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2004 (Ju) 997, Minshu Vol. 59, No. 5

Date of Judgment: June 17, 2005


Issuing Authority: Supreme Court


Level of the Issuing Authority: Final Instance


Type of Procedure: Judicial(Civin( �b>


Subject Matter: Patent(Inventions)


Main text of the judgment (decision):


1. The jokoku appeal shall be dismissed.

2.The jokoku appellant shall bear the cost of the jokoku appeal.




Concerning Ground 5 for the petition for accepting the jokoku appeal argued by the attorneys for jokoku appeal NAKANO Kenichi, et al.

1. This is a case in which the jokoku appellee who has a patent right for the invention titled "search method for biopolymer-ligand stable complex structures" (hereinafter referred to as the "Patent Right") requires the jokoku appellant to discontinue the sale of the articles listed in Attachment B for the judgment of the second instance, alleging that the jokoku appellant infringes the Patent Right. The jokoku appellee has granted Company A an exclusive license under the Patent Right for the whole scope of the right.

2. It is appropriate to construe that a patent owner is allowed to claim injunction based on his/her patent right even if he/she has granted an exclusive license under the patent right, for the following grounds.
A patent owner shall have the right to claim injunction to suspend or prevent infringement of his/her patent right (Article 100(1) of the Patent Law). A patent owner who has granted an exclusive license shall lose the right to exploit the patented invention in the course of doing business to the extent that the exclusive licensee has been granted the exclusive right to exploit the patented invention (proviso of Article 68). The problem to be raised by this article is whether or not the patent owner shall also lose the right to claim injunction. In light of the language in the provision of Article 100(1) of the Patent Law, there are no grounds to construe that the patent owner who has granted an exclusive license is restricted from exercising the right to claim injunction. Also from a practical perspective, in cases where it is provided in the license contract that the amount of license fees shall be determined depending on the sales attained by the exclusive licensee, it is obvious that the patent owner has a practical reason to eliminate infringement of the patent right for the purpose of securing license fees. Furthermore, in general, if infringement of a patent right were left unattended, it might cause adverse conditions for the patent owner who intends to exploit the patented invention him/herself when the exclusive license is terminated for some reason. Therefore, it should be construed that the patent owner also needs to be allowed to exercise the right to claim injunction. Consequently, it should be construed that the patent owner does not lose the right to claim injunction even if he/she has granted an exclusive license.

3. For the reasons stated above, the judgment of the second instance that held that the jokoku appellee should be allowed to exercise the right to claim injunction based on the Patent Right can be accepted as justifiable. The jokoku appellant's argument cannot be accepted.

Therefore, the judgment was rendered in the form of the main text by the unanimous consent of the Justices.


(This translation is provisional and subject to revision.)