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HARAKENZO
WORLD PATENT & TRADEMARK


OSAKA
HEAD OFFICE

DAIWA MINAMIMORIMACHI BLDG.,
2-6, 2-CHOME-KITA, TENJINBASHI,
KITA-KU,OSAKA 530-0041 JAPAN
TEL:+81-6-6351-4384
(Main Number)
FAX:+81-6-6351-5664
(Main Number)
E-Mail:

TOKYO
HEAD OFFICE

WORLD TRADE CENTER BUILDING SOUTH TOWER 29F,
2-4-1, HAMAMATSU- CHO, MINATO-KU,
TOKYO 105-5129,JAPAN
TEL:+81-3-3433-5810
(Main Number)
FAX:+81-3-3433-5281
(Main Number)
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HIROSHIMA
OFFICE

NOMURA REAL ESTATE HIROSHIMA BLDG. 4 F, 2-23 TATEMACHI, NAKA-KU, HIROSHIMA CITY, HIROSHIMA 730-0032, JAPAN
TEL:+81-82-545-3680
(Main Number)
FAX:+81-82-243-4130
(Main Number)
E-Mail:

Opened on
March.1.2018

NAGOYA
OFFICE

GLOBAL GATE 9F, 4-60-12 HIRAIKE-CHO, NAKAMURA-KU, NAGOYA-SHI, AICHI 453-6109, JAPAN
TEL:+81-52-589-2581
(Main Number)
FAX:+81-52-589-2582
(Main Number)
E-Mail:


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Solution for trouble


 ◆ General Remarks
 ◆ Measures that should be taken by patentee
 ◆ Measures that should be taken by accused infringer


General Remarks

If there is a third party who works a patented invention as a business without permission from a patentee, the patentee cannot obtain profit that would have been earned but for the infringement, and it becomes difficult for the patentee to recover invested capital. If such a situation is not remedied, there wouldn’t be anyone who wishes to obtain a patent right, and there wouldn’t be any application and publication of new techniques. Since this contradicts the object of the patent law, i.e., industrial development, civil remedies and criminal penalty are stipulated in the patent law so that the patentee can be protected.

1. Civil Remedies
(1) Remedies taken before or when infringement occurs

Demand for Injunction (Patent Law of Japan: Section 100)
A right to seek injunction is given to the patentee as a remedy before damages are caused. The patentee may demand a person who infringes or is likely to infringe a patent right to stop or prevent such infringement.

(2) Remedies taken after infringement occurs

Demand for compensation for damage caused by infringement (Civil Code of Japan: Section 709)
The patentee may demand monetary compensation for the patentee’s damage caused by the infringement.

Demand for return of unfair profit (Civil Code of Japan: Sections 703 and 704)
The patentee may claim the infringer to give the patentee the profit earned by infringing the patent.

Demand for measures to restore business reputation (Patent Law of Japan: Section 106)
In case where business reputation has declines due to inferior products produced by the infringer, the patentee may request the court to order the infringer to recover the patentee’s business reputation damaged through the infringement.


2. Criminal Penalty (Patent Law of Japan: Section 196 ~)
Although various kinds of crimes are specified in the Patent Law, infringement of a patent right is important from a perspective of prevention of infringement of patent.
A person who have infringed a patent right or an exclusive license or a person who is deemed to have infringed a patent right or an exclusive license will get a penalty. Since the general provisions of the penal code stipulate that only an act performed with the intent to commit a crime is punishable, a person who have committed a crime without the intent to commit the crime and a person who have attempted a crime but not have committed the crime are not punished.




Measures that should be taken by patentee


(1) Discovery of infringement and confirmation of validity of patent right
If a patentee discovers that a third party has worked a patented invention without permission from the patentee, the patentee must confirm the validity of the patent right. Specifically, the patentee must confirm if the patentee has paid the patent fee and annual fee, and make sure that the patent right is not transferred or is not extinguished. In addition, the patentee must confirm whether or not the patent right has grounds for invalidation since the patent right is decided invalid if it is judged that the patent right has grounds for invalidation.

→Please contact us. "HARAKENZO more " will confirm the validity of a patent right and provide you with an expert opinion.

 Validity Search of Rights

(2) Investigation to confirm whether or not the accused infringer has a legitimate title and whether or not the accused infringer has worked the patent as a business
The patentee must confirm whether or not the accused infringer has a legitimate title such as a right to work the patented invention, and whether or not the accused infringer has worked the patented invention as a business. In addition, the patentee must confirm whether or not the infringer has worked the patented invention for experimental or research purposes for which a patent right is not effective.

(3) Consideration of whether or not the working of the infringer really constitutes an infringement, and collection of evidence
The patentee must make sure that the infringer has worked the invention within a technical scope of the patented invention. Whether or not the infringer has worked the patent within a technical scope of the patented invention is decided based on the recitation of claims. Specification and drawings are taken into consideration in interpreting meaning of words in the claims. In addition, arguments made by the patentee while the application is still pending, and prior arts at the time of application are taken into consideration.
It is well-advised for the patentee to confirm how the infringer’s product infringes the patented invention, to acquire the infringer’s product, and to obtain information concerning sales channel, sales period, the number of the product so that the patentee can use such data as evidences.

→If you want expert’s opinions concerning whether or not the infringer’s product really infringes your patented invention, please contact us.

 Expert Opinion on Infringement


(4) Warning to the infringer and reconciliation with the infringer
If it is judged as a result of analysis and assessment that the infringer’s product infringes the patented invention, warning is sent to the infringer. If the infringer accepts the fact that the infringer’s product infringes the patented invention, the patentee can achieve reconciliation with the infringer and settle the dispute. If the infringer does not accept the fact, the patentee must seek settlement out of the court, or seek settlement through a judgment of a court, or pursue criminal responsibility of the infringer.





Measures that should be taken by accused infringer



(1) Investigation on validity of patent right of patentee and collection of known arts
After examining the contents of warning sent by the patentee, the accused infringer must examine the patent register and confirm validity of the patent right and whether the warning was sent by the true right holder. In addition, the accused infringer must confirm whether the patent has grounds for invalidation, and conduct invalidity/known arts search.

"HARAKENZO more " will investigate whether a patent has grounds for invalidation and conduct invalidity/known arts search. Please contact us.

 Invalid data/Search of public intellectual property data


(2) Confirmation of whether the patentee has a legitimate title
The accused infringer must confirm whether the patentee has a legitimate title such as a right to work the patented invention, and whether or not the accused infringer has worked the patented invention for a purpose for which the patent right is not effective.


(3) Confirmation of whether the working of the accused infringer constitutes an infringement
The accused infringer must check whether the working of the infringer really constitutes an infringement. It is well-advised for the accused infringer to use the JPO’s determination proceeding in which the JPO provides official opinions concerning a technical scope of the patented invention. It is also well-advised for the accused infringer to request for patent attorney’s expert opinions.

→If you request for JPO’s determination proceeding, please contact us. "HARAKENZO more " will carry out the procedures for the JPO’s determination proceeding.

 Expert Opinion on Infringement


(4) Subsequent measures
If it is judged that the working of the accused infringer constitutes an infringement, the accused infringer must consider stopping the working, taking over the patent right, establishing a right to work the patented invention, or requesting for an invalidation trial.
If it is judged that the working of the patented invention by the accused infringer does not constitute an infringement, the accused infringer must consider informing the patentee of the fact, collecting evidences and preparing expert’s written opinion in preparation for a future lawsuit, or filing a lawsuit for confirmation of the non-existence of the right to seek the injunction and the right to claim compensation for damages.

→Please contact us. "HARAKENZO more " will analyze a situation for each case and propose appropriate measures.

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