JAPAN Law and Practice Contributed by: Yoshiyuki Inaba, Hiroshi Nemoto, Makoto Okada and Atsushi Sato, TMI Associates
lating damages based on the profits generated from the infringement or the expected royalties. Ultimately, a judge has the discretion to deter- mine the appropriate remedies or the amount of damages, but this discretion is limited to the amount claimed by the plaintiff. In addition, where an applicant has given a warning, together with documents stating the contents of the invention claimed in the patent application, that applicant may also claim com- pensation equivalent to the licence fee against any person who has worked the invention as a business after the warning and before the regis- tration of the patent. Furthermore, even without such a warning, the applicant may claim com- pensation against those who, while being aware that the invention relates to a patent applica- tion that has been published, have worked the invention as a business before the registration. The right to claim compensation may only be executed after the patent has been registered. A patentee may also demand measures neces- sary to restore its business credibility, but this remedy is rarely used. Enforcement of Remedies The methods for enforcement of remedies depend on the contents of those remedies. For example, with respect to judgments ordering patent infringers to pay damages, the remedies are enforced by seizing the infringers’ properties and receiving dividends from the money obtained through auctions, etc. With regard to judgments ordering patent infringers to cease and desist from manufacturing the infringing products, if the infringers do not perform the obligations ordered in the judgment, the court in charge of enforce- ment will enforce the remedies by ordering the infringers to pay to the obligees certain amounts
of money which are found to be reasonable for securing performance of the obligation. 6.2 Rights of Prevailing Defendants If a defendant prevails, the courts can order the plaintiff to pay court costs (eg, transporta- tion fees to attend court hearings, expenses for delivering documents and daily allowances for witnesses); however, such costs do not include the defendant’s legal fees or other costs incurred by the defendant in the course of the proce- dure. There is no right or remedy for a prevailing defendant to recover their own costs. A prevailing defendant may seek damages aris- ing out of the infringement litigation, including their lawyers’ fees if the litigation itself is con- sidered to constitute a tort on the grounds that it is found to be unreasonable (eg, if an allega- tion of patent infringement is entirely baseless and the patentee is fully aware of the lack of legal grounds). However, the courts rarely accept such a claim. 6.3 Types of Remedies There are no different remedies for different types of technical intellectual property in Japan. 6.4 Injunctions Pending Appeal In an effort to stop the execution of an injunction granted at first instance, an infringer will (upon filing an appeal) have to file a petition to seek a ruling on the suspension of compulsory execu- tion. Here, the infringer will need to provide a security deposit (to be returned after litigation). Under the laws of Japan, injunctions are enforce- able pending appeal. However, in practice, when infringers file an appeal, the infringers also file a motion for suspension of compulsory execution in most cases, and such suspensions are usually granted if the motion is filed.
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