JAPAN Law and Practice Contributed by: Hirofumi Tada, Ohno & Partners
1.6 Requirements to Bring Infringement Action A patent must be granted and registered before filing an infringement lawsuit. There are no addi - tional requirements such as validation or transla - tion. The types of patents do not matter to the requirements for bringing an action. 1.7 Pre-Action Discovery/Disclosure Japan does not have discovery at all. There are pre-action evidence preservation procedures, but availability is significantly limited due to the strict standard. Japanese courts generally accept materials legally obtained in other juris - dictions without limitation. In fact, US discovery under 28 USC Section 1782 is sometimes used to collect evidence for Japanese infringement actions. 1.8 Search and Seizure Orders Search and seizure orders are not available for patent cases. A court grants a document pro - duction order under certain circumstances, but the availability and scope are substantially lim - ited. Recently, Japan newly established an inspec - tion procedure which allows a court-appointed expert to inspect the manufacturing plant of an accused infringer. However, a patent own - er first must show a certain level of probability of infringement to use this procedure, and the availability is limited. Japanese courts generally accept materials legally obtained in other jurisdictions such as US discovery without limitation. 1.9 Declaratory Relief Declaratory Judgment of Patent Dispute Currently, Japanese courts are very reluctant to grant declaratory judgments for patent disputes.
plaint, and the service itself takes around three months to one year depending on the country where the defendant sits. The whole timeline of litigation will be delayed if service is delayed. Patent Office proceedings A written demand for invalidity proceedings before the JPO also should be served on the patent owner under similar requirements. How - ever, a foreign patent owner is supposed to des - ignate a Japanese patent administrator under the Japanese Patent Act, and a written demand against the foreign patent owner will be served on the patent administrator. Timeline Litigation Oral hearings will be held every one to two months. Each party files briefs and evidence every few months. Judgment will be granted in about 12 months (injunction only) and about 18 months (injunction and damages). When a plaintiff seeks both an injunction and damages, a court discloses its preliminary conclusion at the end of the infringement and invalidity stage, and decides whether to proceed to the damages stage. Patent Office proceedings Typically, both parties have one or two opportu - nities to file assertions and evidence before an oral hearing. After the oral hearing, typically, a preliminary conclusion will be disclosed to give the opportunity to amend claims when the JPO considers that the patent claims should be inval - idated. A decision will be granted about three to four months after the oral hearing. The total procedure takes about ten months.
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