In light of the above, several revisions to the Patent Law have been made to enhance the patent litigation system. In this article, we would like to introduce the legal amendments related to in-camera procedures (enhancement of in-camera procedures).
In addition, at our firm, we are actively working on proposals such as drafting claims that can effectively utilize in-camera procedures after acquiring rights, so if you have any questions, please feel free to contact us. Please.
table of contents
Introduction of in-camera procedures for determining the necessity of documents, etc.
In a patent infringement lawsuit, the court can, upon the petition of the patentee, order the suspected infringer to submit documents necessary to prove infringement, etc. (Article 105 of the Patent Law).
In order to have the court issue the above-mentioned document submission order, the patentee needs to prove the necessity of the documents requested to be submitted (necessity requirement).
However, the above requirement of necessity generally requires a high hurdle to prove, and as a result, petitions for orders to produce documents have not been fully utilized to date.
In view of this situation, in order to determine whether the documents are necessary, the court may have the alleged infringer present the documents, and use in-camera procedures to identify the actual documents before determining the necessity. A system has been introduced.
(Source: Excerpt from Japan Patent Office 2018 Patent Law Amendment Explanation Meeting Materials)
*The parts in red (numbers) are inserted.
<Current law>
In response to a petition by the patentee to submit documents, if the court determines that the necessity is met, the accused infringer must, in principle, submit the documents that were the subject of the order to submit the documents. It won't.
However, the suspected infringer may avoid submitting the documents only if there is a "justifiable reason" for refusing to submit them.
Under current law, the court can use procedures to view documents, etc. (i.e., in-camera procedures) only when determining whether there is a "justifiable reason" (① in the table).
<After revision>
Due to the recent legal amendments, in addition to the in-camera procedure at step ① above, in-camera procedures will also be required when the court determines whether the documents filed by the patentee are necessary to prove infringement. You can now use the procedure (② in the table).
Involvement of technical experts in in-camera procedures
In recent years, as technology has become more sophisticated and specialized, it has become difficult for courts alone to appropriately determine the content of patented technology.
In view of this situation, a system has been introduced that allows neutral third-party technical experts (experts) who are bound to maintain confidentiality to be involved in in-camera proceedings, with the aim of assisting the court in making decisions. I did.
(Source: Excerpt from Japan Patent Office 2018 Patent Law Amendment Explanation Meeting Materials)
<Current law>
Under current law, the court cannot see the contents of the documents in question in order to determine whether it is necessary to submit evidence (table left).
Therefore, the court must primarily rely solely on the contents of the petition from the patentee to determine the necessity of submitting evidence.
<After revision>
With the recent amendments to the law, courts can now look at actual documents and verification materials when deciding whether it is necessary to submit documents (as mentioned above).1. Expansion of in-camera proceduresPlease refer to. ).
Now, when the court looks at documents and verification materials and determines the necessity, it is now possible to receive support from expert advisors (table on the right). In addition, it is now possible to similarly receive support from expert advisors when determining a "just cause" petition by a patentee.
*The enforcement date of the revised Patent Act regarding the introduction of in-camera procedures in determining the necessity of the above documents and the involvement of technical experts in in-camera procedures is July 1, 2020.
*The revised provisions of the Patent Law regarding the introduction of in-camera procedures in determining the necessity of the above documents and the involvement of technical experts in in-camera procedures are the Utility Model Law (Article 30), the Design Law (Article 41), It also applies mutatis mutandis to the Trademark Law (Article 39). Similar amendments have also been made to the Unfair Competition Prevention Act (Article 7 of the Act).
Others
In May 2019, the Diet passed a bill regarding on-site inspections (visas) by expert committee members in the hearing of patent infringement lawsuits (Article 105-2 of the Patent Law).
Specifically, if certain requirements (necessity, probability, complementarity, appropriateness) are met, the court may have an expert examiner conduct an on-site investigation (visa) and report the results to the court. You will be able to do it. In addition, the court will be able to discern documents obtained as a result of the on-site investigation (visa).
This is expected to make it easier to gather evidence in patent infringement lawsuits.
*Please note that the enforcement date of the law regarding on-site inspections (visas) by expert advisors is within 1 year and 6 months from the date of issuance. Please note that the enforcement date is different from the above in-camera procedure.
