JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
In addition, in litigation, experts selected by a party may prepare expert opinions, which are submitted as evidence by the party but rarely testify in court as witnesses. 3.7 Procedure for Construing the Terms of the Patent’s Claim There is no separate procedure for claim con- struction in Japan. 3.8 Procedure for Third-Party Opinions A system by which the court can seek third-party opinions in lawsuits relating to patent infringe- ment was introduced on 1 April 2022. Under this system, if a party requests it and the court finds it necessary, the court may request the public to submit documents stating public opinions on the application of the Patent Act of Japan or any other necessary matters after hearing the other party’s opinion. It is envisioned that this system will be used in patent infringement cases where the judgments may have significant impacts not only on an industry to which the parties belong but also on companies in other industries. Case No 2018 (Ne) 10046 In the recent Case No 2018 (Ne) 10046, the Intel- lectual Property High Court issued a request for third-party opinions for the first time. In this case, the patent at issue claimed a certain sys- tem comprising a server and a plurality of ter- minal devices. The issue here was whether or not the defendant’s act of creating a new sys- tem can be considered “production” (a form of working of invention as defined in Article 2(3)(i) of the Patent Act) of the patented system, even when the server in the alleged infringing system is located outside Japan. The court issued the request for third-party opinions regarding wheth- er the defendant’s act can be considered “pro- duction” of the patented system and, if so, what requirements are necessary for it to fall under the
category of “production”. Various organisations have submitted multiple statements in response to the court’s request for opinions. The IP high court eventually determined infringement in its judgement, as opposed to the district court, which denied the “working of invention” within The latest case of the Intellectual Property High Court issuing a request for third-party opinions is Case No 2023 (Ne) 10040, which concerns a patented invention for a breast augmenta- tion composition containing multiple drug sub- stances. According to Article 69(3) of the Patent Act, the effect of a patent right for an invention related to “a pharmaceutical product to be pro- duced by mixing two or more drugs” does not extend to “acts of preparation performed based on a prescription by a physician or dentist.” In this case, the court has requested third-party opinions, such as whether the act of a nurse or assistant nurse mixing multiple drugs to produce a combined medication, as instructed by a phy- sician without issuing a prescription, can consti- tute an “act of preparation performed based on a prescription by a physician or dentist”. Japan in the first instance. Case No 2023 (Ne) 10040
4. Revocation/Cancellation 4.1 Reasons and Remedies for Revocation/Cancellation Patents
There are two procedures available for seeking the revocation/cancellation of a patent – namely, an opposition or an invalidation trial before the JPO. Anyone may file an opposition within six months from the issue date of a patent Gazette based on the following grounds:
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