JAPAN / PATENTS / PATENT ENFORCEMENT

International Review of Industrial Property and Copyright Law, Vol 31 No 6, 2000

Enforcement of Patent Rights in Japan

Christopher Heath

This issue of the Review comprises seven articles on the enforcement of patent rights in, respectively, the United Kingdom, Germany, France, Italy, the Netherlands, the United States and Japan. The article begins by explaining the cultural reasons for the Japanese reluctance to litigate, which is reflected in the relatively small number of lawsuits. Moreover, both the system of civil procedure and the scheme of industrial property right protection were imported from the west. At the same time, industrial property rights were regarded primarily as tools for industrial development rather than as a form of private property. One result was that, "the courts until very recently interpreted patent claims very narrowly, therby favouring a domestic industry which for the most part of the last century thrived on small-scale improvements of basic inventions made by their foreign competitors". Against this background, the author describes the basics of civil procedure in Japan and the application of the procedure to the enforcement of patent rights in particular; the competent parties to patent cases; and the connection between infringement and invalidity action before and after the Texas Instruments case, decided as recently as April 11, 2000, by Japan’s Supreme Court. Summarising the effect of the action by Fujitsu against TI, the author observes that "the courts will henceforth be competent to decline a remedy in cases where the patent is obviously invalid and will have discretion to form their own opinion if the patent is obviously invalid". He refers to recent rules on the release of documents, having due regard to the possible damage caused by the unnecessary disclosure of trade secrets; and he concludes with a review of the legal remedies, including seizure, destruction and Customs procedures. [20036]