JAPAN Law and Practice Contributed by: Hirofumi Tada, Ohno & Partners
8. Other Relevant Forums/Procedures 8.1 The UPC or Other Forums A custom suspension to prevent the import of infring ‑ ing products is available. A panel appointed by Japan Customs reviews the case, but they often wait for a court decision, especially in a complex case. Thus, the effectiveness of the custom suspension is often limited for a pharma patent owner. However, it is often effective for suspension based on a trade mark. The JPO provides a procedure called “hantei” in which a panel of three examiners decides whether a prod ‑ uct falls within the technical scope of a patent claim. However, this is not binding on the court, so its impact is very limited. 9. Alternative Dispute Resolution 9.1 ADR Options ADR in the life sciences and pharma sectors is not common at all in Japan so far. Many patent owners choose litigation over mediation or arbitration, trusting formal court procedures. Recently, Tokyo and Osaka District Courts started providing arbitration services for IP-related disputes, but they are directed to sim ‑ ple cases and are not suitable for complex patent infringement disputes.
6.3 Trade Secrets Unlike the tech sector, trade secrets disputes are not so common in the life sciences and pharma sectors in Japan. However, such disputes could happen in the future because many pharma companies now develop and use AI or high-tech software for drug discovery. The Unfair Competition Prevention Act governs trade secrets disputes.
7. Appeal 7.1 Timeframe to Appeal Decision
An accused infringer may file an appeal within two weeks from the service of a preliminary injunction order. The appellate court reviews the case without deference. Also, opposition and revocation proce ‑ dures are available, and the preliminary injunction will be vacated if the injunctive right no longer exists due to significant situation change after the preliminary injunction order grant. Appeal Against Permanent Injunction A defendant may appeal within two weeks from the service of a judgment ordering a permanent injunc ‑ tion. A foreign defendant has an additional 30 days to appeal. The first hearing will be held within a few months from the appeal, and the judgment will be granted about six months after the appeal. The appel ‑ late court reviews the case without deference. A party who lost in the appellate court may file a final appeal before the Supreme Court although the success rate of the final appeal is as low as 1%. 7.2 Appeal Court(s) Arbiter A panel of three judges from the IP High Court, which has exclusive jurisdiction over patent appeal cases, hears and decides a patent litigation appeal. The court often retains a court expert who supports judges’ understanding of technical aspects of the case. 7.3 Special Provisions Patent litigation is governed by the Civil Procedure Code, just like normal civil litigation. However, the court usually expects more professional litigation activities from both parties, and delayed submission of arguments and evidence might be more strictly evaluated than usual civil cases and can be dismissed.
10. Settlement/Antitrust 10.1 Considerations and Scrutiny
Japan has not experienced antitrust cases regard ‑ ing “pay-for-delay” or “reverse payment”. However, depending on the facts of each case, “pay-for-delay” or “reverse payment” might violate Japan’s Anti- Monopoly Act.
11. Collective Redress 11.1 Group Claims
There is no special system for group claims such as class action in Japan. However, patients may file a lawsuit as joint plaintiffs.
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