The Japanese IP system has vulnerable evidence collection
procedures in comparison with foreign countries. In March 2017,
the Patent System Subcommittee of the Intellectual Property
Committee under the Industrial Structure Council published
Functional Strengthening of Systems for Handling
Intellectual Property Disputes in Japan, making some
proposals including an amendment of the laws concerning
appropriate and fair evidence collection procedures.
1. General remarks
Evidence collection procedures in patent infringement
lawsuits should be strengthened. Parties need to make
appropriate decisions based on a high level of technical
knowledge, and circumstances exist in which patentees have
difficulty proving patent infringement because evidence
relating to the accused infringers is not easily located,
especially for inventions concerning manufacturing methods.
In designing the system, the following should be considered:
balance in attack and defence by the patentees and the accused
infringers, protection of trade secrets of the accused
infringers, prevention of abuse of evidence collection
procedures, and consistency with the general rules on civil
Based on the above, introduction of the following systems
through amendments in the Patent Act should be considered: fair
and neutral third party technical experts can participate in
evidence collection procedures subject to confidentiality
obligations; the court can determine the necessity for
submitting documents and presenting objects to be inspected
under in camera procedures in orders for submission of
documentation and presentation of an object for inspection.
2.1. Evidence collection procedures after filing
(i) Introduction of a system in which fair and neutral
third party technical experts can participate in evidence
collection procedures after filing with confidentiality
Regarding an inspection system in which fair and neutral
third parties conduct inspections on the accused infringers
(inspection after filing), some opinions state that introducing
mandatory inspections should be avoided even after filing
lawsuits considering the importance of trade secret protection.
Other opinions state that they doubt whether the Japanese legal
system admits claims for information only in patent disputes,
which provide the basis for inspections.
For these reasons, introduction of a mandatory inspection
system should be carefully considered. Firstly, we should try
to strengthen the procedures by introducing a system in which
fair and neutral technical third party experts can participate
in evidence collection procedures. These should be consistent
with the structures of civil lawsuit systems in Japan, and
should be closely watched.
(ii) Introduction of a system in which the parties
can use in camera procedures so that the court can determine
the necessity for submitting documents and presenting objects
to be inspected
Some opinions state that regarding the current system of
orders for submission of documents, it is difficult for parties
to satisfy the necessity requirement.
Thus, a system in which the court can observe the documents
and objects for inspection in order to determine existence of
the necessity through in camera procedures should be
introduced. By introducing this system, when the court has
difficulty determining existence of necessity only based on the
briefs, the court can order the party to present the documents
or objects to be inspected to determine existence of necessity
by actually observing them.
(iii) Plan to obtain orders for submission of
documents more easily where the alleged infringers do not
sufficiently perform the obligation to clarify specific
conditions of infringement
(iv) Plan to enable the court to issue orders for
submission of documents and protective orders simultaneously so
that the court can issue orders for submission of documents
It is appropriate at first to introduce the new system
proposed in (ii) and closely watch the court's practice after
the introduction, and to consider the proposed plan after
various difficulties become clear.
2.2. Evidence collection procedures before filing
Voluntariness in current evidence collection procedures
before filing lawsuits should be maintained. Like the plans for
improvement of evidence collection procedures after filing
lawsuits, the procedures should be strengthened by introducing
a system in which fair and neutral third party technical
experts can participate in evidence collection procedures.
These should be consistent with structures of civil lawsuit
systems in Japan.
The introduction of an inspection system was proposed with
the idea that even if the US discovery system does not match
with the Japanese system, European evidence collection
procedure may match and the German inspection system can be a
good reference. However, introduction was suspended due to
strong concern about trade secret leakage from the industry.
For example, the concern that there would be a serious problem
if someone enters a factory based on alleged evidence
collection and urges the factory to disclose a manufacturing
method or tries to steal know-how was expressed.
The in camera procedure was restricted to judging whether
reasonable grounds to reject submission exist. The 2018 Patent
Act amendment allowed in camera procedure to judge whether
documents are necessary to prove infringement or calculate
damages. By this amendment, for example, in camera procedure
can be used when the structure of the product in question is in
dispute and the defendant alleges that they cannot disclose the
structure of the product due to it being a trade secret.
A judge explained the reason why almost no orders for
submission of documents were made. As the order compels the
party to submit a secret which they definitely do not want
their direct competitors to know, the court should carefully
examine whether it is necessary evidence for judgment, and the
possibility of a fishing expedition or an abusive application.
Judges are facing difficulty controlling the situation.
ABE & Partners
Matsushita IMP Building
1-3-7, Shiromi, Chuo-ku, Osaka, 540-0001, Japan
Tel: +81 6 6949 1496
Fax: +81 6 6949 1487