Intellectual Property High Court 1. History of the Divisions of the Intellectual Property High Court ( IP High Court ) The Intellectual Property Division of the Tokyo High Court was first established in November 1950 as the 5th Special Division, specializing in the suits against appeal/trial decisions of the Japan Patent Office ( JPO ) and appeals from district courts on intellectual property actions. Subsequently, instead of assigning all IP cases exclusively to the 5th Special Division, four of the civil divisions of the Tokyo High Court were designated as divisions specializing in IP cases. The names of these specialized divisions were changed to the Intellectual Property Divisions on April 1, 2004. On April 1, 2005, the 1st to 4th Intellectual Property Divisions and the 6th Special Division (the Grand Panel of IP cases) were transformed into the 1st to 4th Divisions and the Special Division (the Grand Panel) of the IP High Court, respectively. 2. Jurisdiction The IP High Court hears suits against appeal/trial decisions of the JPO as the court of first instance, and civil cases relating to intellectual property as the court of second instance, etc. (1) Suits against appeal/trial decisions of the JPO Suits against appeal/trial decisions of the JPO come under the exclusive jurisdiction of the Tokyo High Court (Article 178(1) of the Patent Law, etc.), and are heard by the IP High Court as a special branch of the Tokyo High Court (Article 2(2) of the Law for Establishing the IP High Court ). (2) Appeals from district courts in civil cases Appeals from district courts in civil cases relating to patent rights, utility model rights, rights of layout-designs of integrated circuits, and rights of the authors of a program work come under the exclusive jurisdiction of the Tokyo High Court (Article 6(3) of the Code of Civil Procedure), and are heard by the IP High Court (Article 2(1) of the Law for Establishing the IP High Court). In consequence, all such appeals are exclusively heard by the IP High Court. Appeals from district courts in civil cases relating to design rights, trademark rights, copyrights (excluding rights of the authors of a program work), rights of publication, paracopyright, breeder's rights, and those relating to infringements of business interests by acts of unfair competition come under the jurisdiction of the 1
relevant high court among the eight high courts in Japan, depending on where the court of first instance is located. Therefore, the IP High Court, as a special branch of the Tokyo High Court, hears such appeals when they come under the jurisdiction of the Tokyo High Court (Article 2(1) of the Law for Establishing the IP High Court). (3) Other cases The IP High Court also hears other civil cases and administrative cases under the jurisdiction of the Tokyo High Court that need expertise on intellectual property to conduct proceedings and render judgments on the main issues (Article 2(3) of the Law for Establishing the IP High Court). The following diagram shows the jurisdiction and procedural flow for hearing suits against appeal/trial decisions of the JPO and appeals from district courts in civil cases relating to intellectual property. 3. Organization The IP High Court consists of a Litigation Department and the IP High Court Secretariat. The IP High Court consists of a chief judge, associate judges, judicial research officials of IP cases, court clerks, and court secretaries. Expert commissioners may also be involved in IP cases as ad hoc officials on a case-by-case basis. (1) Judges At the IP High Court, a panel of three judges, or the Grand Panel of five judges, conducts proceedings and renders judgments. The Grand Panel is called when a case 2
contains important issues and it is appropriate to provide a unified opinion of the Court on them without delay. (2) Judicial research officials Judicial research officials assigned to the IP High Court conduct researches, by order of judges, on technical matters as required to conduct proceedings and render judgments in cases relating to patents, utility models, and other intellectual property. From April 2005, they may, with the permission of the judges, question the parties during oral arguments or other occasions in order to clarify the facts of the case (Article 92-8 of the Code of Civil Procedure). (3) Court clerks Court clerks attend and record proceedings, manage the progress of the proceedings, prepare and keep case files, assist judges in researching relevant laws and regulations as well as judicial precedents, and carry out other services in proceedings as provided by law. (4) Court secretaries Court secretaries provide judicial administrative services. (5) Technical advisors Technical advisors may be involved, by decision of the court, to assist judges by providing explanations of technical knowledge in cases where their expertise is necessary to clarify issues of the case or to facilitate progress of the proceedings (Article 92-2 of the Code of Civil Procedure). Technical advisors are appointed by the Supreme Court as ad hoc officials from among experts such as university professors and researchers at public research institutes who have expertise in various scientific fields. The IP High Court is located on the 17th floor of the Tokyo Court Complex in Kasumigaseki, as a special branch of the Tokyo High Court. 3
4. Statistics for Cases Handled by the Intellectual Property High Court (1) The IP High Court exclusively handles suits against appeal decisions of the JPO, appeals from district courts in civil cases involving intellectual property matters, and other cases handled by the district courts under the jurisdiction of the Tokyo High Court. The web site of the IP High Court provides the following statistics: i) Number of Intellectual Property Appeal Cases Commenced and Disposed, and Average Time Intervals From Commencement to Disposition Courts of Second Instance; Intellectual Property High Court (~March 31 2005 Tokyo High Court) ii) Number of Suit Against Appeal/Trial Decision of JPO Commenced and Disposed, and Average Time Intervals From Commencement to Disposition (~March 31 2005 Tokyo High Court) iii) Number of Intellectual Property Cases Commenced and Disposed, and Average Time Intervals From Commencement to Disposition (Courts of First Instance; All District courts) iv) Number of Intellectual Property Appeal Cases Commenced and Disposed, and Average Time Intervals From Commencement to Disposition(Courts of Second Instance; All High courts) (2) Recent Circumstances (2-1) Average Time Required for Cases The average duration of civil cases (appeal suits), which relate to patents and the like (patent rights, utility-model rights, rights of layout-designs of integrated circuits, rights of the authors of a program work) is from 7 to ten 10 months recently, and for suits against appeal decision of the JPO is around 7 to 8 months. The average duration of intellectual property cases other than patent rights and the like in all district courts as courts of first instance is from 13 to 15 months, and for intellectual property appeal cases in all high courts as courts of second instance is from 6 to 9 months. (2-2) Trend of Judgments on Inventive Step There has been criticism that, regarding inventive step issues, the Court has been too strict in its application of this requirement in suits against appeal decisions of the JPO, specifically since 2003. In suits raised against ex parte appeal decisions that affirmed decisions of rejection reached in the examination process, for instance, only 10% or fewer of those appeal decisions were revoked and decided in favor of the applicants. In suits raised against inter parte appeal decisions that rejected requests for 4
patent invalidation appeal (to retain patent rights), it has been criticized that so many appeal decisions were revoked in favor of the appellants, while in suits raised against inter parte appeal decisions affirmative of patent invalidation, quite a few appeal decisions were affirmed, thus invalidating the patents. However, this tendency toward an overly strict application of the inventive step requirement is being relaxed. For example, in 2012, in 26 out of 132 suits raised against ex parte appeal decisions affirmative of the Examiners decision of rejection, the number of cases affirmative of patent rights by revoking the appeal decisions dismissing appeals were (raising the odds that the applicants can get an affirmative decision to about 20 percent). In the suits raised against inter parte appeal decisions revoking patent rights held in patent invalidation appeals, 5 cases were counted for revoking appeal decisions invalidating patents and 44 cases affirming patent retention appeal decisions of the JPO. Overall, around 61 percent of all cases were decided in favor of the patent holders. (2-3) Test for Judging Inventive Step In the IP High Court, more cases tend to be judged for inventiveness based on the totality of the circumstances, employing the motivation approach and the problemsolution approach used in the European Patent Office. On the motivation approach, whether a person of ordinary skill in the art could have thought of the invention at issue is judged by: i) identifying the features of the present invention; ii) identifying the features of the cited invention; iii) considering common grounds between the present invention and the cited invention in light of technical field, problems to be solved, functions, and so on; and iv) considering whether those common grounds as a cause or motivation could enable a skilled person to reach the present invention, whether there is any cause which could teach away from the present invention, and the like. On the motivation approach, if it is successfully demonstrated that one could easily reach the present invention starting from a problem to be solved which is different from that of the present invention, the present invention could be concluded to lack inventive step (see, for example, 2011 (Gyo-Ke) 10298, Multilayer Recording Medium case (IP High Court May 23, 2012)). On the problem-solution approach, the inventiveness is totally considered by: i) Identifying the features of the present invention; ii) Identifying the problem to be solved in the present invention; iii) Identifying the features of the cited invention; 5
iv) Determining if there is any suggestion in the cited reference of the problem to be solved of the present invention; and v) Making a total judgment based on the findings above. Where no suggestion of the problem to be solved in the present invention can be found in the cited reference, the inventiveness is confirmed on the problem-solution approach. In this approach, the problem to be solved in the present invention is objectively determined apart from the description of the specification, and it would be often decided that the problem to be solved is the same between the present invention and the cited invention. Regarding effects of the invention, a recent decision that revoked an appeal decision which did not accept results of experiments submitted afterwards in the appeal and statements regarding the effect of the invention referring to the results of the experiments should be noteworthy as a precedent indicative of judgment criterion where the effects of the invention are considered (see 2011 (Gyo-Ke) 10186, Sunscreen Compound case (IP High Court July 15, 2010). In this decision, the court decided that referring to experimental results submitted afterwards was admissible where there is a description regarding the effects of the invention in the present specification. For cases involving inventions having a numerical restriction, a precedent revoking an appeal decision which rejected the inventiveness claim and held that the appeal decision failed to correctly identify the facts on which the decision is based provides good guidance (see 2011 (Gyo-Ke) 10186. Full Hard Chloroethylene Resin Pipe case (IP High Court April 11, 2012)). In this decision, the court held that the feature defined by numerical expressions described in the specification was publicly used at the time of the filing date of the invention and therefore novelty and inventive step based on the feature in question should not be found unless the specification explains how such a numerical feature has a special technical significance. 5. Invalidity Defense in the Intellectual Property High Court After the Supreme Court decision (1998(O)364) on the Kilby Patent, it became possible to argue invalidity of the patent as a defense to infringement in an infringement lawsuit. In response to this decision, the Patent Law was revised in 2004 (Article 104-3 of the Patent Law) to provide that a patentee or an exclusive licensee thereof cannot enforce its patent right if the court holds that the patent would be invalidated in an invalidation appeal. Previously, invalidity of a patent could be judged both in an invalidation appeal of the patent in the JPO and in an infringement lawsuit filed for the same patent in the 6
court. Accordingly, opposite decisions regarding invalidity of the same patent might have been rendered by the JPO and the IP High Court. In order to avoid such inconsistency of decisions, the Patent Law was revised in 2012 to provide that, even when the JPO has invalidated or corrected a patent after a final decision of infringement has been rendered by the court, a party appealing that decision cannot assert that the patent was invalidated or corrected (Article 104-4 of the Patent Law). 7