The Japanese government’s Subcommittee on the Patent Act System has been working on revisions to the patent litigation system in Japan since October last year. The Japanese patent system does not have a requirement like the United States power of Discovery to enforce disclosure of evidence, and concerns that weaker litigants have been forced to retire their infringement due to inability to access proof of their opponents’ infringement led to a new proposal.
The Subcommittee’s proposed revision would enable the courts dealing with IP infringement to, if determining it is necessary, send in designated specialists to the alleged infringer’s factory or other such facilities and submit a report to the court. Nikkei Shimbun comments that this is partly based on the German probe system, though with some modifications.
Some large corporations have protested this proposal in the past due to fears of revelation of trade secrets. The Japanese proposal therefore uses the following adjustments to the German plan. (1) Entrance by a specialist is limited to following the filing of the suit. (2) The defendant’s opinion must first be sought. (3) Either party may register complaint with the court over its decision. (4) Any specialist who leaks trade secrets may face criminal charges. (Only domestic facilities would be subject to the specialist search policy, if implemented as is.)
Voices from large corporations as well as the Japan Intellectual Property Association warn that the proposed plan may be too hasty. In fact, a revision is already waiting to go into effect on July 2019. This change would simplify the courts’ task of evaluating the necessity of various pieces of documentation and theoretically enable collection of necessary evidence without entry by specialists to defendant facilities. Is it necessary to push in this additional change without seeing the effect of this earlier change, some ask.
We will have to see if the Japan Patent Act actually is revised to answer the pressures from smaller companies in Japan or not. Foreign patent owners fighting for their claims in Japan, stay tuned for the practical outcomes of the July 2019 changes and if this further specialist-based discovery system comes into being.
Sources
Nikkei Shimbun, “特許法改正 専門家が工場立ち入り 訴訟で証拠収集容易に、大企業に異論も [Patent Act revision: specialists may enter factories to more easily accumulate evidence in litigations; some major corporations have objections],” February 11, 2019 (paid subscription edition).
