Following reports of a considered revision to the Japanese Patent Act to enable “discovery” of data on patent infringement earlier this year, the proposal has been officially made. A patent attorney’s informational meeting on July 23, 2019, gave explanation.
The new proposal was issued on May 17 of this year. The Japan Patent Attorney Association sees the upcoming revisions to the Patent Act to be quite important for improving protections against patent infringement, especially as it has been difficult under Japanese patent regulations to prove infringement of patents in many cases. Patent infringement has never been considered in a court of criminal law in Japan. The proposed rules would enable third-party experts to enter facilities of alleged infringers for limited investigations and disclosure of possible evidence of infringement.
The rule is considered to be a means of last resort, and preferably a way to push those suspected of infringement to disclose relevant materials themselves and respond more favorably to subpoenas. The rule would enable a specialist designated by a Japanese court to enter facilities only if (1) necessity of the search, (2) probability of infringement, (3) the last resort nature of the search (i.e. it is necessary to provide sufficient evidence), and (4) proportionality of the burden to the accused are demonstrated. Also, searches would be limited to domestic facilities, and there would be extra rules to protect the privacy and secrets of the alleged infringer, in the case of a specialist’s search and disclosure.
Japan seeks to bring more infringers to justice. We can certainly hope they will.
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Taro Yaguchi
Sources
S. Yagi, “特許侵害の証拠収集で専門家による現地立ち入り調査が加わった改正特許法 [Patent Act revised with addition of on-site searches by experts for patent infringement evidence],” https://monoist.atmarkit.co.jp/mn/articles/1907/25/news038.html Monoist July 25, 2019, accessed July 25, 2019.
