Various procedures after registration

Maintenance of patent rights

The duration of a patent right is 20 years from the date of application (up to 25 years if an extension has been registered), but in order to maintain the right, you must pay an annual fee. Even if the payment deadline has passed, you can maintain your rights by paying an additional fee equal to the pension amount within 6 months.

 

Patent fee/pension reduction/exemption grace system

Patent fee exemptions, reductions, or deferrals of patent fee payments may be granted to persons receiving public assistance, corporations with limited financial resources, and cases where special laws permit (universities, etc.) under certain conditions.

 

Automatic payment system for patent fees, etc.

This is a system in which pensions from the 4th year onwards are automatically deducted on a yearly basis using a prepayment ledger or bank account transfer system. In order to use this system, a request from the right holder is required.

 

rights license

(1) Exclusive license (Article 77 of the Patent Act)

An exclusive license is a right that allows the exclusive licensee to exclusively exploit a patented invention within the scope specified in the establishing act.

The advantage of an exclusive license is that in addition to the license income, you can claim infringement against a third party who has used the patented invention without permission.

In order to take effect as an exclusive license under the Patent Act, it must be registered with the Japan Patent Office. If you have any questions or requests regarding the registration of exclusive licenses, please let us know.

 

(2) Non-exclusive license (Article 78 of the Patent Act)

A non-exclusive license is the right to use a patented invention.

Since it is not a grant of exclusive license, the advantage is that the license can be granted to multiple parties. However, unlike an exclusive licensee, a non-exclusive licensee cannot seek an injunction or claim compensation for damages from a third party.

 

Transfer of rights

Transfer by assignment

If there is no plan or possibility to implement the invention related to the company's patent rights, the rights can be sold or transferred to another company. The advantages of assigning patents are that they can generally be sold at a higher price than licenses, and that unnecessary patents can be organized and managed and pension payments can be prevented.

The assignment becomes effective upon registration with the Patent Office. Please contact us regarding required documents.

 

Transfer due to merger/inheritance

Transfer procedures are required when rights change due to corporate merger, organizational reorganization, inheritance, etc. A third party will check the patent register to determine the right holder, so it is necessary to match the right holder registered in the patent register with the true right holder. Please contact us regarding required documents.

 

 

troubleshooting

General remarks

Even if a patented invention is commercialized, if there is a third party who practices the patented invention as a business without permission, the company will not be able to obtain the profits that should have been obtained by implementing the patented invention, making it difficult to recover the invested capital.

Furthermore, if this situation is left unaddressed, no one will want to obtain a patent, and new technologies will not be made public through the publication of applications, which will defeat the purpose of the patent law, which is to develop industry.

Therefore, the Patent Law stipulates civil remedies and criminal penalties to protect patent holders.

 

civil remedies

(1) Advance relief measures

Request for injunction (Article 100 of the Patent Act)

The right to seek an injunction is recognized as a preliminary remedy. If patent infringement has occurred or there is a risk of infringement, you can request the suspected infringer to stop or prevent the infringement.

 

(2) Subsequent remedies

Claim for damages based on tort (Article 709 of the Civil Code)

The right to claim damages based on tort can provide monetary compensation for damages suffered by the patentee due to patent infringement.

Claim for return of unjust enrichment (Civil Code Articles 703 and 704)

A patentee can request that a third party who has obtained profits by practicing a patented invention without the right to do so return those profits.

Request for credit recovery measures (Article 106 of the Patent Act)

In cases where social trust in a patented product has declined due to inferior quality products, the patentee can ask the court to order measures to restore the business trust suffered by the patentee due to the infringing act.

 

Criminal punishment (Article 196 et seq. of the Patent Act)

The Patent Act stipulates various types of crimes, but crimes against patent infringement are important from the perspective of deterring patent infringement. A person who infringes or acts deemed to infringe on patent rights or exclusive licenses will be subject to certain penalties. The General Provisions of the Penal Code only stipulate intentional crimes, so negligent or attempted crimes are not subject to punishment.

 

Measures to be taken by patentee

(1) Discovery of patent infringement and examination of validity of rights

If you find out that someone else is working on your patented invention without permission, you must first consider the validity of your own rights. We will consider the payment status of patent fees and pensions, and whether or not rights will be transferred or extinguished.

Additionally, if a patent has grounds for invalidation, the patent right will be invalidated as a result of the final invalidation decision in the invalidation trial, so it is necessary to consider whether there are grounds for invalidation.

→If you contact our patent office, we will investigate and evaluate the validity of your patent rights.

 

(2) Examining whether it is being carried out as a business without legitimate authority.

Examine whether the suspected infringer has legitimate title such as a license, whether it is being used as a commercial activity, and whether the effectiveness of patent rights is limited, such as when it is being used for testing or research. is needed.

 

(3) Consideration of success or failure of infringement and collection of evidence, etc.

It is necessary to consider whether the invention is being practiced within the technical scope of the patented invention. Whether or not it falls within the technical scope is determined based on the description of the claims. In doing so, we will interpret the meaning of terms in the claims by taking into consideration the specification and drawings.

In addition, we will take into account the content asserted by the right holder during the pendency of the application, and take into consideration the publicly known technology at the time of the application.

In addition, in preparation for future disputes, we will collect evidence to understand and prove how the infringer is infringing, securing infringing products, sales routes, sales periods, quantities, etc. It is wise to keep it.

→If you would like to seek expert judgment regarding whether infringement has occurred, please contact our patent office.

 

(4) Warning/settlement for infringers

As a result of the investigation and appraisal, if we determine that a patent is infringed, we will notify the infringer of a warning. If the other party admits infringement, the dispute can be resolved by entering into a settlement. If not, we will consider out-of-court dispute resolution, judicial dispute resolution, and pursuit of criminal liability.

 

Measures to be taken by the suspected patent infringer

(1) Investigation of the validity of the other party's patent rights and collection of publicly known materials

After examining the contents of the warning letter sent by the patent holder, we first check the patent register to check the validity of the patent right and whether the warning is from a legitimate right holder.

We also examine whether the patent has grounds for invalidation and collect invalidation and publicly known materials.

→If you request our patent office to check whether there is a reason for invalidation and to collect invalidation materials, we will respond appropriately.

 

(2) Confirmation of existence of legitimate title

We will confirm whether you have legitimate title such as a license or not, and whether the effect of patent rights is limited.

 

(3) Consideration of success or failure of infringement

It is necessary to consider whether the implementation act in question can actually constitute patent infringement. It is also a good idea to use the determination system, which is the official opinion of the Patent Office regarding the technical scope of a patented invention. It is also a good idea to request an expert opinion from a patent attorney.

→When requesting a judgment from the Japan Patent Office, we will process the request for judgment upon request.

If you would like to seek expert judgment regarding whether or not infringement has occurred, please contact our patent office.

 

(4) Subsequent countermeasures

If we determine that the patent is infringing, we will consider options such as discontinuing the implementation, transferring the patent right, establishing a license, or requesting an invalidation trial.

If we determine that there is no infringement, we will respond to the right holder to that effect, collect evidence and prepare an expert opinion in preparation for future litigation, and file a lawsuit to confirm the absence of the right to seek an injunction or claim for damages. We will consider the following.

→If you consult with our patent office, we will consider appropriate countermeasures after understanding the specific circumstances of each case.

 

Patent infringement lawsuit

first

When a dispute over the existence of patent infringement is resolved in a judicial forum, as this is a dispute regarding the rights relationship between the parties, the procedures stipulated in the Civil Procedure Act will, in principle, be followed.

However, disputes related to intellectual property rights are subject to highly specialized and technical matters, and because the object of protection is invisible and intangible property, there are various problems such as difficulty in proving the nature of infringement and the amount of damages. will occur.

Therefore, in light of these special characteristics, special provisions under the Civil Procedure Law and special provisions under the Patent Law have been established. Section 2 below provides an overview of civil litigation procedures, and Section 3 provides an overview of patent infringement litigation.

 

Overview of Civil Procedure Law

Civil litigation is the ultimate method of resolving disputes between private individuals. When a dispute cannot be resolved through negotiations between both parties, this is a procedure in which both parties are equally involved in the proceedings, the court fully listens to the claims of both parties, and the court makes an impartial ruling and attempts to resolve the dispute.

filing a lawsuit

Civil proceedings begin with the filing of a complaint. An action is a petition by a plaintiff requesting a trial and judgment from the court.

In the case of filing a lawsuit, the principle of right to dispose, which is an essential principle of the civil litigation system, is appropriate. The doctrine of dispositional rights refers to the principle that the initiation of a lawsuit, the identification of the subject of a trial, and the termination of a lawsuit without a judgment are based on the will of the parties.

Therefore, the intentions of the parties (particularly the plaintiff) are reflected in the subject of the trial, the scope, the format of the trial, etc.

Identification and scope of the subject of judgment

The subject of the trial is specified by stating the purpose and cause of the claim in the complaint (Article 133 of the Code of Civil Procedure). The court cannot make a judgment on matters that have not been filed by the parties (Article 246 of the Code of Civil Procedure).

Type of appeal (judgment)

There are three types of appeals: appeals for benefits, appeals for confirmation, and appeals for formation.

• An action for benefits is an action in which a plaintiff asserts a right to claim benefits under substantive law (such as a right to claim damages based on a tort under civil law) against a defendant, and requests the court to issue a corresponding judgment for benefits.
• A declaratory action is an action that alleges the existence or non-existence of the plaintiff's rights or legal relationships, and requests the court to issue a declaratory judgment confirming this.
• A formation action is an action alleging that the plaintiff's rights or legal relationships have changed based on a certain law, and seeking a formation judgment declaring this change.

Procedures for starting a lawsuit

The process begins by filing a complaint with the court. The matters to be stated in a complaint are stipulated by law (Article 133 of the Code of Civil Procedure, Articles 2 and 53 of the same Regulations). After filing the complaint, a case number will be assigned and the presiding judge will examine the complaint (Article 137 of the Code of Civil Procedure). If there are no deficiencies in the complaint, a copy will be served on the defendant, and the presiding judge will specify a date for oral argument (Code of Civil Procedure, Articles 138 and 139).

Litigation requirements

Litigation requirements refer to the requirements necessary for making a judgment on the merits. For example, there is the jurisdiction of the court, the suitability of parties, and the benefits of litigation. The existence or nonexistence of litigation requirements is usually determined during the trial process, but if it is found that the litigation requirements are lacking, the trial will be discontinued.

Trial/proceeding

A trial is a series of litigation activities that aim to resolve disputes through the submission of the parties' claims and counterarguments by the other party, the evidence that supports them, the court's arrangement of issues and materials, fact finding, legal interpretation, etc. Litigation activities are conducted through oral arguments. Oral argument refers to the time, space, and space of litigation proceedings in which the parties do their best to prove their claims, attack and defend, and examine the evidence, so that the court forms its own opinion and reaches its final decision. Says.

The principles of oral argument include the open principle in which hearings and trials are held in open court (Article 82, Paragraph 1 of the Constitution), the principle of mutual examination in which the parties present their arguments in conflict, and the principle in which oral argument and examination of evidence are conducted orally. There are two methods: the oral system, in which the judge makes the decision, and the direct system, in which arguments and evidence are examined in front of the judge who makes the decision (Article 249, Paragraph 1 of the Code of Civil Procedure).

As a general rule, the court will proceed with the proceedings from the perspective of neutral, impartial, and efficient management (ex officio principle).

On the other hand, as a general rule, the parties are responsible for collecting trial materials (oratory principle). The oratorical doctrine refers to the stance that it is the power and responsibility of the parties to submit litigation materials that form the basis of a trial. Since this is a dispute between private individuals, the intention is to respect the wishes of the parties as much as possible even in litigation situations.

The first thesis of the oratorical doctrine is that (1) the court cannot find facts that the parties have not asserted and use them as the basis of the trial, and (2) that facts that are not in dispute between the parties must be the basis of the trial. It consists of the second thesis and (3) the third thesis that when examining disputed facts, the evidence submitted by the parties must be relied upon.

However, in order to operate efficiently, courts can conduct their own investigations and collect court documents regarding matters of high public interest, such as jurisdiction.

Preparation for oral argument

In order to enhance hearings and resolve disputes quickly, it is necessary to know the content of the parties' claims and counterarguments in advance, and to understand and organize the issues and evidence. The law includes the preparatory document system (Article 161 of the Code of Civil Procedure), preparatory oral arguments (Article 164 et seq. of the Code of Civil Procedure), preparatory procedures for oral arguments (Articles 168 et seq. of the Code of Civil Procedure), and preparatory procedures in writing (Articles 175 et seq. of the Code of Civil Procedure). ) is stipulated.

Step-by-step structure of oral argument

Stage of petition on merits

The plaintiff states the purpose of the claim stated in the complaint. In response, unless the defendant acknowledges that the claim has grounds (Article 266 of the Code of Civil Procedure), the defendant will usually file a motion to dismiss the lawsuit or request a judgment dismissing the claim.

stages of legal claims

Here, we will assert the existence or nonexistence of rights such as the right to claim compensation for damages based on tort. The right to claim compensation for damages based on tort is a right that arises when the requirements of tort (Article 709 of the Civil Code) are met, so we assert that this right exists.

stage of factual assertion

Assert facts that meet the requirements for the creation or non-generation of rights. Alleges facts that meet the requirements of a tort. The other party can deny, confess, be ignorant, or remain silent.

proof stage

We will prove facts denied or unknown, grounds for defense, etc. As a general rule, the distribution of the burden of proof, which party bears the burden of proving what required facts, is determined in accordance with the legal requirements classification theory from the standpoint of fairness and clarity. The legal requirements classification theory is the idea that a person who claims an advantageous legal effect bears the burden of proving the factual requirements of the law that determines the occurrence of that legal effect.

Specifically, a person claiming a right must prove the necessary facts necessary for the generation of the right, and a person claiming the impediment to the creation of the right or the extinguishment of the right must prove the effects of the obstruction or extinguishment of the right. Prove the facts that meet the requirements.

evidence

Evidence refers to the materials that form the basis of fact finding, and includes testimony by witnesses, statements by parties, expert opinions by expert witnesses, documents, and verified materials.

In principle, the examination of evidence begins at the request of a party (the third thesis of the oratorical principle). On the other hand, from the standpoint of discovering the truth, fact finding and evaluation of the strength of evidence are left to the judge's free judgment (Article 247 of the Code of Civil Procedure).

final judgment

A hearing will be conducted regarding the rights claimed by the plaintiff, and once the hearing is complete, a judgment will be issued granting the plaintiff's claim or dismissing the claim. Additionally, if the litigation requirements are not met, a judgment will be given to dismiss the case.

appeal

A party who has received a judgment against him or her may appeal to a higher court.

 

Overview of patent infringement litigation

jurisdiction

The jurisdiction for lawsuits regarding patent rights and utility model rights lies in the Tokyo District Court or the Osaka District Court (Article 6, Paragraph 1 of the Code of Civil Procedure). Because highly specialized technical matters are required, jurisdiction is limited to courts with specialized processing systems.

In addition, if an appeal is filed against the final judgment of the above-mentioned court, the jurisdiction of the appellate court will be the Intellectual Property High Court (Article 6, Paragraph 3 of the Code of Civil Procedure, Article 2 of the Intellectual Property High Court Establishment Act). Depending on the case, the case will be tried by a panel of five judges (Article 5-269, Article 2-310 of the Code of Civil Procedure).

Affairs of court investigators in cases related to intellectual property

A court investigator performs specific duties by order of the court (Article 92-8 of the Code of Civil Procedure). Experts with specialized technical knowledge can serve as court investigators and supplement the knowledge of courts.

Expert committee system

This is a system that allows expert advisors to be involved in procedures under certain conditions in order to clarify litigation relationships or speed up procedures (Article 92-2 et seq. of the Code of Civil Procedure). In cases that require technical or other specialized knowledge, experts are involved in the proceedings on the court's authority.

Types of lawsuits in patent infringement lawsuits

Appeal for benefits

These include requests for injunctions based on patent rights, claims for prevention (Article 100 of the Patent Act), and claims for damages based on tort (Article 709 of the Civil Code).

appeal for confirmation

There are lawsuits to confirm the absence of a right to seek an injunction and lawsuits to confirm the non-existence of a right to claim compensation for damages.

Success or failure of infringement

In order for a right holder to allege infringement, (a) the right holder must be the patent holder or an exclusive licensee; (b) the defendant must be working the patented invention in the course of business, or there is a risk of doing so; (c) In principle, the infringer must claim and prove that the infringer's products and methods fall within the relevant technical scope.

However, the Patent Act has special provisions as follows.

In the case of an invention of a method for producing a product, according to the presumption of production method (Article 104 of the Patent Law), a product produced by another person is presumed to have been produced using a production method that is a patented invention.

In addition, the right holder must identify the specific aspects of the infringer's products and methods to the extent that they can determine whether the infringement is successful or not. On the other hand, if an infringer denies this, as a general rule, it is not necessary to simply deny, but to do so with reasons (specifying specific aspects) (Article 104-2 of the Patent Law). This will clarify the issues at issue and speed up the trial.

Furthermore, upon a petition from a party, the court can order the party to submit documents necessary to prove infringement (Article 105 of the Patent Law). This makes it easier to prove infringement. If a document submission order is violated, the court may recognize the other party's claims regarding the documents in question as true (Article 224, Paragraph 1 of the Code of Civil Procedure).

The Patent Act provides for a confidentiality order system to protect trade secrets (Article 105-4 et seq.). In order to determine whether infringement has occurred, the parties must disclose to the court information such as the content of the product and its manufacturing method. However, these may fall under the category of trade secrets, and there is a risk that the parties involved will be disadvantaged by having their trade secrets made public by disclosing their products, etc.

Therefore, we have established this system to protect trade secrets. Additionally, from the perspective of protecting trade secrets, the suspension of publication of interrogations is stipulated under strict requirements (Article 105-7 of the Patent Law). This is a provision that specifies the specific content of the exception to the principle of open access stipulated in the Constitution (Article 82, Paragraph 2 of the Constitution).

damage hearing

In the case of a claim for damages based on patent infringement, a trial is usually conducted to determine whether the infringement has occurred, and if the court is satisfied that the infringement has occurred, a damages hearing will be held.

The types of damages include the profits that would have been obtained had there been no infringement (lost profits), the costs required to remove the infringing product (active property damage), and the loss of the rights holder's product because the infringing product is of inferior quality. This includes intangible damage (mental damage) if the trust of the company is damaged.

In a damage hearing, the right holder (victim) seeking compensation for damages generally bears the burden of proving the facts that meet the requirements of a tort, such as the occurrence of the damage and the amount of the damage.

However, proving lost profits is not easy. This is because sales may fluctuate depending on economic conditions, sales methods, etc.

Therefore, the Patent Act has provisions for estimating the amount of damages for lost profits (Article 102 of the Patent Act). Furthermore, if it is extremely difficult to prove the amount of damages, the court can award a reasonable amount of damages based on the entire gist of the oral argument and the results of the examination of evidence (Article 105-3 of the Patent Law).

Additionally, the Patent Act has a provision for presuming negligence (Article 103 of the Patent Act), which aims to reduce the burden of proof by shifting the burden of proof.

Furthermore, the ability to order the submission of documents necessary to calculate damages (Article 105 of the Patent Law) and the protection system for trade secrets (Article 105-4 et seq.) have the same meaning as in the case of "success or failure of infringement" above. is.

 

 

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Patent Support Office Patent search/patent application Exceptions to loss of novelty in each country (grace period) Various procedures and troubleshooting after registration utility model Prices