Judicial Reform for
Effective Patent Enforcement
-Japan Report-
ATRIP Congress August 6, 2003
Nahoko Ono, Assistant Professor
University of Tokyo, RCAST
nahoko_ono@ip.rcast.u-tokyo.ac.jp
Contents
1. On-going Development
2. General Overview
3. Issues Concerned
1. Creation of IP High Court
2. Technology Expertise
4. Policy Implications
2
1. On-going Developments
2002.2 Admin. Policy Speech by PM Koizumi
“Science, Technology-Creation-based Nation”
2002.11 Enacted Basic Law on IP
2003.1 Admin. Policy Speech by PM Koizumi “IP-based Nation”
2001.6 Judicial Reform
Committee
Report
2001.12 Created Judicial
Reform
Headquarters
2002.10 Started IP
Litigation
Committee
Effective
IP
Litigation
2002.3 Created Strategic
Council on IP
2002.7 Published IP
Policy Outline
2003.3 Created IP
Policy
Headquarters
2003.7 Published IP
Strategic
Program
3
1. On-going Developments
06/21/01
-Judicial Reform Committee Report Even in this judicial reform committee report which
covers the entire judicial system, IP litigation is specified
as an issue
 Reform policies include:
 To reduce by half the litigation period (currently 23.1 mo.s)
 To concentrate jurisdiction onto Tokyo and Osaka District
Courts as substantial “patent courts”
 To inject more specialized judges and research officials, and
to possibly introduce professional advisers
 To confer procedural representative rights for IP (patent etc.)
litigation to patent agents after intensive training
 To increase more expertise in regular lawyers
 To reinforce ADR measures
4
1. On-going Developments
-IP Policy Outline-
06/03/02
Primary objective to become an “IP-based
Nation” with ”rapidity and concreteness”
Significant in listing up all the specific
action plans, indicating which government
entity in charge
Basic view is to better circulate IP creation,
protection, and exploitation, along with IP
human resource development
English translation (tentative) is available at www.kantei.go.jp/
5
1. On-going Developments
-Basic Law on IP-
12/04/02
 Underlining policy of “RAPID Reform”
 Objective to promote measures for the creation,
protection and exploitation of IP (Art.1)
 Broad definition of “intellectual property” (Art.2):
inventions, devices, new varieties of plants, designs, works and other
property that is produced through creative activities by human beings
(including discovered or solved laws of nature or natural phenomena that
are industrially applicable), trademarks, trade names and other marks that
are used to indicate goods or services in business activities, and trade
secrets and other technical or business information that is useful for
business activities
 To establish IP Policy Headquarters under the
Cabinet (Art.24), which must draft the IP
Strategic Program (Art.25(1))
English translation (tentative) is available at www.kantei.go.jp/
6
1. On-going Developments
-IP Strategic Program-
07/08/03
 Basic views succeeded from IP Policy
Outline
 8 primary action plans include:
1.
2.
3.
4.
5.
6.
7.
8.
IP creation, protection, and exploitation at universities;
To enact a law concerning rapid patent examination;
Patent protection re: medical method (activities);
To create IP High Court;
Drastic reform to strengthen piracy policy and import
control;
Patent policy and exploitation at international standard;
To promote content-related business; and
To establish law schools with emphasis on IP laws
7
2. General Overview
-Separation of PowersSeparation of Power is guaranteed under
the Constitution
Legislative Power to the Diet (Con. Art.41)
Administrative Power to the Cabinet (Con.
Art.65)
Judicial Power to the Courts (Con. Art. 76-I)
However in general, the long-lasting
criticism of too-big government triggered
the recent structural reform
8
2. General Overview
-Current Judicial System Constitutional Court is the
Supreme Court of Japan
only (Con. Art.81), which
functions as a final
judgment body
High Courts (8)
(Tokyo)
 Other inferior courts were
created by law according
to Con. Art.76-I
 High and District courts
District
Family
were created based on
Courts
Courts
regional jurisdiction so far
(50)
(50)
 Constitution prohibits any
civil
criminal
administrative panel
Admin.
existed as a final
Summary
Review
judgment body (Con.
Courts (438)
e.g. JPO
Art.76-II)
9
Source: Supreme Court website (http://courtdomino2.courts.go.jp)
Supreme Court of Japan
2. General Overview -Patent FlowSupreme Court of Japan
(161)
Opposition
(3,536)
(Tokyo) High Court
(10)
(60)
(156)
Invalidity
Trial (283)
Correction
Trial (220)
Patents Issued (121,742)
Appeal
(19,270)
Rejected
(82,540)
Infringement
Action
(Dist. Cts)
(153)
Examination Request (253,826)
Patent Application (439,175)
Source: JPO Annual Report 2002 (2003)
10
2. General Overview -Patent Application450,000
400,000
350,000
300,000
Application
Exam. Request
Patent Granted
Patent Issued
250,000
200,000
150,000
100,000
50,000
0
'92 '93 '94 '95 '96 '97 '98 '99 '00 '01
'92
Application
Exam. Request
Patent Granted
Patent Issued
'93
371,894
152,853
70,361
92,100
'94
366,486
223,546
77,310
88,400
'95
353,301
144,051
81,664
82,400
Source: JPO Annual Report 2002 (2003)
'96
369,215
167,923
97,677
109,100
'97
376,615
186,415
195,864
215,100
'98
391,572
205,300
122,386
147,686
'99
401,932
208,392
129,443
141,448
'00
405,655
217,389
135,412
150,059
'01
436,865
261,690
116,279
125,880
439,175
253,826
107,581
121,742
11
2. General Overview
-IP-related Cases at District Ct. level800
700
600
500
Filed
Terminated
400
300
200
100
0
'91
'91
Filed
Terminated
'93
'92
311
386
'95
'93
413
471
'94
470
457
'97
'95
497
402
'99
'96
528
440
'01
'97
590
442
'98
563
549
Note: FY2002 figures are estimates based on its April-July data.
Source: Supreme Court of Japan, IP Litigation Committee 5-3 (12/24/02)
'99
559
596
'00
642
772
'01
610
740
'02
554
717
611
652
12
2. General Overview
-IP-related Cases at High Ct Level600
500
400
Filed (Civil)
Terminated
Filed (Admin)
Terminated
300
200
100
0
'91
'91
Filed (Civil)
Terminated
Filed (Admin)
Terminated
'93
'92
78
88
309
270
'95
'93
76
75
234
214
'97
'94
102
82
196
234
'95
91
102
285
210
'99
'96
97
93
280
253
'01
'97
84
88
279
302
'98
120
101
328
298
Note: FY2002 figures are estimates based on its April-July data.
Source: Supreme Court of Japan, IP Litigation Committee 5-3 (12/24/02)
'99
143
137
393
397
'00
194
166
429
435
'01
216
190
476
430
'02
180
226
575
471
180
165
554
499
13
2. General Overview -Licensing BalanceFY2001; Yen (million); (
Domestic
Foreign
Revenue
Total
Domestic
Foreign
)Intra-affiliated companies
Expenditure
Total
Balance
Patent
363,861
(80,842)
356,635
(156,926)
720,496
(237,768)
387,872
(188,383)
321,522
(19,745)
709,393
(208,127)
11,103
(29,641)
Utility
Model
13,418
(7,722)
1,068
(1,066)
14,486
(8,788)
4,513
(206)
84
(0)
4,597
(206)
9,889
(8,582)
40,743
(38,577)
1,040
(1,038)
41,783
(39,615)
15,353
(14,784)
127
(29)
15,480
(14,813)
26,303
(24,802)
Trademark
237,776
(151,157)
48,735
(34,075)
286,511
(185,231)
101,788
(37,110)
71,179
(39,241)
172,967
(76,350)
113,544
(108,881)
CR
1,061,825
(319,970)
122,659
(10,430)
1,184,484
(330,400)
1,274,446
(160,464)
163,698
(2,106)
1,438,144
(162,570)
-253,660
(167,830)
(Software)
900,304
(258,721)
13,039
(746)
913,343
(259,467)
1,132,114
(140,100)
30,433
(254)
1,162,547
(140,354)
-249,204
(119,113)
Total
1,717,622
(598,267)
530,137
(203,534)
2,247,758
(801,802)
1,783,972
(400,946)
556,610
(61,120)
2,340,582
(462,067)
-92,824
(339,735)
Industrial
Design
Source: IP Activities Research Report (2002)
14
3. Issues Concerned
0.
1.
2.
Others
Judicial Reform Committee
Report (06/21/01)
IP Policy Outline
(06/03/02)
IP Strategic Program
(07/08/03)
(is discussed in IP
Litigation Committee)
Prompt examination procedure
Faster exam. for plants variety
More specific action plans for
prompt exam. incl. the bill
Prompt appeal/trial system
(same)
To concentrate jurisdiction
to Tokyo and Osaka
District Courts substantially
functioned as “patent
courts”
(same)
n/a (the legislation passed)
To concentrate jurisdiction to
Tokyo High Court
To create IP High Court
More specialized judges
More research officials
To introduce
professional advisers
To confer proceeding
representative rights on
patent agents
To reinforce lawyers’
expertise
More expertise in related parties
Further development of expertise
More business and IP laws at new
law schools
More technical experts with
business acumen
To enhance specialized HR
including patent agents with their
stronger functions
(same) +further specific plans
including:
- To increase # and quality of
lawyers and patent agents;
- More emphasis on IP laws for legal
education and others;
- To create IP schools, etc.
To reinforce ADRs
To reinforce ADRs
To develop discovery procedure
To strengthen damage system
(same) + further specific action
plans
15
3.1. Creation of IP High Court
Judicial Reform Committee Report
Chapter II.1.3 06/12/01
IP Policy Outline
Chapter 3.2.(2)1) 07/03/02
IP Strategic Program
Chapter 2.I.4 07/08/03
For the objective of speeding up IP-related
litigation to half of the current period (23.1
months), following measures shall be
enforced, as well as measures concerning
civil litigation to promote its concreteness
and rapidity:
Specialized judicial system must be further
strengthened for the purpose of letting
certain sections of Tokyo and Osaka District
Courts be functioned substantially as
“Patent Courts”. The alternative measures
include:…
-To confer exclusive jurisdiction to Tokyo
and Osaka District Courts, for cases
regarding patent rights and utility models,
etc.
i.
In order to make specialized
departments at the Tokyo and
Osaka District Courts substantially
function as “patent courts”, the
GOJ will grant to both courts
exclusive jurisdiction over lawsuits
related to intellectual property
rights including patent rights and
utility model rights. To achieve
this, it will submit the necessary
bills to the ordinary session of the
Diet by FY2003. (JRH, MOJ)
(1)
ii.
For the purpose of strengthening
comprehensive responses to
intellectual property-related
lawsuits, the GOJ will consider and
take necessary actions to
strengthen specialized processing
systems at high courts, including
concentration of jurisdictions of
high courts to the Tokyo High
Court regarding lawsuits related to
intellectual property rights such as
patent rights and utility model
rights. (JRH, MOJ)
Attempt to create IP High Court
Recent revision of Civil Procedure
Law is a notable development, by
concentrating jurisdiction for IPrelated lawsuits e.g. patent rights
onto Tokyo High Court. Yet, from
the perspective of significantly
important IP protection policy to
maintain the Japanese superior
competitiveness and to declare
our national policy emphasizing IP
domestically and internationally,
they shall purport to submit a bill
necessary to create IP High Court
to the Diet within the year of
2004, and examine necessary
issues including operation.
Source: IP Policy Outline from www.kantei.go.jp/forign/policy/titeki/kettei/020703taikou_e.html with corrections added.
16
3.1. Creation of IP High Court
-Patent Litigation FlowOpposition
Invalidation
Trial
Dist. Ct.
Infringement
Action
Trial for
Correction
Limited to within 90
days from the date of
the Trial Board’s
decision (Art. 126-II)
Judgment
Invalid
Retrial for
Invalidation
Suit ag/
(Admin)
Appeal/Trial
Appeal
Dismissed
Appeal
The court can remand the
case for retrial at JPO when
amendment claim has been
raised (Art. 181-II)
Judgment
Invalid
Supreme
Court of
Japan
High Ct.
Source: JPO
17
3.1. Creation of IP High Court
-Substantially Concentrated JurisdictionPre-1998
1998
Revision
2004
Revision
District Courts (50)
Tokyo & Osaka:
Concurrent
Jurisdiction
# of res.
officials
Civil: 180
Admin: 554
Patent: 85.0%
UM:
88.2%
IP:
72.6%
Tokyo High Court:
Exclusive Jurisdiction
Become Exclusive
Tokyo Dist. Ct.
# of judges
High Courts (8)
Osaka Dist. Ct. Tokyo High Ct.
Osaka High Ct. Total
3 sections
15
1 section
5
4 sections
16
1 section
5
41
7
3
11
(3)
21
Source: IP Judicial Reform Committee7-2(April 2003); 5-6 (Dec. 2002)
18
3.1. Creation of IP High Court
-JPO Sits in TokyoJPO Employees (FY2002)
JPO Budget (FY2002)
FY2002
Revenue
189,981,823,000
Examiner
1,304
Patent Fees etc. 104,418,481,000
Patent; Utility P
1,105
Transfer from
General Account
17,144,000
Miscellaneous
2,395,745,000
Surplus
83,150,453,000
Industrial Design
51
Trademark
148
Appeal Examiner
395
Subtotal
General
1,699
Expenditure
110,860,544,000
771
Grand total
Source: JPO Annual Report 2001 (2002)
2,470
19
3.1. Creation of IP High Court
“Substantially” concentrated v. IP High Court
Norm
v. Reality
(Generalist)
(Specialist)
Creation of a Court v. Judicial Enforcement
(Pro-Patent)
(Neutral)
20
3.2. More Technology Expertise
Judicial Reform Committee Report
Chapter II.1.3 06/12/01
IP Policy Outline
07/03/02
IP Strategic Program
Chapter 3.2.I.4 07/08/03
To inject more specialized judges
and research officials who function
as technology expertise;
To introduce professional advisers;
To confer proceeding
representative rights for IPR
infringement actions to patent
agents (in condition that an lawyer
act as an agent);
To strengthen expertise in regular
lawyers
Chapter 3.2.(2)1)
In order to enhance and strengthen
the functions of courts in intellectual
property-related lawsuits, the GOJ
will consider specific measures to
introduce a new judicial system in
which experts other than judges
participate in legal actions to support
judges in judicial proceedings, such
as expansion and clarification of the
role of court research officials, taking
the characteristics of intellectual
property-related lawsuits into
account. It will draw a conclusion by
the end of 2004.
(JRH, MOJ, METI)
(2)To fulfill of technology expertise
at IP litigation, the GOJ
must streamline the
procedure to fulfill
technology expertise at IP
litigation. For this purpose,
the GOJ shall reach a
conclusion by the end of
FY2003, after scrutinizing
following measures:
i)
To educate judges with their
expertise in technology and IP
ii)
To activate professional
advisers system which will be
introduced
iii)
To expand and clarify the role
of research officials working
for IP litigation (including
inquiry opportunity to parties;
and involvement of judgment
meeting etc.)
(JRH, MOJ, METI)
Source: IP Policy Outline from www.kantei.go.jp/forign/policy/titeki/kettei/020703taikou_e.html with corrections added.
21
3.2. More Technology Expertise
-Legal Professionals Comparison
US
Legal Expertise
UK
Germany
France
Japan
1,038,290
95,124
142,204
38,785
24,258
375.79
179.67
172.87
66.28
19.06
972,722
89,341
116,282
32,036
18,851
/100K total
population
352.06
168.75
141.36
54.74
14.80
Judges
31,292
3,647
20,878
5,093
3,094
/100k total
population
11.33
6.89
25.38
8.70
2.43
Lawyers/ judges
31.09
24.50
5.57
6.29
6.09
Newly filed cases
at 1st instance
20,522,515
1,904,946
2,394,979
1,089,516
461,252
Newly filed cases
at 1st instance
14,595,603
(71,022)
855,624
(417,057)
115,956
/100K total
population
Lawyers
Source: Supreme Court of Japan (based on 2000-2002 data)
22
3.2. More Technology Expertise
-Tokyo Congestion12000
10000
8000
Lawyers
Pat.Attys
6000
4000
2000
0
Hokkaido
Hokkai
do
Lawyers
PAs
Tohoku
Tohoku
Kanto
Kanto
Chubu
Hokuriku
Chubu
Kinki
Hokurik
u
Chugoku
Kinki
Shikoku
Chugoku
Kyushu
Shikoku
Okinawa
Kyushu
Okinawa
Total
404
492
10,689
1,362
303
3,615
569
276
1,032
184
18,926
8
17
3,416
241
19
792
31
12
39
3
4,578
Source: JPO (data for 2001)
23
3.2. More Technology Expertise
-Career Paths for IP ProfessionalsBachelor in Law
Bar
Exam
Judges:
3,094
Lawyer:
18,851
Pat. Attorney: 303
Bachelor in Science +UP
Patent
Bar Exam
Corporate
Pat. Attorney:
Legal/IP:
5,192
100,000(approx.)
JPO
Researchers:
Examiner: 1,304
AppealExaminer: 395
Research Officials
20/21 total temporarily
transferred to IP section
Source: Supreme Court of Japan (FY2002); IP Practitioners’ Committee Report (July 14, 2003)
24
3.2. More Technology Expertise
Patent litigation involves more factual
SCIENCE with its fast-moving
advancement
Needs to organically integrate legal and
science expertise
Employment opportunity open to the
public with judge’s discretion
25
4. Policy Implications
for Effective Patent Enforcement
More technology expertise must be
injected into Patent and other IP litigation
IP High Court must be created to
formalistically clarify the independence of
judicial power
More transparency must be improved in
the judicial system especially HR
Separation of Powers must be
reconsidered
26
THANK YOU
A-RI-GA-TO
27