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Patent Limitation During Infringement Proceedings – Comment on the Japanese Supreme Court Decision, “Sheet Cutter”

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  • Japan
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Notes

  1. Japanese Supreme Court, 11 April 2000, IIC 35(1):91–98 (2004) – "Kilby III" w. comment by Mineko Môri and Christopher Heath.

  2. The provision of Sec. 104ter was introduced by the law amendment of 2004 (Law No. 120/2004 of 18 June 2004).

  3. Law No. 120/2004 of 18 June 2004 and Law No. 63/2011 of 8 June 2011.

  4. 338(1) No. 8 CPC allows for a reopening of proceedings in a constellation where a court decision is based on an administrative act that is amended after the court decision has become final and conclusive, in other words has become res iudicata. Examples for retrials based on a subsequently revoked patent include Osaka High Court, decisions of 15 October 2004 and 29 March 2005, IIC 39(2):228–232 (2008) – "Fire Door"; Tokyo High Court, 31 January 2005, IIC 39(3):359 (2008) – "Platform Planks".

  5. For opportunity/timing for correction request in invalidation trials, see Shinpan Binran (Manual for Trial and Appeal Proceedings) of the JPO: Mukō shinpan no 4 hō betsu furō (Trial for Invalidation Flow Charts by IP Type) at http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/sinpan-binran_16/51-03.pdf; Tokkyokensha ni yoru Teisei no Seikyū (Request for Correction by Patentees) at http://www.jpo.go.jp/shiryou/kijun/kijun2/pdf/sinpan-binran_16/51-11.pdf.

  6. Supreme Court, 24 April 2008, IIC 40(6):721–727 (2009) – “Knife Processing Device” w. comment by Christopher Heath.

  7. By the law amendment of 1993 (Law No. 26/1993 of 23 April 1993), the independent correction trial could not be requested while an invalidation trial was pending before the JPO, yet a correction could be made where the outcome of the invalidation trial was contested before the courts (because in such case the case was pending before the court and not before the JPO). By the patent law amendment of 2003 (Law No. 47/2003 of 23 May 2003), the period for requesting a correction trial was limited to 90 days after the filing of a lawsuit for cancellation of the invalidation decision taken by the JPO.

  8. Law No. 63/2011 of 8 June 2011. Background and motives for the legislative change from the perspective of the JPO are described in the document Saishin no uttae tō ni okeru shuchō no seigen (Limiting the claims in a retrial litigation) at https://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/tokkyo_kaisei23_63/04syou.pdf.

  9. Law No. 63/2011 of 8 June 2011. This patent law amendment introduced the advance notice of an invalidation decision and the additional opportunity of correction after the advance notice within a certain period in addition to the prohibition of filing a correction request after filing an appeal against the invalidation decision of the JPO. On this point, see the JPO document, Shinketsu torikeshi soshō teiki go no teisei shinpan no seikyū no kinshi (Prohibition of a request for a correction trial after filing a lawsuit for cancellation of an invalidity decision of the JPO) at http://www.jpo.go.jp/shiryou/hourei/kakokai/pdf/tokkyo_kaisei23_63/03syou.pdf.

  10. This patent law amendment (Law No. 36/2014 of 14 May 2014) introduced the new opposition system that is slightly different from the old opposition system (the old system was abolished by the patent law amendment of 2003, Law No. 47/2003 of 23 May 2003). But the timing for the opposition request is limited to six months after the publication of the patent grant in the Patent Gazette (Sec. 113 Patent Act). Due to these strict time limits, the defendant (alleged infringer) in an infringement case will usually revert to an invalidation trial.

  11. IP High Court, 25 August 2009, 2059 Hanrei Jihō 125; IP High Court, 27 April 2010, IIC 43(2):230–231 (2012) – “Fuminosuke Original Ball Point Pen”, summary by Christopher Heath; and IP High Court, 17 September 2014, 2247 Hanrei Jihō 103.

  12. Summarized headnote translation by the translator/commentator of the above decision published in 2247 Hanrei Jihō 103. There are many comments on this case published in journals, for example, J. Mimura, 2274 Hanrei Jihō 168 (2016); K. Tosaki and T. Nakano, 100 Chizaiken Forum 20 (2014).

  13. For theories in this point, see, for example, M. Takabe, Heisei 23 nen tokkyohō kaiseigo no saiban jitsumu (Court practice after the patent law amendment of 2011), 53 L&T 20 (2011); R. Mimura, Heisei 23nen tokkyohō kaisei sekōgo ni okeru tokkyo kankei soshō no genjō to ryūiten (Present situation and remarks on patent related litigation after the enforcement of the 2011 amendment to the Patent Act), 60 L&T 21 (2013); M. Shimizu, Mukō no kōben to teisei no saikōben no shinri oyobi mondaiten ni tsuite (on proceedings and problems concerning the defence of invalidity and the counterdefence of correction) 69-3 Patent 80 (2016).

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Authors and Affiliations

  1. Former Guest Researcher of Max Plank Institute for Innovation and Competition, Munich, Germany

    Atsuhiro Furuta

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  1. Atsuhiro Furuta
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Correspondence to Atsuhiro Furuta.

Additional information

For a translation into English of the Japanese Supreme Court decision “Sheet Cutter” by Atsuhiro Furuta see this issue of IIC at https://doi.org/10.1007/s40319-018-0668-4.

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Furuta, A. Patent Limitation During Infringement Proceedings – Comment on the Japanese Supreme Court Decision, “Sheet Cutter”. IIC 49, 250–254 (2018). https://doi.org/10.1007/s40319-018-0672-8

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  • DOI: https://doi.org/10.1007/s40319-018-0672-8

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