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Enforcement of IP Rights in JAPAN

Enforcement of Intellectual Property Rights in Japan

  1. What measures can an IP owner take in response to infringement of its intellectual property rights?
  2. What are the necessary documents or materials for taking such measures?
  3. Tell us more about having Customs stop importation of infringing articles.
  4. What are the costs (including official fees and attorney's fees) for taking the measures listed in Q1?
  5. What is the cost of a lawsuit including attorney's fees, government fees and other miscellaneous expenses?
  6. Are there any differences in the enforcement of the different kinds of intellectual property rights, i.e., patent, utility model, design and trademark?
  7. Can a plaintiff freely select a court when bringing an Infringement suit?
  8. How are damages calculated in court? Are punitive damages allowed in Japan? How are damages calculated if the patent covers only a part of the accused product?
  9. How long does it take to reach a decision in an infringement lawsuit?
  10. Is there any institute which will conduct a search to determine whether there is any infringement of an intellectual property right in Japan?
  11. Can we order a law firm or patent firm to effect such a search?
  12. Is it effective to send a warning letter to infringer?
  13. Is it necessary to send a warning letter prior to filing an infringement suit?
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Defensive strategy in an infringement suit

  1. When a foreign company introducing a product into the Japanese market receives a warning letter or a complaint from an IP owner alleging infringement of its rights, how should the foreign company respond? What is a recommended strategy?
  2. If a provisional attachment or provisional disposition (preliminary injunction or Karishobun in Japanese) is made, what should we do?
  3. Do prior user's rights exist under the Japanese system?
  4. Does license negotiation including obtaining a license or cross-license and buying a patent work effectively to resolve the dispute?
  5. Is an expert opinion such as a non-infringement opinion or an invalidity opinion effective for resolving the dispute? What is the cost for obtaining such an expert opinion from a patent attorney, patent agent or attorney-at-law?
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Measures to challenge validity of patent and other rights

  1. Where should the following actions be brought? (1) Opposition to a published patent or a trademark registration (2) Invalidation of a patent or a trademark registration (3) Appeal of the decisions to the above actions
  2. Are the organizations or offices indicated in Q1 distinguished in jurisdictions, etc. depending on the cases to be treated, i.e., on the kinds of the intellectual property rights (patent, utility model, design, or trademark)?
  3. What are the requirements for bringing an action in those organizations or offices indicated in the above Q1?
  4. What is the cost to file an invalidation appeal at the JPO? Regarding an invalidation appeal, what is an average time to reach a decision? Can a court proceeding be suspended until a decision of appeal at the JPO is issued?
  5. Can courts invalidate intellectual property rights including patent, utility model, design, and trademark?
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