JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
2. Initiating a Lawsuit 2.1 Actions Available Against Infringement
As of the end of 2024, no compulsory license has been granted in Japan. 2.3 Courts With Jurisdiction The Tokyo District Court and the Osaka District Court have exclusive jurisdiction over litigation relating to patent rights and utility model rights in the first instance. The court where a plaintiff should file a lawsuit depends on the defendant’s corporate address and the location of the infring- ing activity. The Japanese Intellectual Property High Court (IPHC) has exclusive jurisdiction over appeals from District Court decisions. The IPHC is a special branch of the Tokyo High Court. Par- ties may appeal decisions of the IPHC to the Supreme Court. 2.4 Specialised Bodies/Organisations for the Resolution of Disputes The Japan Intellectual Property Arbitration Cent- er (JIPAC) provides alternative dispute resolu- tion services such as mediation or arbitration in the field of intellectual property. In addition, the International Arbitration Center in Tokyo (IACT) – an international arbitration organisation expected to provide dispute resolution services – commenced operation in September 2018. 2.5 Prerequisites to Filing a Lawsuit There are no statutory prerequisites for filing a lawsuit. However, as patent rights and regis- tered exclusive licences become effective upon the establishment of registration with the JPO, such registration will be required when a pat- entee or registered exclusive licensee brings a claim for damages and/or an injunction based on that patent right or registered exclusive licence. It is, however, generally considered that such registration will not be required when a non- registered exclusive licensee brings a claim for damages based on a non-registered exclusive licence.
If the owner of a technical intellectual proper- ty right (eg, a patent) finds that a third party is infringing upon their patent, they can take one or more of the following actions: • commence a regular patent infringement suit with a District Court; • file a petition for a preliminary injunction with a District Court; • file an import suspension application with the Customs Office; or • use alternative dispute resolution proceed- ings, such as mediation or arbitration, if the other party agrees to it. 2.2 Third-Party Remedies to Remove the Effects of Intellectual Property Only an interested person may file a request for a trial for patent invalidation. The term “interested person” means a person who has, or potentially will have, their legal interest/standing directly affected by the existence of the patent right. On the other hand, in the Patent Opposition Sys- tem, any person (not limited to interested per- sons) may file an opposition to a patent within six months of the publication date of the Gazette containing the patent. The Japanese Patent Act also provides for three types of non-exclusive licences granted by the JPO Commissioner’s award (eg, compulsory licences). In 2021, a request for a compul- sory license was filed for Japanese Patent No 6518878, marking the first time a council was convened in Japan to address such a request. However, in 2024, the parties reached a settle- ment, resulting in the withdrawal of the request.
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