Revisions to the Patent Law concerning
in-camera procedure etc.

HARAKENZO




Infringements of patent rights have several particularities; such infringements are easy to make, difficult to prove, and difficult to prevent. Accordingly, proper revisions to the Patent Law etc. have been required in order to prevent infringers from benefitting unlawfully. In consideration of the above, in the 2018-2019 revisions to the Patent Law, several revisions are made in order to make the patent litigation system more satisfactory. Among such revisions, we would like to introduce the revisions concerning the in-camera procedure etc. (expansion of the in-camera procedure). Our firm is willing to provide our clients with advices on the 2019 revisions to the Patent Law, such as proposal of draft claims that allow for effective use of the in-camera procedure after obtaining a patent right.


1. Introduction of in-camera procedure in determining whether submission of documents is necessary

In patent infringement litigation, the court may, upon a motion of a patentee, order an accused infringer to submit documents or evidence that are required to prove the infringement (Article 105 of the Patent law).

In order to have the court issue an order for submission of documents, it is necessary to prove the necessity of submission of the documents (necessity requirement).

However, the necessity requirement is in general difficult to satisfy, and consequently the motion of a patentee for issuance of the order for submission documents has not been used sufficiently.

In consideration of such a situation, a new system is introduced, in which the court can order an accused infringer to present documents to allow the court to review the documents actually via an in-camera procedure, so that the court can determine whether submission of the documents is necessary or not.


(Extracted from document for JPO's explanatory meeting on revisions to Patent Law etc. in FY2018. Circled red numbers are inserted at our firm)


  • < Before the revisions >
    When the court determines that the necessity requirement is satisfied upon a motion of a patentee for submission of documents, an accused infringer must submit, as a rule, documents submission of which the court orders.
    The accused infringer can avoid submission of the documents only when there are "reasonable grounds" to refuse it.
    Before the revisions to the Patent Law, the court could use the procedure to review the documents or evidence (i.e. in-camera procedure) only when determining presence of the alleged "reasonable grounds" ((1) in the above table).

  • < After the revisions >
    Under the revised Patent Law, the court can use the in-camera procedure not only at the stage of the aforementioned (1) but also when determining whether the documents submission of which the patentee requires are necessary for proving infringement ((2) in the above table).



2. Participation of technical advisor in in-camera procedure

Recently, technologies have been greatly advanced and specialized, so that it has become difficult for the court alone to determine the subject-matter of the technology in patents.

In consideration of such a situation, a new system is introduced, in which a technical advisor who is a fair and impartial technical expert and who owes a duty to keep secret can participate in the in-camera procedure for the purpose of assisting the court to make determination.


(Extracted from document for JPO's explanatory meeting on revisions to Patent Law etc. in FY2018)


  • < Before the revisions >
    Before the revisions, the court could not review target documents in order to determine whether submission of the documents was necessary (see the left part of the above table).
    Consequently, the court had to determine whether submission of the documents was necessary mainly based on a motion from a patentee.

  • < After the revisions >
    Under the revised Patent Law, the court can actually review documents or evidence also when determining whether submission of the documents or evidence is necessary (please see "1. Introduction of in-camera procedure in determining whether submission of documents or evidence is necessary" above).
    Furthermore, when determining submission of documents or evidence is necessary, the court can be supported by a technical expert (see the right part of the above table). Similarly, the court can be supported by a technical expert when determining presence of "reasonable grounds" alleged by the owner of the document.

    * The revisions to the Patent Law that allow for introduction of the in-camera procedure when determining whether submission of documents or evidence is necessary and that allow for participation of a technical expert in the in-camera procedure have been effective since July 1, 2019.

    * The revisions to the Patent Law that allow for introduction of the in-camera procedure when determining whether submission of documents or evidence is necessary and that allow for participation of a technical expert in the in-camera procedure apply mutatis mutandis to the Utility Model Law (Article 30), the Design Law (Article 41), and the Trademark Law (Article 39). The Unfair Competition Prevention Law has been revised similarly (Article 7).



3. Others

On May 2019, the bill concerning an expert's onsite inspection in examination of patent infringement litigation has passed the Japanese Diet (new Article 105-2).

According to new Article 105-2, in a case where certain requirements (necessity, probability, replenishment, equivalence) are satisfied, the court can order an expert to conduct an onsite inspection and report the inspection result to the court. Furthermore, the court can review documents or evidence obtained as a result of the onsite inspection.

It is expected that this new rule will allow evidence collection to be conducted more easily in patent infringement litigation.


* The law concerning an expert's onsite inspection will be effective within one year and six months from issuance of the law. Please note that this law has a different effective date from that of the aforementioned revisions concerning the in-camera procedure.





 

[Contact Information] HARAKENZO WORLD PATENT TRADEMARK

 

DEPUTY DIRECTOR GENERAL Shinji IMANO

   

Patent&Trademark Attorney Fumito ASHIDA

   

Patent&Trademark Attorney Yoshihisa SUMI

   

TEL ( OSAKA ) : + 81 - 6 - 6351 - 4384

E-Mail :





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