An International Guide to
Patent Case Management for Judges

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

As noted in Section, 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. 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. Key personnel 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. 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 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.

Figure 7.9 Technical advisors involved in intellectual property proceedings as of September 1, 2021

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. 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 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