With the Digital Revolution dissolving walls between industries to make way for open innovation, now is the moment for SMEs and ventures to wield their outstanding technologies as a tool for major growth. Japan’s litigation system will be upgraded so that the patents that companies have strived to acquire can play their proper role in protecting prized technologies.
Review of the Patent Litigation System
RulingLaunchlitigation Infringement
ruling Damages trial
Patent infringement characteristics Patents easily infringed (publicly disclosed; no need for physical theft) Difficult to prove (evidence tends to reside with the infringer) Difficult to deter (no criminal case)
⇒ Need to prevent an “infringer wins” situation
Japan after amendment US UK Germany France
Evidence collection procedure
Inspection Discovery Disclosure Search order Inspection Saisiecontrefaçon
Outline
Court- appointed expert enters premises
Court enforcement officer assists where necessary
Mutual disclosure of wide-ranging case-related evidence based on a request from a party
Court issues an order where necessary
Parties exchange lists of documents to be disclosed based on a court order
* Limited scope of disclosure
Court- appointed supervising solicitor enters the premises
Court- appointed expert and court enforcement officer enter premises
Court enforcement officer and court-appointed expert enter premises
Time of use After filing After filing After filing
Before & after filing
Before & after filing
(usually before)
Before & after filing
Main penalty
Adverse inference
Deemed in contempt of
court (Imprisonment,
fines, etc.)
Deemed in contempt of
court (Imprisonment,
fines, etc.)
Deemed in contempt of
court (Imprisonment,
fines, etc.)
Criminal charges
Criminal charges
Reference 1: Other countries’ systems for evidence collection
(3) Inspection
decision Court
Plaintiff (Rights holder)
Defendant (Alleged infringer)
Court appoints a third person (expert)
・Expert (+ enforcement officer) ・Enters property, asks questions,
asks to be shown documents, operates equipment, measures, conducts experiments ・Plaintiff may not be present
(10) Decision to ink out
confidential information
(7) Report sent
Adoption ofevidence
(5) Inspection conducted
(6) Report creation
(12) Report
disclosure
(2) Statement of position
(1) Request
(4) Immediate
appeal
(4) Immediate
appeal
(11) Immediate
appeal
(11) Immediate
appeal
(8) Request for inking out of confidential information
Motion for challenge
Comparative weighting of need to prove infringement and need to protect confidentiality
Measures to protect confidentiality
(9) Content confirmed in camera by court alone Exceptionally, where deemed necessary by the court, the views of a party from the plaintiff’s side may be sought. However, content can only be disclosed to the plaintiff with the defendant’s approval.
Reference 2: Envisaged inspection system
Enhancement of the patent litigation system
(2) Determination of damages for portion beyond rights-holder’s production/sales capacity (Sum equivalent to licensing fee)
Sufficient compensation also for SMEs and ventures
(3) Increase in “sum equivalent to licensing fee”
Clearly state that the court’s determination that the patent is valid and that an infringement has occurred can be taken into consideration
<Damages><Evidence collection> * See Ref. 1 on other countries’ systems
1
Current damages
Volume of infringing products sold
Profit per unit
Sum equivalent to licensing fee
Rights-holder’s production/sales capacity
Infringement trial
(1) On-site examination by an expert [Inspection]
Court appoints a fair and neutral expert to enter the premises of the alleged infringer
【Related to Patent Act Article 105-2】
【Related to Patent Act Article 102】 * Same amendments in Utility Model Act Art. 29, Design Act
Art. 39, and Trademark Act Art. 38
Effective in cases where product is not available, or where infringement cannot be determined even by taking the product apart • Production methods • B2B products • Programs, etc.
Set rigorous requirements • Need to prove infringing actions • Probability of infringement • No other means of adequate evidence
collection • Avoiding an excessive burden on the alleged
infringer Introduce measures to protect
confidentiality • Motion for challenge in relation to
appointment of an expert • Inking out of confidential information in
reports • Criminal penalties for experts leaking
confidential information
* See Ref. 2 for detailed flow
2019
With a good customer experience becoming increasingly important as a source of competitiveness, Japan’s design and trademark systems will be enhanced to help companies protect digital technology- based designs, etc., and build their brands.
Review of the Design and Trademark Systems
A B C University
Example 1: Graphic images stored on the Cloud and provided via networks
Example 2: Graphic images projected on roads
Graphic images not recorded or displayed on articles
Building exterior and interior design Example 4: Branding through interior design (au Store, Ikebukuro Station West Entrance)
An effective color scheme limited to orange and white highlights the distinctively-shaped tables and counters and creates a sense of coherence.
(2) Enhancement of Related Design system
(3) Change to protection period for design rights The protection period for design rights will be extended from 20 years from the registration
date to 25 years from the application date
• Designs can be registered within 10 years of the initial Principal Design application (within approx. 8 months until now)
• Designs similar only to Related Designs can also be registered
Japan US Europe China Korea
Current Afteramendment Graphic images recorded or displayed on articles ○ ○ ○ ○ ○ ○
Graphic images not recorded on articles × ○ ○ ○ ○
Graphic images projected on places other than articles × ○ ○ × ×
Japan US Europe China Korea
Current Afteramendment
Exterior × ○ ○ ○ ×
Interior × ○ ○ × ×
International comparison of graphic image design protection
A distinctive exterior is created by forming a massive T shape out of numerous T-shaped blocks.
Example 3: Branding through building exterior design (DAIKANYAMA TSUTAYA BOOKS)
International comparison of spatial design protection
Japan US Europe China Korea
Current Afteramendment
Design rights protection period 20 years 25 years 15 years 25 years 10 years* 20 years
Initial date Registration Application Registration Application Application Application
Enhancement of the design system (1) Enhancing the scope of protection
Review of the trademark system Public interest bodies (local governments,
universities, etc.) with widely recognized trademarks may now grant non-exclusive licenses for these
International comparison of design rights protection periods
2
(4) Others Simplification of application procedures
• Introduction of system whereby multiple designs can be bundled into a single application • Elimination of article classifications as the standard at the time of application
Principal Design
Related Design
New registration possible
Atenza (2014)
Atenza (2012)
Atenza (2018)
Where the ball and handle parts making up the infringing product are manufactured or imported separately, they are not deemed infringements.
Subject to certain conditions, this will be regarded as a design right infringement.
Example 5: Beauty roller with a registered design Current
After amendment
Ball
Handle
【Related to Design Act Articles 2 & 8-2】 【Related to Design Act Article 10】
【Related to Design Act Article 21】
【Related to Trademark Act Article 31】
【Related to Design Act Articles 7 & 38, etc.】
* Amendment to 15 years currently being considered
Protection for designs continuously developed to one consistent concept
Anti-counterfeiting measures • Manufacturing or importing
products which have been broken up into parts for the purpose of avoiding crackdowns will also be punishable
etc.
2019
Example: ABC University trademark
used on a cup
A B C University