3.3.3 Key personnel

7.3.3.3.1 Intellectual Property High Court judges

The IP High Court consists of four divisions. Each division consists of several judges, including a presiding judge. The Chief Judge of the IP High Court is usually a presiding judge of the First Division. As of April 1, 2021, the IP High Court had 15 judges in four divisions, and the Osaka High Court had 4 judges in one division that handled IP-related cases as well as general civil cases.

Each division generally handles cases by forming panels of three judges for each case. The same panel will handle administrative lawsuits against a JPO decision in a trial for invalidity and appeals against a district court decision in a patent infringement lawsuit, including in relation to the same patent.

7.3.3.3.2 Grand Panel

In exceptional cases, the IP High Court may handle patent cases by forming a panel of five judges. Such a formation is called a Special Division or, more commonly, a Grand Panel. The Chief Judge of the IP High Court will set up the Grand Panel, and the four presiding judges from each of the four divisions serve as members of the Grand Panel. The Grand Panel conducts proceedings that require highly specialized technical knowledge and when the outcome may have a significant impact on business activities and the economy. Grand Panels help maintain consistent decision-making and interpretation of IP law.

A Grand Panel judgment has been delivered every year since 2012. As of June 2022, the latest judgment was rendered in February 2020. In this Grand Panel case, the IP High Court made a ruling on the calculation of the amount of lost profit of a patentee under the Patent Act in a case where the feature of a patented invention that was worked was only a part of the product.¹²⁹

7.3.3.3.3 Technical advisors

In 2003, the Code of Civil Procedure was amended to introduce a technical advisor system to ensure high-quality decisions in proceedings in which specialized and technical matters are at issue, such as IP proceedings. Article 92-2(1) of the Code of Civil Procedure provides the following:

If the court finds that it will need to have a technical [advisor] participate during deliberations on the necessary particulars involved in the arrangement of issues and evidence or the progress of litigation proceedings in order to clarify a matter related to the litigation or create a framework for smooth progress in the litigation proceedings, the court, after hearing the opinions of the parties, may rule to have a technical [advisor] participate in the proceedings so as to hear an explanation based on the technical [advisor’s] expert knowledge. In such a case, the presiding judge shall have the technical [advisor] give an explanation in writing or orally on a date for oral arguments or preparatory proceedings.

The IP High Court, Tokyo District Court and Osaka District Court maintain lists of persons with relevant knowledge and experience in a technical field, such as university researchers and patent attorneys (see Figure 7.9). Technical advisors are selected from these lists.

Source: Reprinted from IP High Court (2022).¹³⁰

A court may select a technical advisor for a certain case to clarify the matters related to the litigation or to ensure the smooth progress of court proceedings.¹³¹ Technical advisors will also be involved in explanatory sessions (see Section 7.6).

A technical advisor must provide a fair and neutral opinion on highly specialized and technical matters based on their expertise. However, the expert advisors’ explanations are not to be treated as evidence. It is the judge’s role to deliver a judgment after clarifying the issues. It is not the technical advisor’s role to present evidence to a judge as to whether a patent is valid, invalid or infringed.

To date, approximately 200 technical advisors have been appointed in Japan. As of April 1, 2019, more than 2,100 expert advisors had been involved in IP proceedings.

7.3.3.3.4 Judicial research officials

Judicial research officials are full-time court staff members of the IP High Court and the IP divisions of the Tokyo District Court and the Osaka District Court. There are 11 judicial research officials for proceedings in the IP High Court, seven in the Tokyo District Court and three in the Osaka District Court. They include former JPO trial examiners and patent attorneys who have specialized knowledge in technical fields such as machinery, chemistry and electric equipment, as well as knowledge about the Patent Act and related matters.

In principle, judicial research officials are engaged in all technology-based IP-related litigation, such as those related to patents or utility models. They conduct research on technical matters relevant to the proceedings and the judicial decision for a case.

If the court finds it necessary, a judicial research official may, on the date of oral argument or during other similar proceedings:

• ask the parties questions or urge them to offer proof with regard to factual or legal matters;
• ask witnesses, the parties themselves or party-appointed experts questions;
• give an explanation based on expert knowledge; or
• state an opinion about the case to a judge.¹³²

7.3.3.4 English versions of judgments and case summaries

The IP High Court website includes English translations of selected IP judgments and case summaries of its own decisions and those of the Supreme Court and the district courts.¹³³

7.3.4 Supreme Court

Under the Constitution of Japan, the Supreme Court is the highest court in Japan, and judicial power is vested in it and in such lower courts as are established by law.¹³⁴ In the context of IP law, the Supreme Court’s role is to correct or modify the interpretation of IP laws of the IP High Court. In the past, the Supreme Court has delivered a limited number of judgments that have reversed decisions of the IP High Court.

The most recent decision of the Supreme Court that reversed an IP High Court decision was handed down in August 2019. In that case, the Supreme Court ruled in favor of the patentee, finding that the claimed invention satisfied the inventive step requirement as the invention could not be easily conceived by a person having ordinary skill in the art.¹³⁵

7.3.4.1 Jurisdiction

A party that is dissatisfied with the IP High Court’s decision may file a final appeal or a petition for the acceptance of a final appeal to the Supreme Court within two weeks from the date when an authenticated copy of the written decision is served.¹³⁶ If the party is located in a foreign country, 30 days is generally designated as an additional period.¹³⁷

The Supreme Court may accept a final appeal against a judgment issued by the IP High Court:

• as the court of first instance with respect to an administrative suit against a decision made by the TAD of the JPO; and
• as the court of second instance with respect to a patent infringement suit.¹³⁸

The grounds for final appeal to the Supreme Court are limited under the Code of Civil Procedure. Article 312 of the Code of Civil Procedure provides that a final appeal may be filed on a number of grounds, including on the grounds that:

• a judgment reflects an error in the interpretation of the Constitution; and
• a violation of law or regulations has clearly influenced the judgment.¹³⁹

For example, the Supreme Court may accept a final appeal if a judgment of the IP High Court involves a ruling that conflicts with Supreme Court precedent (or, if there is no Supreme Court precedent, a ruling that conflicts with IP High Court precedent). If the Supreme Court determines that there are no grounds for a final appeal, it will dismiss the petition without a hearing. Conversely, if it determines that there are grounds for a final appeal, it will hear oral arguments and then deliver a decision.

The Supreme Court only decides questions of law, and so questions of fact of a prior instance decision may not be contested at the Supreme Court.¹⁴⁰ The Supreme Court examines questions of law based only on the records of the lower courts concerned.

7.3.4.2 Justices and other personnel

The Supreme Court is composed of a Chief Justice and 14 other Justices. It is divided into three petty benches. Most cases are adjudicated by one of the benches. Three Justices constitute a quorum for deciding a case within a petty bench. However, if a final appeal involves an issue of constitutional interpretation, the Grand Bench, composed of the Chief Justice and all 14 other Justices, adjudicates the case.

A number of elite career judges are assigned to assist the Justices of the Supreme Court as judicial research officials, including in IP-related cases.