JAPAN Law and Practice Contributed by: Hirofumi Tada, Ohno & Partners
following proceedings may be delayed if the service is delayed. The opponent will be given opportunities to file counter-arguments and evi - dence. The court carefully reviews allegations and evidence submitted by both parties. Requirements The requirements for preliminary injunction are not so strict for patent infringement cases, and it will be granted if an accused infringer causes substantial harm to a patent owner by infringing a valid patent. The court usually finds substantial harm as long as a patent owner is implementing the patent by themselves. Life Sciences Cases Drug sales/manufacturing application itself does not constitute infringement in Japan. Thus, a patent owner typically must wait for a drug sales/manufacturing approval grant of infringing products for a preliminary injunctions grant. 1.4 Structure of Main Proceedings on Infringement/Validity Infringement and Validity Are Bifurcated Usually, both infringement and validity issues are disputed and reviewed in an infringement action before the courts. Invalidity Trial Before Japan Patent Office An accused infringer may separately file an inva - lidity trial proceeding before the Japan Patent Office (JPO). Relationship Between Litigation and Invalidity Trial In Japan, invalidity trial proceedings before the JPO are not restricted by parallel infringement litigation. Therefore, often the same invalidity issues are disputed in these two tracks. Some court judges tend to wait for the JPO decision if it will be granted in a few months, but others
do not. Both first instance infringement litigation and the JPO invalidity trial outcomes may be appealed before the Intellectual Property High Court (the “IP High Court”). Inconsistencies between these two tracks are expected to be solved by the IP High Court. 1.5 Timing for Main Proceedings on An injunction claim may be filed as long as the infringement of an unexpired patent continues. On the other hand, a damages claim should be filed within the earlier of: • three years from when a patentee recognises Infringement/Validity Statute of Limitations Litigation
infringement and an infringer; or • twenty years from infringement.
Even after this period, an unjust enrichment claim can be filed if it is within the earlier of: • five years from when a patentee recognises
that the claim can be filed; and • ten years from infringement. Patent Office proceedings
Invalidity trial proceedings before the JPO can be filed even after patent expiration to inhibit a damages claim, which can be filed even after patent expiration within the statute of limitations explained above. Service of Complaint/Written Demand Litigation A complaint should be served on the defendant in an infringement action. Usually, it is served via specifically certified mail. The service usually takes a few weeks if the defendant is a domes- tic entity. If the defendant is a foreign entity, the plaintiff must prepare a translation of the com -
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