JAPAN Law and Practice Contributed by: Hirofumi Tada, Ohno & Partners
tion, but the Japanese court does not accept such an argument and grants an injunction. 5.4 Damages Damages are presumed based on: • marginal profit of plaintiff’s product multiplied by quantity of infringing products sold by defendant; • marginal profit of defendant’s product multiplied by quantity sold by defendant; or • reasonable royalty. The first two listed are available when a plaintiff could have obtained profits but for infringement. Typically, it means that the plaintiff has competing products, but it is not strictly limited to such a situation. A plaintiff may assert more than one of these three options, and the court adopts the highest amount among these. A defendant may rebut the presumption by proving factors such as market difference, existence of other competing products, its marketing effort, or product Basically, there are no special damages for pharma cases. Japan does not allow treble damages for inten ‑ tional infringement. However, if the drug price dropped because of infringing generic/biosimilar products, the dropped price can be included in damages. Interest on Damages Interest of 3% per year from each infringing activity is payable. Damages Examination The court first examines infringement and validity. Then, if the court thinks the accused infringer infringes a valid patent, the court discloses a preliminary con ‑ clusion, and then proceeds to the damages examina ‑ tion stage. Timing of Damages Payment features other than invention. Special Damages for Pharma Often, the damages are preliminarily enforceable soon after the first instance court judgment. Theoretically, it must be paid soon after the rendition of the judg ‑ ment, but usually the accused infringer appeals before the IP High Court and seeks pending enforcement by
depositing around 80% of the damages awarded by the first instance court. Wrongful Injunction Damages Usually, damages for a wrongful injunction are not available because an injunction is not enforceable until the judgment becomes final. Third Party Theoretically, a third party may seek damages (as long as they suffer damage caused by patent infringement) through the usual civil litigation, but it is not common in Japan. 5.5 Legal Costs Court costs including court fees paid by a winning party are recoverable from a losing party, but they are often neglected because the amount is small. 5.6 Relevance of Claimant/Plaintiff Conduct to Relief In patent infringement lawsuits, the court may not withhold or reduce relief as a penalisation for nega ‑ tive conduct from the plaintiff. Trade mark disputes in the life sciences and pharma sector are somewhat common in Japan. Just like the usual trade mark disputes, the cases are governed by the Trade Mark Act. Often, the main issue of the case is whether the trade mark causes consumer confu ‑ sion about the product’s source, just like usual trade mark cases. The government agency notified rules for generic drug naming, so trade mark disputes between brand-name and generic products are not common. 6.2 Copyright Copyright disputes are not common in the life sci ‑ ences and pharma sectors in Japan. Potentially, the copyright of software (such as health tech software or drug research software) can be disputed. 6. Other IP Rights 6.1 Trade Marks
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