By Taro Yaguchi, Senior Patent Attorney, and Sara Rosengard
The results of the Japanese IP Infringement Litigator Examination were announced on December 18, 2012 and revealed that only 136 applicants passed the examination, down by approximately 25% from the previous year. In Japan, all benrishi (patent attorneys) qualify to render prosecutorial, filing and expert opinion services regarding IP matters. In terms of litigation, however, their adversarial role is limited to appeals against the Japan Patent Office’s decision. For the benrishi to represent clients in infringement trial proceedings, they must receive higher levels of training and survive the ordeal of a bruising examination, which seems to be becoming more stringent each year.
Considering Japan’s status as the third largest IP office in the world, with close to 400,000 annual patent applications being processed, and as many potential infringement cases lurking in their wake, 136 newly minted patent infringement litigators a year appears woefully lacking. The importance of making certain your benrishi has the capacity of representing you in an adversarial capacity should the need arise goes without saying. But, from invalidity opinions to drafting patent specifications to conducting a licensing negotiation, even if you were not involved in an infringement lawsuit, it stands to argue that a patent attorney with greater knowledge of the adversarial aspects of IP law may be better suited to represent you in all aspects of the patent prosecution process as well. Until the admissions process for future litigators becomes less regulated, it is important to keep in mind the two types of patent attorneys in existence in Japan and make an informed choice in finding representation that is right for you.
For more information on the Japanese litigation system, infringement trials, or any other questions regarding Japanese patent law, please give our office a call.