JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
2.6 Legal Representation In Japan, a party may choose at their own dis- cretion whether to have legal representation. However, in practice, it is common for lawyers to represent parties in intellectual property mat- ters. Patent lawyers can also represent parties for certain intellectual property cases under cer- tain conditions. 2.7 Interim Injunctions Preliminary injunctions are available in cases where such injunctions are necessary for a rights owner to avoid any substantial detriment or imminent danger with respect to the rights in dispute. If a request for a preliminary injunction is granted, the rights owner will usually be required to deposit a certain amount of money as secu- rity. The court will determine the amount of that security in consideration of the circumstances of the specific case. A relatively large amount of money may be required to be deposited as security. Since a preliminary injunction substantially achieves an injunction against the other party’s conduct before the lawsuit is finalised, in a pre- liminary injunction case, a hearing of both the rights-owner and the other party is required, and prima facie evidence of a similar level to the proof required in the lawsuit is often required. In general, preliminary injunctions are intended to resolve disputes more quickly than litigation; however, the speed of trial is often not so differ- ent from that of litigation because of the need for prima facie evidence, as mentioned above. 2.8 Protection for Potential Opponents A potential defendant can file a request for a patent invalidation trial before the JPO and/or initiate a lawsuit for a declaratory judgment to confirm the absence of the right to demand an injunction, etc. There is no need for a potential
opponent to lodge a protective brief in order to take these actions. It should be noted that a potential opponent is not entitled to require the owner to post a bond under the Civil Preserva- tion Act, but a court usually orders the owner to deposit a certain amount as a security when issuing an interim injunction order. 2.9 Special Limitation Provisions There are no special limitations applicable only to intellectual property matters. Claims for injunctions based on patent rights may be filed at any time if infringement of the patent rights exists or a threat of infringement of the patent rights is recognised. The claim for compensation for loss or damage by the tort of patent infringement is extinguished by prescription if the right is not exercised with- in three years from the time when the patentee comes to know the damage and the identity of the infringer or if the right is not exercised within 20 years from the time of the tortious act, pursu- ant to the provisions of the statute of limitations provided in the Civil Code of Japan, which is a general law. Please note that the above pre- scription period may be renewed, or the expiry of the prescription period may be postponed for statutory reasons. 2.10 Mechanisms to Obtain Evidence and Information Although there is no discovery procedure in Japan, the Patent Act provides that a court can order a party to produce documents upon the other party’s request for the purposes of: • proving infringing activities if prima facie evi- dence of such infringing activities is provided; or
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