JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
2.13 Restrictions on Assertion of an Intellectual Property Right Civil Code As an abuse of rights is prohibited under the Civil Code, the same will apply to the execution of patent rights, and therefore, where the execution of such rights is abusive, that execution will be restricted. For example, the act of filing a lawsuit may cause tort liability where such litigation is found to be significantly unreasonable in light of the purport of the litigation system (eg, the allegation of infringement is entirely baseless and the owner of the intellectual property right is fully aware of the lack of legal grounds). In addition, based on judicial precedents, a patent right-holder who has made a declaration of fair, reasonable and non-discriminatory (FRAND) terms will not be permitted to claim for an injunction or for licence fees against a party who intends to be licensed under FRAND terms beyond those terms, as this will fall under an abuse of rights. Guidelines for the Use of Intellectual Property In addition, the Japan Fair Trade Commission (JFTC) has stipulated that its Guidelines for the Use of Intellectual Property (IP Guidelines) under the Antimonopoly Act clearly show the principles of the use of intellectual property rights, includ- ing patent rights, under the Act. In January 2016, the JFTC partially amended the IP Guidelines and supplemented descriptions related to the Standard Essential Patent under the Antimo- nopoly Act. If a patent right has been exercised in a manner that violates these Guidelines, the act may be considered a violation of the Anti- monopoly Act. Unfair Competition Prevention Act Furthermore, if the owner of the intellectual property right makes or disseminates a false
allegation of infringement of that intellectual property right, that act could constitute an act of unfair competition under the Unfair Competi- tion Prevention Act, and the owner of the intel- lectual property right may be subject to a claim for injunction and/or damages. 3. Infringement 3.1 Necessary Parties to an Action for Infringement A patent owner and an alleged infringer are usually the necessary parties to patent infringe- ment litigation. A registered exclusive licensee is entitled to file an action without the patent owner, based on an infringement of the regis- tered exclusive licence, seeking the same rem- edies as the patent owner. In this regard, there are arguments over whether non-exclusive or non-registered exclusive licensees can initiate an action for infringement. Regarding injunctions, it is generally understood that neither a non-registered exclusive licensee nor a non-exclusive licensee has the right to seek an injunction. However, when it comes to claims for damages, a non-registered exclusive licensee can pursue such claims, while a non- exclusive licensee is not permitted to seek dam- ages. 3.2 Direct and Indirect Infringement For a direct infringement to be constituted, the product in question needs to satisfy all of the component features of a patented invention. If any one of the constituent features is not satis- fied, a direct infringement has not been consti- tuted. However, even if the product does not satisfy all of the component features, the following cases
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